Copyright, Designs and Patents Act 1988

• (1) Where in an action for infringement of design right brought by virtue of section 226 (primary infringement) it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that design right subsisted in the design to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy.

• (2) Where in an action for infringement of design right brought by virtue of section 227 (secondary infringement) a defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act complained of.

• (3) In subsection (2) “innocently acquired” means that the person acquiring the article did not know and had no reason to believe that it was an infringing article.

Rights and remedies of exclusive licensee.

234

• (1) An exclusive licensee has, except against the design right owner, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

• (2) His rights and remedies are concurrent with those of the design right owner; and references in the relevant provisions of this Part to the design right owner shall be construed accordingly.

• (3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the design right owner.

Exercise of concurrent rights.

235

• (1) Where an action for infringement of design right brought by the design right owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the design right owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.

• (2) A design right owner or exclusive licensee who is added as a defendant in pursuance of subsection (1) is not liable for any costs in the action unless he takes part in the proceedings.

• (3) The above provisions do not affect the granting of interlocutory relief on the application of the design right owner or an exclusive licensee.

• (4) Where an action for infringement of design right is brought which relates (wholly or partly) to an infringement in respect of which the design right owner and an exclusive licensee have concurrent rights of action—

• (a) the court shall, in assessing damages, take into account—

• (i) the terms of the licence, and

• (ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;

• (b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and

• (c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them;

and these provisions apply whether or not the design right owner and the exclusive licensee are both parties to the action.

• (5) The design right owner shall notify any exclusive licensee having concurrent rights before applying for an order under section 230 (order for delivery up of infringing article, &c.); and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

Chapter III — Exceptions to Rights of Design Right Owners

Infringement of copyright

Infringement of copyright.

236

Where copyright subsists in a work which consists of or includes a design in which design right subsists, it is not an infringement of design right in the design to do anything which is an infringement of the copyright in that work.

Availability of licences of right

Licences available in last five years of design right.

237

• (1) Any person is entitled as of right to a licence to do in the last five years of the design right term anything which would otherwise infringe the design right.

• (2) The terms of the licence shall, in default of agreement, be settled by the comptroller.

• (3) The Secretary of State may if it appears to him necessary in order to—

• (a) comply with an international obligation of the United Kingdom, or

• (b) secure or maintain reciprocal protection for British designs in other countries,

by order exclude from the operation of subsection (1) designs of a description specified in the order or designs applied to articles of a description so specified.

• (4) An order shall be made by statutory instrument; and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

Powers exercisable for protection of the public interest.

238

• (1) Subsection (1A) applies where whatever needs to be remedied, mitigated or prevented by the Secretary of State or (as the case may be) the Competition and Markets Authority under section 12(5) of the Competition Act 1980 or section 41(2), 55(2), 66(6), 75(2), 83(2), 138(2), 147(2) , 147A(2) or 160(2) of, or paragraph 5(2) or 10(2) of Schedule 7 to, the Enterprise Act 2002 (powers to take remedial action following references to the Competition and Markets Authority in connection with public bodies and certain other persons, mergers or market investigations etc.) consists of or includes—

• (a) conditions in licences granted by a design right owner restricting the use of the design by the licensee or the right of the design right owner to grant other licences, or

• (b) a refusal of a design right owner to grant licences on reasonable terms.

• (1A) The powers conferred by Schedule 8 to the Enterprise Act 2002 include power to cancel or modify those conditions and, instead or in addition, to provide that licences in respect of the design right shall be available as of right.

• (2) The references to anything permitted by Schedule 8 to the Enterprise Act 2002 in section 12(5A) of the Competition Act 1980 and in sections 75(4)(a), 83(4)(a), 84(2)(a), 89(1), 160(4)(a), 161(3)(a) and 164(1) of, and paragraphs 5, 10 and 11 of Schedule 7 to, the Act of 2002 shall be construed accordingly.

• (3) The terms of a licence available by virtue of this section shall, in default of agreement, be settled by the comptroller.

Undertaking to take licence of right in infringement proceedings.

239

• (1) If in proceedings for infringement of design right in a design in respect of which a licence is available as of right under section 237 or 238 the defendant undertakes to take a licence on such terms as may be agreed or, in default of agreement, settled by the comptroller under that section—

• (a) no injunction shall be granted against him,

• (b) no order for delivery up shall be made under section 230, and

• (c) the amount recoverable against him by way of damages or on an account of profits shall not exceed double the amount which would have been payable by him as licensee if such a licence on those terms had been granted before the earliest infringement.

• (2) An undertaking may be given at any time before final order in the proceedings, without any admission of liability.

• (3) Nothing in this section affects the remedies available in respect of an infringement committed before licences of right were available.

Crown use of designs

Crown use of designs.

240

• (1) A government department, or a person authorised in writing by a government department, may without the licence of the design right owner—

• (a) do anything for the purpose of supplying articles for the services of the Crown, or

• (b) dispose of articles no longer required for the services of the Crown;

and nothing done by virtue of this section infringes the design right.

• (2) References in this Part to “the services of the Crown” are to—

• (a) the defence of the realm,

• (b) foreign defence purposes, and

• (c) health service purposes.

• (3) The reference to the supply of articles for “foreign defence purposes” is to their supply—

• (a) for the defence of a country outside the realm in pursuance of an agreement or arrangement to which the government of that country and Her Majesty’s Government in the United Kingdom are parties; or

• (b) for use by armed forces operating in pursuance of a resolution of the United Nations or one of its organs.

• (4) The reference to the supply of articles for “health service purposes” are to their supply for the purpose of providing—

• (za) primary medical services or primary dental services under the National Health Service Act 2006 or the National Health Service (Wales) Act 2006, or primary medical services under Part 1 of the National Health Service (Scotland) Act 1978

• (a) pharmaceutical services, general medical services or general dental services under—

• (i) Chapter 1 of Part 7 of the National Health Service Act 2006, or Chapter 1 of Part 7 of the National Health Service (Wales) Act 2006 (in the case of pharmaceutical services),

• (ii) Part II of the National Health Service (Scotland) Act 1978 (in the case of pharmaceutical services or general dental services), or

• (iii) the corresponding provisions of the law in force in Northern Ireland; or

• (b) personal medical services or personal dental services in accordance with arrangements made under—

• (i) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (ii) section 17C of the 1978 Act (in the case of personal dental services), or

• (iii) the corresponding provisions of the law in force in Northern Ireland or

• (c) local pharmaceutical services provided under the National Health Service Act 2006 or the National Health Service (Wales) Act 2006.

• (5) In this Part—

• “Crown use”, in relation to a design, means the doing of anything by virtue of this section which would otherwise be an infringement of design right in the design; and

• “the government department concerned”, in relation to such use, means the government department by whom or on whose authority the act was done.

• (6) The authority of a government department in respect of Crown use of a design may be given to a person either before or after the use and whether or not he is authorised, directly or indirectly, by the design right owner to do anything in relation to the design.

• (7) A person acquiring anything sold in the exercise of powers conferred by this section, and any person claiming under him, may deal with it in the same manner as if the design right were held on behalf of the Crown.

