8/12/2019 New Intellectual Property Act 2014 Guidance for
Designers and Those Commissioning Designs
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The Intellectual Property Act 2014 (the act) received royal
assent on 14 May 2014. The act
will come into force between October 2014 and the end of
2015.
Stemming from the Hargreaves Review on intellectual property
reform, the act seeks to modernise
and simplify certain aspects of intellectual property law
including the law relating to designs, in order
to promote innovation.
Consequently, if product design, 3D Printing, fashion design,
furniture or jewellery design are
relevant to your business then these changes will be relevant to
you.
What do design rights protect?
UK Unregistered Design Right protects the internal or external
shape or configuration of an original
design. This right will give you protection in the UK for a
period equal to the earlier of: 10 years from
the first marketing of articles produced from the design; or 15
years from the date of creation of the
design. It should be noted however, that during the last 5 years
of this protection period the design
is subject to a licence of right entitling a third party to be
granted a licence to make and sell
products copying the design.
If however a design is registered as a UK Registered Design, the
proprietor of the registration has
the exclusive right in the UK to exploit that design for a
period of up to 25 years. The registration will
need to be renewed very 5 years. Registered designs protect:
two-dimensional designs or surface
patterns; and the shape and configuration of an original
design.
Typically design right protects commercially produced designs
and not 'artistic' designs which will
generally attract copyright protection.
What are the purposes of the changes to design rights?
The purpose of the design right changes are to:
simplify design law and allow the intellectual property
framework to better support innovation
improve the enforcement of designs and understanding the design
rights of others, and
improve the processes associated with the design framework
What changes are made to design right protection?
Unregistered Designs
Designer is now the first owner: One fundamental change to
existing law is that the act changes
the deemed first owner of unregistered designs so that unless
otherwise agreed, the designer will
be the owner of the designs and not the person who commissioned
the designs. Historically the
first owner has been the commissioner. This amendment will bring
design law into line with UK
copyright law
Trivial design features limited: The definition of Unregistered
Design Right has been amended to
limit the protection for trivial features of a design
Clarification of definition of 'design': The act clarifies the
definition of design so that to be original
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Home > Client resources > Legal updates > The new
Intellectual Property Act 2014 - guidance for designers and those
commissioning designs
The new IntellectualProperty Act 2014 -
guidance for designers and
those commissioning
designs
Published: 03 Jul 2014
Author: Laura Harper
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8/12/2019 New Intellectual Property Act 2014 Guidance for
Designers and Those Commissioning Designs
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a design must not be commonplace in a 'qualifying country'
rather than in the 'relevant design
field', which caused confusion as to its geographical coverage.
Qualifying Country is defined in
the Copyright Designs and Patents Act 1988 (CDPA)
Qualifying Person amended: The act has amended the provisions
related to qualifying persons
who can claim unregistered design right so that those who are
economically active in the EU and
other Qualifying Countries (as set out in the CDPA) have
protection
New exceptions to infringement: The act extends the exceptions
for infringing unregistered
designs, so that acts done privately for no commercial purpose
or for teaching will not infringe
unregistered design rights. A similar exception applies for acts
done for experimental purposes,
this is to encourage innovation
Registered Designs
Designer is now the first owner: The initial ownership position
in respect of registered designs isalso changed, as for
unregistered designs i.e. the designer will be the initial owner
unless
otherwise agreed, rather than the commissioner.
New Criminal Offence: The act makes intentional copying of a
registered design a criminal
offence. This applies to acts which take place in the course of
business and the penalties for
such an offence are now a fine or prison sentence. Again, this
brings the penalties into line with
sanctions for trade marks and copyright infringement.
New exceptions to infringement: The act expands the exception
from copyright infringement
already available to registered UK designs to registered
community designs, i.e. so that an
authorised user of a UK or registered community design cannot be
sued for infringement of
associated copyright.
Applicant does not need to be the owner of the design: The act
removes the requirement for the
applicant of a registered design application to be the
proprietor of the design.New good faith exception to infringement:
The act introduces a right of prior use, allowing a third
party who has acted in good faith to continue to use a
registered design which is subsequently
registered by another. The aim of this amendment is to provide
an entitlement to limited
exploitation in respect of uses already made.
New powers of enforcement: The act gives Trading Standards
officers similar powers of
enforcement for design offences as those already available to
them in respect of copyright and
trade marks.
Simplified international registration: The act grants power for
the Secretary of State to implement
the Geneva Act of the Hague Agreement in the UK, this means that
international registration
procedures will be available for UK registered designs. At
present UK designers can only access
the Hague registration process via the EU community design
registration.
Harmonisation of financial liability: The act aligns the
financial liability provisions for innocentinfringement with those
provisions under the Community Design Rights legislation.
Simplified appeal process: The act allows a new route of appeal
against Intellectual Property
Office (IPO) decisions via an Appointed Person instead of
appealing via the courts, such root
already exist for trade mark appeals. This amendment is intended
to allow appeals be cheaper
and less time consuming.
New opinions service for ownership, validity and infringement
issues: The act provides for a
voluntary non-binding opinion service to be introduced by the
IPO which is similar to the opinions
service which currently exists in respect of patents.
Clarification: The act clarifies that proceedings for an offence
committed against a partnership
must be brought against the partnership.
What are the other changes?
The act has added a new exemption to the Freedom of Information
Act for information obtained in
the course of or derived from a continuing programme of
research, a report of which is intended
for future publication, where disclosure would prejudice the
report.
There is an obligation on the secretary of state to report on
the IPO's activities each year to show
how innovation and growth have been supported in the UK.
The act provides for automatic extension of certain copyright
provisions of the CDPA to materials
of, and works first published in other countries i.e. it
recognises certain foreign works.
How will these changes affect me?
It is hoped that the act will benefit many UK businesses and
design professionals and make
obtaining international registrations easier. If you are a
designer or design company you should be
aware of the implications of the new act to your business. If
you are commissioning a design, it is
important to ensure that you have an appropriate agreement in
place with the designer to ensure
that the design rights are owned by you. We recommend that you
review your standard terms and
conditions and, where necessary, amend them to ensure that
appropriate provisions are included.
If you would like to find out more about design rights and the
new act or if you need any help with
the agreements which relate to the commissioning or commercial
exploitation of designs, please do
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