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Reforms to design rights and patents framework proposed by Government

Out-Law News | 13 May 2013 | 2:49 pm | 3 min. read

Infringers of registered designs could face a jail sentence and a fine under proposed reforms to UK legislation.

The Government has unveiled a draft Intellectual Property Bill which would introduce potential criminal sanctions to be issued against those that make unauthorised copies of registered designs. It had consulted on the plans last year.

If a design, whether UK or Community registered, is copied without the permission of the rights holder "in the course of a business ... so as to make a product exactly or substantially to that design", and that infringer knows, or has reasons to believe, that a design is registered, the copier would be liable for the criminal act of unauthorised copying.

It would also be a criminal offence for someone, in the course of a business, to offer, put on the market, import, export or use a product, or to otherwise stock it for one of those purposes, where the product has copied exactly or substantially a registered design without rights holders' permission. The offence would apply if the person engaging in such activity knows, or has reasons to believe, that a registered design has been copied without consent so as to make the product exactly or substantially to the protected design.

Those accused of unauthorised copying of designs would be able to avoid liability for either offence if they could show they "reasonably believed that the registration of the design was invalid" or that they did not actually "infringe the right in the design".

"It's great that the Government has taken a positive first step to protect designers against design copying with a proposal to introduce criminal sanctions for deliberate registered design infringement; this will encourage more designers to register their designs," Dids Macdonald, the chief executive of Anti Copying in Design (ACID) and vice chair of the Alliance for Intellectual Property, said in a statement. "However, we hope that in the future this will apply to those who rely on unregistered rights, which comprise the majority of designers in this country."

The Government has also set out proposed reforms to the UK's patents law framework, which would include expanding the patent opinions service (POS) the Intellectual Property Office (IPO) currently offers.

POS enables individuals or companies to request that the IPO issue opinions on questions relating to the validity of patents that have not previously been looked into by its examiners during scrutiny of patent applications. The opinions themselves are non-binding but the IPO previously said that a review conducted in 2009 showed that the opinions were "helping to resolve a significant number of disputes".

Under the draft Bill a patent assessed through the POS would be able to be revoked by the IPO if it is deemed to be invalid.

The Government has also set out plans to establish a new court system that will operate alongside a new unitary patent framework. The framework would enable business across the EU to obtain patent protection spanning across the trading bloc by making just a single application for that protection. In February most EU countries signed up to an agreement on the establishment of a Unified Patent Court system which would deal with cases relating to the validity and infringement of the unitary patents.

Another proposed reform would allow the Intellectual Property Office more freedom to share information requested by other patent offices around the world. The Government said that the sharing of unpublished patent application documents could "help clear existing backlogs and speed up clearance times".

In addition, the draft Bill, if enacted, would allow businesses to mark patented products with a website address in order to benefit from full patent protection. The link would take internet users to more details about the patents.

"This change will reduce the burdens on businesses and individuals who own patents, whilst also making it easier for the public to access up-to-date patent information in relation to a particular product," the Government said.

A new exemption to freedom of information laws would also be introduced under the proposed Bill that would impact on university research.

Under the Bill any "information obtained in the course of, or derived from, a programme of research" would be considered exempt from disclosure under the Freedom of Information Act under certain conditions.

The exemption would apply if the programme of research "is continuing with a view to the publication" of a report on the research, if pre-publication of the sought-after information would, or would be likely to, be prejudicial to the research programme, the interests of participants in the research or the interests of the public body holding the information.

"This [exemption] will provide researchers with clarity and certainty and the opportunity to validate and analyse their results before putting them into the public domain or before any related patents have been granted," the Intellectual Property Office said.

"Following last week’s Queen’s Speech the Government said that one of the main benefits of the Intellectual Property Bill was that it would ‘make the intellectual property system clearer and more accessible to small and medium-sized businesses’," IP law specialist Seona Burnett of Pinsent Masons, the law firm behind Out-Law.com, said. "Both the time it can take for patent applications to be examined, published and approved and the affordability of freedom to operate searches can be a significant barrier to business innovation in the UK, and in particular to SMEs. It remains to be seen whether what the Government has proposed will be sufficient to deliver on its aims."