Tuesday 28 May 2013

UK: Intellectual Property Bill

The United Kingdom Intellectual Property Bill was introduced in the House of Lords on 10 May 2013 and received its first parliamentary discussion on 22 May 2013 at Second Reading. The Bill was referred to a Grand Committee for further examination, which is scheduled to begin on 11 June 2013, following the recess.

The Bill addresses a disparate collection of intellectual property issues, mainly concerning itself with designs and patents. Apart from laying the foundations for the Unified Patent Court, pursuant to the agreement among EU Member States reached on 19 February 2013, the Bill’s most eye-catching provision is the creation of a criminal offence of deliberate infringement of a UK or Community registered design, to be enforceable by Trading Standards.

The offence is committed where someone copies a registered design in the course of a business so as to make a product exactly or substantially to the design, knowing or having reason to believe that the design is a registered design. An offence is similarly committed in relation to such a copy where someone “offers, puts on the market, imports, exports or uses the product, or stocks it for one or more of those purposes”, knowing or having reason to believe that the design has been copied without the consent of the registered proprietor.

It seems that the IPO was not satisfied with the established wording of section 107 of the Copyright, Designs and Patents Act 1988 as a model for describing the ancillary acts which will incur liability. Perhaps some tidying up will occur in committee: “offering” seems rather vague.

The offence is punishable with up to 10 years’ imprisonment, putting it on a par with the most serious copyright and trade mark offences. The criminalisation of registered design right infringement has for many years been the objective of the designers’ anti-counterfeiting body, ACID, who have welcomed the Bill. However, as ACID and some peers at second reading observed, unregistered design right, which is in practice of greater importance to SME designers, is not covered by the offence.

The Bill also provides for UK accession to the Hague system of international design registration. This will allow UK designers to apply through WIPO for multiple national design registrations using a single application.

Of great interest to policy advocates is the creation of a duty in the Secretary of State to make an annual report to Parliament on the Intellectual Property Office’s contribution to the promotion of innovation and economic growth in the UK and the effectiveness of intellectual property legislation in that regard (including the legislation of the European Union). This report is likely to become the focus of much lobbying, as it will not only influence the legislative and administrative agenda at home, but may also be a bridgehead into policy-making at EU level.

In responding to speeches calling for a more specific (and broader) specification of the report, the IP Minister, Lord Younger, assured peers that “the report will also cover policies and services that impact on the licensing of intellectual property". This will include the Copyright Hub, centrepiece recommendation of the controversial Hargreaves Review.

Some peers speaking in the Second Reading debate indicated an intention to move amendments. Lord Clement-Jones, in a speech largely directed to strengthening intellectual property protection, urged the IP Minister to consider position of authors in relation to unfair contracts. The IP Minister undertook to discuss “this important and complex matter further”, indicating that he would meet with Lord Clement-Jones and the Creators’ Rights Alliance. This raises the prospect of further attempts to interfere with freedom of contract in the licensing sphere, something the Government has embraced in relation to copyright exceptions. Other countries, such as Germany, have made attempts to strengthen the author's contractual position as against the distributor (see Articles 32 and 32a of the Urheberrechtsgesetz, as amended in 2002 (English version)).

The Bill now proceeds to consideration in Grand Committee, where amendments are made only by consensus. While the debate there will indicate what will be urged when the Bill returns to the floor of the House of Lords, it is unlikely that the Bill will undergo significant modification at this stage.

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