Intellectual Property Bill (HL Bill 5)

Part 1 Design

Unregistered design right

1 Meaning of “design” and “original”

(1) 5In section 213(2) of the Copyright, Designs and Patents Act 1988 (unregistered
design right: meaning of “design”), in subsection (2), omit “any aspect of”.

(2) In section 51 of that Act (copyright infringement: exception for certain designs),
in subsection (3), in the definition of “design”, omit “any aspect of”.

(3) In section 213(4) of that Act (unregistered design right: meaning of
10“original”)—

(a) after “commonplace” insert “in a qualifying country”, and

(b) at the end insert “; and “qualifying country” has the meaning given in
section 217(3)”.

(4) Subsection (3) applies only to designs created after the commencement of that
15subsection.

2 Ownership of design

(1) In section 215 of the Copyright, Design and Patents Act 1988 (ownership of
unregistered design right)—

(a) in subsection (1), omit “in pursuance of a commission or”,

(b) 20omit subsection (2), and

(c) in subsection (3), omit “, in a case not falling within subsection (2)”.

(2) In consequence of subsection (1)—

(a) in section 213(5)(a) of that Act (person by reference to whom design
qualifies for design right), for “the design was commissioned or the
designer employed” substitute “the designer was employed”,

(b) 5in section 218 of that Act (design qualifies for design right by reference
to designer), in subsection (1), omit “in pursuance of a commission or”,

(c) in section 219 of that Act (the title to which becomes “Qualification by
reference to employer”), in subsection (1), for “in pursuance of a
commission from, or in the course of employment with,” substitute “in
10the course of employment with”,

(d) in subsection (2) of that section, omit “a joint commission or” and
“commissioners or”,

(e) in subsection (3) of that section, omit “jointly commissioned or”,
“commissioners or” and “commissioner or”,

(f) 15in that subsection, for “215(2) or (3)” substitute “215(3)”,

(g) in section 220 of that Act (qualification by reference to first marketing),
in subsection (1), omit “, commissioner”,

(h) in subsection (4)(a) of that section, omit “, commissioner of the design”,

(i) in section 263 of that Act (definitions), in subsection (1), in the definition
20of “British design”, omit “the design is commissioned or”,

(j) in that subsection, omit the definition of “commission”, and

(k) in section 264 of that Act (index of defined expressions), omit the entry
for “commission”.

(3) This section does not apply to—

(a) 25any design created before the commencement of this section, or

(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
30into a contract relating to the commission of the design, and

(ii) the contract was entered into before that commencement.

3 Qualification criteria

(1) In section 213 of the Copyright, Designs and Patents Act 1988 (design right), in
subsection (5), in paragraph (b), omit “person by whom and”.

(2) 35In section 217 of that Act (qualifying individuals and qualifying persons), in
subsection (1)—

(a) omit the definition of “qualifying individual”, and

(b) for the definition of “qualifying person” substitute—

• ““qualifying person” means—

  (a)

  40an individual habitually resident in a qualifying
  country, or

  (b)

  a person who has in any qualifying country a
  place of business at which substantial business
  activity is carried on.”

(3) 45In that section, omit subsection (4).

(4) In section 218 of that Act (qualification by reference to designer)—

(a) in subsection (2), omit “a qualifying individual or, in the case of a
computer-generated design,”,

(b) in subsection (3), omit “a qualifying individual or, as the case may be,”,
and

(c) 5in subsection (4), omit “qualifying individuals or”.

(5) In section 220 of that Act (qualification by reference to first marketing)—

(a) in subsection (1), omit paragraph (a) (and the following “and”), and

(b)
omit subsections (2) to (4).

(6) In section 264 of that Act (index of defined expressions), in the Table, omit the
10entry for “qualifying individual”.

(7) This section applies only to designs created after the commencement of this
section.

4 Infringement: exceptions

After section 244 of the Copyright, Designs and Patents Act 1988 (but before
15the following cross-heading) insert—

“Miscellaneous

244A Exception for private acts, experiments and teaching

Design right is not infringed by—

(a) an act which is done privately and for purposes which are not
20commercial;

(b) an act which is done for experimental purposes; or

(c) an act of reproduction for teaching purposes or for the purpose
of making citations provided that—

(i) the act of reproduction is compatible with fair trade
25practice and does not unduly prejudice the normal
exploitation of the design, and

(ii) mention is made of the source.