Settlement of terms for Crown use.

241

• (1) Where Crown use is made of a design, the government department concerned shall—

• (a) notify the design right owner as soon as practicable, and

• (b) give him such information as to the extent of the use as he may from time to time require,

unless it appears to the department that it would be contrary to the public interest to do so or the identity of the design right owner cannot be ascertained on reasonable inquiry.

• (2) Crown use of a design shall be on such terms as, either before or after the use, are agreed between the government department concerned and the design right owner with the approval of the Treasury or, in default of agreement, are determined by the court.

In the application of this subsection to Northern Ireland the reference to the Treasury shall, where the government department referred to in that subsection is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel.

In the application of this subsection to Scotland, where the government department referred to in that subsection is any part of the Scottish Administration, the words “with the approval of the Treasury” are omitted.

• (3) Where the identity of the design right owner cannot be ascertained on reasonable inquiry, the government department concerned may apply to the court who may order that no royalty or other sum shall be payable in respect of Crown use of the design until the owner agrees terms with the department or refers the matter to the court for determination.

Rights of third parties in case of Crown use.

242

• (1) The provisions of any licence, assignment or agreement made between the design right owner (or anyone deriving title from him or from whom he derives title) and any person other than a government department are of no effect in relation to Crown use of a design, or any act incidental to Crown use, so far as they—

• (a) restrict or regulate anything done in relation to the design, or the use of any model, document or other information relating to it, or

• (b) provide for the making of payments in respect of, or calculated by reference to such use;

and the copying or issuing to the public of copies of any such model or document in connection with the thing done, or any such use, shall be deemed not to be an infringement of any copyright in the model or document.

• (2) Subsection (1) shall not be construed as authorising the disclosure of any such model, document or information in contravention of the licence, assignment or agreement.

• (3) Where an exclusive licence is in force in respect of the design—

• (a) if the licence was granted for royalties—

• (i) any agreement between the design right owner and a government department under section 241 (settlement of terms for Crown use) requires the consent of the licensee, and

• (ii) the licensee is entitled to recover from the design right owner such part of the payment for Crown use as may be agreed between them or, in default of agreement, determined by the court;

• (b) if the licence was granted otherwise than for royalties—

• (i) section 241 applies in relation to anything done which but for section 240 (Crown use) and subsection (1) above would be an infringement of the rights of the licensee with the substitution for references to the design right owner of references to the licensee, and

• (ii) section 241 does not apply in relation to anything done by the licensee by virtue of an authority given under section 240.

• (4) Where the design right has been assigned to the design right owner in consideration of royalties—

• (a) section 241 applies in relation to Crown use of the design as if the references to the design right owner included the assignor, and any payment for Crown use shall be divided between them in such proportion as may be agreed or, in default of agreement, determined by the court; and

• (b) section 241 applies in relation to any act incidental to Crown use as it applies in relation to Crown use of the design.

• (5) Where any model, document or other information relating to a design is used in connection with Crown use of the design, or any act incidental to Crown use, section 241 applies to the use of the model, document or other information with the substitution for the references to the design right owner of references to the person entitled to the benefit of any provision of an agreement rendered inoperative by subsection (1) above.

• (6) In this section—

• “act incidental to Crown use” means anything done for the services of the Crown to the order of a government department by the design right owner in respect of a design;

• “payment for Crown use” means such amount as is payable by the government department concerned by virtue of section 241; and

• “royalties” includes any benefit determined by reference to the use of the design.

Crown use: compensation for loss of profit.

243

• (1) Where Crown use is made of a design, the government department concerned shall pay—

• (a) to the design right owner, or

• (b) if there is an exclusive licence in force in respect of the design, to the exclusive licensee,

compensation for any loss resulting from his not being awarded a contract to supply the articles made to the design.

• (2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract.

• (3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing capacity was under-used.

• (4) No compensation is payable in respect of any failure to secure contracts for the supply of articles made to the design otherwise than for the services of the Crown.

• (5) The amount payable shall, if not agreed between the design right owner or licensee and the government department concerned with the approval of the Treasury, be determined by the court on a reference under section 252; and it is in addition to any amount payable under section 241 or 242.

• (6) In the application of this section to Northern Ireland, the reference in subsection (5) to the Treasury shall, where the government department concerned is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel.

• (7) In the application of this section to Scotland, where the government department referred to in subsection (5) is any part of the Scottish Administration, the words “with the approval of the Treasury” in that subsection are omitted.

Special provision for Crown use during emergency.

244

• (1) During a period of emergency the powers exercisable in relation to a design by virtue of section 240 (Crown use) include power to do any act which would otherwise be an infringement of design right for any purpose which appears to the government department concerned necessary or expedient—

• (a) for the efficient prosecution of any war in which Her Majesty may be engaged;

• (b) for the maintenance of supplies and services essential to the life of the community;

• (c) for securing a sufficiency of supplies and services essential to the well-being of the community;

• (d) for promoting the productivity of industry, commerce and agriculture;

• (e) for fostering and directing exports and reducing imports, or imports of any classes, from all or any countries and for redressing the balance of trade;

• (f) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community; or

• (g) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any country outside the United Kingdom which is in grave distress as the result of war.

• (2) References in this Part to the services of the Crown include, as respects a period of emergency, those purposes; and references to “Crown use” include any act which would apart from this section be an infringement of design right.

• (3) In this section “period of emergency” means a period beginning with such date as may be declared by Order in Council to be the beginning, and ending with such date as may be so declared to be the end, of a period of emergency for the purposes of this section.

• (4) No Order in Council under this section shall be submitted to Her Majesty unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

Miscellaneous

Exception for private acts, experiments and teaching

244A

Design 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 of 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.

Exception for overseas ships and aircraft

244B

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) the 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.

General

Power to provide for further exceptions.

245

• (1) The Secretary of State may if it appears to him necessary in order to—

• (a) comply with an international obligation of the United Kingdom, or

• (b) secure or maintain reciprocal protection for British designs in other countries,

by order provide that acts of a description specified in the order do not infringe design right.

• (2) An order may make different provision for different descriptions of design or article.

• (3) An order shall be made by statutory instrument and no order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

Chapter IV — Jurisdiction of the Comptroller and the Court

Jurisdiction of the comptroller

Jurisdiction to decide matters relating to design right.

246

• (1) A party to a dispute as to any of the following matters may refer the dispute to the comptroller for his decision—

• (a) the subsistence of design right,

• (b) the term of design right, or

• (c) the identity of the person in whom design right first vested;

and the comptroller’s decision on the reference is binding on the parties to the dispute.

• (2) No other court or tribunal shall decide any such matter except—

• (a) on a reference or appeal from the comptroller,

• (b) in infringement or other proceedings in which the issue arises incidentally, or

• (c) in proceedings brought with the agreement of the parties or the leave of the comptroller.

• (3) The comptroller has jurisdiction to decide any incidental question of fact or law arising in the course of a reference under this section.

Application to settle terms of licence of right.

