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14 May 2014

Intellectual Property Act 2014

As many of you will be aware, Parliament has been considering the Intellectual Property Bill since 2013. On 14 May 2014, the Bill received Royal Assent, becoming the Intellectual Property Act 2014, which will come into force from October 2014, with all measures being fully implemented by the end of 2015. The aim of the Act is to allow businesses to better protect their intellectual property rights in the UK and abroad.

Lord Younger, the minister for Intellectual Property in the UK, said: “I am confident that this Act will further strengthen our world-class IP system – from research to market – and help businesses of all sizes to continue to thrive.”

One of the key features of the Act is that the Unified Patent Court Agreement may be brought into effect in the UK by order of the Secretary of State.  This is a key step in preparing the UK for the introduction of the forthcoming Unified Patent Court.

Another important change is that the UK-IPO Comptroller will have the power to revoke a UK patent if he has previously issued an opinion stating that that patent is invalid. This would remove the unfair monopoly that these invalid patents currently provide. Provisions are included to ensure that the patent will not be revoked before the time limit has expired for the proprietor of the patent to apply for a review of the decision, or before the proprietor has been given an opportunity to make any observations and to amend the specification.

This additional power to revoke patents may be seen as a controversial move.  On the one hand it could greatly speed up the revocation of invalid patents and allows greater certainty of a patent’s validity.  However, the proprietor of a patent may be less inclined to request an opinion, as an alternative to proceeding with litigation, if they are worried it may result in their patent being revoked.  Accordingly, this change may lead to more proprietors proceeding with litigation rather than looking to resolve a dispute in a more cost-effective manner.
However, the Intellectual Property Act will have a greater effect on designs.  The major changes include making infringement of a registered design, in certain circumstances, a criminal offence.  This puts designs on a level with music and brands, which are protected by copyright and trade marks and which are both covered by criminal sanctions. This should deter wilful infringement of registered designs.

Additionally, the Act will introduce a non-binding Design Opinions Service.  Presumably, this has been introduced as a result of the use made of the Patent Opinions Service.  However, the Act does not appear to give the Registrar the power to revoke a design registration if he issues an opinion stating that the design is invalid.

Finally, the Act also introduces a power enabling the United Kingdom to join the Hague international design registration system in its own right.  Currently, we are only a member by virtue of EU membership, thus those seeking to protect their designs through the international system have to take an all or nothing approach.  In conclusion, the Act helps bring UK practice into line with Europe and provides further tools which are intended to provide greater certainty and help parties avoid costly litigation. If you have any questions as to how the new Act will affect you and your IP rights, please call your usual Venner Shipley contact.

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