Intellectual Property Bill [HL]

MARSHALLED
LIST OF Amendments
to be moved
in GRAND committee

[Amendments marked * are new or have been altered]

Clause 1

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

1*

Page 1, line 5, leave out subsection (1) to (4) and insert—

“(1)   In section 213(1) of the Copyright, Designs and Patents Act 1988
(unregistered design right: nature of design right), for “an original design”
substitute “a design which is new and has individual character”.

(2)   In section 213(2) of that Act for “the design of any aspect of the shape or
configuration (whether internal or external) of the whole or part of an
article” substitute “the appearance of the whole or a part of a product
resulting from the features of, in particular, the lines, contours, colours,
shape, texture and/or materials of the product itself or its ornamentation,
or both”.

(3)   In section 213(3) of that Act, for paragraphs (a) to (c) substitute—

“(a)   features of appearance of a product which are solely dictated by its
technical function;

(b)   features of appearance of a product which must necessarily be
reproduced in their exact form and dimensions in order to permit
the product in which the design is incorporated or to which it is
applied to be mechanically connected to or placed in, around or
against another product so that either product may perform its
function;

(c)   a design which is contrary to public policy or to accepted principles
of morality.”

(4)   For section 213(4) substitute—

“(4)   In determining whether a design is new and has individual
character, the definitions contained in Articles 3, 4(2), 5(1)(a), 5(2), 6
and 7 of the Community Design Regulation, Regulation 6/2002 of
12 December 2001 (as amended), shall be applied.”

(5)   In section 51(3) of that Act (design documents and models), for the
definition of “design” substitute—

““design” has the meaning conferred on it by section 213(2);”.”

2*

Page 1, line 12, leave out paragraph (b) and insert—

“(b)   at the end insert—

“( )   In this section “qualifying country” means—

(a)   the United Kingdom; and

(b)   another member state of the European Economic
Area.””

Clause 2

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

3*

Page 2, line 31, at end insert “, or within a period of six months following
commencement”

4*

Page 2, line 31, at end insert—

“( )   For section 259 of the Copyright, Designs and Patents Act 1988 (joint
designs) substitute—

“Joint designs

(1)   Where two or more persons have jointly developed a design, design right
shall vest in them jointly.

(2)   Where two or more persons are proprietors of unregistered design right or
community unregistered design right, then, subject to the provisions of this
section and subject to any agreement to the contrary—

(a)   each of them shall be entitled, by himself or his agents, to do in
respect of the design concerned, for his own benefit and without the
consent of or the need to account to the other or others, any act
which would apart from this subsection, amount to an
infringement of the design right concerned; and

(b)   any such act shall not amount to an infringement of the design right
or unregistered community design right concerned.

(3)   Subject to any agreement for the time being in force, where two or more
persons are proprietors of design right or unregistered community design
right one of them shall not without the consent of the other or others grant
a licence under the design right or assign or mortgage a share in the design
right or in Scotland cause or permit security to be granted over it.

(4)   Where an article is disposed of by any of two or more proprietors of
unregistered design right to any person, that person and any other person
claiming through him shall be entitled to deal with the article in the same
way as if it had been disposed of by a sole proprietor.””

Clause 3

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

5*

Page 2, leave out lines 42 to 44 and insert—

“(b)   a person who has in any qualifying country a real
and effective industrial or commercial
establishment”

Clause 5

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

6*

Page 4, line 7, at end insert—

“( )   In subsection (1), after paragraph (a) insert—

“(aa)   in pursuance of an assignment or licence made or granted
by a person who is the proprietor of unregistered design
right or unregistered Community design right in a
corresponding unregistered design or unregistered
Community Design.””

After Clause 5

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

7*

Insert the following new Clause—

“Infringement

In section 226 of the Copyright, Designs and Patents Act 1988 (primary
infringements of design right), for subsections (1) to (4) substitute—

“(1)   The owner of design right in a design has the exclusive right to
reproduce the design and use reproductions of the design, in
particular, the making, offering, putting on the market, importing,
exporting or using of a product in which the design is incorporated
or to which it is applied, or stocking such a product for those
purposes.

(2)   For these purposes, reproducing the design means copying the
design in a way which does not produce on the informed user a
different overall impression.

(3)   In assessing the scope of protection, the degree of freedom of the
designer in developing his design shall be taken into
consideration.””

Clause 6

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

8*

Page 4, line 30, at end insert—

“(3)   Where a registered design or community registered design is granted to
two or more persons, each of them shall, subject to any agreement to the
contrary, be entitled to an equal undivided share in the design.

