Intellectual Property Bill [HL]

marshalled
list of Amendments
to be moved
on report

[Amendments marked * are new or have been altered]

Clause 8

VISCOUNT YOUNGER OF LECKIE

1

Page 6, line 12, leave out paragraph (b) and insert—

“(b)   before subsection (5) insert—

“(4B)    The Secretary of State may not make an order under section
15ZA unless a draft of the statutory instrument containing
the order has been laid before, and approved by a resolution
of, each House of Parliament.””

Clause 11

VISCOUNT YOUNGER OF LECKIE

2

Page 10, line 26, leave out from “after” to “insert” in line 27 and insert ““under this
Act””

3

Page 10, line 27, at end insert “, 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 those regulations unless a draft of the statutory
instrument containing them has been laid before, and
approved by a resolution of, each House of Parliament.””

Clause 13

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

4

Page 11, line 30, after “person” insert “deliberately”

5

Page 12, line 7, at end insert—

“(3A)    A person may not be charged with an offence under this section
until a decision made by the court or the Intellectual Property
Office, and not subject to appeal, has found the person to have
infringed a valid registered design.”

6

Page 12, line 10, at end insert—

“(4A)    It is also a defence for a person charged with an offence under this
section to show that he believed on reasonable grounds that the use
of the design in the manner in which it was used, or was to be used,
did not infringe the right in the design.”

VISCOUNT YOUNGER OF LECKIE

7

Page 12, line 12, at end insert—

“( )   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.”

After Clause 13

VISCOUNT YOUNGER OF LECKIE

8

Insert the following new Clause—

“Offences committed by partnerships

At 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 in 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
Act 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 assets.

(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 proceeded 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 to be proceeded against and punished
accordingly.””

LORD CLEMENT-JONES

9

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 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 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           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 (2) 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 16

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

10

Page 16, line 30, at end insert—

“(2A)    In making an order under this section, which confers jurisdiction on
a court, removes jurisdiction from a court or varies the jurisdiction
of a court, the Secretary of State shall, where the number of patent
cases is such as to meet the requirements as set out in Article 7 of the
Agreement on a Unified Patent Court, consider conferring local
divisional court jurisdiction on—

(a)   in England and Wales, the High Court;

(b)   in Scotland, the Court of Session;

(c)   in Northern Ireland, the High Court.”

VISCOUNT YOUNGER OF LECKIE

11

Page 17, line 2, at end insert—

“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 applies.”

After Clause 19

LORD HOWARTH OF NEWPORT

12*

Insert the following new Clause—

“Freedom of Information: lobbying

(1)   The Secretary of State must maintain an online register, freely accessible to
the public and up-to-date, of all representations, lobbying and advocacy
concerning intellectual property addressed to Ministers, their officials and
advisers and to staff of the Patent Office and their advisers.

(2)   The register must provide information about the names of all individuals
and organisations engaged in such communications and the dates, modes
and whereabouts of them.

(3)   The register must provide a report of the contents of each such
engagement, but need not disclose matter that, in the opinion of the
Secretary of State, is properly regarded as commercially confidential.”

Clause 20

LORD CLEMENT-JONES

13

Page 18, line 19, after “Kingdom,” insert—

“(iii)   progress has been made in protecting metadata”

LORD HOWARTH OF NEWPORT

14*

Page 18, line 23, at end insert—

“(c)   how through policy including consultation, legislation and the
activities of the Patent Office the Government have sought to
balance the protection of intellectual property with promotion of
the wider interests of society and the economy in the United
Kingdom and globally.”

After Clause 20

LORD CLEMENT-JONES

15

Insert the following new Clause—

“Lookalikes

(1)   A person (“A”) shall not, in relation to any goods or services, use any
features of packaging, marking, labelling or decoration in such a way that
the public is likely to attribute to A’s goods or services the reputation of
another person (“B”) or the qualities or reputation of B’s goods or services.

(2)   For the purposes of subsection (1) it is immaterial whether there is any
similarity between the goods or services of A and those of B.

(3)   Subsection (1) shall not apply to features of packaging, marking, labelling
or decoration that are commonplace.”

Clause 21

VISCOUNT YOUNGER OF LECKIE

16

Page 20, line 17, leave out “the Berne” and insert “any Act of the International”

After Clause 21

LORD CLEMENT-JONES

17

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).”

18

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) for “two” substitute “ten”.

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

19

Insert the following new Clause—

“Private copying exception

In section 28 of the Copyright, Designs and Patents Act 1988 (introductory
provisions), after subsection (4) insert—

“(5)   Any provisions of this Chapter relating to an exception for private
copying shall not apply where further copies of copyright works
are commercially available, under the terms of the acquisition of the
copy of the copyright work concerned, by or with the authority of
the copyright owner.””

LORD STEVENSON OF BALMACARA

LORD YOUNG OF NORWOOD GREEN

20

Insert the following new Clause—

“Report on documenting unregistered design rights

The Secretary of State will, within 12 months of this Act coming into force,
report to both Houses of Parliament on plans to—

(a)   publicise the routes available to designers for evidencing the
existence of a design right and documenting its existence on a
particular date;

(b)   look into ways of making the creation of an audit trail of a design
more accessible to holders of design rights.”

21

Insert the following new Clause—

“Penalties in intellectual property legislation

(1)   Paragraph 1(1)(d) of Schedule 2 to the European Communities Act 1972
(limitation on criminal penalties) does not apply for the purposes of
provision under section 2(2) of that Act amending—

(a)   the Registered Designs Act 1949 (except sections 33, 34, 35 and
35ZA);

(b)   the Copyright, Designs and Patents Act 1988 (except sections 107,
198, 296ZB, 297, 297A), and

(c)   the Trade Marks Act 1994 (except sections 92, 94 and 95).

(2)   Subsection (1) applies to any provision under section 2(2) of the European
Communities Act 1972 whether it was made before or after the
commencement of this section.

(3)   Sections 75 and 78 of the Enterprise and Regulatory Reform Act 2013 are
omitted.”

Prepared 20th July 2013