Intellectual Property Bill (HC Bill 166)

(6) An opinion given by the registrar under the regulations is not to be
treated as a decision of the registrar for the purposes of section 27A.

(7) But the regulations must provide for an appeal relating to an opinion
given under the regulations to be made to a person appointed under
5section 27A; and the regulations may make further provision in relation
to such appeals.

(8) The regulations may confer discretion on the registrar.

(9) Regulations under this section—

(a) may make different provision for different purposes;

(b) 10may include consequential, incidental, supplementary,
transitional, transitory or saving provision.

(10) In this section, “specified” means specified in regulations under this
section.”

(2) In Chapter 4 of Part 3 of the Copyright, Designs and Patents Act 1988
15(jurisdiction of the comptroller etc.), after section 249 insert—

“249A Opinions service

The descriptions of designs which may be specified in regulations
under subsection (1)(b) of section 28A of the Registered Designs Act
1949 (requests to the comptroller for opinions on designs) include, in
20particular—

(a) designs in which design right subsists in accordance with this
Part, and

(b) designs in relation to which there is a question whether design
right so subsists.”

(3) 25In section 37 of the Registered Designs Act 1949 (the title to which becomes
“Provisions as to rules, regulations and orders”)—

(a) in subsection (3), after “an order under section 15ZA” (inserted by
section 8(2)(a)), insert “and the power to make regulations under
section 28A”, and

(b) 30in subsection (4), after “under this Act” insert “or regulations under
section 28A”, and

(c) after subsection (4) insert—

“(4A) Subsection (4) does not apply to the first regulations to be made
under section 28A, but the Secretary of State may not make
35those regulations unless a draft of the statutory instrument
containing them has been laid before, and approved by a
resolution of, each House of Parliament.”

12 Use of directions by the registrar

(1) After section 31 of the Registered Designs Act 1949 insert—

“31A 40Power to require use of forms

(1) The registrar may require the use of such forms as the registrar may
direct for—

(a) an application for the registration of a design;

(b) representations or specimens of designs or other documents
which may be filed at the Patent Office.

(2) The forms, and any directions by the registrar about their use, are to be
published in the prescribed manner.”

(2) 5In section 3(1) of that Act (application for registration), omit “shall be made in
the prescribed form and”.

(3) In section 36(1A) of that Act (matters which may be covered in rules), for
paragraph (a) substitute—

“(a) requiring the furnishing of copies of such representations or
10specimens of designs or other documents as may be filed at the
Patent Office;”.

(4) In section 39(1) of that Act (hours of business and excluded days)—

(a) for “Rules made by the Secretary of State under this Act may specify”
substitute “The registrar may give directions specifying”, and

(b) 15for “and may specify” substitute “and specifying”.

(5) Despite the repeal made by subsection (2), any rules made in reliance on
section 3(1) of that Act which are in force immediately before the
commencement of that repeal continue in force until such time as directions
about forms of the kind which had been prescribed by the rules take effect.

(6) 20Despite the amendment made by subsection (3), any rules made in reliance on
section 36(1A)(a) of that Act which are in force immediately before the
commencement of that amendment continue in force until such time as
directions about forms of the kind which had been prescribed by the rules take
effect.

(7) 25In subsections (5) and (6), “directions” means directions given under section
31A of that Act (as inserted by subsection (1)).

(8) Despite the amendment made by subsection (4), any rules made in reliance on
section 39(1) of that Act which are in force immediately before the
commencement of that amendment continue in force until such time as
30directions about the matter specified by the rules take effect.

(9) In subsection (8), “directions” means directions given under section 39(1) of
that Act (as amended by subsection (4)).

13 Offence of unauthorised copying etc. of design in course of business

After section 35 of the Registered Designs Act 1949 insert—

“35ZA 35Offence of unauthorised copying etc. of design in course of business

(1) A person commits an offence if—

(a) in the course of a business, the person intentionally copies a
registered design so as to make a product—

(i) exactly to that design, or

(ii) 40with features that differ only in immaterial details from
that design, and

(b) the person does so—

(i) knowing, or having reason to believe, that the design is
a registered design, and

(ii) without the consent of the registered proprietor of the
design.

