On 28 January 2016, the UK Government published its response to the Law Commission’s recommendations (which included a draft bill) for reform of the law relating to unjustified (groundless) threats of IP infringement. The Government considered responses to an IPO consultation on the subject and accepted the Law Commission’s recommendations.
The Government intends to introduce the draft Bill, if possible, via the “special procedure” which exists for bills implementing uncontroversial Law Commission recommendations. Bristows understands from the Law Commission that they are hopeful that the Bill will be introduced in the next Parliamentary Session starting in April 2016.
The proposed changes will bring trade mark law, design law and patent law into line with each other (other rights such as copyright and database rights are not affected) and introduces new provisions to protect professional advisers. The changes will be implemented by amending the existing acts, such as the Patents Act, to introduce the new provisions, rather than there being a new standalone act.
This is all intended to provide a clearer framework for resolving disputes (and thus avoiding litigation), protect retailers, suppliers and customers against unjustified threats, and make changes which will apply to Unitary Patents and European patents which are not opted out of the UPC (see here).
The draft provisions for each type of right follow a similar structure and are worded to be as similar as possible to each other. In summary, for each type of right, the draft Bill follows the following sequence:
- Defines a threat. This will need to be understood to relate to an act done (or one which would be done) in the UK.
- Defines which threats are actionable. The current exception in patent cases for threats made to a primary actor (e.g. a maker or importer) is extended to trade marks and designs.
- Defines “permitted communications” and provide guidance on what may be said and for what purpose.
- Sets out remedies and defences. The defence, which is currently only available for patents, whereby a threatener is not liable for threats where efforts to find the primary actor were unsuccessful is extended to trade marks and designs.
- Prevents threats actions from being brought against professional advisers who act on instructions and who identify their client in the communication (This is totally new).
- Clarifies that a threat made before grant is taken as a threat to sue once the relevant right is granted (as is already expressly the case for patents).
- Clarifies that reference to infringement proceedings includes orders for delivery up or destruction in those proceedings.
The UK Governments expects that the ongoing benefits to UK business will result in total savings of around £1.66 million per annum (due to reduction in cases in which this area of law is engaged and reduction in level of advice required even where it is engaged).
Whilst this is a step in the right direction, it is unlikely to be the last word on threats provisions, indeed it appears that some of the respondents to the IPO noted that wider reform (such as a new tort consistent with the law elsewhere in the EU) would be desirable in the long term.