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In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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UK law reform update

1   A New UK Intellectual Property Bill.
The Intellectual Property Bill 2013 has passed through the House of Lords, the first stage of its progress through the UK Parliament.  The Bill enacts several reforms to modernise UK patent and design law.  In the absence of major upsets, it is expected to clear the Commons by next April, and to be implemented over the following year. 

The patent reforms are few, but will have some significant effects.  They are:

1   The possibility to use "virtual marking" of products using a website.  At present, whilst marking products with the patent number is optional, it is strongly recommended in order to increase the chances of an award of damages.  However, spare "real estate" on products is often limited, and many products are covered by multiple patents.  Accordingly, it will be possible to refer on the product to a website listing the patents, rather than listing them on the product.  That should also ensure that patentees can avoid inadvertent criminal offences by falsely marking products with expired patent numbers, without having to change their moulds or print labels.

2   The power to revoke patents following a negative IPO Opinion.  Since the introduction of the relatively cheap and informal Opinion system some years ago, it has gained traction and is used typically between 20-40 times each year.  At present, even if the outcome of an IPO Opinion is that a patent is invalid, the patent concerned remains in force on the Register.  This reform would allow the IPO to revoke the patent.  It will be possible, however for the patentee to ask the Court to review the Opinion before this happens.

3   The introduction of the Unified Patent Court.  The UK has signed up to the Unitary Patent Convention and the Bill provides enabling powers to put the Court into effect.

The design reforms go a little further.  They include:

1   The creation of a criminal offence of design copying.  Infringement of a registered UK or Community design which results from copying, identically or substantially identically, will be a crime.  There will be various defences including invalidity or honest belief in invalidity, and honest and well-founded belief that the design is not infringed.  Those who propose to compete with a registered design will in future be well advised to seek expert advice from qualified IP attorneys on which to base such a belief.

2   The creation of a designs Opinion service based on that for patents (discussed above). 

3   The creation of a "prior use" defence to registered design infringement, to match that available for patents and Community designs.

4   Enabling measures to allow the UK to accede to the Hague Convention, allowing International Designs to designate the UK.

5   Streamlining of UK Unregistered Design Right provisions to more closely match the current law of Community designs, including:

(a) Extending the qualification criteria to cover all designs first marketed in a qualifying country (in practice, the EU, Hong Kong and New Zealand);

(b) Removing the principle of first ownership of "commissioned" designs, to match the situation for Community designs and other IP rights.  In future, ownership of commissioned designs will be decided by the terms of the commissioning contracts rather than by statute.

2   "Design Copyright" term to be extended.
The Enterprise and Regulatory Reform Act 2013 abolished Section 52 of the Copyright, Designs and Patents Act, which limited the lifetime of copyright in industrially applied designs to 25 years from first marketing.  The abolition has not yet come into effect, but in future, such designs will, like other copyright works, be entitled to protection until 70 years from the author's death.  This will not apply, however, to many three-dimensional designs unless they cross the high twin hurdles of art and craft required to qualify as "works of artistic craftsmanship" - so far, in over a century nothing has ever done so in the UK courts.

3   No to "superfast" patents.
Last year, the UK Government announced a scheme to grant patents in as little as 12 weeks.  After consultation this year, however, they found that there was no demand for such a scheme and announced that they have "decided not to implement the proposed superfast service, or to make any changes to the IPO's existing acceleration services."