247

• (1) A person requiring a licence which is available as of right by virtue of—

• (a) section 237 (licences available in last five years of design right), or

• (b) an order under section 238 (licences made available in the public interest),

may apply to the comptroller to settle the terms of the licence.

• (2) No application for the settlement of the terms of a licence available by virtue of section 237 may be made earlier than one year before the earliest date on which the licence may take effect under that section.

• (3) The terms of a licence settled by the comptroller shall authorise the licensee to do—

• (a) in the case of licence available by virtue of section 237, everything which would be an infringement of the design right in the absence of a licence;

• (b) in the case of a licence available by virtue of section 238, everything in respect of which a licence is so available.

• (4) In settling the terms of a licence the comptroller shall have regard to such factors as may be prescribed by the Secretary of State by order made by statutory instrument.

• (5) No such order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

• (6) Where the terms of a licence are settled by the comptroller, the licence has effect—

• (a) in the case of an application in respect of a licence available by virtue of section 237 made before the earliest date on which the licence may take effect under that section, from that date;

• (b) in any other case, from the date on which the application to the comptroller was made.

Settlement of terms where design right owner unknown.

248

• (1) This section applies where a person making an application under section 247 (settlement of terms of licence of right) is unable on reasonable inquiry to discover the identity of the design right owner.

• (2) The comptroller may in settling the terms of the licence order that the licence shall be free of any obligation as to royalties or other payments.

• (3) If such an order is made the design right owner may apply to the comptroller to vary the terms of the licence with effect from the date on which his application is made.

• (4) If the terms of a licence are settled by the comptroller and it is subsequently established that a licence was not available as of right, the licensee shall not be liable in damages for, or for an account of profits in respect of, anything done before he was aware of any claim by the design right owner that a licence was not available.

Appeals as to terms of licence of right.

249

• (1) An appeal lies from any decision of the comptroller under section 247 or 248 (settlement of terms of licence of right) to a person appointed under section 27A of the Registered Designs Act 1949.

• (2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Opinions service

249A

The descriptions of designs which may be specified in regulations under subsection (1)(b) of section 28A of the Registered Designs Act 1949 (requests to the comptroller for opinions on designs) include, in particular—

• (a) designs in which design right subsists in accordance with this Part, and

• (b) designs in relation to which there is a question whether design right so subsists.

Rules.

250

• (1) The Secretary of State may make rules for regulating the procedure to be followed in connection with any proceeding before the comptroller under this Part.

• (2) Rules may, in particular, make provision—

• (a) prescribing forms;

• (b) requiring fees to be paid;

• (c) authorising the rectification of irregularities of procedure;

• (d) regulating the mode of giving evidence and empowering the comptroller to compel the attendance of witnesses and the discovery of and production of documents;

• (e) providing for the appointment of advisers to assist the comptroller in proceedings before him;

• (f) prescribing time limits for doing anything required to be done (and providing for the alteration of any such limit); and

• (g) empowering the comptroller to award costs and to direct how, to what party and from what parties, costs are to be paid.

• (3) Rules prescribing fees require the consent of the Treasury.

• (4) The remuneration of an adviser appointed to assist the comptroller shall be determined by the Secretary of State with the consent of the Treasury and shall be defrayed out of money provided by Parliament.

• (5) Rules shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

Jurisdiction of the court

References and appeals on design right matters.

251

• (1) In any proceedings before him under section 246 (reference of matter relating to design right), the comptroller may at any time order the whole proceedings or any question or issue (whether of fact or law) to be referred, on such terms as he may direct, to the High Court or, in Scotland, the Court of Session.

• (2) The comptroller shall make such an order if the parties to the proceedings agree that he should do so.

• (3) On a reference under this section the court may exercise any power available to the comptroller by virtue of this Part as respects the matter referred to it and, following its determination, may refer any matter back to the comptroller.

• (4) An appeal lies from any decision of the comptroller in proceedings before him under section 246 (decisions on matters relating to design right) to —

• (a) the High Court or, in Scotland, the Court of Session , or

• (b) a person appointed under section 27A of the Registered Designs Act 1949.

Reference of disputes relating to Crown use.

252

• (1) A dispute as to any matter which falls to be determined by the court in default of agreement under—

• (a) section 241 (settlement of terms for Crown use),

• (b) section 242 (rights of third parties in case of Crown use), or

• (c) section 243 (Crown use: compensation for loss of profit),

may be referred to the court by any party to the dispute.

• (2) In determining a dispute between a government department and any person as to the terms for Crown use of a design the court shall have regard to—

• (a) any sums which that person or a person from whom he derives title has received or is entitled to receive, directly or indirectly, from any government department in respect of the design; and

• (b) whether that person or a person from whom he derives title has in the court’s opinion without reasonable cause failed to comply with a request of the department for the use of the design on reasonable terms.

• (3) One of two or more joint owners of design right may, without the concurrence of the others, refer a dispute to the court under this section, but shall not do so unless the others are made parties; and none of those others is liable for any costs unless he takes part in the proceedings.

• (4) Where the consent of an exclusive licensee is required by section 242(3)(a)(i) to the settlement by agreement of the terms for Crown use of a design, a determination by the court of the amount of any payment to be made for such use is of no effect unless the licensee has been notified of the reference and given an opportunity to be heard.

• (5) On the reference of a dispute as to the amount recoverable as mentioned in section 242(3)(a)(ii) (right of exclusive licensee to recover part of amount payable to design right owner) the court shall determine what is just having regard to any expenditure incurred by the licensee—

• (a) in developing the design, or

• (b) in making payments to the design right owner in consideration of the licence (other than royalties or other payments determined by reference to the use of the design).

• (6) In this section “the court” means—

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

• (b) in Scotland, the Court of Session, and

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

Chapter V — Miscellaneous and General

Unjustified threats

Threats of infringement proceedings

253

• (1) A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that—

• (a) design right subsists in a design, and

• (b) a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the design right by—

• (i) an act done in the United Kingdom, or

• (ii) an act which, if done, would be done in the United Kingdom.

• (2) References in this section and in section 253C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed.

Actionable threats

253A

• (1) Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat.

• (2) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of—

• (a) making an article for disposal, or

• (b) importing an article for disposal.

• (3) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in subsection (2)(a) or (b).

• (4) A threat of infringement proceedings is not actionable if the threat—

• (a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to an article, and

• (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that article.

• (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.

• (6) In sections 253C and 253D an “actionable threat” means a threat of infringement proceedings that is actionable in accordance with this section.

Permitted communications

253B

• (1) For the purposes of section 253A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

• (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

• (b) all of the information that relates to the threat is information that—

• (i) is necessary for that purpose (see subsection (5)(a) to (c) for some examples of necessary information), and

• (ii) the person making the communication reasonably believes is true.

• (2) Each of the following is a “permitted purpose”—

• (a) giving notice that design right subsists in a design;

• (b) discovering whether, or by whom, design right in a design has been infringed by an act mentioned in section 253A(2)(a) or (b);

• (c) giving notice that a person has a right in or under the design right in a design, where another person's awareness of the right is relevant to any proceedings that may be brought in respect of the design right in the design.

• (3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.

