With effect from 1 October 2014 there will be some important changes to UK Design law which include criminal sanctions for intentional copying of a design and changes to the ownership of designs.

Criminal Sanctions

Under the new provisions, intentional copying of a UK or EU registered design in the UK will be a criminal offence. Copying will fall under the criminal provisions if it is intentional, without the consent of the owner, whilst knowing (or having reason to believe) that the design is registered. The resultant product must be exactly the same as the registered design or with features that differ only in immaterial details. The offence could result in a fine and/or imprisonment for up to 10 years.

On the one hand, these new provisions put the owners of registered designs in a stronger position and make the registration of designs a more useful strategy for protecting products. However, for those looking to develop products similar to those of their competitors, careful due diligence will be needed to avoid the criminal offence. For example, it is possible that an opinion from a patent attorney advising that there is no infringement will be sufficient to avoid the intentional copying test.

Ownership

A further change will mean that the person who commissions a design will no longer automatically be the owner of a UK design; rather, absent an agreement to the contrary, a UK design will be owned by the designer. This aligns UK design provisions with those of copyright. We recommend that, when undertaking any form of design or product development work, appropriate agreements are put in place, both for employees and contractors. Such agreements should cover not only designs but all forms of intellectual property such as patents, trade marks, designs (both registered and unregistered), copyright.

An information sheet regarding these changes can be found on the UK Intellectual Property Office website at www.gov.uk/government/publications/changes-to-design-law-business-guidance.

Source: Sweetinburgh & Windsor Intellectual Property

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