The IP Bill – good for business?

UK IP Minister Lord Younger recently tabled a bill that is set to modernise IP law for the benefit of UK businesses, particularly small and medium-sized enterprises. The IP Bill seeks to improve the efficiency and accessibility of the IP system and contains provisions regarding the laws relating to designs and to patents. This article examines the proposals relating to patents.

The principal elements of the bill aim to: 

• Update provisions for product marking to make it easier for patent owners and applicants to notify the public of their rights. 
• Enable the United Kingdom to implement the Unified Patent Court Agreement. 

Other aspects of the bill relate to changes to the existing opinions service of the UK Intellectual Property Office (IPO), which currently provides the facility for anyone to request a non-binding opinion from the IPO on the infringement and/or validity of a patent, including allowing:

• Opinions to be requested on supplementary protection certificates.
• The IPO to revoke a patent if the opinion is that the patent is invalid, although the IPO is not permitted to do this until the patent owner has had an opportunity to submit amendments and arguments and/or to request a review of the opinion.

The bill will also affect the way in which the IPO can share information on unpublished patent applications, with the intention of reducing processing backlogs in the United Kingdom and abroad.

Product marking
UK patent applicants and owners are presently required to mark protected products with the relevant patent or patent application numbers in order to avoid the possibility of alleged infringers claiming the defence of “innocent infringement”. Such a defence can remove damages and accounts of profits from the remedies available to the rights holder. 

The requirement for marking can be onerous for rights holders. Also, as it is an offence in the United Kingdom to present a product as being protected when it is not, it is necessary for patent applicants and owners to have a good understanding of the scope and status of the intellectual property covering their products in the United Kingdom and abroad to ensure compliance with local law.

The proposed changes will instead allow rights holders to mark their products with a link to a web address providing details of the relevant patent(s) and patent application(s), providing a “virtual marking provision” similar to that recently introduced in the United States under the America Invents Act. This modernisation of the product-marking provisions will greatly reduce the burden on rights holders to change manufacturing processes for marking products and packaging in response to changes in patent status. It should also make it easier for third parties to access up-to-date information regarding the patent protection for a given product.

Unified Patent Court
The IP Bill contains provisions to allow the recent agreement to set up the Unified Patent Court (UPC) within participating European countries to take effect in the United Kingdom. As well as having exclusive jurisdiction over all EU unitary patents, the UPC will also have jurisdiction over conventional European patents unless owners choose to opt out of the new system. Although the introduction of the UPC (and the associated unitary patent) remains controversial and much of the fine detail is still unresolved, it has the potential to lead to substantial cost savings for UK businesses. In addition, locating the branch of the court with jurisdiction over cases relating to chemistry, including pharmaceuticals and human necessities, in London is expected to bring significant benefits to the UK economy.

In the minister's own words, the proposed reforms “are more evolution than revolution”, but – on a national level at least – it appears that they will benefit businesses seeking to protect their innovations.