New IP legislation 'could clog up courts'

The bill - designed to simplify and improve design and patent protection, particularly for SMEs - would make it a criminal offence, punishable with up to 10 years in prison, to deliberately copy a registered design. It passed through the House of Lords on Tuesday July 30, 2013 with an amendment to improve defences available to those prosecuted after the bill has passed into law.

The proposed amendment includes a clause allowing those accused of infringement to defend their themselves on the grounds that they ‘reasonably believed’ that they had not done so.

Patent attorneys Withers & Rogers said this will extend protection to defendants who believe that their own design is sufficiently different to escape infringement.

The draft legislation is expected to be debated in the House of Commons later this year before passing into law in 2014/2015.

Tony Whitehead, IET policy director and Roger Burt, president of the Chartered Institute of Patent Attorneys agree that current legislation adequately protects against infringements and caution that that the wording of the bill has the potential to create numerous infringement claims.

‘Blatant copying of registered designs is reprehensible,’ Whitehead said via email. ‘However, if the government is determined to tighten up the legal consequences…then it needs to be done in a way that does not clog-up the legal system with hundreds of cases against designers and retailers who have followed fashion trends but have not deliberately copied registered designs. Nor must it stifle innovation because of fear of prosecution for presumed copying. It is for these reasons that the language of the Intellectual Property Bill needs amending.’

Whitehead added that most product designs are not registered and that the majority of SMEs and design sole-traders do not have the funds to pay for design registration as they compete in fast moving markets.

The Intellectual Property Office says the proposed new criminal sanction for breach of registered design rights is focused on ‘wrongful business behaviour’ and that the law will not persecute those who inadvertantly infringe a design.

In a statement Phil Sanger, Withers & Rogers said, ‘Assuming this amendment is included in the final legislation, it will remain important for businesses…to be diligent and obtain an objective, professional opinion on whether their proposed activity would constitute an infringement.’