Who owns that design?

On 1 October 2014 the Intellectual Property Act 2014 comes into force. Under it, the legal owner of an unregistered design is the person who created it not who commissioned it. How can you protect your position?

Framework. For some time the government has been concerned that smaller companies are at a disadvantage when it comes to protecting their various intellectual property (IP) rights. This is partly because the law in this area – the Registered Designs Act 1949 , the Patents Act 1977 and theCopyright, Designs and Patents Act 1988 – is pretty old. So it’s introducing a new Intellectual Property Act 2014 which makes a number of important changes (see The next step ).

Under new ownership. The Act will start coming into force on 1 October 2014 and should be fully implemented by the end of 2015. One of the first changes it makes is to the legal ownership of “unregistered designs” – these could be an industrial item, packaging for a product, a logo, new typeface in a brochure, graphic symbol or an item intended to be assembled into a more complex product. Depending on your business, you may either create the design (for yourself or others) or commission someone to do it for you, e.g. a freelance designer.

As you were. Previously, where a design was commissioned, its legal owner was the person who asked for it to be created, not the designer. The Act will reverse this and provides that, subject to any contractual agreement to the contrary, the legal owner of a design is the designer not the commissioner. Where a design is used without permission, the legal owner can enforce their IP rights.

Tip. If your company commissions a design on, or after, 1 October 2014, make sure the contract says it is the legal owner. Designers are likely to charge a separate fee for the IP rights, but it’s better to be safe than sorry. However, any IP created by employees in the course of their employment remains yours at all times; the Act doesn’t change anything here.

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