Business Development Brief: The Intellectual Property Act 2014

The Intellectual Property Act 2014

The act, which came into force on the 1st of October 2014, simplifies the process for protecting 3D designs and puts design rights on an even footing with copyright and trademark laws in the UK.

Overview

The objective of the act is to make the design rights process far more user-friendly. The most important changes in the act deal with design right protection. Design rights protect original 3D designs, which are not covered by copyright, trademarks or patents. This rights protection is particularly effective for creative industries in sectors such as furniture, home wares, packaging, footwear, architectural features and other 3D objects.

Design rights proceedings are costly, with many small companies keen to avoid spending money on litigation, which is likely to be pointless. A new service will be introduced giving parties a right to obtain a non-binding opinion from the Intellectual Property Office (IPO). If a business has a registered design that is challenged as being unoriginal, then the business with the registered design can ask the IPO for its view before going to court.

The most important change for most small businesses, and one that might cause the most problems for some businesses, is that when a business commissions a design from a third party, the designer will own the design right intellectual property (IP) rather than the business that has commissioned the work. A business that pays a designer (who is not an employee) to develop a product will not actually own the design unless this is specifically agreed. The commissioning company must take the right legal advice as to what contractual clauses retain the design rights for them.

The act now means that infringement of a registered design is a criminal offence. This brings design rights into line with copyright and trade mark laws. A small business that has a registered design will be able to report those who are producing or selling “knock-off” designs to the police, as well as pursuing its own legal action.

Further Amendments

There are some things that are still in the pipeline for UK designs:

The UK will join the Hague international designs registration system in its own right. Currently applicants wanting to use the Hague system and wanting to cover the UK need to go for EU-wide cover. The UK will not join the Hague system before late 2015 however.

The IPO is planning to allow electronic inspection of certain design documents. Again this is not likely to happen before the end of 2015

The appeal system for designs is to be changed along similar lines to the trade mark system with a choice between the courts and and a more informal process, to an ‘Appointed Person’, an expert in intellectual property law appointed by the Lord Chancellor. This may come in Spring 2015 but we should expect a consultation first.