244B Exception for overseas ships and aircraft

Design right is not infringed by—

(a) 30the use of equipment on ships or aircraft which are registered in
another country but which are temporarily in the United
Kingdom;

(b) the importation into the United Kingdom of spare parts or
accessories for the purpose of repairing such ships or aircraft; or

(c) 35the carrying out of repairs on such ships or aircraft.”

Registered Community design

5 Infringement: exception

(1) Section 53 of the Copyright, Designs and Patents Act 1988 (permitted acts in
relation to copyright works: things done in reliance on registration of design)
40is amended as follows.

(2) In subsection (1), in paragraph (a)—

(a) after “registered” insert “—

(i)”, and

(b) after “corresponding design” insert “, or

(ii) 5under the Community Design Regulation as the
right holder of a corresponding registered
Community design”.

(3) In paragraph (b) of that subsection, after “the registration or” insert “, in a case
of registration under the 1949 Act,”.

(4) 10At the end of that subsection, insert “or, in a case of registration under the
Community Design Regulation, that the person registered as the right holder
was the not the right holder of the design for the purposes of the Regulation”.

(5) After subsection (2), insert—

“(3) In subsection (1), a “corresponding registered Community design”, in
15relation to an artistic work, means a design within the meaning of the
Community Design Regulation which if applied to an article would
produce something which would be treated for the purposes of this
Part as a copy of the artistic work.”

(6) After subsection (3), insert—

“(4) 20In this section, “the Community Design Regulation” means Council
Regulation (EC) 6/2002 of 12 December 2001 on Community designs.”

Registered designs

6 Ownership of design and application for registration

(1) In section 2 of the Registered Designs Act 1949 (ownership of registered
25designs)—

(a) omit subsection (1A) (which provides for the commissioner of a design
to be the original proprietor), and

(b) in subsection (1B), omit “, in a case not falling within subsection (1A),”.

(2) In section 3 of that Act (application for registration), omit subsection (2)
30(requirement for application to be made by person claiming to be proprietor).

7 Right of prior use

(1) After section 7A of the Registered Designs Act 1949 insert—

“7B Right of prior use

(1) A person who, before the application date, used a registered design in
35good faith or made serious and effective preparations to do so may
continue to use the design for the purposes for which, before that date,
the person had used it or made the preparations to use it.

(2) In subsection (1), the “application date”, in relation to a registered
design, means—

(a) 40the date on which an application for the registration was made
under section 3, or

(b) where an application for the registration was treated as having
been made by virtue of section 14(2), the date on which it was
treated as having been so made.

(3) Subsection (1) does not apply if the design which the person used, or
5made preparations to use, was copied from the design which was
subsequently registered.

(4) The right conferred on a person by subsection (1) does not include a
right to licence another person to use the design.

(5) Nor may the person on whom the right under subsection (1) is
10conferred assign the right, or transmit it on death (or in the case of a
body corporate on its dissolution), unless—

(a) the design was used, or the preparations for its use were made,
in the course of a business, and

(b) the right is assigned or transmitted with the part of the business
15in which the design was used or the preparations for its use
were made.”

(2) This section applies only to designs registered under the Registered Designs
Act 1949 after the commencement of this section.

8 Accession to the Hague Agreement

(1) 20After section 15 of the Registered Designs Act 1949 insert—

“15ZA Accession to the Hague Agreement

(1) The Secretary of State may by order make provision for giving effect in
the United Kingdom to the provisions of the Geneva Act of the Hague
Agreement Concerning the International Registration of Industrial
25Designs adopted by the Diplomatic Conference on 2 July 1999.

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

(a) the making of applications for international registrations at the
Patent Office;

(b) the procedures to be followed where an international
30registration designates the United Kingdom;

(c) the effect of an international registration which designates the
United Kingdom;

(d) the communication of information to the International Bureau;

(e) the payment of fees.