• (4) But the following may not be treated as a “permitted purpose”—

• (a) requesting a person to cease doing, for commercial purposes, anything in relation to an article made to a design,

• (b) requesting a person to deliver up or destroy an article made to a design, or

• (c) requesting a person to give an undertaking relating to an article made to a design.

• (5) If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see subsection (1)(b)(i))—

• (a) a statement that design right subsists in a design;

• (b) details of the design, or of a right in or under the design right in the design, which—

• (i) are accurate in all material respects, and

• (ii) are not misleading in any material respect; and

• (c) information enabling the identification of articles that are alleged to be infringing articles in relation to the design.

Remedies and defences

253C

• (1) Proceedings in respect of an actionable threat may be brought against the person who made the threat for—

• (a) a declaration that the threat is unjustified;

• (b) an injunction against the continuance of the threat;

• (c) damages in respect of any loss sustained by the aggrieved person by reason of the threat.

• (2) It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of design right.

• (3) It is a defence for the person who made the threat to show—

• (a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in section 253A(2)(a) or (b) in relation to the article which is the subject of the threat, and

• (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.

Professional advisers

253D

• (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.

• (2) In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat—

• (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and

• (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).

• (3) The conditions are that—

• (a) in making the communication the professional adviser is acting on the instructions of another person, and

• (b) when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.

• (4) This section does not affect any liability of the person on whose instructions the professional adviser is acting.

• (5) It is for a person asserting that subsection (1) applies to prove (if required) that at the material time—

• (a) the person concerned was acting as a professional adviser, and

• (b) the conditions in subsection (3) were met.

Supplementary: proceedings for delivery up etc.

253E

In section 253(1)(b) the reference to proceedings for infringement of design right includes a reference to—

• (a) proceedings for an order under section 230 (order for delivery up), and

• (b) proceedings for an order under section 231 (order as to disposal of infringing articles).

Licensee under licence of right not to claim connection with design right owner

Licensee under licence of right not to claim connection with design right owner.

254

• (1) A person who has a licence in respect of a design by virtue of section 237 or 238 (licences of right) shall not, without the consent of the design right owner—

• (a) apply to goods which he is marketing, or proposes to market, in reliance on that licence a trade description indicating that he is the licensee of the design right owner, or

• (b) use any such trade description in an advertisement in relation to such goods.

• (2) A contravention of subsection (1) is actionable by the design right owner.

• (3) In this section “trade description”, the reference to applying a trade description to goods and “advertisement” have the same meaning as in the Trade Descriptions Act 1968.

Extent of operation of this Part

Countries to which this Part extends.

255

• (1) This Part extends to England and Wales, Scotland and Northern Ireland.

• (2) Her Majesty may by Order in Council direct that this Part shall extend, subject to such exceptions and modifications as may be specified in the Order, to—

• (a) any of the Channel Islands,

• (b) the Isle of Man, or

• (c) any colony.

• (3) That power includes power to extend, subject to such exceptions and modifications as may be specified in the Order, any Order in Council made under section 221 (further provision as to qualification for design right protection) or section 256 (countries enjoying reciprocal protection).

• (4) The legislature of a country to which this Part has been extended may modify or add to the provisions of this Part, in their operation as part of the law of that country, as the legislature may consider necessary to adapt the provisions to the circumstances of that country; but not so as to deny design right protection in a case where it would otherwise exist.

• (5) Where a country to which this Part extends ceases to be a colony of the United Kingdom, it shall continue to be treated as such a country for the purposes of this Part until—

• (a) an Order in Council is made under section 256 designating it as a country enjoying reciprocal protection, or

• (b) an Order in Council is made declaring that it shall cease to be so treated by reason of the fact that the provisions of this Part as part of the law of that country have been amended or repealed.

• (6) A statutory instrument containing an Order in Council under subsection (5)(b) shall be subject to annulment in pursuance of a resolution of either House of Parliament.

Countries enjoying reciprocal protection.

256

• (1) Her Majesty may, if it appears to Her that the law of a country provides adequate protection for British designs, by Order in Council designate that country as one enjoying reciprocal protection under this Part.

• (2) If the law of a country provides adequate protection only for certain classes of British design, or only for designs applied to certain classes of article, any Order designating that country shall contain provision limiting, to a corresponding extent, the protection afforded by this Part in relation to designs connected with that country.

• (3) An Order under this section shall be subject to annulment in pursuance of a resolution of either House of Parliament.

Territorial waters and the continental shelf.

257

• (1) For the purposes of this Part the territorial waters of the United Kingdom shall be treated as part of the United Kingdom.

• (2) This Part applies to things done in the United Kingdom sector of the continental shelf on a structure or vessel which is present there for purposes directly connected with the exploration of the sea bed or subsoil or the exploitation of their natural resources as it applies to things done in the United Kingdom.

• (3) The United Kingdom sector of the continental shelf means the areas designated by order under section 1(7) of the Continental Shelf Act 1964.

Interpretation

Construction of references to design right owner.

258

• (1) Where different persons are (whether in consequence of a partial assignment or otherwise) entitled to different aspects of design right in a work, the design right owner for any purpose of this Part is the person who is entitled to the right in the respect relevant for that purpose.

• (2) Where design right (or any aspect of design right) is owned by more than one person jointly, references in this Part to the design right owner are to all the owners, so that, in particular, any requirement of the licence of the design right owner requires the licence of all of them.

Joint designs.

259

• (1) In this Part a “joint design” means a design produced by the collaboration of two or more designers in which the contribution of each is not distinct from that of the other or others.

• (2) References in this Part to the designer of a design shall, except as otherwise provided, be construed in relation to a joint design as references to all the designers of the design.

Application of provisions to articles in kit form.

260

• (1) The provisions of this Part apply in relation to a kit, that is, a complete or substantially complete set of components intended to be assembled into an article, as they apply in relation to the assembled article.

• (2) Subsection (1) does not affect the question whether design right subsists in any aspect of the design of the components of a kit as opposed to the design of the assembled article.

Requirement of signature: application in relation to body corporate.

261

The requirement in the following provisions that an instrument be signed by or on behalf of a person is also satisfied in the case of a body corporate by the affixing of its seal—

• section 222(3) (assignment of design right),

• section 223(1) (assignment of future design right),

• section 225(1) (grant of exclusive licence).

Adaptation of expressions in relation to Scotland.

262

In the application of this Part to Scotland—

• “account of profits” means accounting and payment of profits;

• “accounts” means count, reckoning and payment;

• “assignment” means assignation;

• “costs” means expenses;

• “declaration” means “declarator”;

• “defendant” means defender;

• “delivery up” means delivery;

• “injunction” means interdict;

• “interlocutory relief” means interim remedy; and

• “plaintiff” means pursuer.

Minor definitions.

263

• (1) In this Part—

• “British design” means a design which qualifies for design right protection by reason of a connection with the United Kingdom of the designer or the person by whom ... the designer is employed;

• “business” includes a trade or profession;

• ...

