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The Intellectual Property (Unjustified Threats) Bill published on 19 May 2016 seeks to reform the current UK law to:
The law provides a remedy in cases where the threat of infringement proceedings is deemed to be unjustified because there is no infringement or the rights being relied on are invalid. However the threat of proceedings for unjustified threats can deter communication between parties for fear of incurring actions against threats, costs in taking advice related to avoiding threats actions, increased litigation and costs in relation to infringement and threats actions and the attendant disruption in commercial activity.
The Bill seeks to modify the relevant clauses under each of the patents, trade marks and designs laws applicable to the UK to address the problems experienced by clients and professional advisors under the existing laws.
For patents: The making or importing of a product for disposal, the use of a process, even where the threat refers to any other act in relation to that product or process.
For registered designs and unregistered design rights: The making or importing of an article or product for disposal, even where the threat refers to any other act in relation to that article or product.
For trade marks: The applying of a mark, or causing/commissioning a mark to be applied, to goods or their packaging; the importing for disposal of goods to which, or to the packaging of which, the mark has been applied, even where the threat refers to any other act in relation to those goods; the supply of services under the mark, even where the threat refers to any other act in relation to the supply of those services.
A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication. For example, where no primary actor has been found despite the party making the threat having taken all reasonable steps to locate a primary actor, and where the party making the threat notifies the person of those steps; and the steps include the use of permitted communication.
There are certain types of communication which are permitted even though they contain a threat of infringement proceedings. They include:
The reforms set out what does not come under permitted purposes, for example a permitted purpose would not include a request to cease doing anything, deliver up or destroy goods, or provide an undertaking in relation to the goods/product or services or process.
The full text of the Bill can be found here.
The law in this area was inconsistent and in need of reform, so these are welcome changes. The Bill still leaves some scope for uncertainty in its current form as to the extent of rights and location of threats, and the extent to which these issues are addressed in the legislation will be seen once the Bill is enacted. The draft Bill is likely to be enacted this year. The Bill does not extend to copyright or trade secrets, so does not go as far as it could have gone. There has been talk of a more radical approach with the introduction of a tort of making false allegations and this has not been ruled out for the future.