Intellectual Property Bill [HL]

Written evidence submitted by Jane Lambert (IP 04)

Summary

1. I welcome most of the provisions of the Intellectual Property Bill but I respectfully invite the House not to impose criminal sanctions for registered design infringement. I believe that this will greatly increase the volumes of applications for the invalidation of registered and registered designs to the Courts, Intellectual Property Office and OHIM (EU designs and trade marks registry) and possibly other threats actions and other litigation. I fear it will cause injustice in that it is likely to be used against departing employees and subcontractors. It will increase pressure for criminal sanctions for unregistered design right and patent infringement which would dampen innovation in the UK. Such protection is not mandated by TRIPS, IP convention or other treaty to which HMG is party and most other common law countries including the USA are unlikely to impose such sanctions. It is also unnecessary since the cost of enforcement of IP rights has been reduced by the reforms to CPR Part 63 in 2010.

Qualifications

2. I was called to the Bar in 1977 and have practised at the IP Bar for over 30 years. I was legal advisor to VISA International between 1983 and 1984. In 1997 I set up NIPC which was the first specialist IP set outside London. I have done considerable pro bono work for small and medium enterprises through setting up and chairing inventors clubs in Leeds, Liverpool and Sheffield, IP clinics in London and the North of England and through my blogs and newsletters. I have published several books and articles on IP enforcement including a guide for SME in 2010.

Position

3. While I welcome most of the provisions of the Bill I am concerned at the proposed clause 13 for the following reasons which I set out in an article on the Bill that I published on 28 May 2013:

"Criminalizing Registered Design Infringements

A much less sensible provi sion and one which I hope that Parliament will reject is clause 13 which would introduce a new offence of copying a registered design punishable with a maximum penalty of 10 years imprisonment and an unlimited fine. In my very first post to this blog "Porridge for Patent Infringement" 22 Aug 2005 and many subsequent posts I warned of the dangers of extending the criminal law from bootlegging, counterfeiting and piracy to patent and registered design infringement.

Let me give you just one reason why this proposal is barmy. Questions such as whether a design is new and has individual character are regarded as sufficiently difficult to remove them from the general jurisdiction of the Chancery Division and assign them to the specialist judges of the Patents Court (see CPR 63.2 ). Those questions, which are thought rightly or wrongly to be too difficult for all but a handful of judges, will be put routinely to juries and lay magistrates since it would be a defence under s.35AZ (4) to show reasonable relief that the registration of the design was invalid. The litigation in California between Samsung and Apple shows the folly of entrusting difficult questions of IP law to juries (see "Apple v Samsung - Yet more Revelations" 31 Aug 2012). In the Apple case the foreman of the jury is said to have known something about patent law. Our juries and indeed lay justices are drawn from all parts of society. There is no educational or even IQ qualification for serving on a jury or serving as a magistrate.

There is an international obligation under art 61 of TRIPS to "provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale" but there is no obligation to extend it to any other IP right. If this proposal comes into law it will give succour to those who has been campaigning for criminal sanctions for patent infringement for years.

This dangerous proposal is no doubt the result of persistent lobbying by ginger groups of manufacturers and designers who make the very reasonable point that enforcement in the Patents and Patents County Courts was notoriously expensive. That was certainly the case before 1 Oct 2010 but it is no longer true now (see "New Patent County Court Rules" 31 Oct 2010). If any changes to the law are needed the extension of the jurisdiction of the small claims track of the Patents County Court to registered and registered Community design cases would be much more sensible."

4. I also respectfully endorse the objections presented by:

(1) Sir Robin Jacob and other leading academic lawyers in their memorandum to the IPO

(2) the Intellectual Property Bar Association; and

(3) the IP Federation.

January 2014