Keeping abreast of changes and standards is crucial in ensuring you’ve properly protected your IP
Patents Act of 1977, as last amended by the Patents Act of 2004
This is the principal domestic patent legislation, establishing a new law for patents and giving effect to certain international conventions.
Patents Rules 1995 (SI 1995/2093)
These Rules are secondary legislation which set out the procedural aspects of all dealings with the Patent Office, including details associated with making a patent application. The Rules have subsequently been amended by four pieces of legislation, namely:
- The Patents (Amendment) Rules 1999 (SI 1999 No 1092)
- The Patents and Trade Marks (World Trade Organisation) Regulations 1999 (SI 1999 No 1899)
- The Patents (Amendment)(No 2) Rules 1999 (SI 1999 No 3197)
- The Patents (Amendment) Rules 2001 (SI 2001 No 1412)
- The Patents (Amendment) Rules 2002 (SI 2002 No 529)
- The Patents (Electronic Communications) (Amendment) Rules 2003 (SI 2003 No 513)
Patents (Fees) Rules 1998 (SI 1998/1778)
These Rules outline the fees payable to the Patent Office for matters arising out of the Patent Act 1977 and the Patent Rules 1995.
Patents (Supplementary Protection Certificates) Rules 1997 (SI 1997/64)
Secondary legislation that gives effect to European Council Regulations and affords supplemental protection to plant protection products and medicinal products.
Paris Convention for the Protection of Intellectual Property (1883)
The Convention is supervised by the World Intellectual Property Organisation (WIPO) and in 1996 136 countries were signatories. The main effects of the Convention are that citizens of the Convention signatories are treated alike to domestic nationals in the countries in which they seek patent protection. The backdating of applications (up to 12 months) is also possible where an application is granted in another Convention country first.
Convention on the Grant of European Patents (1973)
This Convention establishes a common system of law among the contracting states and establishes the European Patent Organisation. The following protocols came out of this Convention:
- Protocol on Jurisdiction and Recognition of Decisions in Respect of the Right to the Grant of a European Patent (Protocol on Recognition)
- Protocol on Privileges and Immunities of the European Patent Organisation (Protocol on Privileges and Immunities)
- Protocol on the Centralisation of the European Patent System and on its Introduction (Protocol on Centralisation)
- Protocol on the Interpretation of Article 69 of the Convention
Act revising the Convention on the Grant of European Patents (2000)
Revising the Convention, this legislation applies to all European patent applicants made after the effective date of this Act.
European Patent Convention 1973
This Convention sets up the system for a 'European Patent' which is available to European and non-European countries. It currently offers protection in 20 (soon to be 28) countries to European Patent holders.
Patent Co-operation Treaty (1970) (as amended)
The Treaty allows for a single 'International Patent Application'. The Treaty is open to all countries that are members of the Paris Convention. In the UK the Treaty is brought into effect by the Patents Act 1977.
Regulations under the Patent Co-operation Treaty (1970 as amended)
Legislation setting out rules for the submission of International Patent Applications.
Trade Marks Act of 1994
Replacing the 1938 Trade Marks Act, this is the principal primary piece of domestic trade mark legislation. It also harmonises European and UK legislation and paves the way for the ratification of the Madrid Protocol on the International Registration of Marks.
Trade Marks Rules 2000 (SI 2000/136) (as amended by the Trade Marks (Amendments) Rules 2004 (SI 2004/947))
In a similar way to the Patent Rules 1995 (above), these Rules set out the procedural aspects of dealings with Patent Office in relation to trade marks.
Trade Marks (Customs) Regulations 1994 (SI 1994/2625)
Secondary legislation dictating the procedures to be carried out when giving notice about an infringing trade mark to the Commissioners of Customs and Excise and requesting that they treat goods displaying the mark as prohibited goods.
First Council Directive 89/104EEC to approximate the laws of members of the member states relating to trade marks
This piece of European Legislation is aimed at harmonising the existing laws of member states relating to trade marks.
Commission Regulation 2868/95EC implementing Council Regulation (EC) No 40/94 on the Community trade mark
Adopting a single unified trade mark for use in the Community. The Regulation makes it possible for Community Trade Marks (CTMs to co-exist with national trade marks. The Regulation also covers the establishment and organisation of Community Trade Marks Office (also known as the Office for the Harmonisation of the Internal Market (Trade marks and Designs) (OHIM).
Community Trade Marks Regulations 1996 (SI 1996/1908) (as amended by the Community Trade Mark (Amendment) Regulations 2004 (SI 2004/949))
Regulations setting out procedural rules in relation to Community trade marks.
