The Intellectual Property (Unjustified Threats) Bill slips through the election net
The Intellectual Property (Unjustified Threats) Bill received royal assent on 27 April 2017 as the Intellectual Property (Unjustified Threats) Act 2017 ("the Act") despite many other Bills being put on hold until after the general election in June.
The draft Bill was published as far back as October 2015 following the Law Commission's report "Patents, Trade Marks and Design Rights: Groundless Threats". The Act amends the current groundless threats provisions in legislation relating to patents, UK trade marks, EU trade marks, UK registered designs, UK design rights and Community designs.
The current legislation relating to the various intellectual property rights allows a party threatened with infringement proceedings without just cause (if there is no infringement or the right is invalid) to bring a claim for damages for any loss suffered as a result of the threats.
In the 2014 report the Law Commission recommended that:
- The protection against groundless threats be retained but reformed for patents, trade marks and designs.
- A threats action may not be brought for all threats made to a primary actor, that is, someone who has carried out or intends to carry out one or more of the most commercially damaging acts. These are referred to as primary acts and include manufacture or importation of products or applying a sign to goods. This was already part of the law for patents but should apply to all rights.
- In certain restricted circumstances it should be possible to communicate with someone who would otherwise be able to bring a threats action. This would allow disputing parties to exchange information and try to settle their differences.
- A professional adviser acting in their professional capacity and on instructions from their client should not face personal liability for making threats.
The government accepted these recommendations on 26 February 2015.
On 12 October 2015 the Law Commission published the draft Bill and made two recommendations:
- To extend the protection of the threats provisions to European patents that will come within the jurisdiction of the Unified Patent Court.
- To modify the current test for whether a communication contains a threat.
On 24 November 2015, both recommendations were accepted by government. The Bill side-stepped the hold placed on many due to the snap general election in June and received assent prior to the dissolution of Parliament. The secondary legislation required to implement the Act will follow later in the year.
The aim of the Act is to create a framework within which parties can negotiate settlement of intellectual property disputes at an early state whilst maintaining the protection of those who may be harmed by unjustified threats. It provides clarity in relation to the current legislation and offers some comfort to those who would otherwise be reluctant to pursue an infringement matter due to the risk of action for unjustified threats.