Under current UK and Irish law certain threats against intellectual property infringement can backfire, with potential claimants then being turned into defendants and the burden of proof being reversed. However the rules relating to such threats vary considerably between patent, trade mark and design law.
However following the recommendations of a 2014 report the UK's Intellectual Property (Unjustified Threats) Act 2017 ("the Act") was drafted and recently granted royal assent. The Act harmonises UK law as to threats across patent, trade mark and design rights and allows for information on primary infringers to be collected from secondary parties. In particular the new law addresses:
- Threats: What constitutes a 'threat' will be defined in statute in the next year but the Act does state that the definition will be expanded to cover threats in respect of "acts" done in the UK. This differs from the previous test that required that the communications involve a threat of action specifically in the UK courts.
- Secondary Infringers: The Act allows for proceedings to be threatened against infringers for secondary infringing acts like distribution rather than just primary infringing conduct like manufacture. Also secondary infringers can also now be asked for details of a primary infringer as a last resort.
- Permitted Communications: In line with the new rules on secondary infringers the Act will also create a 'safe harbour' for certain communications to secondary infringers. This will enable owners to investigate whether a primary act of infringement has occurred and who is to blame without having to worry about being sued for making inquiries.
- Advisors: The Act creates an exemption for professional advisors by clarifying that if they make a communication that is perceived as a threat, the advisor will not be liable provided it was done on the instructions of a client and this is made clear in the communication itself.
It is expected that the Act will come into force in October 2017 after the UK Secretary of State has passed the accompanying statutory instruments and any final amendments have been considered.
While the Act does not have legal effect in Ireland the issues the Act addresses do exist as a result of a haphazard set of rules for 'groundless threats' under section 53 of the Patents Act 1992, section 24 of the Trade Marks Act 1996 and section 56 of the Industrial Designs Act 2001. Under these laws liability for both rights holders and legal professionals lacks specificity on key areas such as when threats are 'unjustifiable'. It is expected that it will only be a matter of time before Irish legislators follow the UK example and begin work on their own law.