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Intellectual Property Bill announced in Queen's Speech
Practical Law UK Legal Update 7-528-0997 (Approx. 4 pages)
Intellectual Property Bill announced in Queen's Speech
by PLC IPIT & Communications
| Published on 09 May 2013 • United Kingdom |
The government announced in the Queen's Speech 2013 that it will introduce legislation to reform the law relating to designs and patents. (Free access.)
Speedread
The government has announced in the Queen's Speech that it will introduce an Intellectual Property Bill to make changes to the law of designs and patents. The contents of the Bill will implement changes to designs law that were recently announced in the government's response to its own consultation and included, among other measures, the introduction of criminal penalties for infringement of registered designs; the tying of the concept of "commonplace" to a specific geographical area; and a change of first ownership of design right from the commissioner to the creator of a design. In relation to procedure, the Bill contains provision for a new opinions services for infringement of registered designs and a new, alternative path of appeal from decisions of the Intellectual Property Office, to the Appointed Person rather than the High Court. On the patents side, the Bill will provide for the establishment of part of the central division of the Unified Patent Court of First Instance in London and local divisions within the UK.
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Background
European Unified Patent Court (UPC)
In December 2012, two EU regulations were adopted that paved the way for the unitary patent, a single patent that will be granted centrally and will be effective in all EU member states except Italy and Spain. Infringement and revocation actions in relation to the unitary patent (and supplementary protection certificates (SPCs) granted on the basis of unitary patents) will be subject to the exclusive competence of the new UPC. The UPC will also have competence to hear infringement and validity cases relating to existing and future European patents.
The UPC will consist of a court of first instance and a court of appeal. The Court of First Instance will consist of a central division and up to four local divisions in each member state. The central division will be based in Paris, with sections in London and Munich. For more information, see Legal update, Final version of unified patent court agreement published.
Designs law
Following the Hargreaves Review of Intellectual Property, the UK Intellectual Property Office (IPO) acknowledged that it had limited information on how important design rights were to growth and on whether the current legal framework for design protection was meeting the needs of business. The IPO conducted economic research and issued a call for evidence and an associated survey to acquire this information. Responses to the call confirmed that the law needed to be simplified and improved in a number of areas to meet the needs of this business sector more fully (see Legal update, Government responds to designs consultation). Among the key proposals set out in the government's response to the consultation were:
- The retention of UK unregistered design right (UDR).
- The redefinition of UDR to prevent claims being based on very small parts of articles.
- The tying of commonplaceness to a specific geographical area for UDR.
- Changing the first owner of a design from the commissioner to the designer.
- Introducing a voluntary, non-binding opinions service for designs to give those involved in potential infringement actions an impartial view on the strength of their case before they engage in full legal proceedings.
- Introducing criminal sanctions for deliberate copying of registered designs.
- Creating a new route of appeal to the Appointed Person against IPO decisions, as an alternative to the High Court.
Facts
The government has announced the introduction of an Intellectual Property Bill in the Queen's Speech 2013. The stated objectives of the Bill are to:
- Make arrangements for the establishment of the UPC.
- Allow the UK to share information on unpublished patent applications with other patent offices in order to help clear application backlogs and speed up clearance times.
- Make it easier for businesses to understand what is protected under design law.
- Clarify the law on ownership of rights in designs.
- Introduce criminal penalties for infringement of UK registered designs.
- Establish an opinions service for design rights.
Comment
It is to be expected that the detailed measures set out in the Bill will be consistent with those discussed in the government's response to its consultation on designs law, published very recently on 2 May 2013 (see Designs law above).
The patent-related provisions of the Bill are being announced in the context of concerns, expressed by the UK Parliament European Scrutiny Committee, about the effect of bifurcation on forum shopping, the training and quality of UPC judges, and the prohibitive expense of using the unitary patent and UPC, particularly for small and medium-sized enterprises. It will be interesting to see the extent to which the draft Bill addresses such concerns.
For a discussion of the practical implications of the new UPC, see Article, A unified Europe? unitary patents and the unified patent court.