Expert Advice: Wynne Jones IP
Wynne Jones IP
1 October 2014 sees a number of changes being introduced to UK intellectual property law as a result of the Intellectual Property Act 2014. But are these significant and do UK businesses need to pay attention? Whilst a number of tweaks have been made to some provisions, largely to provide clarity, along with some procedural and service offering changes before the Intellectual Property Office, there are two areas of IP where there are some significant changes which may be of interest to MediWales members:
- It will be a criminal offence to intentionally copy a registered design, or to produce a design with only slight immaterial changes. The expectation is that this will provide robust deterrent against blatant copying and therefore provide businesses with an additional commercial reason for registering their product designs. It will also be an offence to knowingly use a copied design in the course of business and profit as a result. This could include marketing, exporting, importing or stocking the design. Accidental or incidental use of an infringing design however will not be a criminal offence.
- A change to first ownership of design rights. The absence of a contract defining who owns the rights to an original business can be highly problematic. From 1 October, if the production of a design is commissioned from someone who is not an employee, a written agreement is necessary to ensure that all rights will belong to your business.
Wynne-Jones IP believes that designs are an under-used aspect of IP. They are relatively inexpensive to obtain, and the new legislation gives registered designs even more teeth. Design protection could be very relevant to some MediWales members, such as medical device companies.
- The most prominent change will not be felt as yet. This relates to the provisions for implementation of the Unitary Patent in Europe. In particular these changes will ultimately mean that the jurisdiction of court will be the new European Patent Court, although there will be a transitional period during which it will be possible to still opt for the UK courts to consider matters.
- The new Act recognises virtual marking (also known as web-marking) as a valid marking option and has brought the law up to speed with modern digital communications. It is now possible to simply mark the product/packaging with a web address which corresponds to a web page which lists all the relevant application and/or patent numbers and territories. This is expected to be of particular interest for businesses with large patent portfolios and inventions with a small surface area.
If members want more information on the Unitary Patent, then they can request a copy of our more detailed article, or they can speak to one of our experts.