The Intellectual Property (Unjustified Threats) Bill (“the Bill”) contains provisions to reform the law of unjustified threats as it applies to patents, trade marks and designs. The law in this area provides a remedy for those who are affected by unjustified threats. Under the provisions of the Bill, threats to sue for infringement of a relevant intellectual property right are unjustified where they are made in respect of an invalid right or where there has been no infringement. The Bill seeks to clarify the law in relation to unjustified threats by giving effect to recommendations made by the Law Commission of England and Wales.
- Produce a clear law of unjustified threats by removing inconsistencies between provisions for patents, trade marks and designs so that they follow the same structure and utilise the same language wherever possible.
- Clarify who may be threatened safely by excluding from liability threats made to those who have done, or intend to do, acts that are capable of causing the most commercial damage.
- Create a framework so that disputing parties can safely communicate by identifying permitted purposes for communication.
- Protect professional advisers from personal liability for making threats when acting in a professional capacity and on the instructions of a client.
The new statutory test sets out the principles the court will apply in order to decide whether a communication contains a threat to sue for the infringement of a patent, trade mark or design. The test mainly follows the current test which is based on case law, but with one change. As the threats provisions are part of UK law, in order for them to apply there must be some link between the threat to sue for an infringement, and the UK. The current link is that the threat must be understood to be to bring proceedings in a UK court. This is changed by the Bill, so that the threat must be understood to be to bring proceedings in a court for an act done (or intended to be done) in the UK. The change will allow the provisions to apply to European patents that will come within the jurisdiction of the Unified Patent Court when that comes into existence.
The test, which is the same for each of the rights, clarifies what amounts to a threat for the purposes of the threats provisions. It gives a clear steer on what will and will not amount to a threat to individuals, businesses and advisers who are thinking about communicating with someone. This is important because if the communication contains a threat, it might result in a threats action being brought against them. If the test is satisfied then the rest of the threats provisions are relevant because these govern who may bring an action, against whom and also create defences when particular circumstances apply.
If a communication contains a threat then the next step is to see if someone is entitled to bring a threats action in respect of it. Any person who is aggrieved, which means any person affected by a threat in a commercial sense, may bring a threats action unless an exception applies. An aggrieved person might be prevented from bringing a threats action because of the acts referred to in the threat (primary act exception), or because of the acts they are supposed to have done, or intend to do (primary actor exception). An aggrieved person might also be prevented from bringing a threats action if the communication is permitted by the provisions (for which see the next section “Permitted Communications”).
A threats action cannot be brought for threats that refer to primary acts because some acts of infringement have the potential to do far more commercial damage to a rights holder than others. Also, primary actors are more likely to be in a position to challenge a threat if it appears to be unjustified. For the same reason, an action cannot be brought for threats made to a primary actor – someone who does, or intends to do, any type of primary act – even if they are also carrying out some secondary acts. (For example where a primary actor both manufactures and sells an infringing product). However, a primary actor does not lose all protection where they are only a secondary actor in respect of a patent, for example, where someone else used the process and they merely sell the product that is produced. This is a subtle and important distinction.