Tuesday, 18 June 2013

Intellectual Property Bill

The Intellectual Property Bill  is hardly news any more, and plenty has been written not only about it but about proposed amendments too. At 23 sections, it's a pretty short bill, and its brevity is closely associated with my first gripe about it - in fact, my first two gripes: why does it use the increasingly anachronistic appellation "intellectual property" in the first place, and secondly why use in the title an expression which already causes so much damage and confusion when in fact it touches on only two of the four main legal rights that fall under the very flexible heading, "intellectual property"? Why could it not have been called the Patents and Designs Bill, so its title would have reflected its subject matter? I was about to write that we had a Patents and Designs Act not long ago, and fortunately checked before I committed myself on that - fortunately, because I find that the only Patents and Designs Act on the statute book in fact dates from 1907, which even by my extensive definition cannot be considered "not long ago". Ah, there was another - in 1919 - which appears in the table of statutes in my copy of Morris and Quest, but I don't think that makes a big difference.

That gives away a large part of what I wanted to say about the Bill, too. Part 1 is headed "Designs" and Part 2, "Patents". Part 3, as is pretty usual with these things (it's probably in a word-processing template in Parliamentary Counsel's office) is headed "Miscellaneous" and Part 4 is "General".

Turning first to Part 1 (and I don't propose to say much about the other Parts), design law has been the worst can of worms in the intellectual property area (see, in the right context the expression has its uses) since at least Jill Knight MP's Design Copyright Act 1968, which cannot even be found on legislation.gov.uk - and at the same time my favourite. Repealing section 52 of the 1988 Act, one of the keystones in the dam which held back copyright and stopped it flooding the field of designs, was bad enough - I sense a classic bit of special pleading, and a lack of evidence-based policy-making, but then the same could be said of Part 3 of the 1988 Act which was written to keep car parts makers happy. Now the new Bill will mess about with some of the key concepts of Part 3, and the rules about ownership, and also tinker with infringements of registered Community designs.

First of all, the meaning of design. The Bill will delete the words "any aspect of" from the definition that is found in section 213(2) and also in section 51(3) (another important part of that dam), which tells us that the word "design" means "the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article." Shouldn't the words "the design of" be omitted too, to make the definition vaguely grammatical?

My good friend Jane Lambert, on her excellent NIPC blog, explains the ramifications so there is no point in me doing so too. Suffice to say that the government apprehends that design right owners tend to overstate the extent of their protection, which on the wording of the definition covers the design of trivial elements as well as important ones. If that's a problem, it's one that has been around since 1988. I can see why it might be desirable to tighten up the wording: I have always found the scope of UKUDR, as we should now refer to it, confusing, focusing as it does on the whole design of an article (by contrast with registered designs which protect novel features of a design) but then inviting us to look at parts of the article. But I do think the way to deal with the problem would have been to take out that reference to "part", and leave it to the courts to decide whether an infringer has taken a substantial part of the design.

Moving on, we come to the definition of "original", which the 1988 Act tells us does not include anything that is commonplace. Sounds reasonable, doesn't it? If something is commonplace, it can't be original. Whether a design be commonplace will now be determined by looking at qualifying countries, not the whole world: the definition will, after amendment, read
A design is not “original” for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation and "qualifying country” has the meaning given in section 217(3).
Paragraph 10 of the Explanatory Notes (a document which, back in 1987 when the Copyright, Designs and Patents Bill was before Parliament, was worth its weight in gold, but now thanks to the Internet is instantly downloadable and indeed weightless) says that "there remains confusion as to the geographical coverage over which that meaning applies", a grammatically highly suspect proposition - and obviously composed by someone with a dangerous addiction to compound prepositions. "The amendment", it goes on, anthropomorphising it quite unnecessarily, "aims to remove that confusion by specifying that the meaning of “commonplace” applies to those countries defined under section 217 (3)". The Impact Assessment indicates that the rationale for this change is to achieve consistency with the Registered Designs Act 1949 (version 3). But the RDA deals with novelty, not originality (that, you may remember, was one of the big problems with version 1, which purported to deal with both), and “novelty” is measured across the whole of the European Economic Area. UKUDR applies to the EEA, and not many other places, so the Bill will achieve a degree of consistency in the geographical extent of the measurement: but because the measurement is of different attributes, making the geographical area the same is as pointless as comparing Cheddar chalk with Cheddar cheese.

Next, ownership of the design. UDR always differed from copyright in that when a design was commissioned UDR would belong to the commissioner - unlike in the copyright world, where the rights would remain with the creator. Given the nature of design work, this arrangement always seemed to me to make sense. Now, however, designers are the darlings of the IP system, and policy (evidence-based, I hope) demands that they retain the rights to their work. Well, things change over the course of 25 years, and we are no longer talking about designs for Morris Marina exhaust pipes (OK, we never were in the context of UDR, but you see what I mean), we are talking about designs for cool tablet computers. Perhaps this is a valid development.

There are also changes to some exceptions to infringement provisions: design right will not be infringed by private acts, experiments and teaching, and for things done on visiting ships and aircraft. I fear that allowing experimental use will open Pandora's box, as designs don't have to be used in experiments in the same way that patents do - unless, for example, you're trying to build a bouncing bomb, but who does that these days? Perhaps I am wrong, but I can't get very excited about these provisions. The provisions about registered designs are a bit boring too, and it's late, so I will leave them to another time - if indeed I think it's worth telling you more.

No comments:


blogger templates | Make Money Online