Unjustified IP breach threats update

No longer a threat when making IP threats

The Intellectual Property (Unjustified Threats) Bill was introduced into the House of Lords on 19 May 2016. The new provisions aim to amend the law relating to unjustified threats to commence proceedings for infringement of patents, trade marks, registered designs, design right and community designs.

The bills key elements are to:

• provide a clearer framework for disputing parties and their professional advisers to resolve disputes with a view to avoiding litigation
• protect retailers, suppliers and customers against unjustified threats
• bring the law for trade marks and designs into line with that for patents by allowing a rights holder to challenge someone who is a primary actor without fear of facing a groundless threats action
• protect professional advisers from facing personal legal action for making threats when acting on their clients instructions
  make the necessary changes to threats law so that the protection against unjustified threats can apply to European patents that will come within the jurisdiction of the Unified Patent Court.
• If implemented, the bill will improve the settlement provisions with regards to Intellectual property disputes, allowing parties to avoid the cost of litigation.

The bill incorporates a “shield” for lawyers and other professional advisors for threatening the commencement of legal action, on the basis that they are acting on client instructions. However, it does not extend the shield to clients as their liability remains unaffected.

It is a welcome change to the current legislation as at present, the UK is the only country within the EU that allows the recipient of a threatening letter before action the possibility of obtaining an injunction and/or damages from the person who made the threat.

Briffa comment:

Briffa is able to advise you if you have any concerns with regards to protecting your intellectual property and commencing a claim without constituting an unjustified threat.

Briffa advises on all aspects of Intellectual Property litigation and all other aspects of intellectual property law.