The UK’s Intellectual Property Act 2014 came into force on 1 October 2014, and makes a number of significant changes to design law:
Ownership of commissioned designs
Under previous law, for designs that had been commissioned, the commissioner automatically owned the associated unregistered design right. This has now changed: In the absence of agreement to the contrary, in such circumstances ownership of unregistered design right remains with the designer. This is similar to the position for copyright, and it is now vitally important to ensure that the issue of ownership is addressed in an agreement prior to design work being commissioned.
Exemptions from infringement
As is the case for patent law, there are now certain activities that in future will not constitute infringement of a registered design. Essentially, these encompass use of the design for experimental purposes and for teaching purposes, so long as the use is fair and does not compromise the exploitation of a design. To encourage the development of new designs, a product covered by an existing registered design may be used for the purpose of finding out how it has been put together.
Protection for prior users of registered design
It is conceivable that a business may make preparations to market a design, but then discovers that someone else has in the meantime registered that design. In the future, the business will have some rights to continue with its activities (but not to expand them) without infringing the registered design. This is similar to the “prior user” rights that exist in patent law.
Criminal sanctions for intentional copying
In a measure clearly intended to strengthen the hand of rights owners against counterfeiters, infringement of a registered design will in some circumstances now be a criminal offence, with a maximum penalty of up to 10 years imprisonment. This relates to infringement that is intentional, as proven to the standard of “beyond all reasonable doubt” that is applicable to criminal matters.
Designs opinion service
Some years ago, the UKIPO introduced an opinions service for patents, by which a non-binding opinion on the validity or infringement of a UK patent may be obtained. This is intended to help businesses assess their position before deciding whether to pursue a dispute. A similar service will in future be available for designs. The details are still to be resolved, but it is expected that the system will come into operation some time in 2015.