Paris Convention for the Protection of Intellectual Property (1883)
As above for Patents.
Madrid Agreement Concerning the International Registration of Marks (1891)
The Agreement provided a system where a member country could apply to their national trade mark office for a single international trade mark which would be valid in all the contracting states. The UK did not ratify the Agreement and instead a more satisfactory Protocol was adopted in 1989 (see below).
Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Adopted 1989)
The Madrid Protocol came into force in 1996 and runs alongside the Madrid Agreement (although effectively replaces it). Since 1996 the UK Trade Marks Office accepts Protocol applications and forwards these to the World Intellectual Property Organisation (WIPO) for registration. Currently protection under the Protocol and the Madrid Agreement extends to over 60 countries.
Trade marks (International Registrations) Order 1996 (SI 1996/714) (as amended by the Trade Marks International Registrations (Amendment) Order 2002 (SI 2002/692) and the Trade Marks International Registrations) (Amendment) Order 2004 (SI 2004/948))
This legislation gives effect to the Protocol and deals with administrative matters arising out of implementation.
Trade Marks (Proof of Use etc) Regulations 2004
This legislation amends the Trade Marks Act 1994 in relation to the opposition procedure to a trade mark registration.
Registered Designs Act of 1949, as last amended by the Copyright, Designs and Patents Act of 1988 - Part III
The principal primary piece of domestic legislation setting out the conditions necessary for protection of designs and the extent of protection available. An overlap exists with the Copyright, Designs and Patents Act that provides a degree of protection for unregistered designs.
Registered Design Rules 1995 SI 1995/2912
Rules relating to the Registered Designs Act 1949 setting out the procedures for dealing with the Patent Office.
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs
This European legislation is intended to harmonise the law relating to designs throughout Europe. This has brought about significant changes to certain areas of existing designs law in the UK. These changes include the introduction of a 'grace period' for disclosure of a design (previously a design must not be disclosed before registration); a new test for the 'individual character' of a design; a new test for the 'novelty' of a design; protection will now apply to parts of products and component parts, handicraft items and single items; the design itself is now protected not the article bearing the design. The Directive has been implemented in the UK by the following Rules and Regulations:
- The Registered Designs Regulations 2001 (SI No 3949)
- The Registered Designs (Amendment) Rules 2001 (SI No 3950)
- The Registered Designs (Fees) (Amendment) Rules 2001 (SI No 3951)
- The Registered Designs Regulations 2003 (SI No 550)
- The Community Design (Fees) Regulations 2002 (SI No 2942)
Council Regulation (EC) No 6/2002 on Community Designs
This legislation, creating a system enabling a design having effect throughout the Community to be obtained on the basis of an application to the Office of Harmonisation in the Internal Market, was implemented by Commission Regulation 2245/2002/EC.
Community Design Regulations 2005
These Regulations, brought into force on 1 October 2005, ensure compatibility between UK and European Community design systems.
The Copyright, etc and Trade Marks (Offences and Enforcement) Act 2002
The Act removes some of the differences in the criminal provisions in the law relating to intellectual property rights through three key areas. The maximum penalties for certain offences are raised, search and seizure powers relating to offences are improved and court orders on the forfeiture of illegal material that may have been seized during the investigation of offences are also improved. The Act does not make any changes to the scope of criminal offences in law on Copyright and Trade Marks so the type of behaviour that can give rise to an offence remains the same.
Copyright (Visually Impaired Persons) Act 2002
This Act, which came into force on 31 October 2003, introduces exceptions to copyright (ie a right to copy without being held to infringe) for the benefit of visually impaired people.
Copyright, Designs and Patents Act of 1988
This Act is the main legislation of the UK on copyright and rights in performances. The provisions of the Act have been amended as a result of copyright related European Community Directives. The Directives and implementing legislation are as follows:
- Directive: 91/250/EEC on the Legal Protection of Computer Programs
Implemented by: the Copyright (Computer Programs) Regulations 1992 Statutory Instrument (SI) 1992 No 3233 (came into force on 1 January 1993).
- Directive: 92/100/EEC on Rental, Lending and Other Rights in the Copyright Field
- Directive: 93/83/EEC on Copyright and Related Rights in Relation to Cable and Satellite Broadcasting
Implemented by: the Copyright and Related Rights Regulations 1996 SI 1996 No. 2967 (came into force on 1 December 1996)
- Directive: 93/98/EEC on the Duration of Copyright and Related Rights
Implemented (with the exception of Article 4) by: the Duration of Copyright and Rights in Performances Regulations 1995 SI 1995 No. 3297 (came into force on 1 January 1996). (Article 4 of this Directive is implemented by the Copyright and Related Rights Regulations SI No. 2967 of 1996.)
