The new Unjustified Threats Bill provides greater clarity for right holders and third parties that become involved in IP disputes. Changes introduced by the Bill will help create an IP environment that favours negotiation and settlement rather than litigation.
The Bill, published today, proposes changes that will reform the law relating to unjustified threats of IP infringement. This will help innovative businesses negotiate over disputes and avoid litigation. This will help clarify the existing provisions making them more consistent across the relevant IP rights - patents, trade marks and designs. It will enable them to achieve the necessary balance, which is to allow rights holders to protect their assets, but not to abuse threats to sue for IP infringement.
Key elements of the Bill include:
- providing a clearer framework within which disputing parties and their professional advisers can operate to resolve disputes with a view to avoiding litigation
- protecting retailers, suppliers and customers against unjustified threats
- bringing 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
- protecting professional advisers from facing personal legal action for making threats when they act for their clients
- making 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
Baroness Neville-Rolfe, Minister for Intellectual Property, said:
Getting the IP framework right is essential. For too long the law surrounding unjustified threats has resulted in uncertainty and costly litigation. This Bill will bring greater consistency on IP rights, and make life easier for all involved.
Together with the measures in the Digital Economy Bill on online penalties and web marking we will take a step forward in making the UK the best place to do business from an intellectual property perspective.
Tony Rollins, President of the Chartered Institute of Patent Attorneys, said:
We welcome the government’s efforts to reform the law of unjustified threats and applaud the work carried out by the Law Commission in reviewing and consulting on how to amend the relevant provisions. While this will still remain a complex legal area, it is a huge step forward to seek to harmonise the threats provisions across different IP rights. We are particularly pleased with the introduction of a safe harbour provision for legal practitioners.
It is essential that this area of the law is reformed before the introduction of the Unified Patents Court. The government were right not to rush through the reforms before they were ready and we welcome the introduction of the Bill.
Notes to editors:
- The Bill is available.
- These reforms will help the government deliver its manifesto commitment to make the UK the best place in Europe to innovate, patent new ideas and set up and expand a business.
- In 2012 the Department for Business, Innovation and Skills (BIS) and the Intellectual Property Office (IPO) asked the Law Commission to review the relevant statutory provisions. In 2013 the Law Commission published their consultation paper. This was followed by a Law Commission report in 2014. The Law Commission made 18 recommendations for reform. In February 2015, the government accepted these (in a few cases with some qualifications) and tasked the Law Commission with drafting a bill.
- The Bill will be introduced in the House of Lords today as a Law Commission special procedure bill. The process for special procedure bills is available.