The UK’s unjustified threats legislation is intended to prevent IP rights-holders from abusive behaviour – threatening to sue a competitor’s customers, for example, to persuade them to take their business elsewhere. While there is still a place for these rules, they have become outdated and inconsistent between the various forms of IP. The Intellectual Property (Unjustified Threats) Bill aims to tidy up and modernise the threats rules.
Key changes include the following:
- Currently, someone accused of infringing can only sue for threats to bring proceedings in a UK court. This will be changed to so that it relates to threats to bring court proceedings for an act done or intended to be done in the UK. This will bring into scope threats relating to the infringement of European Unitary Patents, once that system comes into effect.
- A consistent approach will be applied across the different types of IP. In each case threats actions will be excluded in relation to
- primary acts – importing or manufacturing a patent product for example
- primary actors – those who carry out primary acts, such as manufacturers or importers, rather than retailers.
- A safe harbour for “permitted communications” will be provided so that IP owners can exchange information and enter into settlement discussions with potential infringers without risking triggering a threats action. The legislation sets out in detail what communications fall within this category and will need to be followed carefully. Note that this does not cover situations where someone is being asked to stop doing something, to hand over or destroy something or to promise not to do something in relation to the disputed IP right.
- The existing defence to a patent threats action, where the right-holder can show that they have taken all reasonable steps to identify the primary actor and have given this information to the secondary actor, will be extended to trade marks and designs.
- Professional advisers will not be at risk of a threats action where they are acting on instructions and have notified the infringer who their client is. This is to avoid situations where an infringer uses the threats rules tactically to drive a wedge between a right-holder and their advisers.
Intellectual Property Office guidance explaining the changes can be found here.
Because this Bill has come through the Law Commission process it is likely to pass fairly swiftly into law. Although there is bound to be a bedding-down period while the new provisions are tested, the reform is expected to provide a clearer and more coherent system for IP owners and those threatened with litigation.