• “the comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;

• “computer-generated”, in relation to a design, means that the design is generated by computer in circumstances such that there is no human designer,

• “country” includes any territory;

• “the Crown” includes the Crown in right of Her Majesty’s Government in Northern Ireland and the Crown in right of the Scottish Administrationand the Crown in right of the Welsh Assembly Government;

• “design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise;

• “employee”, “employment” and “employer” refer to employment under a contract of service or of apprenticeship;

• “government department” includes a Northern Ireland department and any part of the Scottish Administrationand any part of the Welsh Assembly Government.

• (2) References in this Part to “marketing”, in relation to an article, are to its being sold or let for hire, or offered or exposed for sale or hire, in the course of a business, and related expressions shall be construed accordingly; but no account shall be taken for the purposes of this Part of marketing which is merely colourable and not intended to satisfy the reasonable requirements of the public.

• (3) References in this Part to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business.

Index of defined expressions.

264

The following Table shows provisions defining or otherwise explaining expressions used in this Part (other than provisions defining or explaining an expression used only in the same section)—

Part IV — Registered Designs

Amendments of the Registered Designs Act 1949

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

265

Provisions with respect to certain designs registered in pursuance of application made before commencement.

266

• (1) Where a design is registered under the Registered Designs Act 1949 in pursuance of an application made after 12th January 1988 and before the commencement of this part which could not have been registered under section 1 of that Act as substituted by section 265 above—

• (a) the right in the registered design expires ten years after the commencement of this part, if it does not expire earlier in accordance with the 1949 Act, and

• (b) any person is, after the commencement of this Part, entitled as of right to a licence to do anything which would otherwise infringe the right in the registered design.

• (2) The terms of a licence available by virtue of this section shall, in default of agreement, be settled by the registrar on an application by the person requiring the licence; and the terms so settled shall authorise the licensee to do everything which would be an infringement of the right in the registered design in the absence of a licence.

• (3) In settling the terms of a licence the registrar shall have regard to such factors as may be prescribed by the Secretary of State by order made by statutory instrument.

No such order shall be made unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

• (4) Where the terms of a licence are settled by the registrar, the licence has effect from the date on which the application to the registrar was made.

• (5) Section 11B of the 1949 Act (undertaking to take licence of right in infringement proceedings), as inserted by section 270 below, applies where a licence is available as of right under this section, as it applies where a licence is available as of right under section 11A of that Act.

• (6) Where a licence is available as of right under this section, a person to whom a licence was granted before the commencement of this part may apply to the registrar for an order adjusting the terms of that licence.

• (7) an appeal lies from any decision of the registrar under this section.

• (8) This section shall be construed as one with the Registered Designs Act 1949.

Authorship and first ownership of designs.

267

• (1) Section 2 of the Registered Designs Act 1949 (proprietorship of designs) is amended as follows.

• (2) For subsection (1) substitute—

(1) The author of a design shall be treated for the purposes of this Act as the original proprietor of the design, subject to the following provisions. (1A) Where a design is created in pursuance of a commission for money or money’s worth, the person commissioning the design shall be treated as the original proprietor of the design. (1B) Where, in a case not falling within subsection (1A), a design is created by an employee in the course of his employment, his employer shall be treated as the original proprietor of the design.

.

• (3) After subsection (2) insert—

(3) In this Act the “author” of a design means the person who creates it. (4) In the case of a design generated by computer in circumstances such that there is no human author, the person by whom the arrangements necessary for the creation of thee design are made shall be taken to be the author.

.

• (4) The amendments made by this section do not apply in relation to an application for registration made before the commencement of this Part.

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

268

Duration of right in registered design.

269

• (1) For section 8 of the Registered Designs Act 1949 (period of right) substitute—

(8) (1) The right in a registered design subsists in the first instance for a period of five years from the date of the registration of the design. (2) The period for which the right subsists may be extended for a second, third, fourth and fifth period of five years, by applying to the registrar for an extension and paying the prescribed renewal fee. (3) If the first, second, third or fourth period expires without such application and payment being made, the right shall cease to have effect; and the registrar shall, in accordance with rules made by the Secretary of State, notify the proprietor of that fact. (4) If during the period of six months immediately following the end of that period an application for extension is made and the prescribed renewal fee and any prescribed additional fee is paid, the right shall be treated as if it had never expired, with the result that— (a) anything done under or in relation to the right during that further period shall be treated as valid, (b) an act which would have constituted an infringement of the right if it had not expired shall be treated as an infringement, and (c) an act which would have constituted use of the design for the services of the Crown if the right had not expired shall be treated as such use. (5) Where it is shown that a registered design— (a) was at the time it was registered a corresponding design in relation to an artistic work in which copyright subsists, and (b) by reason of a previous use of that work would not have been registrable but for section 6(4) of this Act (registration despite certain prior applications of design), the right in the registered design expires when the copyright in that work expires, if that is earlier than the time at which it would otherwise expire, and it may not thereafter be renewed. (6) The above provisions have effect subject to the proviso to section 4(1) (registration of same design in respect of other articles, &c.). (8A) (1) Where the right in a registered design has expired by reason of a failure to extend, in accordance with section 8(2) or (4), the period for which the right subsists, an application for the restoration of the right in the design may be made to the registrar within the prescribed period. (2) The application may be made by the person who was the registered proprietor of the design or by any other person who would have been entitled to the right in the design if it had not expired; and where the design was held by two or more persons jointly, the application may, with the leave of the registrar, be made by one or more of them without joining the others. (3) Notice of the application shall be published by the registrar in the prescribed manner. (4) If the registrar is satisfied that the proprietor took reasonable care to see that the period for which the right subsisted was extended in accordance with section 8(2) or (4), he shall, on payment of any unpaid renewal fee and any prescribed additional fee, order the restoration of the right in the design. (5) The order may be made subject to such conditions as the registrar thinks fit, and if the proprietor of the design does not comply with any condition the registrar may revoke the order and give such consequential directions as he thinks fit. (6) Rules altering the period prescribed for the purposes of subsection (1) may contain such transitional provisions and savings as appear to the Secretary of State to be necessary or expedient. (8B) (1) The effect of an order under section 8A for the restoration of the right in a registered design is as follows. (2) Anything done under or in relation to the right during the period between expiry and restoration shall be treated as valid. (3) Anything done during that period which would have constituted an infringement if the right had not expired shall be treated as an infringement— (a) if done at a time when it was possible for an application for extension to be made under section 8(4); or (b) if it was a continuation or repetition of an earlier infringing act. (4) If, after it was no longer possible for such an application for extension to be made and before publication of notice of the application for restoration, a person— (a) began in good faith to do an act which would have constituted an infringement of the right in the design if it had not expired, or (b) made in good faith effective and serious preparations to do such an act, he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the right in the design; but this does not extend to granting a licence to another person to do the act. (5) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (4) may— (a) authorise the doing of that act by any partners of his for the time being in that business, and (b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made. (6) Where an article is disposed of to another in exercise of the rights conferred by subsection (4) or subsection (5), that other and any person claiming through him may deal with the article in the same way as if it had been disposed of by the registered proprietor of the design. (7) The above provisions apply in relation to the use of a registered design for the services of the Crown as they apply in relation to infringement of the right in the design.

