Intellectual Property Bill (HL Bill 33)

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) omit subsection (2), and

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

(2) In consequence of subsection (1)—

(a) 5in 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) in 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) 10in 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
the course of employment with”,

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

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

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

(g) in section 220 of that Act (qualification by reference to first marketing),
20in 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
of “British design”, omit “the design is commissioned or”,

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

(k) 25in section 264 of that Act (index of defined expressions), omit the entry
for “commission”.

(3) This section does not apply to—

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

(b) any design created after the commencement of this section in
30pursuance 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, and

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

3 35Qualification 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) In section 217 of that Act (qualifying individuals and qualifying persons), in
subsection (1)—

(a) 40omit the definition of “qualifying individual”, and

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

• ““qualifying person” means—

  (a)

  an individual habitually resident in a qualifying
  country, or

  (b)

  45a person who has in any qualifying country a
  place of business at which substantial business
  activity is carried on.”

(3) In 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) 5in subsection (3), omit “a qualifying individual or, as the case may be,”,
and

(c) in 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)
10omit subsections (2) to (4).

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

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

4 15Infringement: exceptions

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

“Miscellaneous

244A Exception for private acts, experiments and teaching

20Design right is not infringed by—

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

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

(c) an act of reproduction for teaching purposes or for the purpose
25of making citations provided that—

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

(ii) mention is made of the source.

244B 30Exception for overseas ships and aircraft

Design right is not infringed by—

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

(b) 35the importation into the United Kingdom of spare parts or
accessories for the purpose of repairing such ships or aircraft; or

(c) the 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)
5is amended as follows.

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

(a) after “registered” insert “—

(i)”, and

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

(ii) 10under 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) 15At 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
20relation 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) 25In 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
30designs)—

(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)
35(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
5good 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) 10the 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) 15Subsection (1) does not apply if the design which the person used, or
made 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) 20Nor may the person on whom the right under subsection (1) is
conferred 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) 25the right is assigned or transmitted with the part of the business
in 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 30Accession to the Hague Agreement

(1) After 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
35Agreement Concerning the International Registration of Industrial
Designs 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) 40the procedures to be followed where an international
registration 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) An order under this section may—

(a) amend this Act;

(b) apply specified provisions of this Act with such modifications
5as may be specified.

(4) An expression used in subsection (2) and in the Agreement referred to
in 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) 10in 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) 15In section 19 of the Registered Designs Act 1949 (registration of assignments,
etc.), 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
20designs and associated documents”), in subsection (1), after paragraph (a)
insert “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) 25After subsection (4) of that section insert—

“(5) For 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
30individually chosen by them.”

(5) After 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) 35Rules made under subsection (6) may confer a discretion on the
registrar.”

(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) 40In section 24B of the Registered Designs Act 1949 (exemption of innocent
infringer 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
made to—

(a) 5a 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
person may refer the appeal to the court if—

(a) 10it 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) 15Before referring an appeal to the court under subsection (2), the
appointed 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
20appointed person does not refer the appeal to the court—

(a) the 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) 25In the application of this section to England and Wales, “the court”
means 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) 30satisfies the judicial-appointment eligibility condition on a 5-
year 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
35Court of Judicature of Northern Ireland of at least 5 years’
standing, 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) 40An appointed person is to be paid such remuneration (whether by way
of 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
person (“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
5has executed a trust deed for A’s creditors or entered into a
composition contract,

(b) A 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) 10Before 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) 15The appropriate senior judge is the Lord Chief Justice of England and
Wales, 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) 20the person to be removed exercises functions wholly or mainly
in 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) 25Section 28 of that Act (the Appeal Tribunal) is repealed.

(5) In 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) 30In section 44(1) of that Act (interpretation), omit the definition of “Appeal
Tribunal”.

(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
35substitute “a person appointed under section 27A of the Registered
Designs 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) 40before “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) 45In the House of Commons Disqualification Act 1975, in Schedule 1 (offices
disqualifying 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) 5In 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
10provision 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 15Opinions 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) 20designs 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
25all 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) 30The 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) 35any 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) 40But the regulations must provide for an appeal relating to an opinion
given under the regulations to be made to a person appointed under