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The Intellectual Property Act 2014 ("the Act"), which received Royal Assent on 14th May 2014, is intended to introduce improvements in design and patent protection in the UK and to protect patents and design rights which between them are estimated to be worth £31 billion per annum to the UK economy. In addition, the Act also provides for ratification by the UK of a European wide United Patent Court ("UPC").
Patents – the Unified Patent Court Agreement is brought into effect in the UK. This is an important step towards introducing a single patent across nearly all EU countries and HM Government anticipate that this will bring savings of up to £40 million per year for UK businesses.
There will be a Central Division of the UPC in London with jurisdiction over chemical and pharmaceutical related patents as well as operating as the local division of the UPC in the UK.
This step towards the introduction of a single patent in Europe (the "Unitary Patent") will cover 25 of the current 28 EU member States. The intention is that a UPC challenge or enforcement action will in future take place in a single action before the UPC, rather than a series of actions in the courts of each country where the patent is in force.
The Act also allows the UK Intellectual Property Office ("UKIPO") to exchange information regarding UK patent applications with other EU Patent Offices, on a confidential basis, which it is hoped will reduce the time it currently takes to have a patent granted.
The Act introduces changes to the Patent Opinion Services. Previously, a third party had to initiate revocation proceedings if an opinion found the patent to be invalid. Now, in clear-cut cases, this process can be initiated by the UKIPO on behalf of a third party.
Designs – pursuant to the Act, the UK may accede to the Hague Convention. Now UK designers will be able to register their designs in the UK and abroad using a single application and for the payment of a single fee.
For the first time, there will be criminal penalties introduced for the deliberate copying of a registered design – bringing another element into the battle against counterfeiters.
In order to bring design law in line with copyright legislation, the Act provides that the default owner of a design is now the designer, rather than the commissioner of the design. Therefore, an independent designer will always own his own designs, even if the work has been commissioned, unless a contractual provision states otherwise.
Any clients using freelance designers or external contractors will need to ensure that they have a contract with the requisite rights' assignments in place.
As with the existing Patent Opinion Service operated by the UKIPO, the Act introduces a Designers Opinion Service which is intended to provide an impartial, non-binding and low cost view of potential design disputes.
Implementation and Contact
The current intention is that the Act will come into force from October 2014, with all measures implemented by late 2015.
For further information, please contact Luisa Leone on 01223 532714 or to email Luisa click here.
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