GUIDANCE NOTE

OVERVIEW OF RECOMMENDATIONS IN GOWERS REVIEW

Fair enough!
Educational exceptions
In Recommendation 2, the Review suggests amending sections 35 and 36 of the Copyright, Designs and Patents
Act, 1988 (“CDPA”) to cover distance learning and interactive whiteboards. This seems consistent in making the
CDPA education exceptions appropriate for the digital age. Educational institutions should be encouraged to use
new technology to educate pupils and students, regardless of their geographical location.
If implemented, Recommendation 2 would allow non-commercial educational institutions:
 to communicate a copy of a broadcast (e.g. a television programme) to students who are not located
within the educational establishment.
 to make reprographic copies of passages from books or similar material (providing sufficient
acknowledgements are made) and send these short extracts to distance learning students by email or in
a virtual learning environment.
Private research
Recommendation 9 suggests extending the scope of fair dealing for the purposes of non-commercial research
and private study to cover all forms of content. At present, fair dealing for private research, permitted by section
29 of the CDPA excludes copying sound recordings or film. It seems sensible to correct this inconsistency and
protect private researchers from having to negotiate rights for sound recordings and films.
Libraries archiving material
The Review puts forward two proposals under Recommendation 10a and 10b:
Amend section 42 of CDPA by 2008 to permit libraries to copy the master copy of all classes of work in
permanent collection for archival purposes and to allow further copies to be made from the archived copy to
mitigate against subsequent wear and tear.
Enable libraries to format shift archival copies by 2008 to ensure records do not become obsolete.
There are clear public policy reasons behind these recommendations where the preservation of material plays an
integral role in the furtherance of culture and education. The Review highlights how current UK restrictions on
libraries are much more stringent in comparison to countries worldwide. Libraries are important public institutions
and the exceptions proposed are necessary in enabling them to operate in the digital age.
Job Well Done!
Competition
Under Recommendation 34, the Review calls for increased cooperation between the UK Patent Office, the Office
of Fair Trading and the Competition Commission. The Review suggests that greater cooperation between
competition authorities will ensure that competition and IP policy together foster competitive and innovative
markets for the benefit of consumers.
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In addition, Recommendation 36 suggests that it is necessary to monitor the success of current measures to
combat unfair competition in cases relating to IP. If such measures are found to be ineffective, the Government
should consult on appropriate changes. This proposal follows calls for an „unfair competition‟ law to be
introduced.
Enforcement
Raising awareness of rights
Recommendation 35 suggests that The Patent Office should continue to raise public awareness, focussing in
particular on the wider impacts of IP crime, and the exceptions to rights. Raising public awareness forms an
integral part of any IP system. The Review highlighted that the UK consumer awareness of IP is particularly low.
The Review, in itself, will have a positive impact in turning the „spotlight‟ on important IP issues and
Recommendation 35 is sensible extension of that.
Penalties for infringement
The Review rightly suggests that there must be adequate sanctions to prevent would-be infringers from violating
IP rights.
There is currently inconsistency between infringement penalties in the online and physical world.
Recommendation 36 seeks to match penalties for online and physical copyright infringement by amending
section 107 of the CDPA. There are no reasons why this parity between the online and physical world should not
exist and Recommendation 36 is a welcomed proposal.
Under Recommendation 38, the Review calls for the Department for Constitutional Affairs (“DCA”) to review the
issues raised in its forthcoming consultation paper on damages and seek further evidence to ensure that an
effective and dissuasive system of damages exists for civil IP cases and that it is operating effectively. According
to the Review the DCA should bring forward any proposals for change by the end of 2007.
The Review suggests that changes to damages would be a complementary deterrent to IP infringement, where
infringers should not be able to keep any profits from infringement, nor to pay any less in compensation than
they would have paid if they had purchased or licensed the material legitimately.
Collaboration between ISPs and creative industries
Recommendation 39 considers the impact of piracy and P2P sharing. It suggests reviewing the industry
agreement of protocols for sharing data between ISPs and rights holders to remove and disbar users engaged in
piracy.
Piracy is a huge concern for industries. It is hoped that the adoption of a Best Common Practice (“BCP”) is likely
to change public attitudes and behaviours as users gradually become aware of the procedures in place for
