Copyright, Designs and Patents Act 1988 (c. 48)

(The document as of February, 2008)

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(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 circumstance such that there is no human author, the person by whom the arrangements necessary for the creation of the 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 Right given by registration of design

(1) For section 7 of the Registered Designs Act 1949 (right given by registration) substitute--

" 7 Right given by registration

(1) The registration of a design under this Act gives the registered proprietor the exclusive right--

(a) to make or import--

(i) for sale or hire, or

(ii) for use for the purposes of a trade or business, or

(b) to sell, hire or offer or expose for sale or hire,

an article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.

(2) The right in the registered design is infringed by a person who without the licence of the registered proprietor does anything which by virtue of subsection (1) is the exclusive right of the proprietor.

(3) The right in the registered design is also infringed by a person who without the licence of the registered proprietor makes anything for enabling any such article to be made, in the United Kingdom or elsewhere, as mentioned in subsection (1).

(4) The right in the registered design is also infringed by a person who without the licence of the registered proprietor--

(a) does anything in relation to a kit that would be an infringement if done in relation to the assembled article (see subsection (1)), or

(b) makes anything for enabling a kit to be made or assembled, in the United Kingdom or elsewhere, if the assembled article would be such an article as is mentioned in subsection (1);

and for this purpose a "kit" means a complete or substantially complete set of components intended to be assembled into an article.

(5) No proceedings shall be taken in respect of an infringement committed before the date on which the certificate of registration of the design under this Act is granted.

(6) The right in a registered design is not infringed by the reproduction of a feature of the design which, by virtue of section 1(1)(b), is left out of account in determining whether the design is registrable. " .

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

269 Duration of right in registered design

(1) For section 8 of the [1949 c. 88.] Registered Designs Act 1949 (period of right) substitute--

" 8 Duration of right in registered design

(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 Restoration of lapsed right in design

(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 Effect of order for restoration of right

(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.

270 Powers exercisable for protection of the public interest

In the [1949 c. 88.] Registered Designs Act 1949 after section 11 insert--

" 11A Powers exercisable for protection of the public interest

(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 Undertaking to take licence of right in infringement proceedings

(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. " .

271 Crown use: compensation for loss of profit

(1) In Schedule 1 to the [1949 c. 88.] Registered Designs Act 1949 (Crown use), after paragraph 2 insert--

" Compensation for loss of profit

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,

(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.

272 Minor and consequential amendments

The [1949 c. 88.] 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

273 Text of Registered Designs Act 1949 as amended

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

Part V Patent Agents and Trade Mark Agents

Patent agents

274 Persons permitted to carry on business of a patent agent

(1) Any individual, partnership or body corporate may, subject to the following provisions of this Part, 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.

275 The register of patent agents

(1) The Secretary of State may make rules requiring the keeping of a register of persons who act as agent for others for the purposes of applying for or obtaining patents; and in this Part a "registered patent agent" means a person whose name is entered in the register kept under this section.

(2) The rules may contain such provision as the Secretary of State thinks fit regulating the registration of persons, and may in particular--

(a) require the payment of such fees as may be prescribed, and

(b) authorise in prescribed cases the erasure from the register of the name of any person registered in it, or the suspension of a person's registration.

(3) The rules may delegate the keeping of the register to another person, and may confer on that person--

(a) power to make regulations--

(i) with respect to the payment of fees, in the cases and subject to the limits prescribed by rules, and

(ii) with respect to any other matter which could be regulated by rules, and

(b) such other functions, including disciplinary functions, as may be prescribed by rules.

(4) Rules 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.

276 Persons entitled to describe themselves as patent agents

(1) An individual who is not a registered patent agent 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 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 all the partners are registered patent agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

(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 all the directors of the body corporate are registered patent agents or the body satisfies such conditions as may be prescribed for the purposes of this section.

(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 agent 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).

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

(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."

278 Use of the term "patent attorney": supplementary provisions

(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 [1974 c. 37.] Solicitors Act 1974, section 31 of the [1980 c. 46.] Solicitors (Scotland) Act 1980 and Article 22 of the [S.I. 1976/582 (N.I.12).] Solicitors (Northern Ireland) Order 1976.

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

(1) The Secretary of State may make rules--

(a) prescribing the conditions to be satisfied for the purposes of section 276 (persons entitled to describe themselves as patent agents) in relation to a partnership where not all the partners are qualified persons or a body corporate where not all the directors are qualified persons, and

(b) imposing requirements to be complied with by such partnerships and bodies corporate.

