The proposed new legislation – now entering its final stages in Parliament – will make various changes to aspects of IP law in the UK.  Some of the provisions relate to designs, others to patents.

For example, the new Bill intends to tighten the scope of what is covered by a UK unregistered design right and also change the law on ownership of such rights so that henceforth if you commission a design you won’t automatically become the owner of it.  That will stay with the designer – as per copyright law.

Those with patents will be able to use a link via the internet to provide details of the patent rather than having to display the patent number on their goods.

However, by far the most contentious part of the new Bill is the law to make some types of design infringement a criminal offence.  It has long been the case that there have been criminal offences of trade mark and copyright infringement.  The new Bill will introduce into English law, for the first time, criminal offences of design infringement.

The decision to introduce such offences has not been without controversy.  For example, it is worth noting that among the parties who actively opposed introducing any criminal offence of design infringement were the following: IP Federation 67, the Intellectual Property Bar Association, the City of London Law Society, the Chartered Institute of Patent Attorneys and a number of IP lawyers and specialists, as well as the inventor Sir James Dyson and the Ministry of Defence.

Although this opposition has not stopped the new offences from being put into the Bill, as it has progressed, some changes have been made to the criminal offence provisions regarding designs.  This has slightly softened the offence in two respects.

First, the scope of what constitutes a criminally infringing design has been tightened.  The wording now requires that the offending products be made exactly to the design or differ only in immaterial details.  This is sensible and should promote greater certainty, making it easier to define which copies of a design are covered by the criminal provisions.  Further, it is clear that their real purpose is to deter counterfeiting as much as anything.

Secondly, not only is it necessary for the infringer to have copied the registered design (something that is not required for civil liability), but it must have “intentionally” copied the design, knowing or having reason to believe the design is a registered design.   This additional requirement for intention is also introduced to the offence of infringement on a secondary basis (e.g. where a person has the products bearing the infringing design in his possession or is selling them).  In such cases, in order to be liable, he must not only know or have reason to believe that the products with which he is dealing are copied designs, but must know or have reason to believe that they were “intentionally” copied.

The overriding concern of the legislators has been to avoid a situation in which people can innocently infringe a design yet face a substantial prison sentence.  The new offence is primarily aimed at criminals who deliberate create copies.  But it could still bite in circumstances where a business played fast and loose with someone else’s designs or alternatively sourced an identical or nearly identical product made to the protected design.

To put matters in perspective, in the impact assessment produced for parliament before the Bill was introduced, the numbers of prosecutions of the new offence are expected to be very small in number.

But that isn’t to say that when buying and selling products, businesses can afford to ignore this new law…

By Michael Gardner