UK Intellectual Property Unjustified Threats Bill

21 April 2017

Intellectual Property (IP) law in the UK provides protection for businesses and individuals to try to prevent them being unfairly threatened with legal action for infringing a third party's IP rights when such threats are groundless. For example, if a threat to sue for infringement is made where there has been no infringement, or the right is invalid, it is said to be groundless or unjustified. Any person whose commercial interest suffers because of that threat can apply to a court to seek remedy. 

The current unjustified threats provisions are thought by many to be unclear and inconsistent, often resulting in those less familiar with the provisions being caught out by technical loopholes exploited by those more familiar with the law.
The Unjustified Threats Bill, which has been passed to Royal Assent and will shortly become law, aims not only to protect businesses and individuals against the misuse of threats to intimidate or gain an unfair commercial advantage, but also to make it easier for the parties involved in an IP infringement dispute to negotiate a settlement and avoid litigation. Moreover, the Bill relates to patents, designs and trade marks, and so will bring consistency across these aspects of IP in relation to unjustified threats.
Full details of the Unjustified Threats Bill can be found in the UK Intellectual Property Office's guidance notes. As a summary, the main aims of the Bill are to:
- Change the test for whether a communication contains a threat, to include whether the threat is to bring proceedings in a court for an act done (or intended to be done) in the UK
     -This is thought to be clearer than the current test, which is whether the threat is to bring proceedings in a UK court
  • Bring consistency across patents, designs and trade marks in relation to a threat not being actionable if made to those who have carried out “primary” acts of infringement (e.g. making or importing a product, as opposed to merely selling it)
Provide a framework which allows disputing parties to exchange information to resolve disputes where a party might otherwise be entitled to sue for unjustified threats
- Remove the threat of personal liability from professional advisers who satisfy certain conditions
     -Currently, the risk of facing a threats action can be used against professional advisers as a tactic to damage their relationship with a client seeking assistance
Clarify that a threat to sue for an infringement made on a pending application (i.e. a patent, registered design or trade mark application that is still being processed) means that proceedings will be brought once the application is granted, and the question of whether there has been an infringement will be determined on the basis of the granted/registered right
  • Extend the threats provision to include threats to sue for delivery up or destruction where such threats are found to be unjustified.
  •  If you have any questions please contact your Potter Clarkson representative, or contact us and one of our legal advisers will be in touch. 

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