(2) Subsection (3) applies in relation to a product where a registered design
has been intentionally copied so as to make the product—

(a) 5exactly to the design, or

(b) with features that differ only in immaterial details from the
design.

(3) A person commits an offence if—

(a) in the course of a business, the person offers, puts on the market,
10imports, exports or uses the product, or stocks it for one or more
of those purposes,

(b) the person does so without the consent of the registered
proprietor of the design, and

(c) the person does so knowing, or having reason to believe, that—

(i) 15a design has been intentionally copied without the
consent of the registered proprietor so as to make the
product exactly to the design or with features that differ
only in immaterial details from the design, and

(ii) the design is a registered design.

(4) 20It is a defence for a person charged with an offence under this section
to show that the person reasonably believed that the registration of the
design was invalid.

(5) It is also a defence for a person charged with an offence under this
section to show that the person—

(a) 25did not infringe the right in the design, or

(b) reasonably believed that the person did not do so.

(6) The reference in subsection (3) to using a product in the course of a
business does not include a reference to using it for a purpose which is
merely incidental to the carrying on of the business.

(7) 30In this section “registered design” includes a registered Community
design; and a reference to the registered proprietor is, in the case of a
registered Community design, to be read as a reference to the holder.

(8) A person guilty of an offence under this section is liable—

(a) on conviction on indictment, to imprisonment for a term not
35exceeding ten years or to a fine or to both;

(b) on summary conviction in England and Wales or Northern
Ireland, to imprisonment for a term not exceeding six months or
to a fine not exceeding the statutory maximum or to both;

(c) on summary conviction in Scotland, to imprisonment for a term
40not exceeding 12 months or to a fine not exceeding the statutory
maximum or to both.

35ZB Section 35ZA: enforcement

(1) The following provisions of the Trade Descriptions Act 1968 (which
provide for the enforcement of that Act by local weights and measures
45authorities or the relevant Northern Ireland Department) apply as if
section 35ZA were a provision of that Act—

(a) section 27 (power to make test purchases);

(b) section 28 (power to enter premises and inspect and seize goods
and documents);

(c) section 29 (obstruction of authorised officers);

(d) section 33 (compensation for loss etc of seized goods).

(2) 5Any enactment which authorises the disclosure of information for the
purpose of facilitating the enforcement of the Trade Descriptions Act
1968 applies—

(a) as if section 35ZA were a provision of that Act, and

(b) as if the functions of any person in relation to the enforcement
10of that section were functions under that Act.

(3) Nothing in this section is to be construed as authorising a local weights
and measures authority to bring proceedings in Scotland.

35ZC Section 35ZA: forfeiture in England and Wales or Northern Ireland

(1) In England and Wales or Northern Ireland, a person who, in connection
15with the investigation or prosecution of an offence under section 35ZA,
has come into the possession of relevant products or articles may apply
under this section for an order for the forfeiture of the products or
articles.

(2) “Relevant product” means a product which is made exactly to a
20registered design, or with features that differ only in immaterial details
from a registered design, by copying that design intentionally.

(3) “Relevant article” means an article which is specifically designed or
adapted for making copies of a registered design intentionally.

(4) An application under this section may be made—

(a) 25where proceedings have been brought in any court for an
offence under section 35ZA relating to some or all of the
products or articles, to that court;

(b) where no application for the forfeiture of the products or
articles has been made under paragraph (a), by way of
30complaint to a magistrates’ court.

(5) On an application under this section, the court may make an order for
the forfeiture of products or articles only if it is satisfied that an offence
under section 35ZA has been committed in relation to the products or
articles.

(6) 35A court may infer for the purposes of this section that such an offence
has been committed in relation to any products or articles if it is
satisfied that such an offence has been committed in relation to
products or articles which are representations of them (whether by
reason of being of the same design or part of the same consignment or
40batch or otherwise).