(3) 35An order under this section may—

(a) amend this Act;

(b) apply specified provisions of this Act with such modifications
as may be specified.

(4) An expression used in subsection (2) and in the Agreement referred to
40in subsection (1) has the same meaning in that subsection as it has in the
Agreement.”

(2) In section 37 of that Act (rules and orders)—

(a) in subsection (3), before “shall be exercisable” insert “and the power to
make an order under section 15ZA”, and

(b) in subsection (4), after “under this Act” insert “or an order under section
15ZA”.

9 The register: changes of ownership and inspection of documents

(1) In section 19 of the Registered Designs Act 1949 (registration of assignments,
5etc.), omit subsection (3A) (which, where design right subsists in a registered
design, prohibits the registrar from registering interest unless satisfied that the
person who has the interest has a corresponding interest in the design right).

(2) In section 22 of that Act (the title to which becomes “Inspection of registered
designs and associated documents”), in subsection (1), after paragraph (a)
10insert “and

(aa) every document kept at the Patent Office in connection with
that design.”

(3) In that subsection, for “subsection (4)” substitute “subsections (4) to (7)”.

(4) After subsection (4) of that section insert—

“(5) 15For the purposes of subsection (1), a document is not to be regarded as
open for inspection unless (in addition to being open for inspection in
hard copy) it is made available by electronic transmission in such a way
that members of the public may access it at a place and time
individually chosen by them.”

(5) 20After subsection (5) insert—

“(6) The Secretary of State may by rules specify cases or circumstances in
which a document kept at the Patent Office in connection with a
registered design may not be inspected.

(7) Rules made under subsection (6) may confer a discretion on the
25registrar.”

(6) In section 37 of that Act (rules and orders), in subsection (2), after “section 15”
insert “or 22(6)”.

10 Legal proceedings and appeals

(1) In section 24B of the Registered Designs Act 1949 (exemption of innocent
30infringer from liability), in subsection (1), omit “, and no order shall be made
for an account of profits,”.

(2) After section 27 of that Act insert—

“27A Appeals from decisions of registrar

(1) An appeal against a decision of the registrar under this Act may be
35made to—

(a) a person appointed by the Lord Chancellor (an “appointed
person”), or

(b) the court.

(2) On an appeal under this section to an appointed person, the appointed
40person may refer the appeal to the court if—

(a) it appears to the appointed person that a point of general legal
importance is involved,

(b) the registrar requests that the appeal be so referred, or

(c) such a request is made by any party to the proceedings before
the registrar in which the decision appealed against was made.

(3) Before referring an appeal to the court under subsection (2), the
5appointed person must give the appellant and any other party to the
appeal an opportunity to make representations as to whether it should
be so referred.

(4) Where, on an appeal under this section to an appointed person, the
appointed person does not refer the appeal to the court—

(a) 10the appointed person must hear and determine the appeal, and

(b) the appointed person’s decision is final.

(5) Sections 30 and 31 (costs, evidence) apply to proceedings before an
appointed person as they apply to proceedings before the registrar.

(6) In the application of this section to England and Wales, “the court”
15means the High Court.

27B Persons appointed to hear and determine appeals

(1) A person is not eligible for appointment under section 27A(1)(a) unless
the person—

(a) satisfies the judicial-appointment eligibility condition on a 5-
20year basis,

(b) is an advocate or solicitor in Scotland of at least 5 years’
standing,

(c) is a member of the Bar of Northern Ireland or solicitor of the
Court of Judicature of Northern Ireland of at least 5 years’
25standing, or

(d) has held judicial office.

(2) An appointed person must hold and vacate office in accordance with
his terms of appointment, subject to subsections (3) to (5).

(3) An appointed person is to be paid such remuneration (whether by way
30of salary or fees) and such allowances as the Secretary of State may with
the approval of the Treasury decide.

(4) An appointed person may resign office by notice in writing to the Lord
Chancellor.

