04 May 2017
London
Reporter: Barney Dixon

UK IP Unjustified Threats Bill receives royal assent


The UK’s Intellectual Property (Unjustified Threats) Bill, which aims to make it easier to resolve intellectual property disputes, has received royal assent.

The bill still requires secondary legislation before it can become law, but is expected to be passed later this year.

Current law in the UK places restrictions on what can be said out of court in order to settle disputes, with the possibility of an IP owner facing damages for “unjustified threats”.

Professional advisers involved in the case, acting on behalf of a client, could also be liable.

The new law will clarify what cannot be said in pre-action correspondence and protect professional advisers from legal action.

Specifically, the bill will introduce consistency in what can be said between the threats provision for patents, trademarks and designs, as well as distinguish legitimate threats from those used to damage a commercial rival.

The bill will also alter the law so that the protection against unjustified threats can apply to European patents that come under the jurisdiction of the highly-anticipated Unified Patent Court.

The Chartered Institute of Patent Attorneys (CIPA) was involved with the legislation, submitting written consultation responses and evidence to the House of Lords.

Vicki Salmon, chair of CIPA’s litigation committee, said: “I am pleased that the government has succeeded in passing this bill.”

“I would also like to acknowledge the hard work done by the Law Commission in preparing the bill and the scrutiny which the bill received in the House of Lords.”

She added: “We also welcome the exemption now given to IP legal advisers when acting on their client’s instructions.”

“The previous regime militated against seeking pre-action settlement of IP disputes, as the recipient could use the threat of suing the lawyer for an unjustified threat as a means of separating the IP right holder from his chosen legal adviser.”

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