.

• (2) The above amendment does not apply in relation to the right in a design registered in pursuance of an application made before the commencement of this Part.

Powers exercisable for protection of the public interest.

270

In the Registered Designs Act 1949 after section 11 insert—

(11A) (1) Where a report of the Monopolies and Mergers Commission has been laid before Parliament containing conclusions to the effect— (a) on a monopoly reference, that a monopoly situation exists and facts found by the Commission operate or may be expected to operate against the public interest, (b) on a merger reference, that a merger situation qualifying for investigation has been created and the creation of the situation, or particular elements in or consequences of it specified in the report, operate or may be expected to operate against the public interest, (c) on a competition reference, that a person was engaged in an anti-competitive practice which operated or may be expected to operate against the public interest, or (d) on a reference under section 11 of the Competition Act 1980 (reference of public bodies and certain other persons), that a person is pursuing a course of conduct which operates against the public interest, the appropriate Minister or Ministers may apply to the registrar to take action under this section. (2) Before making an application the appropriate Minister or Ministers shall publish, in such a manner as he or they think appropriate, a notice describing the nature of the proposed application and shall consider any representations which may be made within 30 days of such publication by persons whose interests appear to him or them to be affected. (3) If on an application under this section it appears to the registrar that the matters specified in the Commission’s report as being those which in the Commission’s opinion operate or operated or may be expected to operate against the public interest include— (a) conditions in licences granted in respect of a registered design by its proprietor restricting the use of the design by the licensee or the right of the proprietor to grant other licences, or (b) a refusal by the proprietor of a registered design to grant licences on reasonable terms, he may by order cancel or modify any such condition or may, instead or in addition, make an entry in the register to the effect that licences in respect of the design are to be available as of right. (4) The terms of a licence available by virtue of this section shall, in default of agreement, be settled by the registrar on an application by the person requiring the licence; and terms so settled shall authorise the licensee to do everything which would be an infringement of the right in the registered design in the absence of a licence. (5) Where the terms of a licence are settled by the registrar the licence has effect from the date on which the application to him was made. (6) An appeal lies from any order of the registrar under this section. (7) In this section “the appropriate Minister or Ministers” means the Minister or Ministers to whom the report of the Monopolies and Mergers Commission was made. (11B) (1) If in proceedings for infringement of the right in a registered design in respect of which a licence is available as of right under section 11A of this Act the defendant undertakes to take a licence on such terms as may be agreed or, in default of agreement, settled by the registrar under that section— (a) no injunction shall be granted against him, and (b) the amount recoverable against him by way of damages or on an account of profits shall not exceed double the amount which would have been payable by him as licensee if such a licence on those terms had been granted before the earliest infringement. (2) An undertaking may be given at any time before final order in the proceedings, without any admission of liability. (3) Nothing in this section affects the remedies available in respect of an infringement committed before licences of right were available.

.

Crown use: compensation for loss of profit.

271

• (1) In Schedule 1 to the Registered Designs Act 1949 (Crown use), after paragraph 2 insert—

(2A) (1) Where Crown use is made of a registered design, the government department concerned shall pay— (a) to the registered proprietor, or (b) if there is an exclusive licence in force in respect of the design, to the exclusive licensee, compensation for any loss resulting from his not being awarded a contract to supply the articles to which the design is applied. (2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract. (3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing capacity was underused. (4) No compensation is payable in respect of any failure to secure contracts for the supply of articles to which the design is applied otherwise than for the services of the Crown. (5) The amount payable under this paragraph shall, if not agreed between the registered proprietor or licensee and the government department concerned with the approval of the Treasury, be determined by the court on a reference under paragraph 3; and it is in addition to any amount payable under paragraph 1 or 2 of this Schedule. (6) In this paragraph— - “Crown use”, in relation to a design, means the doing of anything by virtue of paragraph 1 which would otherwise be an infringement of the right in the design; and - “the government department concerned”, in relation to such use, means the government department by whom or on whose authority the act was done.

.

• (2) In paragraph 3 of that Schedule (reference of disputes as to Crown use), for sub-paragraph (1) substitute—

(1) Any dispute as to— (a) the exercise by a Government department, or a person authorised by a Government department, of the powers conferred by paragraph 1 of this Schedule, (b) terms for the use of a design for the services of the Crown under that paragraph, (c) the right of any person to receive any part of a payment made under paragraph 1(3), or (d) the right of any person to receive a payment under paragraph 2A, may be referred to the court by either party to the dispute.

.

• (3) The above amendments apply in relation to any Crown use of a registered design after the commencement of this section, even if the terms for such use were settled before commencement.

Minor and consequential amendments.

272

The Registered Designs Act 1949 is further amended in accordance with Schedule 3 which contains minor amendments and amendments consequential upon the provisions of this Act.

Supplementary

Text of Registered Designs Act 1949 as amended.

273

Schedule 4 contains the text of the Registered Designs Act 1949 as amended.

Part V — Patent Agents and Trade Mark Agents

Patent agents

Persons permitted to carry on business of a patent agent.

274

• (1) Any individual, partnership or body corporate may, subject to the following provisions of this Part and to the Legal Services Act 2007, carry on the business of acting as agent for others for the purpose of—

• (a) applying for or obtaining patents, in the United Kingdom or elsewhere, or

• (b) conducting proceedings before the comptroller relating to applications for, or otherwise in connection with, patents.

• (2) This does not affect any restriction under the European Patent Convention as to who may act on behalf of another for any purpose relating to European patents.

The register of patent attorneys

275

• (1) There is to continue to be a register of persons who act as agent for others for the purpose of applying for or obtaining patents.

• (2) In this Part a registered patent attorney means an individual whose name is entered on the register kept under this section.

• (3) The register is to be kept by the Chartered Institute of Patent Attorneys.

• (4) The Secretary of State may, by order, amend subsection (3) so as to require the register to be kept by the person specified in the order.

• (5) Before making an order under subsection (4), the Secretary of State must consult the Legal Services Board.

• (6) An order under this section must be made by statutory instrument.

• (7) An order under this section may not be made unless a draft of it has been laid before, and approved by a resolution of, each House of Parliament.

Regulation of patent attorneys

275A

• (1) The person who keeps the register under section 275 may make regulations which regulate—

• (a) the keeping of the register and the registration of persons;

• (b) the carrying on of patent attorney work by registered persons.

• (2) Those regulations may, amongst other things, make—

• (a) provision as to the educational and training qualifications, and other requirements, which must be satisfied before an individual may be registered or for an individual to remain registered;

• (b) provision as to the requirements which must be met by a body (corporate or unincorporate) before it may be registered, or for it to remain registered, including provision as to the management and control of the body;

• (c) provision as to the educational, training and other requirements to be met by regulated persons;

• (d) provision regulating the practice, conduct and discipline of registered persons or regulated persons;

• (e) provision authorising in such cases as may be specified in the regulations the erasure from the register of the name of any person registered in it, or the suspension of a person's registration;

• (f) provision requiring the payment of such fees as may be specified in or determined in accordance with the regulations;

• (g) provision about the provision to be made by registered persons in respect of complaints made against them;

• (h) provision about the keeping by registered persons or regulated persons of records and accounts;

• (i) provision for reviews of or appeals against decisions made under the regulations;

• (j) provision as to the indemnification of registered persons or regulated persons against losses arising from claims in respect of civil liability incurred by them.