removal from an ISP. According to the Review, BCP is an ideal way to proceed if an agreement can be negotiated
between the ISPs and the copyright owners and would respect safe harbour provisions for ISPs which were set
up in good faith. If the parties fail to agree by the end of 2007, the Government should look towards drafting
appropriate legislation.
Pursuit of infringers by the relevant authorities
Recommendation 41 calls for The Home Office to recognise IP crime as an area for Police action as a component
of organised crime within the updated National Community Safety Plan. In the digital age, IP crime is a growing
concern and as such should be recognised as policing priority. The Review highlights the importance of publicly
recognising the work Police are already doing in this area.
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Recommendation 42 proposes that Trading Standards should be given the power to enforce copyright
infringement by enacting section 107A CDPA. Under current legislation, where there has been an infringing of
rights relating to copyright alone, Trading Standards do not have the power to act, and cannot perform searches
and seizures. Trading Standards have wide enforcement powers in relation to trademark infringement. Therefore,
Recommendation 42 is a sensible proposal which tackles in the way current laws treat counterfeiting and privacy.
Mechanisms to resolve conflict
Recommendation 43 calls for a strengthening of the Practice Directions, to provide greater encouragement for
parties to mediate. The Review comments on how infrequently mediation and other ADR are used in IP disputes.
As in all disputes ADR has several advantages over litigation including being cheaper, quicker and draws minimal
publicity. Therefore the use of mediation and ADR should be encouraged and raising the profile of mediation with
judges is a sensible suggestion.
Recommendation 44 suggests that The Patent Office should consult with the Judicial Studies Board to determine
the extent to which the complexity of IP law may give rise to a training need for judges and magistrates and
their legal advisers. There is sound reasoning put forward in the Review. IP law often involves complexities and
increasingly sophisticated defences to infringement. Therefore, ensuring judges and magistrates have a good
understanding of all aspects of IP law is clearly important.
Recommendation 45 calls for a reform of EU litigation with the establishment of a single EU court to adjudicate
cross-border IP disputes by promoting the European Patent Litigation Agreement. Using estimated costs, the
Review illustrates how it would be cheaper pursuing an IP claim through the proposed EU Patent Court rather
than the UK courts. Further cost and time advantages of a single court become apparent where parallel litigation
in different member states is considered.
Governance
Under Recommendation 46, the Review seeks to establish a new Strategic Advisory Board for IP policy (“SABIP”),
covering the full range of IP rights, reporting to the minister responsible. It is suggested that the Board should be
drawn from a wide range of external experts as well as key senior policy officials from relevant government
departments. Furthermore the secretariat should be based in London and allocated funding of £150,000 by the
Patent Office. The secretariat will be integral in helping the IP Advisory Committee make key policy changes.
The Review put forwards several proposals (Recommendations 47-53) relating the Patent Office (“PO”):
 Patent Office should provide an annual IP strategic analysis fund of £500,000.
 Patent Office should introduce a clear split of responsibility between delivery and policy directorates.
 There should be clear internal separation of responsibility between the granting of rights and disputes
over their ownership or validity.
 IP policy officials should be encouraged to obtain policy experience outside the IP Policy Branch, and
support short industry placement schemes for policy staff.
 Realign Patent Office administrative fees to cover costs more closely on Patent Office administrative
operations.
 Increase the transparency of Patent Office financial reporting.
 Change the name of the UK Patent Office to the UK Intellectual Property Office (UK–IPO)
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The Review rightly identifies the importance of organisations responsible for administering, enforcing and setting
policy for IP. The Patent Office is the principal body in the UK with IP responsibilities. The proposals set out
above serve two purposes. Firstly, to widen the remit in which the Patent Office should operate. Secondly, ensure
that it is able perform its obligations effectively. These changes are both appropriate and necessary in improving
and rationalising the Patent Office.

Laurence Kaye
Laurence Kaye Solicitors
© Laurence Kaye 2007
T: 01923 352 117
E: laurie@laurencekaye.com
www.laurencekaye.com
http://laurencekaye.typepad.com/

This guidance note is not intended to be exhaustive and it does not constitute or substitute legal
advice, which should be sought on a case by case basis.
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