By Owen Bowcott
The Guardian (UK)
Stealing registered designs and selling counterfeit products for profit will become a criminal offence punishable by up to 10 years in prison, the government’s Intellectual Property Office (IPO) has announced.
The measure, confirmed in the Queen’s speech, will provide designers of cars, smartphones, furniture, computers and other manufactured items with the same level of protection that prohibits the distribution of pirated DVDs and films.
According to the brief outline given to parliament, the bill in which the measure will appear is intended to “make it easier for businesses to protect their intellectual property”.
The changes come in response to the Hargreaves review of intellectual property rights, which was commissioned by the prime minister and published in 2011. The design industry in the UK is estimated to be worth at least £35.5bn a year.
The new sanctions, it is proposed, will cover only the deliberate copying, importing or marketing of designs for commercial gain that have been formally registered with either UK or EU authorities. Such privileged, registered status usually lasts for up to 25 years.
The IPO report describes the change as “a significant deterrent effect against deliberate copying that current civil sanctions do not supply”. At present firms have to pursue a civil action against those they allege have infringed their patent rights.
The report adds: “The introduction of criminal sanctions for the counterfeiting and piracy of copyright protected [DVDs and films] provides a precedent.”
Those found guilty of pirating copyrighted DVDs and films for commercial gain face up to 10 years in prison. A similar maximum sentence level will apply to those deliberately infringing design patents.
The report argues that a fake iPhone steals the Apple design “as much as it does the trademark and any copyright existing in applications stored on it. Extending criminal sanctions to designs will reflect the ‘suite’ of theft that has occurred and forms a necessary weapon in the armoury of enforcement authorities.”
Industry lobbied strongly for the introduction of criminal sanctions. Acid, the Anti-Copying in Design group, argued in its submission that “there is no difference in the creative input of an artist and furniture designer, for example, but one has criminal sanctions and the other doesn’t”. It claimed that one designer alone had lost £350,000 in sales of illegally copied T-shirts.
Many lawyers involved in patent cases claimed there was little evidence to justify the need for a new criminal offence being introduced and that it was done to please the large corporate designers.
The Chartered Institute of Patent Attorneys warned there was a danger of a backlash in public opinion against design rights if copying was branded “as criminal behaviour which the public would not see as such”.
Will James, a partner at intellectual property firm Marks & Clerk Solicitors, told the Guardian: “There doesn’t seem to be an awful lot of evidence being offered up for this change. Should the government be enhancing legal monopolies with criminal measures or is the current system sufficient to encourage and protect investment in innovation but also flexible enough to allow the recycling of ideas back into industry? Imposing criminal sanctions on people who have infringed a registered design is a draconian move and the criminal justice system is not equipped to decide these cases.”
Among prominent campaigners in favour of criminalising the copy of designs patents was Trevor Baylis, the inventor of the wind-up radio.
A spokesperson for the IPO said: “A criminal offence for registered design theft is intended to create a coherent approach to the protection of designs, trade marks and copyright in the UK, reduce the scale of registered design infringement by acting as a deterrent and better punish perpetrators of blatant design infringement.”