(7) Any person aggrieved by an order made under this section by a
magistrates’ court, or by a decision of such a court not to make such an
order, may appeal against that order or decision—

(a) in England and Wales, to the Crown Court;

(b) 45in Northern Ireland, to the county court.

(8) An order so made may contain such provision as appears to the court
to be appropriate for delaying the coming into force of the order
pending the making and determination of any appeal (including any
application under section 111 of the Magistrates’ Courts Act 1980 or
5Article 146 of the Magistrates’ Courts (Northern Ireland) Order 1981).

(9) Subject to subsection (10), any products or articles forfeited under this
section are to be destroyed in accordance with such directions as the
court may give.

(10) On making an order under this section, the court may, if it considers it
10appropriate to do so, direct that the products or articles to which the
order relates shall (instead of being destroyed) be released to such
person and on such conditions as the court may specify.

35ZD Section 35ZA: forfeiture in Scotland

(1) In Scotland, the court may make an order for the forfeiture of any
15relevant products or articles (as defined by section 35ZC).

(2) An order under this section may be made—

(a) on an application by the procurator fiscal made in the manner
specified in section 134 of the Criminal Procedure (Scotland)
Act 1995, or

(b) 20where a person is convicted of an offence under section 35ZA,
in addition to any other penalty which the court may impose.

(3) On an application under subsection (2)(a), the court may make an order
for the forfeiture of relevant products or articles only if it is satisfied
that an offence under section 35ZA has been committed in relation to
25the relevant products or articles.

(4) The court may infer for the purposes of this section that such an offence
has been committed in relation to any relevant products or articles
which are representative of them (whether by reason of being of the
same design or part of the same consignment or batch or otherwise).

(5) 30The procurator fiscal making the application under subsection (2)(a)
must serve on any person appearing to the procurator fiscal to be the
owner of, or otherwise have an interest in, the products or articles to
which an application under this section relates is entitled to appear at
the hearing of the application to show cause why the products or
35articles should not be forfeited.

(6) Service under subsection (5) must be carried out, and such service may
be proved, in the manner specified for citation of an accused in
summary proceedings under the Criminal Procedure (Scotland) Act
1995.

(7) 40Any person upon whom notice is served under subsection (5) and any
other person claiming to be the owner of, or otherwise have an interest
in, products or articles to which an application under this section
relates is entitled to appear at the hearing of the application to show
cause why the products or articles should not be forfeited.

(8) 45The court must not make an order following an application under
subsection (2)(a)—

(a) if any person on whom notice is served under subsection (5)
does not appear, unless service of the notice on that person is
proved, or

(b) if no notice under subsection (5) has been served, unless the
5court is satisfied that in the circumstances it was reasonable not
to serve such notice.

(9) Where an order for the forfeiture of any products or articles is made
following an application under subsection (2)(a), any person who
appeared, or was entitled to appear, to show cause why goods, material
10or articles should not be forfeited may, within 21 days of making the
order, appeal to the High Court of Justiciary by bill of suspension.

(10) Section 182(5)(a) to (e) of the Criminal Procedure (Scotland) Act 1995
applies to an appeal under subsection (9) as it applies to a stated case
under Part 2 of that Act.

(11) 15An order following an application under subsection (2)(a) does not take
effect—

(a) until the end of the period of 21 days beginning with the day
after the day on which the order is made, or

(b) if an appeal is made under subsection (9) within that period,
20until the appeal is dismissed or abandoned.

(12) An order under subsection (2)(b) does not take effect—

(a) until the end of the period within which an appeal against the
order could be brought under the Criminal Procedure
(Scotland) Act 1995, or

(b) 25if an appeal is made within that period, until the appeal is
determined or abandoned.

(13) Subject to subsection (14), products or articles forfeited under this
section must be destroyed in accordance with such directions as the
court may give.

(14) 30On making an order under this section, the court may, if it considers it
appropriate to do so, direct that the products or articles to which the
order relates shall (instead of being destroyed) be released, to such
person and on such conditions as the court may specify.

(15) In this section, “the court” means—

(a) 35in relation to an order made on an application under subsection
(2)(a), the sheriff;

(b) in relation to an order made under subsection (2)(b), the court
which imposed the penalty.”

