What to look out for in 2014 – IP

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Intellectual Property Bill

The Intellectual Property Bill was introduced in May 2013 and should become law in 2014. The Bill implements a number of the Government’s responses to the Hargreaves Review of intellectual property and is intended to modernise aspects of the law relating to intellectual property, particularly relating to patents and designs. The Bill includes provisions for:

  • the UK to implement the Unitary Patent Court Agreement. The implementation of a Unified Patent Court will enable pan-European enforcement of the new European unitary patent rather than requiring actions to be brought separately within the courts of individual Member States
    the introduction of criminal penalties for infringement of UK registered designs, bringing the law into line with the existing position for copyright and trade mark infringement
  • a change in the ownership rules for commissioned designs to strengthen design protection
  • changes to the registration and appeals process for registered designs
  • a designs opinion service and an expanded patents opinion service by which proprietors could ask the UK Intellectual Property Office to provide an expert opinion on whether a UK design or patent is valid or is being infringed.

Changes to the law on groundless threats

The Law Commission is reviewing the law relating to groundless threats of litigation over patents, trade marks and design rights. A report with the Commission’s recommendations is scheduled to be published in March 2014.

Essentially, the groundless threats legislation provides that where there is no basis to an allegation of infringement or there is no genuine intention to litigate, then the threat is unjustified and the recipient of the unjustified threat has the right to seek an injunction to prevent further threats and/or to claim damages (and costs).

The Commission has identified two particular areas of concern: first, the existing law does not distinguish adequately between the trade source of the infringement and others with a lesser connection, such as customers; secondly, groundless threats actions can be used tactically to drive a wedge between legal advisers and their clients, and may discourage attempts to settle disputes, resulting in cases ending up at court.

The Commission is consulting on two potential approaches for reform. The first is to build on, and extend the reforms made in patent law in 2004 (i.e. to protect legal advisers from liability). The second is to treat groundless threats as unfair competition and to introduce new and broader causes of action.

New anti-piracy law

From 1 March 2014, illegal downloaders will start receiving warning letters from the UK’s biggest internet service providers (BT, Everything Everywhere, O2, Sky, TalkTalk group and Virgin Media) under a draft code drawn up by media regulator Ofcom. Under the new law, internet service providers will be required to send letters to customers to warn them when a firm, TV or music company has made an allegation that they have been illegally downloading from their computer. If a user receives three warnings within a year, anonymous information regarding their downloading and file-sharing history will be handed to copyright owners who may then use it to get a court order revealing a user’s identity. They will then be able to bring a legal action against them.

A streamlined CTM process

The EU Commission proposes to introduce a streamlined process for filing and registration of a Community Trade Mark in 2014. The Community Trade Mark will be renamed the European Trade Mark. Other changes include:

  • OHIM and national searches will be abolished
  • the ‘graphic representability’ requirement will be abolished making it easier to register sounds and smells
  • certification marks will be introduced
  • there will be a change to a fee per class of goods on application and renewal.

Changes are also proposed to the enforcement regime:

  • new legislation will entitle rights owners to stop counterfeit goods from entering or leaving the EU regardless of whether the goods are released for free circulation
  • the production and distribution of labels and packaging which may subsequently be used on illicit products will be prohibited
  • introducing bad faith as a ground of opposition provided the earlier mark is protected outside the EU and in use.

Copyright protection for artistic works exploited by making of articles using an industrial process

Section 74 of the Enterprise and Regulatory Reform Act 2013 repeals section 52 of the Copyright, Designs and Patents Act 1988, which limits to 25 years the duration of copyright in artistic works that have been exploited with the copyright owner’s consent by making, using an industrial process, articles which amount to copies of the work. It is not yet clear when section 74 will come into force. We have written previously on the implications of this legislative change, which will be welcomed by designers but which could have adverse implications for businesses that trade in replica designs.

Orphan works and licensing

The Enterprise and Regulatory Reform Act 2013 also contains provisions allowing for the introduction of schemes for the commercial and non-commercial use of ‘orphan’ copyright works (where the author is unknown) and for voluntary extended collective licensing of copyright works, subject to a number of safeguards. It also creates a power to require collecting societies to adopt codes of conduct based on minimum standards. The provisions regarding orphan works have not been without controversy, particularly with photographers, who expressed concern that their unattributed work, reproduced on the internet, could be caught by the new regime.

The current intention is that section 77 of the Act, which concerns orphan works, collective licensing and codes of practice, will have implementing regulations by not later than October 2014.

New technology transfer block exemption

The current regulation block exempting certain categories of technology licensing agreement from the competition rules on anti-competitive agreements is due to expire on 30 April 2014. The European Commission has been consulting on the form of the new block exemption regulation which is to take its place. Walker Morris responded to the consultation and we have written previously on certain details of the Commission proposals.