• (3) Regulations under this section may make different provision for different purposes.

• (4) Regulations under this section which are not regulatory arrangements within the meaning of the Legal Services Act 2007 are to be treated as such arrangements for the purposes of that Act.

• (5) Before the appointed day, regulations under this section may be made only with the approval of the Secretary of State.

• (6) The powers conferred to make regulations under this section are not to be taken to prejudice—

• (a) any other power which the person who keeps the register may have to make rules or regulations (however they may be described and whether they are made under an enactment or otherwise);

• (b) any rules or regulations made by that person under any such power.

• (7) In this section—

• “appointed day” means the day appointed for the coming into force of paragraph 1 of Schedule 4 to the Legal Services Act 2007;

• “manager”, in relation to a body, has the same meaning as in the Legal Services Act 2007 (see section 207);

• “patent attorney work” means work done in the course of carrying on the business of acting as agent for others for the purpose of—applying for or obtaining patents, in the United Kingdom or elsewhere, orconducting proceedings before the comptroller relating to applications for, or otherwise in connection with, patents;

• “registered person” means—a registered patent attorney, ora body (corporate or unincorporate) registered in the register kept under section 275;

• “regulated person” means a person who is not a registered person but is a manager or employee of a body which is a registered person.

Persons entitled to describe themselves as patent agents.

276

• (1) An individual who is not a registered patent attorney shall not—

• (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “patent agent” or “patent attorney”; or

• (b) in the course of a business otherwise describe himself, or permit himself to be described, as a “patent agent” or “patent attorney”.

• (2) A partnership or other unincorporated body shall not—

• (a) carry on a business under any name or other description which contains the words “patent agent” or “patent attorney”; or

• (b) in the course of a business otherwise describe itself, or permit itself to be described as, a firm of “patent agents” or “patent attorneys”,

unless the partnership or other body is registered in the register kept under section 275.

• (3) A body corporate shall not—

• (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “patent agent” or “patent attorney”; or

• (b) in the course of a business otherwise describe itself, or permit itself to be described as, a “patent agent” or “patent attorney”,

unless the body corporate is registered in the register kept under section 275.

• (4) Subsection (3) does not apply to a company which began to carry on business as a patent agent before 17th November 1917 if the name of a director or the manager of the company who is a registered patent attorney is mentioned as being so registered in all professional advertisements, circulars or letters issued by or with the company’s consent on which its name appears.

• (5) Where this section would be contravened by the use of the words “patent agent” or “patent attorney” in reference to an individual, partnership or body corporate, it is equally contravened by the use of other expressions in reference to that person, or his business or place of business, which are likely to be understood as indicating that he is entitled to be described as a “patent agent” or “patent attorney”.

• (6) A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding level 5 on the standard scale; and proceedings for such an offence may be begun at any time within a year from the date of the offence.

• (7) This section has effect subject to—

• (a) section 277 (persons entitled to describe themselves as European patent attorneys, &c.), and

• (b) section 278(1) (use of term “patent attorney” in reference to solicitors).

Persons entitled to describe themselves as European patent attorneys, &c.

277

• (1) The term “European patent attorney” or “European patent agent” may be used in the following cases without any contravention of section 276.

• (2) An individual who is on the European list may—

• (a) carry on business under a name or other description which contains the words “European patent attorney” or “European patent agent”, or

• (b) otherwise describe himself, or permit himself to be described, as a “European patent attorney” or “European patent agent”.

• (3) A partnership of which not less than the prescribed number or proportion of partners is on the European list may—

• (a) carry on a business under a name or other description which contains the words “European patent attorneys” or “European patent agents”, or

• (b) otherwise describe itself, or permit itself to be described, as a firm which carries on the business of a “European patent attorney” or “European patent agent”.

• (4) A body corporate of which not less than the prescribed number or proportion of directors is on the European list may—

• (a) carry on a business under a name or other description which contains the words “European patent attorney” or “European patent agent”, or

• (b) otherwise describe itself, or permit itself to be described as, a company which carries on the business of a “European patent attorney” or “European patent agent”.

• (5) Where the term “European patent attorney” or “European patent agent” may, in accordance with this section, be used in reference to an individual, partnership or body corporate, it is equally permissible to use other expressions in reference to that person, or to his business or place of business, which are likely to be understood as indicating that he is entitled to be described as a “European patent attorney” or “European patent agent.”

Use of the term “patent attorney”: supplementary provisions.

278

• (1) The term “patent attorney” may be used in reference to a solicitor, and a firm of solicitors may be described as a firm of “patent attorneys”, without any contravention of section 276.

• (2) No offence is committed under the enactments restricting the use of certain expressions in reference to persons not qualified to act as solicitors—

• (a) by the use of the term “patent attorney” in reference to a registered patent agent, or

• (b) by the use of the term “European patent attorney” in reference to a person on the European list.

• (3) The enactments referred to in subsection (2) are section 21 of the Solicitors Act 1974, section 31 of the Solicitors (Scotland) Act 1980 and Article 22 of the Solicitors (Northern Ireland) Order 1976.

Power to prescribe conditions, &c. for mixed partnerships and bodies corporate.

279

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Privilege for communications with patent agents.

280

• (1) This section applies to —

• (a) communications as to any matter relating to the protection of any invention, design, technical information, or trade mark, or as to any matter involving passing off , and

• (b) documents, material or information relating to any matter mentioned in paragraph (a).

• (2) Where a patent attorney acts for a client in relation to a matter mentioned in subsection (1), any communication, document, material or information to which this section applies is privileged from disclosure in like manner as if the patent attorney had at all material times been acting as the client's solicitor.

• (3) In subsection (2) “patent attorney” means—

• (a) a registered patent attorney or a person who is on the European list,

• (b) a partnership entitled to describe itself as a firm of patent attorneys or as a firm carrying on the business of a European patent attorney, ...

• (ba) an unincorporated body (other than a partnership) entitled to describe itself as a patent attorney, or

• (c) a body corporate entitled to describe itself as a patent attorney or as a company carrying on the business of a European patent attorney.

• (4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Power of comptroller to refuse to deal with certain agents.

281

• (1) This section applies to business under the Patents Act 1949, the Registered Designs Act 1949 or the Patents Act 1977.

• (2) The Secretary of State may make rules authorising the comptroller to refuse to recognise as agent in respect of any business to which this section applies—

• (a) a person who has been convicted of an offence under section 88 of the Patents Act 1949, section 114 of the Patents Act 1977 or section 276 of this Act;

• (b) a person whose name has been erased from and not restored to, or who is suspended from, the register of patent attorneys on the ground of misconduct;

• (c) a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of a person registered in the register of patent attorneys, render the person liable to have the person's name erased from the register on the ground of misconduct;

• (d) a partnership or body corporate of which one of the partners or directors is a person whom the comptroller could refuse to recognise under paragraph (a), (b) or (c) above.