- Directive: 96/9/EC on the Legal Protection of Databases
Implemented by: the Copyright and Rights in Databases Regulations 1997 SI 1997 No. 3032 (came into force on 1 January 1998).
- Article 3(1) of Council Regulation (EC) No. 3295/94
Implemented by: The Copyright (EC Measures Relating to Pirated Goods and Abolition of Restrictions on the Import of Goods) Regulations 1995 Statutory Instrument (SI) 1995 No. 1445 (came into force on 1 July 1995, to be replaced by Council Regulation (EC) No 1383/2003, 22 July 2003).
- Council Regulation (EC) No 1383/2003, 22 July 2003
The EC Council has adopted a new Customs Regulation in response to the escalating level of counterfeit and pirated goods in the EU. The new regulation is more user friendly and extends its scope to new intellectual property rights. It came into force in 2004.
- Directive: 2001/29 EC on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society ('the Directive')
Implemented by: the Copyright and Related Rights Regulations 2003 Statutory Instrument (SI) 2003 No. 2498 (came into force on 31 October 2003). The Directive was designed to clarify and harmonise EU copyright law and in particular rights of reproduction, distribution and communication, and the legal protection of anti-copying devices and rights management systems.
Among other matters, member states have an obligation to provide legal protection from the circumvention of 'technological measures' designed to minimise or prevent copyright infringement, such as encryption. A new civil remedy will probably be introduced against such unauthorised acts. Member states are also required to protect against the manufacture of, or dealing in, illegal circumvention devices and services. In addition to civil remedies, criminal sanctions are expected, consistent with the existing copyright offences.
- Copyright and Related Rights Regulations 2003
These Regulations came into force on 31 October 2003 and amend various provisions in relation to performing rights. The regulations bring UK legislation in line with EU Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society, which entered into force on 22 June 2001
Copyright Tribunal Rules 1989 (SI 1989/1129)
Rules regulating the procedure to be followed in the Copyright Tribunal.
The Broadcasting Act of 1990 - Part IX
This Act amends the Copyright, Designs and Patents Act 1988 (above) by creating two new forms of compulsory licence for the broadcast of sound recordings and the provision of information about broadcast programmes.
The Broadcasting Act of 1996 - Part VII
Amending the earlier Broadcasting Act of 1990.
Berne Convention for the Protection of Literary and Artistic Works (1971)
The Berne Convention establishes a general and minimum period of copyright that lasts the life of the author and 50 years after his (or her) death. These periods are applicable to signatories to the Convention who are free to establish greater periods of protection in their jurisdiction.
Universal Copyright Convention
This is seen as a progressive step towards the level of protection given by Berne for developing countries. As for Berne, minimum levels of copyright protection are set out and the principle of national treatment applies, without the need to comply with local formalities. Two terms of protection are given, being the life of the author plus 25 years, or, upon publication, 25 years from the date of first publication.
Provided that the © symbol is used and the year of publication and the identity of the copyright owner is affixed to the material, the signatories undertake to provide protection for both published and unpublished literary, scientific and artistic works.
WIPO Copyright Treaty
The World Intellectual Property Organisation (WIPO) is responsible for administering Berne. This Treaty operates alongside Berne. The Treaty also puts contracting authorities under obligations to provide protection for authors from individuals circumventing technical measures authors have put in place to prevent infringement of their rights. Further, contracting countries are obliged to provide authors with remedies against people who remove/alter electronic rights management information or distribute works knowing that such information has been altered or removed.
The Treaty entered into force on 6 March 2002. It gives authors the exclusive right to authorise the distribution of their work (a copy or the original) through a sale or other form of transfer of ownership, commercial rental and further, any communication of their work by wire or wireless means. The period of protection is generally the life of the author plus 50 years.
Trade Related Intellectual Property Agreements (TRIPS)
This establishes minimum standards for the protection and enforcement of all key IP rights. Its effect is very significant, but may not be completely seen yet, as some countries had up to 10 years to apply some provisions since it was signed in 1994. The rights covered are copyright and related rights, trade marks, industrial design, patents, integrated circuits and trade secrets. Regarding the term of protection, article 7(1) of the Berne Convention is incorporated into the TRIPS Agreement which generally speaking provides the term of protection shall be the life of the author plus 50 years.