Design and patent law changes in IP Bill near Royal Assent

The Intellectual Property Bill, which makes provision for the unitary patent and deals with a number of design law issues, completed the final stages of its passage through the House of Commons on 12 March.

The debate on the design aspects was lively, with a last-ditch attempt to introduce an amendment to the criminal provisions to cover unregistered design right (which was later withdrawn). As the Bill was started in the House of Lords (as Viscount Younger of Leckie, the minister for Intellectual Property, sits in the Lords), the Bill is almost there. The final stage is so-called "Ping Pong", where the amendments introduced by the Commons are referred back to the Lords for consideration. If they are agreed, the Bill will be given Royal Assent.

Although there is still a chance that the Bill will be amended to a certain extent, the key provisions are now known.

In terms of designs:

• A new "Designs Opinion Service" is being introduced to provide low cost, non-binding and impartial views on potential design disputes. This service is likely to mirror the existing "Patents Opinion Service".
• A criminal offence for copying of registered designs is being introduced. If someone deliberately copies a design in the course of business, without consent, they could be found guilty of an offence. The offence carries a maximum sentence of 10 years in prison.
• The default owner of a design will change to be the designer, not the person who commissions the design, to bring the law into line with the EU and copyright law. This increases the need for contracts to ensure ownership is clearly given to the intended person.
• There will be new exceptions to the law which will allow third parties to use unregistered designs for private use or experimental purposes. These exceptions already exist for registered designs.
• The definition of "commonplace" is being amended to make it clear that it covers the EU. This means that if a design is commonplace anywhere in the EU, it will not be considered "original" and therefore capable of protection. The words "any aspect of" are being removed from the definition of unregistered design right, so that it will read '"design" means the design of the shape and configuration (whether internal or external) of the whole or part of an article'. This is intended to discourage design owners from carving their rights too narrowly.

In terms of patents:

• The Bill is laying down the legislative framework for the unitary patent and the Unified Patent Court.
• The Bill allows more sharing of patent information with other patent offices worldwide to save each office having to repeat searches and so on.
• The requirements to mark patented products is being altered to allow patent owners to use a web address rather than provide the patent number.
• The Patent Opinion Service are being changed to allow the IPO to bring revocation proceedings against a patent that has been found not to be new or inventive by the Opinion Service. The IPO has made it clear that it will only do this where the patent is "clearly invalid".