The main points of the draft 'Intellectual Property (Unjustified Threats) Bill' are:
- The Bill would effectively harmonise the threats position in relation to patents, UK and Community trade marks, and registered and unregistered designs under the UK and Community regimes. (Currently the threats regime as it applies to patents differs slightly. Under the Bill, however, the ability of holders of patents that have been declared invalid to avoid liability for threats where they had a good faith belief in the patent’s validity at the time of the threat is removed.)
- The focus of the Bill is in allowing threats to be made to primary actors (e.g. manufacturers or importers) without risk of liability for groundless threats. If you are threatening a primary actor, you will also be able to require them to cease secondary acts, such as selling (something which would take the threat outside the current exclusions).
- A threat will be actionable if it relates to proceedings for infringement caused by an act done (or threatened to be done) in the UK. This deals with the problem highlighted in the Best Buy case, but also means that non-UK rights owners and advisors will need to take extra care in relation to threats involving Community-wide rights. A threat to sue a French company in France for infringement of a Community registered design could be an actionable threat if it is based on acts done or threatened to be done in the UK.
- Certain types of communications with secondary actors (e.g. retailers) are to be allowed including, for example, to enable rights owners to discover whether a primary act of infringement has taken place and, if so, by whom.
- Happily, liability for legal advisors acting on client instructions will be abolished.
The draft Bill itself is very wordy, and as a result imports into the regime concepts such as whether information included in a "permitted communication" to a secondary actor is "necessary" for the "permitted purpose". This may lead to litigation to clarify, as might the new jurisdictional rules. That said, the draft Bill should be welcomed at least as a more rational approach than the current regime.
For very cautious rights owners, it is worth remembering that there are still a whole host of IP rights where the threats regime does not apply at all, including copyright, plant varieties rights, geographical indications, passing off, trade secrets and database right.
The Bill is to go through the Parliamentary process “at the earliest legislative opportunity” so further amendments are still possible.