The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014

Jane Lambert

On 14 May 2014 the Intellectual Property Bill received royal assent. The Act made some far reaching changes in patents, registered design and unregistered design right law which I summarized in "Reflections on the Intellectual Property Act 2014"  7 June 2014 4-5 IP Tech and discussed in detail in "How the Intellectual Property Act 2014 changes British Patent Law" 21 June 2014 JD Supra, "How the Intellectual Property Act 2014 changes British Registered Design Law" 19 June 2014 JD Supra and "How the Intellectual Property Act 2014 will change British Unregistered Design Right Law" 11 June 2014 JD Supra 11 June 2014. On 28 Aug 2014 Lady Neville-Rolfe, Minister for Intellectual Property, signed The Intellectual Property Act 2014 (Commencement No. 3 and Transitional Provisions) Order 2014 which will bring many of the provisions of the Act into force.

Commencement
Art 3 of the Order provides that most of the sections of the Act which are listed in a schedule to the Order will come into force on the 1 Oct 2014.  Most of these will require further secondary legislation but some will come into effect immediately on the commencement day thereby requiring a number of transitional measures which are dealt with in the rest of this Order.

Commissioned Designs
S.6 (1) of the Act repeals 2 (1A) of the Registered Designs Act 1949 so that a person who commissions a design will no longer be treated as the original proprietor of the design subject to any contract or rule of law to the contrary.  Art 4 of the Order provides:

"Section 6(1) of the Act does not apply to—
(a) any design created before the commencement date, or
(b) any design created on or after the commencement date in pursuance of a commission (irrespective of whether the design was commissioned before, on or after the commencement date) provided that—

(i) the designer and the commissioner of the design have entered into a contract relating to the commission of the design, and
(ii) the contract was entered into before the commencement date."

Damages for Patent Infringement
S.62 (1) of the Patents Act 1977 provides:

"In proceedings for infringement of a patent damages shall not be awarded, and no order shall
be made for an account of profits, against a defendant or defender who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed; and a person shall not be taken to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word “patent” or “patented”, or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words in question."

S.15 (1) of the 2014 Act insets the words “or a relevant internet link” after "number of the patent" and the following sub-section (1A) which provides that

"The reference in subsection (1) to a relevant internet link is a reference to an address of a posting on the internet—
(a) which is accessible to the public free of charge, and
(b) which clearly associates the product with the number of the patent.”

Art 5 of the Order provides that  s.15 does not apply in respect of the infringement of a patent referred to in section 62 (1) of the Patents Act 1977 where the infringement occurred before the 1 Oct 2014.

Revoking Invalid Patents
S.16 (4) of the Intellectual Property Act 2014 confers upon the Comptroller-General of Patents. Designs and Trade Marks a new power to revoke patents that are considered to be invalid following a request for an opinion under s.74A of the Patents Act 1977. Art 6 of the Order states that this power shall apply only where a request for an opinion is made after 1 Oct 2014.

Sharing Information with Overseas Patent Offices
S.18 of the Act permits the Comptroller to share certain information relating to unpublished patent applications to overseas patent offices. Art 7 of the Order makes clear that that does not apply to an application for a patent whose date of filing is before the 1 Oct 2014.

Seminar in Leeds

I shall be discussing the Act in detail in a presentation to the Leeds Business and IP Centre at 18:00 on 15 Oct 2014 as part of Leeds Business Week for which SRA, BSB and probably IPReg points will be available. This will be useful for patent and trade mark attorneys ans specialist lawyers as well as business leaders, designers, inventors and their investors. It is based on a talk that I gave on the 19 May 2014 in London. Further details are in "CPD Event - "The Intellectual Property Act 2014 - What it means to you and your clients" Leeds 15 Oct 2014 IP Yorkshire. If you want to attend please call my clerk on 020 7404 5252 or send me a message through my contact form.