• (3) The rules may contain such incidental and supplementary provisions as appear to the Secretary of State to be appropriate and may, in particular, prescribe circumstances in which a person is or is not to be taken to have been guilty of misconduct.

• (4) Rules made under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

• (5) The comptroller shall refuse to recognise as agent in respect of any business to which this section applies a person who neither resides nor has a place of business in the United Kingdom, the Isle of Man or a member State.

Trade mark agents

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282

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283

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284

Supplementary

Offences committed by partnerships and bodies corporate.

285

• (1) Proceedings for an offence under this Part alleged to have been committed by a partnership shall be brought in the name of the partnership and not in that of the partners; but without prejudice to any liability of theirs under subsection (4) 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, Wales or Northern Ireland, Schedule 3 to the Magistrates’ Courts Act 1980 or Schedule 4 to the Magistrates’ Courts (Northern Ireland) Order 1981 (procedure on charge of offence).

• (3) A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the partnership assets.

• (4) Where a partnership is guilty of an offence under this Part, 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.

• (5) Where an offence under this Part committed by a body corporate is proved to have been committed with the consent or connivance 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.

Interpretation.

286

In this Part—

• “the comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;

• “director”, in relation to a body corporate whose affairs are managed by its members, means any member of the body corporate;

• “the European list” means the list of professional representatives maintained by the European Patent Office in pursuance of the European Patent Convention;

• “registered patent attorney” has the meaning given by section 275 (2);

• . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Part VI — Patents

Patents county courts

Patents county courts: special jurisdiction.

287

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Financial limits in relation to proceedings within special jurisdiction of patents county court.

288

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Transfer of proceedings between High Court and patents county court.

289

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Limitation of costs where pecuniary claim could have been brought in patents county court.

290

• (1) Where an action is commenced in the High Court which could have been commenced in a patents county court and in which a claim for a pecuniary remedy is made, then, subject to the provisions of this section, if the plaintiff recovers less than the prescribed amount, he is not entitled to recover any more costs than those to which he would have been entitled if the action had been brought in the county court.

• (2) For this purpose a plaintiff shall be treated as recovering the full amount recoverable in respect of his claim without regard to any deduction made in respect of matters not falling to be taken into account in determining whether the action could have been commenced in a patents county court.

• (3) This section does not affect any question as to costs if it appears to the High Court that there was reasonable ground for supposing the amount recoverable in respect of the plaintiff’s claim to be in excess of the prescribed amount.

• (4) The High Court, if satisfied that there was sufficient reason for bringing the action in the High Court, may make an order allowing the costs or any part of the costs on the High Court scale or on such one of the county court scales as it may direct.

• (5) This section does not apply to proceedings brought by the Crown.

• (6) In this section “the prescribed amount” means such amount as may be prescribed by Her Majesty for the purposes of this section by Order in Council.

• (7) No recommendation shall be made to Her Majesty to make an Order under this section unless a draft of the Order has been laid before and approved by a resolution of each House of Parliament.

Proceedings in patents county court.

291

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Rights and duties of registered patent agents in relation to proceedings in patents county court.

292

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Licences of right in respect of certain patents

Restriction of acts authorised by certain licences.

293

In paragraph 4(2)(c) of Schedule 1 to the Patents Act 1977 (licences to be available as of right where term of existing patent extended), at the end insert “, but subject to paragraph 4A below”, and after that paragraph insert—

(4A) (1) If the proprietor of a patent for an invention which is a product files a declaration with the Patent Office in accordance with this paragraph, the licences to which persons are entitled by virtue of paragraph 4(2)(c) above shall not extend to a use of the product which is excepted by or under this paragraph. (2) Pharmaceutical use is excepted, that is— (a) use as a medicinal product within the meaning of the Medicines Act 1968, and (b) the doing of any other act mentioned in section 60(1)(a) above with a view to such use. (3) The Secretary of State may by order except such other uses as he thinks fit; and an order may— (a) specify as an excepted use any act mentioned in section 60(1)(a) above, and (b) make different provision with respect to acts done in different circumstances or for different purposes. (4) For the purposes of this paragraph the question what uses are excepted, so far as that depends on— (a) orders under section 130 of the Medicines Act 1968 (meaning of “medicinal product”), or (b) orders under sub-paragraph (3) above, shall be determined in relation to a patent at the beginning of the sixteenth year of the patent. (5) A declaration under this paragraph shall be in the prescribed form and shall be filed in the prescribed manner and within the prescribed time limits. (6) A declaration may not be filed— (a) in respect of a patent which has at the commencement of section 293 of the Copyright, Designs and Patents Act 1988 passed the end of its fifteenth year; or (b) if at the date of filing there is— (i) an existing licence for any description of excepted use of the product, or (ii) an outstanding application under section 46(3)(a) or (b) above for the settlement by the comptroller of the terms of a licence for any description of excepted use of the product, and, in either case, the licence took or is to take effect at or after the end of the sixteenth year of the patent. (7) Where a declaration has been filed under this paragraph in respect of a patent— (a) section 46(3)(c) above (restriction of remedies for infringement where licences available as of right) does not apply to an infringement of the patent in so far as it consists of the excepted use of the product after the filing of the declaration; and (b) section 46(3)(d) above (abatement of renewal fee if licences available as of right) does not apply to the patent.

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When application may be made for settlement of terms of licence.

294

In Schedule 1 to the Patents Act 1977, after the paragraph inserted by section 293 above, insert—

(4B) (1) An application under section 46(3)(a) or (b) above for the settlement by the comptroller of the terms on which a person is entitled to a licence by virtue of paragraph 4(2)(c) above is ineffective if made before the beginning of the sixteenth year of the patent. (2) This paragraph applies to applications made after the commencement of section 294 of the Copyright, Designs and Patents Act 1988 and to any application made before the commencement of that section in respect of a patent which has not at the commencement of that section passed the end of its fifteenth year.

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Patents: miscellaneous amendments

Patents: miscellaneous amendments.

295

The Patents Act 1949 and the Patents Act 1977 are amended in accordance with Schedule 5.

Part VII — Miscellaneous and General

Circumvention of protection measures

Devices designed to circumvent copy-protection.

296

• (1) This section applies where—

• (a) a technical device has been applied to a computer program; and

• (b) a person (A) knowing or having reason to believe that it will be used to make infringing copies—

• (i) manufactures for sale or hire, imports, distributes, sells or lets for hire, offers or exposes for sale or hire, advertises for sale or hire or has in his possession for commercial purposes any means the sole intended purpose of which is to facilitate the unauthorised removal or circumvention of the technical device; or

• (ii) publishes information intended to enable or assist persons to remove or circumvent the technical device.

• (2) The following persons have the same rights against A as a copyright owner has in respect of an infringement of copyright—

• (a) a person—

• (i) issuing to the public copies of, or

• (ii) communicating to the public,

the computer program to which the technical device has been applied;

• (b) the copyright owner or his exclusive licensee, if he is not the person specified in paragraph (a);