Design law changes coming into effect today – 1 October 2014

Main provisions of the Intellectual Property Act 2014 (the “Act”) come into force today, introducing a number of changes. The key points are:

  1. New criminal offence for copying a registered design
  2. Changes to design ownership in relation to commissioned designs
  3. Allowed private use of unregistered designs
  4. Introduction of a design opinions service 

1.  Intentional copying of a design under the “Act” is now a criminal offence where a person or a company can face imprisonment for up to 10 years if found guilty.

–  Unlike civil sanctions, any criminal offence has to be proved to the higher standard of “beyond all reasonable doubt”.

–  Accidental and incidental use is not considered a criminal offence.

–  The criminal offence relates to any intentional copying of a Registered Design taking place on or after 1 October 2014.

2.  The other key change is the ownership of a UK unregistered design. Without any agreement, the ownership of unregistered designs will now stay with the designer and it is therefore important to ensure such rights are addressed under any contractual arrangements. 

3.  In some circumstances, certain activities are allowable in relation to unregistered designs and they do not constitute infringement. These activities are for:

–  Non-commercial and private purposes.

–  Experimental purposes

–  Teaching purposes as long as “fair and do not compromise the exploitation of a design”

Similarly, a business can use the existing protected design to find out how it was put together. This would encourage innovation and to develop novel designs. 

4.  An introduction of an opinion service will enable businesses to request for a non-binding opinion from the IPO on matters relating to designs. This will help businesses to understand whether to pursue any dispute, before they get to the courts. The details are under consultation and the intention is to be fully operative by 2015.

There are many other changes coming into effect with the “Act”, therefore we strongly recommend getting in contact with your Barker Brettell attorney to discuss the details of all the new changes and how they may affect you and your commercial arrangements.

Tracy Arch and Alessio Brotto