Author(s):Several

Intellectual Property Regime in the United Kingdom

Introduction

The European Union (EU) is one of the world most significant economic powers. There is a considerable population of around 500 Million that lives within its member states, and the GDP is about $19 trillion. However, while the EU, as an organisation, is a crucial global entity, it does not have total power over its member nations. Each country is sovereign, and as such, any EU regulations must be individually ratified and implemented. One such area which is covered under the EU is Patents and Intellectual Property.

Patents Act 1977

A patent is an intellectual property that grants the patent holder the exclusive right to manufacture and sell the invention, for a limited period. Upon expiration of the right, if a third party manufactures or sells the item in question, the patent holder, who is the inventor in most cases, will not be able to initiate any action to prevent them from doing so. In the UK, the laws and regulations with regards to patents and their application are governed by the Patents Act of 1977.

The Patents Act of 1977 stipulates what the requirements for obtaining a patent are and further sets out the remedies for patent infringement. It also incorporates the European Patent Convention of 1973. According to the Act, for a patent to be granted for an invention, it must be new, must involve an inventive step and finally, it has to be capable of industrial application. If the following criteria are not fulfilled, then the patent application will be rejected. Apart from this, if the commercial exploitation of the patent is in contrary to public policy or morality, then the patent will not be granted. Typically, the patent is granted towards the person making the application and is assumed to be the inventor (it can be more than one). The application must be made in accordance with the format prescribed in the Act, wherein it has to include a request to grant the patent, a specification that describes the invention and an abstract that gives technical information of the invention. It must be noted that an application for the patent can be withdrawn at any time before it is granted.

Once it has been established that the application has a date of filing, has not been withdrawn and the prescribed fees have been paid, the comptroller can send the said application for a preliminary examination, wherein an examiner will determine if the application is in accordance with the requirements of the Act. If it is found that any required drawing or description is missing, then the examiner will report the same to the comptroller, upon which the comptroller will give the applicant a period of time to amend the application to meet the requirements. Once the requirements have been fulfilled, the comptroller must publish the application as filed. It is then sent for a thorough search once the applicant has paid the necessary fee, known as ‘search fee’. Upon completion of this search and a substantive examination, if it is found that the applicant has complied with all the relevant requirements, then the patent will be granted. On the contrary, if the applicant is found to have not adhered to all the required provisions, then the application of the patent will be refused. An application that has been refused or withdrawn at any time can be reinstated provided the applicant requests the comptroller to do so and complies with the relevant requirements. The comptroller must further be satisfied that the prior failure to comply with the regulations from the applicant’s side was unintentional. A patent, once granted, will be valid for a period of 20 years and a certificate that states that the patent has been granted will be sent to the applicant as well.

The patent that has been granted to the applicant can be revoked upon application for the following reasons:

The invention was not a patentable invention.

The patent was granted to someone who was not entitled to be granted.

The comptroller can also revoke a patent that was granted, but only after an opportunity is given to the applicant to make observations and amend the specification of the invention.

One of the main aims of the Patents Act of 1977 was to bring the UK patent law in accordance with the European Patent Convention since the UK was a part of the European Economic Community. The Patent Act of 1977 is further supplemented by the following legislations:

The Copyright, Designs and Patents Act 1988 (which helped establish the Intellectual Property Enterprise Court, a specialized court for hearing matters involving intellectual property)

The Patent (Amendment) Act, 2004 (mainly incorporate the changes to the European Patent Convention 1973 of 2000, such as revised provisions for employee inventors seeking compensation and address the expenses related to patent litigation).

The Patents (Compulsory Licensing and Supplementary Protection Certificates) Regulations 2007 (which contains provisions related to the patents pertaining to the manufacture of pharmaceutical products for export to countries with public health problems).

The UK Intellectual Property Office is the governing body to grant patents in the UK and can also receive applications for patents under the European Patent Convention. It must be noted that a patent that is granted in the UK gives the patent holder right within the UK. Should the patent holder desire protection for their work outside the UK, then the necessary application must be made at either the respective country or through an international patent system that is called the Patent Cooperation Treaty. A patent that is granted under the European Patent Convention implies that the patent holder is given protection throughout Europe.

It is imperative that adequate patent legislation exists in order to protect the rights of those involved in the process of invention and the UK Patent legislation is extremely comprehensive in nature at doing so.

Patents and Designs Act 1907

Patents and copyright are crucial aspects of an economic system as they promote creativity and innovation among individuals and businesses. They also protect those who make creative breakthroughs which could provide a financial benefit.

The Patents and Designs act of 1907 was the primary regulation on the matter of patent application in the UK. It also covers many other related topics such as enforcement, legal proceedings, copyright matters and fees. However, this regulation is not the only one which covers these areas. The Trademarks Act of 1994 amends certain aspects of the 1907 law, and also acts in a complementary manner to all UK patent and IP regulations.

