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Friday, 27 May 2016

Threatening someone with IP infringement? Law Commission explains what you need to know about the new IP (Unjustified Threats) Bill

The AmeriKat's reaction to being threatened...
The Intellectual Property (Unjustified Threats) Bill was introduced in the House of Lords last week (see Kat post here).  For those of you who have not really been following this legislation, do not fear.  The Law Commission lawyer leading the project, Julia Jarzabkowski,  has written a short piece just for the IPKat explaining what is in the Bill, what is new and what it will mean for the UK IP profession.  Over to Julia:
"On 19 May 2016 the Intellectual Property (Unjustified Threats) Bill was introduced in the House of Lords and will now follow the special procedure for Law Commission Bills. This brings our project, Patents, Trade Marks and Designs: Unjustified Threats, to its end stages. If implemented, the Bill will change the law for patents, European patents, trade marks, European Union trade marks, registered designs, design right and Community designs. 
The new threats provisions are almost identical for each of the rights, save for a few small tweaks. The first 6 clauses of the Bill substitute new provisions for old within the Acts or regulations in which they are currently found. The Bill will also apply the threats provisions to Unitary Patents by amending Schedule A3 of the Patents Act 1977, once that schedule has been inserted into the Act by the Patents (European patent with Unitary Effect and Unified Court) Order 2016 (SI 2016/388). 
The substance of the reform is in 5 parts. In a nutshell, the first sets out the test for whether a communication contains a threat. It is based on the current law with one change. As now, the test is concerned with how a recipient would view the communication. What the sender intended by it is irrelevant. The test is whether a reasonable person, in the position of a recipient of the communication: 
  • would understand it to mean that a right exists (no change);
  • that someone intends to bring infringement proceedings against someone else (no change);
  • for an act done in the UK, or if done, would be done in the UK (new). 
The last requirement will ensure the provisions can apply to European patents that come within the jurisdiction of the UPC. 
The second part determines whether a person aggrieved (no change in definition) can bring a threats actions. A threats action cannot be brought for: 
  • Threats that refer only to specified acts, such as manufacture or importation that have been done (no change) or if done, would be one of these acts (new).
  • Any threats made to those who have done one of those acts (no change for patents, but new for the other rights) or who intend to (new).
  • Implied threats contained in a permitted communication (new). 
The third part introduces the concept of permitted communication between parties where one would ordinarily be entitled to bring a threats action. Where information in a communication amounts to an implied threat, a threats action cannot be brought where the information was given for a permitted purpose, was necessary for that purpose and the person making the communication reasonably believed what is said is true. There is guidance on what is, or is not, a permitted purpose and on what types of information might be necessary.

The fourth part deals with remedies (no change) and defences. The justification defence remains, but without the reference to the defence not being available where the right is shown to be invalid. It is not mentioned because it is obvious, and leaving it out does not prevent anyone from raising it anyway. A defence currently only available for patents is extended to all the rights. It is a defence to show that all reasonable steps (changed from best endeavours) have been taken to identify the source of the infringement (e.g. manufacturer) without success. The recipient of the threat must be told what those steps were before or at the time the threat is made. 
The fifth part provides a shield for professional advisers – it does not create a loophole for their clients as their liability is unaffected. No threats action can be brought against a professional adviser acting for a client in a professional capacity providing legal or attorney services for which they are regulated. 
Once again, we would like to take this opportunity to thank all those who have worked with us and been so generous with their time and effort during the project."

1 comment:

Anonymous said...

"The fifth part provides a shield for professional advisers – it does not create a loophole for their clients as their liability is unaffected. No threats action can be brought against a professional adviser acting for a client in a professional capacity providing legal or attorney services for which they are regulated."

I think that this an interesting part, as there is no such "shield" in Germany. Quite the contrary: With decision dated 01 December 2015 (docket no. X ZR 170/12) the German Federal Supreme Court (BGH) recently found that an alleged infringer has a direct damages claim against the lawyer of the patent owner in case of an unlawful warning letter (= unjustified threat), if the lawyer did not appropriately point out all potential risks and uncertainties to the patent holder before sending the warning letter.

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