Out-Law / Your Daily Need-To-Know

UK to push ahead with reforms to rules on unjustified threats on intellectual property rights

Out-Law News | 01 Feb 2016 | 10:58 am | 1 min. read

The UK government is to legislate to bring greater consistency to laws concerning the communications intellectual property (IP) rights holders send to alleged infringers of their rights.

The Intellectual Property Office (IPO) confirmed the plans (16-page / 976KB PDF) in a document summarising responses it received to a consultation on reforms to laws on 'groundless threats' held last year. The IPO said that it would look to implement recommendations made by the Law Commission.

Currently, some companies accused of infringing patent, trade mark or design rights can launch legal proceedings against rights holders where they believe threats of legal action against them are groundless. However, different provisions exist depending on which IP right is at issue.

The IPO said the changes will "bring 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". At the same time the reforms will both "provide a clearer framework within which disputing parties and their professional advisers can operate to resolve disputes with a view to avoiding litigation" and "protect retailers, suppliers and customers against unjustified threats", it said.

Patent law reforms introduced in 2004 already exempt a number of communications sent to secondary infringers from the rules governing groundless threats where the communications concerned "factual statements and assertions about the patent".  

The new rules on groundless threats will also apply to "European patents that will come within the jurisdiction of the Unified Patent Court", the IPO said.

Baroness Neville-Rolfe, UK minister for IP, said she thinks the proposed reforms will help in "making the IP system easily navigable for rights holders and third parties alike; allowing rights holders to enforce their IP rights fairly, while preventing the misuse of threats of infringement to distort competition".

IP disputes expert David Woods of Pinsent Masons, the law firm behind Out-Law.com, has said that existing rules on groundless threats are complex and are easy for rights holders "to fall foul of".

"The 'groundless threats' provisions seek to strike a balance between the right of IP owners to put companies on notice that they are suspected of infringing their IP rights with the right of businesses to be able to operate without being the subject of unjustified threats of court action if demands for payment in relation to spurious claims of infringement go unmet," Woods said.

"The important thing is that more clarity is delivered on what rights holders can say in their communications without opening themselves up to a potential groundless threat action," he said.

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