The 1994 regulation was introduced to ratify and implement an EU Treaty. The changes that were brought about mirror the EU Directive, which is known as EU Directive Number 89/104/EEC. The European Union first introduced this directive on December 21 1988.

Changes Introduced in the EU Directive

The UK is a global financial and business centre and has been for centuries. Its regulations and legal systems go back through decades of growth and change which is evident through the fact that there has existed a patents regulation in the UK since 1907 and even prior.

As such, a large number of changes brought about through the EU Directive are textual and not hugely significant. However, there are several more noteworthy changes which can be summarised as follows.

One of the fundamental changes relates to Article 62 of the original act, which stated that a patent office is to be provided along with all the essential requirements. This office was to connect to the 1905 and 1907 regulation. The amendment now specifies that the Patent Office will provide for 1949, 1977 as well as the 1994 rules. Further to this, the Controller of the Patent Office has seen a change. Previously, the Board of Trade was responsible for managing the office, though the amendment now states that the Secretary of State is responsible for selecting and providing specific controllers who perform that job. Any controller selected by the Secretary requires their authorisation.

Article 63 has also seen alterations. They relate to the controller-general of patents and design. This position, as well as any other officers, are to receive implementation through the Secretary of state. However, the approval of the Minister of Civil Service is also required. Removal of individuals from these positions follows the same concept. Before the amendment, these matters were all handled through the Board of Trade.

Article 99 has not seen any alterations and shall continue as it is. This Article states that the short title of the law is the Patents and Designs Act of 1907.

Overview

The changes to the original 1907 law are few in number and primarily textual alterations. The crucial changes relate to the management of the Patent Office in the UK. While the Board of Trade previously managed this, the Controller is now selected by the Secretary of State. The Secretary then reports to Minister of Civil Service.

This change can ensure that any activities of the Patent Office are monitored and actions are performed per the requirements of the EU.

It is also vital to know that, while the changes occurring through the 1994 regulation to the 1904 rule are relatively few, many further amendments occurred through the likes of the following Acts. The 1949 Patents Act, the 1949 Registered Designs Act and the 1977 Patents act are some of the crucial amending legislations.

Plant Varieties and Seeds Act 1964 (Chapter 14, as amended up to the Beet Seed (Scotland) Regulations 2010)

The Plan Varieties and Seeds Act 1964 (the Act) aims to provide the proprietary rights to people who bread and/or discover plant varieties and to issue the according licenses.

Part II of the Act is dedicated to seeds and seed potatoes.

Section 16 Seeds Regulation Lists the instances in which the Minister may make seed regulations. It provides that seeds regulations may include provisions for regulating the marketing, importation or exportation, or any related activities. It also set regulations on collection of seed samples and describes the cases of exemption from the compliance with regulations. Section 17 Civil liabilities of sellers of seeds Establishes that the statutory statement when received by the purchaser shall have effect as a written warranty by the seller. States that if a purchaser intend to buy a test of seeds he must give written notice to the seller. Section 18 Defenses in proceedings for offences against seeds regulations States that it shall be a defense to proceedings for including in statutory statement any false particulars to prove that the mis-statements in the particulars alleged to be false do not exceed the limits of violation so prescribed. Section 19 Presumption as respects statutory statements under seeds regulations Establishes that any statutory statement made as respect seeds which are in distinct portions shall be presumed to made both as respects the seeds as a whole and also as respects each portion taken separately. Section 24 Official testing stations and certificates of test States that the Minister of Agriculture, Fisheries and Food and the Secretary of State shall continue to maintain the official seed testing stations. It also gives Ministers the authority to charge fees (subject to the approval of the Treasury) for the services given at an official seed testing station. Section 25 Powers of entry Established the rules and regulations on entry into premises which are believed to be used for any purpose of the business of selling seeds. Section 26 Use of samples in criminal proceedings Regulates the rules of using samples during criminal proceedings – that a sample has to be divided into at least two parts, that sample shall be sent as soon as practicable, etc. Section 27 Tampering with samples Provides with the list of kind of tampers which if exercised would lead to the liability on summary conviction. Section 28 Institution of criminal proceedings Establishes the rules and procedures for the criminal proceedings. Section 29 Application of Part II to seed potatoes Established that this Part is applicable to seed potatoes or any other vegetative propagating material and to sulvicultural planting material as it applies to seeds. Section 30 Interpretation of Part II Explains the meaning of the following terms: “authorized officer”, “official testing station”, “seeds”, “statutory instrument” Section 31 Repeals and consequential amendment States that the enactment mentioned in the Schedule 6 shall be repealed except for the purposes of proceedings for offences thereunder committed before coming into force of this Part of Act.