(5) The Lord Chancellor may by notice in writing remove an appointed
35person (“A”) from office if—

(a) A has become bankrupt or made an arrangement with A’s
creditors or, in Scotland, A’s estate has been sequestrated or A
has executed a trust deed for A’s creditors or entered into a
composition contract,

(b) 40A is incapacitated by physical or mental illness, or

(c) A is, in the opinion of the Lord Chancellor, otherwise unable or
unfit to perform A’s duties as an appointed person.

(6) Before exercising a power under section 27A or this section, the Lord
Chancellor must consult the Secretary of State.

(7) The Lord Chancellor may remove a person from office under
subsection (5) only with the concurrence of the appropriate senior
judge.

(8) The appropriate senior judge is the Lord Chief Justice of England and
5Wales, unless—

(a) the person to be removed exercises functions wholly or mainly
in Scotland, in which case it is the Lord President of the Court
of Session, or

(b) the person to be removed exercises functions wholly or mainly
10in Northern Ireland, in which case it is the Lord Chief Justice of
Northern Ireland.”

(3) In section 27(1)(a) of that Act, after “the High Court or” insert “(subject to
section 27A(6))”.

(4) Section 28 of that Act (the Appeal Tribunal) is repealed.

(5) 15In section 37(3) of that Act (provision as to rules and orders)—

(a) omit “or on the Appeal Tribunal”, and

(b) omit the words from “; and the Statutory Instruments Act 1946” to the
end.

(6) In section 44(1) of that Act (interpretation), omit the definition of “Appeal
20Tribunal”.

(7) In section 249 of the Copyright, Designs and Patents Act 1988 (right of appeal
as to terms of licence of right)—

(a) in subsection (1), for the words from “the Appeal Tribunal” to the end
substitute “a person appointed under section 27A of the Registered
25Designs Act 1949”, and

(b) omit subsection (2).

(8) In section 251(4) of that Act (right of appeal against decisions of comptroller
relating to design right)—

(a) before “the High Court” insert “—

(a)”, and

(b) at the end insert “, or

(b) a person appointed under section 27A of the Registered
Designs Act 1949”.

(9) In the House of Commons Disqualification Act 1975, in Schedule 1 (offices
35disqualifying for membership), in Part 3 (other disqualifying offices), at the
appropriate place insert—

• “Person appointed under section 27A of the Registered Designs Act 1949
  to hear and determine appeals against decisions of the registrar under
  that Act”.

(10) 40In the Constitutional Reform Act 2005, in Schedule 7 (protected functions of the
Lord Chancellor), in paragraph 4, at the appropriate place insert—

“Registered Designs Act 1949 (c.88)1949 (c.88)

• Sections 27A and 27B.”

(11) Section 143 of the Tribunals, Courts and Enforcement Act 2007 (which makes
45provision about appeals in relation to design rights) is repealed.

11 Opinions service

(1) Before section 29 of the Registered Designs Act 1949 (and the preceding cross-
heading) insert—

“Opinions service

28A 5Opinions on designs

(1) The Secretary of State may by regulations make provision about the
making of requests to the registrar for an opinion on specified matters
relating to—

(a) designs registered under this Act;

(b) 10designs of such other description as may be specified.

(2) The regulations must require the registrar to give an opinion in
response to a request made under the regulations, except—

(a) in specified cases or circumstances, or

(b) where for any reason the registrar considers it inappropriate in
15all the circumstances to do so.

(3) The regulations may provide that a request made under the regulations
must be accompanied by—

(a) a fee of a specified amount;

(b) specified information.

(4) 20The regulations must provide that an opinion given by the registrar
under the regulations is not binding for any purposes.

(5) The regulations must provide that neither the registrar nor any
examiner or other officer of the Patent Office is to incur any liability by
reason of or in connection with—

(a) 25any opinion given under the regulations, or

(b) any examination or investigation undertaken for the purpose of
giving such an opinion.

(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) 30But the regulations must provide for an appeal relating to an opinion
given under the regulations to be made to a person appointed under
section 27A; and the regulations may make further provision in relation
to such appeals.

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

(9) 35Regulations under this section—

(a) may make different provision for different purposes;

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

(10) In this section, “specified” means specified in regulations under this
40section.”

(2) In Chapter 4 of Part 3 of the Copyright, Designs and Patents Act 1988