(2) The rules may, in particular--

(a) prescribe conditions as to the number or proportion of partners or directors who must be qualified persons;

(b) impose requirements as to--

(i) the identification of qualified and unqualified persons in professional advertisements, circulars or letters issued by or with the consent of the partnership or body corporate and which relate to it or to its business; and

(ii) the manner in which a partnership or body corporate is to organise its affairs so as to secure that qualified persons exercise a sufficient degree of control over the activities of unqualified persons.

(3) Contravention of a requirement imposed by the rules is an offence for which a person is liable on summary conviction to a fine not exceeding level 5 on the standard scale.

(4) The Secretary of State may make rules prescribing for the purposes of section 277 the number or proportion of partners of a partnership or directors of a body corporate who must be qualified persons in order for the partnership or body to take advantage of that section.

(5) In this section "qualified person"--

(a) in subsections (1) and (2), means a person who is a registered patent agent, and

(b) in subsection (4), means a person who is on the European list.

(6) Rules 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.

280 Privilege for communications with patent agents

(1) This section applies to communications as to any matter relating to the protection of any invention, design, technical information, trade mark or service mark, or as to any matter involving passing off.

(2) Any such communication--

(a) between a person and his patent agent, or

(b) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his patent agent,

is privileged from disclosure in legal proceedings in England, Wales or Northern Ireland in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person seeks for the purpose of instructing his solicitor.

(3) In subsection (2) "patent agent" means--

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

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

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

(4) It is hereby declared that in Scotland the rules of law which confer privilege from disclosure in legal proceedings in respect of communications extend to such communications as are mentioned in this section.

281 Power of comptroller to refuse to deal with certain agents

(1) This section applies to business under the [1949 c. 88.] Patents Act 1949, the [1949 c. 87.] Registered Designs Act 1949 or the [1977 c. 37.] 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) an individual whose name has been erased from and not restored to, or who is suspended from, the register of patent agents 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 an individual registered in the register of patent agents, render him liable to have his 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 another member State of the European Economic Community.

Trade mark agents

282 The register of trade mark agents

(1) The Secretary of State may make rules requiring the keeping of a register of persons who act as agent for others for the purpose of applying for or obtaining the registration of trade marks; and in this Part a "registered trade mark agent" means a person whose name is entered in the register kept under this section.

(2) The rules may contain such provision as the Secretary of State thinks fit regulating the registration of persons, and may in particular--

(a) require the payment of such fees as may be prescribed, and

(b) authorise in prescribed cases the erasure from the register of the name of any person registered in it, or the suspension of a person's registration.

(3) The rules may delegate the keeping of the register to another person, and may confer on that person--

(a) power to make regulations--

(i) with respect to the payment of fees, in the cases and subject to the limits prescribed by rules, and

(ii) with respect to any other matter which could be regulated by rules, and

(b) such other functions, including disciplinary functions, as may be prescribed by rules.

(4) Rules 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.

283 Unregistered persons not to be described as registered trade mark agents

(1) An individual who is not a registered trade mark agent shall not--

(a) carry on a business (otherwise than in partnership) under any name or other description which contains the words "registered trade mark agent"; or

(b) in the course of a business otherwise describe or hold himself out, or permit himself to be described or held out, as a registered trade mark agent.

(2) A partnership shall not--

(a) carry on a business under any name or other description which contains the words "registered trade mark agent"; or

(b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a firm of registered trade mark agents,

unless all the partners are registered trade mark agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

(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 "registered trade mark agent"; or

(b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a registered trade mark agent,

unless all the directors of the body corporate are registered trade mark agents or the body satisfies such conditions as may be prescribed for the purposes of this section.

(4) The Secretary of State may make rules prescribing the conditions to be satisfied for the purposes of this section in relation to a partnership where not all the partners are registered trade mark agents or a body corporate where not all the directors are registered trade mark agents; and the rules may, in particular, prescribe conditions as to the number or proportion of partners or directors who must be registered trade mark agents.

(5) Rules 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.

284 Privilege for communications with registered trade mark agents

(1) This section applies to communications as to any matter relating to the protection of any design, trade mark or service mark, or as to any matter involving passing off.

(2) Any such communication--

(a) between a person and his trade mark agent, or

(b) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his trade mark agent,

(3) In subsection (1) "trade mark agent" means--

(a) a registered trade mark agent, or

(b) a partnership entitled to describe itself as a firm of registered trade mark agents, or

Supplementary

285 Offences committed by partnerships and bodies corporate

(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 [1980 c. 43.] Magistrates' Courts Act 1980 or Schedule 4 to the [S.I. 1981/1675 (N.I. 26).] 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.

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