New UK Law Sets Guidelines for Unjustified Threats Regarding Intellectual Property Right

On April 27, 2017, the Intellectual Property (Unjustified Threats) Bill received Royal Assent in the UK. It is expected to come into law in October 2017. The new Act amends the current law relating to unjustified threats regarding proceedings for infringement of patents, registered trademarks, registered designed, design rights and Community designs. The aim of the new Act is to provide a framework within which parties can exchange information and resolve disputes while protecting the party threatened with litigation.

The Act introduces new provisions:

(1) regarding what communications can be made without constituting a threat (so-called “Permitted Communications”);

(2) protecting professional advisors such as intellectual property lawyers from being personally liable; and

(3) clarifying the status of threats made on the basis of pending patents, trademarks and design registrations.

Changes have also been made to the current law regarding (1) what constitutes an actionable threat; and (2) the defences available to the party making the threat of infringement litigation.

Click here to read the text of the Bill:

https://dlbjbjzgnk95t.cloudfront.net/0922000/922281/ukpga_20170014_en%20(1).pdf

Click here to read the fact sheet published by the UK Intellectual Property Office:

https://dlbjbjzgnk95t.cloudfront.net/0922000/922281/unjustified_threats_factsheet.pdf

Summary By: Heather Watts