Clarification, simplification and extra protection…what the Intellectual Property Act 2014 means for your business.

The new Intellectual Property Act has made some key changes in relation to the protection of designs and patents, which take into account the needs of small and medium enterprises.

So, what are the changes and what do they mean for your business?

Designs

• Firstly, design right protection will be more limited. Previously “any aspect” of the “shape or configuration of designs” could be protected, but now any trivial design features will be excluded from protection.  This change is intended to reduce nuisance litigation claims.

• Importantly, the designer will now be the first owner of any commissioned work, rather than the commissioner. This means that your company will need to make sure that, when you are commissioning a designer, an intellectual property assignment is executed. Most practically this should be done before paying the designer in full.

• Certain acts in relation to an unregistered design are now exempt from infringement, for example, acts done privately for teaching or experimentation.

• Third parties can continue to use a design even if it is subsequently registered by someone else, as long as they are acting in good faith.  This means that if a company has already invested a large amount of time and money in a design, they can continue to use it without the fear that at a later date someone may be able to stop them from doing so.

• Infringement of a registered design can now amount to a criminal offence in certain circumstances. This change should act as a further deterrent to infringers, whilst providing extra protection for rights holders.

Patents

• Until recently, in order to benefit from maximum patent protection, patents had to be marked with their specific patent number. Now, a web address linking to the patent details is enough to provide public notice of your patent rights. This change means that up to date patent information will be easily accessible to your competitors and will hopefully help to deter future infringement.

• Finally, the Act brings us a step closer to a Unified Patent Court (UPC) and a single unitary EU patent.  Specifically, we are closer to being able to apply to the European Patent Office for a single patent which will be effective in all EU member states (except Italy and Spain). Infringement and revocation actions in relation to the unitary patent will be subject to the exclusive competence of the new UPC, which will have a section in London. The UPC will also have competence to hear infringement and validity cases relating to existing and future European patents.