(4)   Where two or more persons are proprietors of a registered design, then,
subject to the provisions of this section and subject to any agreement to the
contrary—

(a)   each of them shall be entitled, by himself or his agents, to do in
respect of the design concerned, for his own benefit and without the
consent of or the need to account to the other or others, any act
which would apart from this subsection, amount to an
infringement of the patent concerned; and

(b)   any such act shall not amount to an infringement of the registered
design concerned.

(5)   Subject to any agreement for the time being in force, where two or more
persons are proprietors of a registered design one of them shall not without
the consent of the other or others grant a licence under the registered
design or assign or mortgage a share in the registered design or in Scotland
cause or permit security to be granted over it.

(6)   Where a product falling within the scope of a registered design is disposed
of by any of two or more proprietors of that design to any person, that
person and any other person claiming through him shall be entitled to deal
with the product in the same way as if it had been disposed of by a sole
registered proprietor.

(7)   Nothing in subsection (3) or (4) above shall affect the mutual rights or
obligations of trustees or of the personal representatives of a deceased
person, or their rights or obligations as such.”

9*

Page 4, line 30, at end insert—

“( )   This section does not apply to—

(a)   any design created before the commencement of this section,

(b)   any design created after the commencement of this section in
pursuance of a commission (irrespective of whether the design was
commissioned before or after that commencement) provided that—

(i)   the designer and the commissioner of the design have
entered into a contract relating to the commission of the
design;

(ii)   the contract was entered into before that commencement or
within a period of six months following commencement.””

Clause 8

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

10*

Page 5, line 35, leave out subsection (3)

LORD CLEMENT-JONES

11*

Page 5, line 41, at end insert—

“( )   The first order under this section must be made by statutory
instrument.

( )   A statutory instrument containing 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 Parliament.”

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

12*

Page 5, line 42, leave out subsection (2) and insert—

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

13*

Page 6, line 2, at end insert—

“( )   The Secretary of State will, within six months of the Act coming into force,
report to both Houses of Parliament on plans to publicise changes to the
law introduced under this provision and help educate holders of design
rights.”

Clause 9

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

14*

Page 6, leave out lines 20 to 25

15*

Page 6, line 27, at end insert—

“( )   The registrar may give directions specifying that Design Form DF12A shall
include a statement indicating whether or not any associated unregistered
design right has been assigned to the same assignee.”

Clause 10

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

16*

Page 7, line 15, at end insert “or the Patents County Court”

Clause 11

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

17*

Page 9, leave out lines 30 to 33

LORD CLEMENT-JONES

18*

Page 9, line 38, at end insert—

“(1)   Regulations made under this section must be made by statutory
instrument.

(2)   A statutory instrument containing the first regulations under this
section may not be made unless a draft of the regulations has been
laid before, and approved by resolution of, each House of
Parliament.

(3)   A statutory instrument containing other regulations under this
section is subject to annulment in pursuance of a resolution of either
House of Parliament.”

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

19*

Page 10, line 11, leave out subsection (3) and insert—

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

20*

Page 10, line 17, at end insert—

“( )   A court shall take into account when awarding costs and damages whether
either party, claimant or defendant in a dispute, has chosen to ignore the
opinion given by the registrar.”

Clause 12

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

21*

Page 11, line 11, at end insert—

“( )   The registrar will ensure that, where possible, the use of online tools and
digital platforms is encouraged.”

22*

Page 11, line 11, at end insert—

“( )   The registrar may give directions specifying that in Design Form DF2C the
words “within one year” will be replaced with the words “within 30
months”.”

Clause 13

LORD CLEMENT-JONES

23*

Page 15, line 4, at end insert—

“35ZE           Offences committed by partnerships and body corporate

(1)   Proceedings for an offence under this Act alleged to have been
committed by a partnership shall be brought against the
partnership in the name of the firm and not in that of the partners;
but without prejudice to any liability of the partners under
subsection (4).

(2)   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 or Northern Ireland, Schedule 3 to the
Magistrates’ Court Act 1980 or Schedule 4 to the
Magistrates’ Courts (Northern Ireland) Order 1981
(procedure on charge of offence).

(3)   A fine imposed on a partnership on its conviction in such
proceedings shall be paid out of the partnership assets.

(4)   Where a 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 proceeded against and
punished accordingly.

(5)   Where an offence under this Act committed by a body corporate is
proved to have been committed with the consent, connivance or
neglect of a director, manager, secretary or other similar office of
the body, or a person purporting to act in any such capacity, he as
well as the body corporate is guilty of the offence and liable to be
proceeded against and punished accordingly.”

After Clause 13

LORD CLEMENT-JONES

24*

Insert the following new Clause—

“Offence of unauthorised copying etc of a design protected by design right

(1)   The Copyright, Designs and Patents Act 1988 is amended as follows.

