ACID recently received a response to the letter sent to the Prime Minister, dated 31^st December 2019. The reply was sent from a Senior Policy Officer at the Intellectual Property Office

“Thank you for your letter dated 31 December to the Prime Minister, regarding unregistered designs, criminal sanctions for unregistered designs and the appointment of a new Intellectual Property (IP) Minister. Your letter has been passed to the Intellectual Property Office to respond.

You will be aware that the recent Cabinet reshuffle resulted in changes of portfolio and means a new minister will cover IP. We are waiting to receive confirmation on who will lead the IP portfolio and I would be pleased to share that information with you in due course.

I appreciate your concerns about retaining an effective IP framework following Brexit. Providing clarity for UK business continues to be the Government’s priority and will seek to minimise disruption for business after the transition period.  We will ensure that designers continue to have the same choice and scope of protection as they do now- Community designs will continue to be valid in the EU and we will create new UK equivalent rights based on existing Community designs. Additionally, the UK will create a new unregistered design right – the supplementary unregistered design – which mirrors the characteristics of the unregistered Community design.

Regarding protection of unregistered designs post Brexit, I understand the value to designers in obtaining automatic protection in the EU following first disclosure in the UK. We continue to review this area and will further update our guidance at a later point in the transition period.

Finally, on criminal sanctions you will be aware there are mixed views, as reflected in the debates during the passage of the Intellectual Property Act 2014, when some design-intensive industries argued against criminal sanctions for unregistered designs. At that time, the government listened to all the arguments and took the view that it was not appropriate to extend the criminal penalties to unregistered designs.

I hope this information is helpful. Thank you for taking the time to write.”

ACID’s CEO Writes to the Intellectual Property Office with the following response;

“Thank you for your letter dated 26^th February in reply to mine to our Prime Minister, The Rt Hon Boris Johnson, on 31st December 2019.

We are aware of all the steps that the Government has taken to provide an effective IP framework following Brexit and of the introduction of a supplementary UK unregistered design, mirroring unregistered Community design characteristics you describe.

With respect, however, whilst we welcome the introduction of a supplementary UK unregistered design, this is not where our concern lies nor where our current focus is. It is, quite simply, the fact that the majority of UK designers will lose EU27 protection unless something is done either through reciprocity or negotiation to ensure a process for simultaneous publication. We have been providing compelling evidence to address this potentially calamitous situation for nearly 4 years now to no avail. I do hope, therefore, that as transitional time progresses, this can become higher on your radar because “continuing to review this area” does not lead me to feel very confident after all this time. British designers deserve better than this.

• One of the reasons we wrote an impassioned plea to the Prime Minister, was for him to acknowledge the importance of the need for a dedicated Minister of Intellectual Property and not one with a shared portfolio. Our Chief Counsel, Nick Kounoupias wrote about the need for this in a recent article. However, we understand that Ms Solloway shares her portfolio with science and research, innovation, space, agri-tech and technology. We recently met with the IP Czar at the American Embassy and it is very clear that the USA puts IP very much higher on Government and international radar as he has direct access to the President himself. It is lamentable that our own Prime Minister would appear not to place the UK’s precious IP high enough on his list of priorities

You state that the Government listened to all the arguments for criminal provisions for deliberate unregistered design infringement, but time has marched on and the landscape has changed since 2014. The deterrent effect of introducing criminal provision for the intentional infringement of a registered design has proved effective and, at a time when UK designers will be even more vulnerable without EU27 protection for unregistered design, again, this is not good enough. UK designers deserve more than this. With the progression of 3D printing, there is no deterrent or law to enforce to stop counterfeiters coming in through the back door. We voiced these concerns in 2016 which were echoed by the DCI of PIPCU who said at the time. “How will I be able to stop counterfeiters, if I have no law to enforce?”

Nick Kounoupias and I would appreciate a meeting with the new IP Minister as soon as possible. Perhaps you can let me know if this is something you can arrange?”