In the UK, if a person threatens another with infringement of certain intellectual property rights, the person that makes the threat can liable for damages if the threat is later considered to be groundless. What constitutes a 'threat' and what is considered 'groundless' is not always clear, and it can be quite easy to stray into dangerous territory.
The IP (Unjustified Threats) Bill aims to further help businesses to negotiate disputes and avoid litigation by reforming the law on unjustified threats of patent, trademark and design infringement. On 27 April 2017 the Bill received Royal Assent. However, the new law has not yet been completely implemented. The IP (Unjustified Threats) Act requires secondary legislation in the form of a statutory instrument in order to come fully into force. The date on which the Act will be fully implemented has yet to be announced.
The new law aims to further help businesses to negotiate disputes and avoid litigation by reforming current law on unjustified threats of patent, trademark and design infringement.
As described in our earlier articles of 15 June 2016 and 27 March 2017, the new law will provide a more consistent framework for dealing with unjustified threats concerning infringement of patents, trademarks and designs. UK patent law will also be changed in view of the incoming Unified Patents Court (UPC) by confirming that threats to bring infringement proceedings concerning acts carried out in the UK are covered, regardless of the location of the court in which the proceedings are to be brought.
IP rights holders are nevertheless advised to take care in all communications regarding infringement proceedings, and we would always recommend consulting with your IP advisor prior to contacting any third parties in relation to infringement of any IP rights you own.