Part III is dedicated to the control of imports and prevention of cross-pollination

Section 33 Measures to prevent injurious cross-pollination affecting crops of seeds Regulates the rules to maintain the purity of seed of any type and varieties of plants of any species of the genus Allium, Beta or Brassica.

Part IX concerns the general aspects of seeds regulations.

Section 34 The gazette States that ministers shall use the gazette to publish notice of matters. Section 35 General provisions as to offences States that where a punishable offence under this Act was committed the person shall be guilty of an offence and shall be liable to be proceeded against and punished accordingly. Section 36 Supplemental provisions as to regulations Sets out rules for the regulations of this Act. Section 37 Departmental expenses and payments into Exchequer Established what shall be paid out of the moneys provided by the Parliament. Section 38 Interpretation Includes some terms and their interpretation under this Act. Section 39 Extension of Act to Northern Island Establishes that this Act is not extended to the Northern Island. Section 40 Extension of Act to Isle of Man and Channel Islands Established that this Act is extended to Isle of Man and Channel Islands. Section 41 Short title and commencement States that this act shall be named as Plant Varieties and Seeds Act 1964.

Trade Descriptions Act 1968

(Chapter 29, as amended up to the Consumer Protection from Unfair Trading Regulations 2008)

The sad reality of the modern world is that there are bad egg traders looking to rip others off in every industry. While being smart and knowledge is advisable, people still have to be able to trust what a business is offering them.

To keep these bodies in line, there are many laws to protect consumers from being sold a product or service based on dishonest information. We will look at one of these laws, which is the Trade Descriptions Act 1968.

The law took effect on 30/11/ 1968; this law has replaced the previous Merchandise Marks Acts by expanding what that law covers. The Trade Descriptions Act 1968 shows that it a crime for salespeople or businesses to sell a product or service based on false information. The Act forced them to be more honest about their product or service and not intentionally mislead consumers into spending their hard-earned money on false claims.

The law gave the Courts the authority to sentence offending whether individuals or corporation from making false claims. And if they were found breaking the Act, the law gave authorities the power to investigate and confiscate documents or goods related to the service or product. Fines might be charged if they were indicting under the Act.

Despite the fact that the Trade Descriptions Act 1968 is still binding, it has been mostly outdated by the Consumer Protection from Unfair Trading Regulations 2008. The CPRs was created on the Trade Descriptions Act by adding particular wording about false endorsements and other aggressive sales tactics.

What does the 1968 Trade Descriptions Act do?

This law shows that the seller or trader will be doing a crime if he:

Claim a false trade description to any goods/ merchandise. If the trader supplied (or offered to supply) any goods that a false trade description is applied to. If the seller makes specific kinds of false claims about the provision of any services, accommodation or facilities.

What is False Trade Description?

A trade description is an index to any one of a number of matters listed in the Act. Such as

Quantity

Size

Measure

For example:

When/where the goods are made?

Who made the goods?

How were they made?

What are the goods made of?

How do they perform, or how do they fit?

All the questions that the consumers usually have on mind.

Especially if the goods have a statement stating that it has been tested or approved by certain authority.

How can it be an offence?

The sign/mark must be false to a material degree as it is not enough for it just to contain a quite insignificant inaccuracy to call it a crime. Also, It must be applied to the goods whether in writing or by means of an illustration or other marking on the goods, on containers, labels, in advertisements or in an oral statement.

False Statements about Services, Accommodation or Facilities

The law covers statements about the provision or services, accommodation or facilities. Such as their nature, the time they are provided, who/ how they are provided, their evaluation by a person.

As mentioned above, the statement must be false to a material degree to conceder it a crime Whither Spoken or written statements.

But keep in mind that not every statement that turns out to be wrong is covered. As a seller commits an offence only if the statement is false and the seller knows it to be false but don’t care to fix it.

Statements about houses are not covered by the Act unless they relate to for example holiday accommodation.

Enforcement

Local Trading Standards authorities are asked to enforce the provisions of this law, as the law gives them the authority.

The local Trading Standards authority job is to investigate not compensate the consumer.

Definition and Marking Orders

Powers are available under the law by which definitions of the words traders use to describe their services could be laid down. Orders could also be made requiring goods to be marked with information necessary for consumers, or for such information to show in any advertisement.

Legislation Guide on Registered Designs Act 1949

The Registered Designs Act, 1949, is a “General Public Act” passed in the United Kingdom of Great Britain and Northern Ireland, and concerns legislation on, inter alia, issues pertaining to patents, copyright related rights, industrial designs, and the protection of undisclosed information. Complementing this, part IV of the Copyright, Designs and Patents Act 1988 (CDPA 1988), another Act of Parliament that pertains to copyright law, that was given “Royal Assent” (put into effect) on the 15th of November 1988, outlined a certain number of amendments to the Registered Designs Act 1949.