14 Offences committed by partnerships

40At the end of section 35A of the Registered Designs Act 1949 (the title to which
becomes “Offence by body corporate or partnership: liability of officers or
partners”) insert—

“(3) Proceedings for an offence under this Act alleged to have been
committed by a partnership are to be brought against the partnership
45in the name of the firm and not in that of the partners; but without
prejudice to any liability of the partners under subsection (6) or (7).

(4) The following provisions apply for the purposes of such proceedings as
in relation to a body corporate—

(a) any rules of court relating to the service of documents;

(b) in England and Wales, Schedule 3 to the Magistrates’ Courts
5Act 1980;

(c) in Northern Ireland, Schedule 4 to the Magistrates’ Courts
(Northern Ireland) Order 1981.

(5) A fine imposed on a partnership (other than a Scottish partnership) on
its conviction in such proceedings must be paid out of the partnership
10assets.

(6) Where a partnership (other than a Scottish partnership) is guilty of an
offence under this Act, every partner, other than a partner who is
proved to have been ignorant of or to have attempted to prevent the
commission of the offence, is also guilty of the offence and liable to be
15proceeded against and punished accordingly.

(7) Where an offence under this Act committed by a Scottish partnership is
proved to have been committed with the consent or connivance of a
partner in the partnership, or a person purporting to act in that
capacity, he as well as the partnership is guilty of the offence and liable
20to be proceeded against and punished accordingly.”

Part 2 Patents

15 Infringement: marking product with internet link

(1) In section 62 of the Patents Act 1977 (restrictions on recovery of damages for
25infringement), in subsection (1), after “the number of the patent” insert “or a
relevant internet link”.

(2) After that subsection insert—

“(1A) The reference in subsection (1) to a relevant internet link is a reference
to an address of a posting on the internet—

(a) 30which is accessible to the public free of charge, and

(b) which clearly associates the product with the number of the
patent.”

16 Opinions service

(1) In section 74A of the Patents Act 1977 (the title to which becomes “Opinions on
35matters prescribed in the rules”), in subsection (1), for the words from “an
opinion” to the end substitute “an opinion on a prescribed matter in relation to
the patent”.

(2) In section 74B of that Act (reviews of opinions under section 74A), omit
subsection (2)(c) (power to make rules providing for review proceedings to be
40treated as other proceedings under the Act).

(3) In Schedule 4A to that Act (application of Act to supplementary protection
certificates), in paragraph 1(2), at the appropriate place insert—

• “sections 74A and 74B (opinions by the Patent Office);”.

(4) In section 73 of that Act (comptroller’s power to revoke patents), after
subsection (1) insert—

“(1A) Where the comptroller issues an opinion under section 74A that section
1(1)(a) or (b) is not satisfied in relation to an invention for which there
5is a patent, the comptroller may revoke the patent.

(1B) The power under subsection (1A) may not be exercised before—

(a) the end of the period in which the proprietor of the patent may
apply under the rules (by virtue of section 74B) for a review of
the opinion, or

(b) 10if the proprietor applies for a review, the decision on the review
is made (or, if there is an appeal against that decision, the appeal
is determined).

(1C) The comptroller shall not exercise the power under subsection (1A)
without giving the proprietor of the patent an opportunity to make any
15observations and to amend the specification of the patent without
contravening section 76.”

17 Unified Patent Court

Before section 89 of the Patents Act 1977 (and before the preceding cross-
heading) insert—

20“Unified Patent Court

88A Implementation of Agreement on a Unified Patent Court

(1) The Secretary of State may by order make provision for giving effect in
the United Kingdom to the provisions of the Agreement on a Unified
Patent Court made in Brussels on 19 February 2013.

(2) 25An order under this section may, in particular, make provision—

(a) to confer jurisdiction on a court, remove jurisdiction from a
court or vary the jurisdiction of a court;

(b) to require the payment of fees.

(3) An order under this section may also make provision for varying the
30application of specified provisions of this Act so that they correspond
to provision made by the Agreement.