(2)   After section 235 insert—

“235A           Offence of unauthorised copying etc of a design protected by
design right

(1)   A person commits an offence if—

(a)   in the course of a business, the person copies any design
protected by design right so as to make a product exactly or
substantially to that design, and

(b)   the person does so—

(i)   knowing or having reason to believe, that the design
is protected by design right, and

(ii)   without the consent of the owner of that design
right.

(2)   Subsection (3) applies in relation to a product where a design
protected by design right has been copied so as to make the product
exactly or substantially to the design.

(3)   A person commits an offence if—

(a)   in the course of a business, the person offers, puts on the
market, imports, 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 owner of the
design right in that design, and

(c)   the person does so knowing or having reason to believe, that
a design has been copied without the consent of the owner
of the design right in the design.

(4)   In this section “design right” includes an unregistered community
design and a reference to the owner of the design right is also to be
read as a reference to the owner of a community design right in a
design.

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

(a)   on conviction on indictment, to imprisonment for a term not
exceeding ten years or 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 not exceeding 12 months or to a fine not exceeding the
statutory maximum or to both.”

(3)   In section 235B (enforcement) substitute all references to “35ZA” for
“235A”.

(4)   In section 235C (forfeiture in England and Wales and Northern Ireland)
substitute all references to “35ZA” for “235A”.

(5)   In section 23ZC, in subsections (2) and (3), substitute all references to
“registered design” for “design right subsisting in a design”.

(6)   In section 235D (forfeiture in Scotland), substitute all references to “35ZA”
for “235A”.

(7)   In section 235D substitute all references to “35ZC” for “235C”.

(8)   For section 235E (offences committed by partnerships and body corporate)
substitute—

“235E           Section 235E: offences committed by partnerships and body
corporate

(1)   Proceedings for an offence under this Act alleged to have been
committed by a partnership shall be brought against the
partnership in the name of the firm and not in that of the partners;
but without prejudice to any liability of the partners under
subsection (4) below.

(2)   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 or Northern Ireland, Schedule 3 to the
Magistrates’ Court Act 1980 or Schedule 4 to the
Magistrates’ Courts (Northern Ireland) Order 1981
(procedure on charge of offence);

(c)   a fine imposed on a partnership on its conviction in such
proceedings shall be paid out of the partnership assets;

(d)   where a 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 proceeded against and punished accordingly;

(e)   where an offence under this Act committed by a body
corporate is proved to have been committed with the
consent, connivance or neglect of a director, manager,
secretary or other similar officer of the body, or a person
purporting to act in any such capacity, he as well as the
body corporate is guilty of the offence and liable to be
proceeded against and punished accordingly.””

Clause 14

LORD CLEMENT-JONES

25*

Page 15, leave out lines 15 and 16 and insert—

“(b)   which directly displays clearly the product and its complete
trade designation and associates the product with the
number of the patent or patents which relate to it”

Clause 20

LORD JENKIN OF RODING

LORD CLEMENT-JONES

26*

Page 18, line 2, after “growth” insert “arising from the creation and exploitation of
intellectual property”

27*

Page 18, line 10, at end insert—

“( )   The Secretary of State must make a statement to Parliament detailing the
findings of the report referred to in subsection (1) and what actions he
intends to take as a result of any recommendations of the report.”

28*

Page 18, line 10, at end insert—

“( )   In producing the report in subsection (1), the Secretary of State shall
consider any responses collected by the Patent Office in response to
consultations or investigations carried out for the purpose of the
production of this report, including its assessment of the role of the
effective operation and protection of IP rights licensing in promoting
economic growth.”

After Clause 21

LORD CLEMENT-JONES

29*

Insert the following new Clause—

“Remote e-lending

(1)   Section 5(2) of the Public Lending Right Act 1979 (interpretation) is
amended as follows.

(2)   At the end of the definition of “lent out” omit “but (b) does not include
being communicated by means of electronic transmission to a place other
than library premises”.”

30*

Insert the following new Clause—

“Copyright in broadcast

Omit section 73 of the Copyright, Designs and Patents Act 1988 (reception
and re-transmission of wireless broadcast by cable).”

31*

Insert the following new Clause—

“Criminal liability

(1)   The Copyright, Designs and Patents Act 1988 is amended as follows.

(2)   In section 107(4A)(b) (Criminal liability for making or dealing with
infringing articles, etc) delete “two” and insert “ten”.

(3)   In section 198(5A)(b) (Criminal liability for making, dealing with or using
illicit recordings) delete “two” and insert “ten”.

Prepared 8th June 2013