Proposed new legislation relating to unjustified threats.
British law relating to unjustified threats to bring proceedings for infringement of patents, registered trade marks, registered designs, and design rights is currently distributed respectively amongst Section 70 of the Patents Act 1977, Section 21 of the Trade Marks Act 1994, Section 26 of the Registered Designs Act 1949 and Section 253 of the Copyright, Designs and Patents Act 1988, with substantive variations in relevance and application depending on the rights involved.
The British Minister for Intellectual Property, Baroness Neville-Rolfe, introduced the Intellectual Property (Unjustified Threats) Bill [HL] 2016-17 on May 19, 2016, which is to both consolidate and harmonize British law relating to unjustified threats across all types of intellectual property rights except copyright, including European rights as they apply to the United Kingdom. The Bill includes five main sections.
The first section sets out the legal test to determine whether a communication, whether written or oral, contains a threat. It reflects current law, asking whether a reasonable person, in the position of a recipient of the communication, would understand it to mean that a right exists and that someone intends to bring infringement proceedings against someone else, with a minor change specifying that the infringement proceedings relate to an act done or likely to be done in the UK, so as to bring European patents within the scope of the provisions and the jurisdiction of the planned Unified Patents Court.
The second section sets out the legal framework within which any person aggrieved by the threat can bring a threats actions, as well as statutory exclusion for certain acts. This section again reflects current patent law, wherein threats which refer only to specified acts, such as manufacture or importation, and threats made to those who have done one of those acts, are not actionable. However, these statutory defences have now also been extended to threats made in reliance upon trade mark and design rights; to threats made to those who intend to do one of those acts; and to implied threats contained in a permitted communication, which is a newly-introduced legal concept.
Following logically, the third section both introduces and defines what constitutes a permitted communication between parties, and what amounts to a permitted purpose when giving information that may amount to an implied threat: 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. The Bill provides non-exhaustive guidance about what is a permitted purpose and not, and what type of information might be necessary. One example of a permitted purpose is simply to notify the recipient of the existence of a patent or other right.
The fourth section defines the type and scope of remedies available to a threatened party and defences available to the threatener. This section again reflects current law, however again the new provisions now extend what was once a patent-only defence to all of trade mark, registered design and unregistered design rights: the threatener must be able to show that all reasonable steps have been taken to identify the source of the infringement, without success; and the communication must explain what those steps were and that they were taken before or at the time the threat is made. It should also be noted that the requirement of ‘all reasonable steps’ being taken replaces the previous and somewhat imprecise benchmark of ‘best endeavours’.
The fifth section introduces liability exclusion for regulated professional advisers, according to which no threats action can be brought against a professional adviser providing legal or attorney services for which they are regulated, when acting for a client on instructions. This new development is intended to mitigate the misuse of the current threats provisions by aggrieved parties to try and run interference between the threatener and its professional adviser.
Accordingly, the protection is available where the adviser is acting on client instructions and is regulated in the provision of services by a regulatory body, typically IPReg for chartered patent and trade mark attorneys. This ensures that any misconduct by the adviser when acting for a client can be dealt with by their regulator. Accordingly, this protection will not be available to advisers who are not regulated.
If implemented, this Bill will change the law for all of British patents, European patents, British trade marks, European Union trade marks, British registered designs, Community registered designs and UK unregistered design right. Since the changes result from recommendations of the Law Commission, they are being fast-tracked through Parliament, and a second reading of the Bill is scheduled for June 15, 2016.
Stéphane Ambrosini, June 2016
Article Published June 1, 2016