The Registered Designs Act 1949 was granted “Royal Assent”, or was put into effect on the 16th of December 1949, and its sole purpose, as outlined in its preamble, is to serve as “an act to consolidate certain enactments relating to registered designs”. It currently serves as the most important piece of legislation that governs design rights in the United Kingdom (UK).

For background context, at the time the law being legislated upon, the austerity of the Second World War was waning on the UK, which eventually paved the way for the evolution of the consumer driven society. The proliferation of technologies such as, but not limited to, record players, automobiles, and fridges, not only necessitated the correct functioning of the products, but also their stylistic and aesthetic appeal. Soon, manufacturers were altering designs of their products, to appeal to consumers, whilst differentiating themselves from the competition. Thus, the institution of the Registered Designs Act 1949 (RDA 1949) was a step towards complementing this evolution in technology, protecting the manufacturers’ unique designs, and completing what the Patents and Designs Act of 1919 (PDA 1919) had initiated, in terms of separating the aesthetic and design characteristics of products from their utilitarian ones, and appropriately creating a scope of protection for such design elements.

The RDA 1949 entailed the protection of any aspects of designs of products that could be deemed “appealing to and judged solely by the eye”, i.e., industrial designs needed some form of “eye appeal”, in order to gain protection under RDA 1949. Thus, this excluded any features or aspects of products that could only be identified through their function, and not through “eye appeal”.

s. 1 (2), of RDA 1949, which pertains to the “Registration of Designs”, defines a “registrable design” as follows: “ … the shape, configuration, pattern, or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye but does not include a method or principle of construction or features of shape which are dictated solely by the function which the article to be made in that shape or configuration has to perform”.

Prior to the establishment of the RDA 1949, the notion of extending the scope of registrability to designs of a product was jarring given the social perception of the value of design at that time. Also, it is important to note that the value of a product of often ascribed to the identification of the form of the product, and the appropriate material composition of the product that enabled it to carry out its intended function. However, the RDA 1949 was a landmark move towards the establishment of protection of designs.

Under ss. 7 & 8 of the RDA 1949, which pertained to “Rights given by Registration” the registered proprietor was empowered with the exclusive rights to sell, produce, and import articles to which the design was applied, barring that he or she was entitled to do so for a period of fifteen years from the date of registration, i.e., the registered proprietor was given an exclusive copyright on the design that would expire upon fifteen years of completion since its registration.

s. 7 (1) of the RDA 1949 outlines the test for infringement of these designs. At an empirical level, the test essentially regards whether the alleged infringing of another design is “substantially different” from the registered design.

In effect, such a vague definition of the test has led to the Courts struggling to identify where the “eye appeal” of a design stopped, and where the “functionality” began. In the then House of Lords (HL) case of Amp v. Utilix from 1972, which pertained to the registrability of the design of electrical terminals in washing machines which were shaped in such a manner so as to hold electric leads correctly, and do so in a stable manner. The HL thus defined the term “dictated solely by function” to avoid any future misinterpretations of the legislation. The court ruled that the features of a particular product’s design that were present on it for solely functional, i.e., non-aesthetic purposes, would not be registrable under the RDA 1949. The HL later clarified that elements of design for “eye appeal” had to be present on the product for reasons beyond functionality and should entail to attract the customer’s attention. Only under such conditions would the design be classified as “registrable” under RDA 1949. If the element was wholly functional, it would not be registrable, although, if it had at least one design element for “eye appeal” purposes, it was registrable.

In the case of Interlego v. Tyco Industries from 1989 at the Privy Council, the distinction between functionality and eye appeal would be revisited. At the Privy Council, Lord Oliver would rule that “a designer who sets out to make a model brick is going to end up producing a design, in essence, that would inevitably be brick shaped”, thus drawing a fine line between eye appeal and functionality. Lord Oliver’s ruling would ultimately establish a doctrine that elements of a product’s design certainly had elements of eye appeal as was intended by the designer of the product.

Other sections of the RDA 1949 detail matters such as international arrangements (ss. 13-15), legal proceedings in the event of disputes against the design(s) (ss. 24(A)-28), powers and duties of the registrar of design(s) (ss.29-32), offences under the RDA (ss.33-35(A)), and the application of the RDA 1949 in the devolved jurisdictions of the UK such as Scotland, Northern Ireland, the Isle of Man (i.e., all jurisdictions outside England & Wales) (ss. 45-47).

Brexit and UK Patent Applications

It is now clear that there will be no change in terms of application process or procedures for UK and European Patents. The United Kingdom will continue to be a contracting state to European Patent Convention whcich established the European Patents Office. In other words, Brexit will have no effect on pending or new patent applications in the EPO. The same applies to trademarks and design application(s) pending before the EPO.