(4) An order under this section may—

(a) make provision which applies generally or in relation only to
specified cases;

(b) 35make different provision for different cases.

(5) An order under this section may amend this Act or any other
enactment.

(6) An order under this section may not be made unless a draft of the order
has been laid before, and approved by resolution of, each House of
40Parliament.

(7) The meaning of “court” in this section is not limited by the definition of
that expression in section 130(1).

88B Designation as international organisation of which UK is member

The Unified Patent Court is to be treated for the purposes of section 1
of the International Organisations Act 1968 (organisations of which the
United Kingdom is a member) as an organisation to which that section
5applies.”

18 Sharing information with overseas patent offices

(1) In section 118 of the Patents Act 1977 (information on patent applications etc.),
in subsection (3), after paragraph (a) (but before the following “or”) insert—

“(aa) sending any patent office outside the United Kingdom such
10information about unpublished applications for patents as that
office requests;”.

(2) After that subsection insert—

“(3A) Information may not be sent to a patent office in reliance on subsection
(3)(aa) otherwise than in accordance with the working arrangements
15that the comptroller has made for that purpose with that office.

(3B) Those arrangements must include provision for ensuring that the
confidentiality of information of the kind referred to in subsection
(3)(aa) sent by the comptroller to the patent office in question is
protected.”

(3) 20After subsection (3B) insert—

“(3C) The reference in subsection (3)(aa) to a patent office is to an
organisation which carries out, in relation to patents, functions of the
kind carried out at the Patent Office.”

19 Minor amendments to the Patents Act 1977

25The Schedule (which makes minor amendments to the Patents Act 1977) has
effect.

Part 3 Miscellaneous

20 Freedom of information: exemption for research

30After section 22 of the Freedom of Information Act 2000, insert—

“22A Research

(1) Information obtained in the course of, or derived from, a programme of
research is exempt information if—

(a) the programme is continuing with a view to the publication, by
35a public authority or any other person, of a report of the
research (whether or not including a statement of that
information), and

(b) disclosure of the information under this Act before the date of
publication would, or would be likely to, prejudice—

(i) 40the programme,

(ii) the interests of any individual participating in the
programme,

(iii) the interests of the authority which holds the
information, or

(iv) 5the interests of the authority mentioned in paragraph (a)
(if it is a different authority from that which holds the
information).

(2) The duty to confirm or deny does not arise in relation to information
which is (or if it were held by the public authority would be) exempt
10information by virtue of subsection (1) if, or to the extent that,
compliance with section 1(1)(a) would, or would be likely to, prejudice
any of the matters mentioned in subsection (1)(b).”

21 Reporting duty

(1) The Secretary of State must, before the end of the period of 6 months beginning
15with the end of each financial year, lay before Parliament a report setting out—

(a) the Secretary of State’s opinion of the extent to which during that
year—

(i) the activities of the Patent Office have contributed to the
promotion of innovation and of economic growth in the United
20Kingdom, and

(ii) legislation relating to intellectual property has been effective in
facilitating innovation and economic growth in the United
Kingdom, and

(b) how the promotion of innovation and of economic growth in the
25United Kingdom was taken into account in the case of any legislation
relating to intellectual property that was passed or made during that
year.

(2) The reference to the activities of the Patent Office is a reference to—

(a) the activities of the comptroller-general of patents, designs and trade
30marks, and

(b) the activities of the officers and clerks of the Patent Office.

(3) The references to legislation relating to intellectual property do not include a
reference to legislation relating to plant breeders’ rights or rights under section
7 of the Plant Varieties Act 1997.

(4) 35“Financial year” means a period of 12 months ending with 31 March.

(5) “Legislation” includes—

(a) subordinate legislation within the meaning of the Interpretation Act
1978, and

(b) legislation of the European Union.

22 40Recognition of foreign copyright works and performances

(1) In section 154 of the Copyright, Designs and Patents Act 1988 (qualification by
reference to author), in subsection (1)—

(a) in paragraph (a), after “a British citizen,” insert “a national of another
EEA state,”,