The IP Bill – Changes to the UK Patents Act

The main change to the UK Patents Act introduced by the IP Bill is to enable the UK to bring the UPC into effect. That is the subject of a separate briefing, however, there are also some other more minor changes which we detail below. The first change below in particular has practical implications for patent proprietors.

  • Product marking. The IP Bill provides for a patent proprietor to be able to mark a product protected by patent(s) with an internet link to a website/webpage providing relevant patent number(s). Such a marking would avoid the possibility of alleged infringers avoiding a contrary finding of damages by claiming a defence of “innocent infringement” (as is currently the case if a product is marked with a patent number). The ability to mark a product with an internet link rather than with the relevant patent number(s) themselves should simplify product labelling and ensuring that labels are up- to-date.

  • Changes to the UKIPO’s opinions service. The Intellectual Property Office (IPO) has for some time offered inexpensive non-binding opinions on validity and infringement of patents on request of any party. Currently, validity opinions are though limited to consideration of novelty and inventive step. The IP Bill provides for this service to be expanded such that the IPO will be able to offer an opinion on validity of a patent based on additional grounds for patentability. Additionally, the IPO will be able to provide opinions on validity and infringement of Registered Designs and Supplementary Protection Certificates. The IP Bill also provides that the IPO should be able to revoke a patent if their opinion is that the patent is invalid for lack of novelty or lack of inventive step, subject to the possibility of review of the opinion and argument/amendment by the patent owner. The IPO have made it clear that this provision would only be used where a patent is “clearly invalid”.

  • Sharing of information with other patent offices. The IP Bill will allow for the IPO to share additional information relating to unpublished patent applications with other patent offices, on a confidential basis. This provision has been indicated as being intended to assist in reducing international backlog in patent offices by for example allowing for sharing of search results. 

31 March 2014

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