INTELLECTUAL PROPERTY (UNJUSTIFIED THREATS) BILL31 January 2017
INTELLECTUAL PROPERTY (UNJUSTIFIED THREATS) BILL
The Intellectual Property (Unjustified Threats) Bill is currently before the House of Lords of the United Kingdom Parliament. It looks likely to become legislation in the coming months.
The Bill seeks to provide further protection against the misuse of intellectual property rights to stifle new ideas and competition. The Bill recognises that the mere threat of infringement proceedings can be damaging to businesses, given the expensive and time-consuming nature of intellectual property litigation.
If a threat of infringement proceedings has been made when there in fact has been no infringement, or there is no valid right to infringe, the threat is known as “groundless” or “unjustified”. In these circumstances, any party who has or may suffer losses as a result of the threat might apply to the court for a remedy. The three major remedies are an injunction to stop the threats, a declarator that there has been no infringement, and/or damages for any losses resulting from the threats.
The changes introduced by the Bill include:
The current law can vary depending on the type of IP right being asserted. The Bill attempts to harmonise the law so that threats of infringement in respect of trade marks, designs and patents are approached in the same way.
2. Definition of an actionable threat
The test for whether a communication constitutes a threat to sue for infringement is whether the communication would be understood by a reasonable person in the position of a recipient to mean that an IP right exists, and to mean that someone intends to bring infringement proceedings in respect of that right.
3. Exclusions from the definition of an actionable threat
For example, communications giving notice that an IP right exists and in some circumstances enquiries as to whether there has been an infringement.
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