Sunday, 13 July 2014

The Intellectual Property Act 2014 - What it could mean to you

Cambridge from the Backs

Jane Lambert

The East of England with many of our greatest universities and some of our most innovative companies has a vital interest in the laws that protect new technologies and design. The Intellectual Property Act 2014 will make important changes to our laws on patents and registered and unregistered designs. I have written quite a few articles, given a presentation and analysed the effect on patents, registered designs and unregistered design right for specialist IP solicitors and patent and trade mark attorneys which you can find in the bibliography to "Reflections on the Intellectual Property Act 2014" 7 June 2014 IP Tech. This article is aimed at business owners - particularly the new and growing businesses in biotechnology, computing, e-commerce, medical devices - as to what the Act will mean for them.

The Unitary Patent
One of the biggest concerns for high technology businesses in this region has been the cost of patent prosecution and enforcement in the EU. One obvious answer to that concern would be an EU patent and the governments of the member states of the EEC actually reached agreement for a Community patent some 40 years ago. Unfortunately not enough member states ratified that agreement (known as the Community Patent Convention) to bring it into force because of disagreements over language and dispute resolution and the Convention never came into force. There was an attempt to revive the Convention in 1989 and the Commission later proposed a Community patent regulation but all those attempts foundered on the same issues that had scuppered the Convention.

On 17 Dec 2012 most of the member states of the EU agreed a regulation that would enable the European Patent Office to grant a European patent designating the territories of most of the EU member states including the UK as though they were a single country. Such a patent will be known as a "unitary patent" and it will reduce greatly the costs of obtaining Pan-European patent protection.

Shorty afterwards most of the same member states plus Italy agreed to establish a single patent court ("Unified Patent Court" or "UPC") for their territories consisting of a Court of First Instance which will be based in Paris, London and Munich and a Court of Appeal in Luxembourg. The UPC will have jurisdiction to determine infringement and validity disputes relating to all European patents throughout the territories of all the contracting parties. It will thus simplify and greatly reduce the cost of patent litigation for businesses in the UK. In 2003 a high level advisory committee on intellectual property found that the average cost of patent litigation in the UK was over £1 million in the Patents Court and between £150,000 and £250,000 in the Patents County Court compared to €50,000 in Germany and France and €10,000 to 40,000 in the Netherlands. As the UPC will have jurisdiction throughout most of Europe businesses from the East of England and the rest of UK will bear the same prosecution and enforcement costs as their continental competitors.

S.17 of the Intellectual Property Act 2014 enables the Secretary of State to make regulations to implement the UPC agreement and thus the unitary patent into English law and a draft statutory instrument has already been offered for consultation. I have discussed that consultation in "Unified Patent Court Consultation" 25 June 2014 NIPC Law.

Other Changes to Patent Law
The Act allows the Intellectual Property Office ("IPO") to share information about unpublished patent applications with foreign patent offices which should remove at least one of the causes of (or excuses fro) delay in multiple patent applications. It exempts information about ongoing research and development that is partially funded by public money or in which the government has an interest from freedom of information requests. It also allows the Secretary of State to make regulations extending the range of issues that can be referred to the IPO for an examiner's opinion.  These and other changes to patent law are analysed in my article "How the Intellectual Property Act 2014 changes British Patent Law" 21 June 2014.

The Hague Agreement
In relation to industrial designs probably the biggest benefit of the Act for British business will be s.8 which will enable the Secretary of State to make regulations to enable the UK to accede to the Hague Agreement. The Hague Agreement is a treaty that allows designers or their employers to apply simultaneously for registration of their designs in more than one country in the way that the Patent Co-operation Treaty does for patents and the Madrid Protocol does for trade marks. Not a lot of countries have joined Hague so far but the EU is now a party and other countries including the USA are considering accession.

Other Changes to Design Law
It will soon be possible to obtain the opinion of a IPO examiner on the validity of a registered design and whether it has been infringed just as it is for patents. Appeals from IPO hearing officers will no longer lie to the Registered Designs Appeal Tribunal but to an appointed person or the court as already happens in trade mark appeals. There will soon be a right of prior user to enable those who began to make products to a design before the registration of that design to continue to do so. This is a right that already exists in relation to registered Community designs and there is a corresponding right in relation to patents and trade marks.

Criminal Sanctions for Deliberately Copying a Registered Design
The most controversial provision of the Act is s.13 which creates a new offence of deliberately copying a registered or registered Community design in the course of a business. This was opposed by many intellectual property lawyers including me and also by much of British manufacturing industry who feared it was the thin end of a wedge that would lead eventually to criminal liability for patent infringement. Others in the design lobby tried to introduce a clause criminalizing unregistered design infringement.  In the end the government's original proposals with a few minor changes were passed.  This provision may or may not deter counterfeiting because the government does not expect more than 4 prosecutions a year but it is almost certain to lead to a lot more challenges to registered and registered Community designs and threats actions.

Unregistered Designs
The main change is that title to an unregistered design right will no longer vest automatically in the person who commissions a registered design. Design consultancies and their customers should therefore review their contracts and standard terms of business. The definition of design has been amended and it should soon be easier for non-European companies to obtain protection for their original designs so long as they do at least some business somewhere in the EU.

Further Information
Detailed analyses of the main changes to registered design and unregistered design rights law are contained in "How the Intellectual Property Act 2014 changes British Registered Design Law" 19 June 2014 and "How the Intellectual Property Act 2014 will change British Unregistered Design Right Law" 11 June 2014 respectively.  If anyone wants to discuss this article or any of the issues arising out of it he or she should call me on 020 7404 5252 or fill in my contact form.  Members of the public can also tweet me, write on my wall, or contact me through G+, Linkedin or Xing.

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