The Intellectual Property (Unjustified Threats) Bill received Royal Assent on 27 April 2017 in the "wash-up" period prior to the dissolution of parliament on 3 May 2017. The Intellectual Property (Unjustified Threats) Act 2017 introduces long-awaited reforms to existing UK law on groundless threats for infringement of intellectual property (IP) rights.
The groundless threats regime is designed to provide redress to recipients of unjustified threats of registered trade mark, patent or design infringement. The regime is controversial, partly because of the manner in which it has been applied and partly because of the different approaches to threats relating to the different IP rights.
We have blogged extensively on the proposed reforms to this regime, when began in 2012 with a review by the Law Commission (see our blogs here and here). This eventually culminated in the introduction of the Intellectual Property (Unjustified Threats) Bill in the House of Lords in May 2016. The content of the Bill was substantially the same as the draft that the Law Commission published in October 2015 (the details of which we blogged on here).
The Bill followed the special procedure for uncontroversial Law Commission Bills and was expected to be enacted fairly swiftly, but things appeared to slow down following the results of the UK referendum in June 2016.
On 21 March 2017, the Bill at last completed the final report stage and third reading in the House of Commons and passed back to the House of Lords to await Royal Assent. No significant changes were made to the Bill during its passage through Parliament; most of the amendments made were generally of a technical nature or to clarify points of construction.
Key provisions of the Act
The key parts of the Act are as follows:
It harmonises the threats position in relation to patents, registered UK and EU trade marks, and registered and unregistered designs (under the UK and Community regimes). The reforms that were introduced in 2004 for patents have effectively been extended to these other IP rights. (However, copyright, misuse of confidential information and passing off remain outside the regime.)
The focus of the Act is to allow threats to be made to primary actors (e.g. manufacturers or importers) without risk of liability for groundless threats. If a rights-owner now threatens a primary infringer, it will also be able to require them to cease secondary acts, such as selling (something which would have taken the threat outside the previous exclusions).
Certain types of communications with secondary actors (e.g. retailers) are to be allowed including, for example, to enable IP owners to discover whether a primary act of infringement has taken place and, if so, by whom. This provides what has been described as a "safe harbour" enabling an IP owner to communicate with a secondary actor in certain circumstances by introducing the concept of "permitted communications". (These are communications made for a permitted purpose and containing information necessary for the purpose.)
It clarifies the meaning of a threat, confirming that 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 means that non-UK rights-owners and advisors will need to take extra care in relation to threats involving Community-wide rights.
It introduces a new provision preventing threats actions from being brought against professional advisers who act on instructions and who identify their client in the communication.
The substantive provisions of the Act are due to be brought into force by implementing regulations - we will keep you posted.
We have been waiting for some time for this Act to get into the statute book, so it is welcome news that it has finally received Royal Assent in the last few days before Parliament is dissolved prior to the next General Election on 8 June 2017. It will not solve all the problems with the threats regime in the UK, but should help to re-balance the trade-off between IP owners and traders, making it easier for IP owners to effectively protect their rights, without fear of falling foul of the provisions, while also shielding genuine competitors from unjustified threats. By harmonising the position amongst patents and the other IP rights, it should also make it easier for rights owners and their advisers to navigate the intricate provisions.
Some of the new provisions, such as the meaning of "permitted communications", may need further clarification from the courts, and care will still be needed by IP owners and advisers alike when applying the provisions. However, the Act should be welcomed as introducing at least a more rational approach to the law in this area.