The Intellectual Property Act 2014 - Designs And Patents

Author:Mr Euan Duncan, Valerie Surgenor and David Gourlay
Profession:MacRoberts
 
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The Intellectual Property Act 2014 ("Act"), which came into force recently, introduces a number of reforms in the area of designs and patents, examples of which are listed below.

Designs - new criminal offence

The Act strengthens design rights' protection by making the intentional copying of a design which has been registered with the UK Patent Office or is a Community Registered Design a criminal offence. From 1 October 2014, an offence will be committed where a person acting in the course of a business "intentionally copies a registered design", either copying directly or by introducing alterations to the design which are "immaterially" different from the original.

Those deriving an economic benefit from copied designs will also commit an offence when they use, stock, offer, import, export or put the registered design on the market in the course of business.

A defence exists where someone makes use of an unregistered design which is subsequently registered by another party. A right of prior use will apply where a party has been using a "registered design in good faith or made serious and effective preparations to do so." In this case, continuing to use the design for the same purposes for which it was used prior to the registration will not infringe the registered design but infringement may be held to occur if the scope of use is extended in any way.

Commissioned designs - ownership

The ownership of commissioned designs created after 1 October 2014 is brought into line with current EU law. Where designs are commissioned, the presumption will be that the creator of the design (not the commissioner) will own the rights. It is therefore vital to provide for assignation of the ownership of the design in any contracts for commissioned designs.

Employers need not worry as they will continue to own any designs created by...

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