IP unjustified threats law takes effect in UK
The Intellectual Property (Unjustified Threats) Act 2017 came into force in the UK yesterday.
Aimed at making disputes over IP easier to resolve, the law received Royal Assent in May this year.
Before the law’s enactment, the rules on making unjustified threats differed depending on which IP right was involved.
Now, the act has harmonised the different regimes and clarifies what can and can’t be said in pre-action correspondence.
“Since a threat is the usual first step in enforcement action, it is undeniably important to get it right,” explained Tristan Sherliker, associate at Bird & Bird.
However, the test is “respectably intricate” and “not very user-friendly”, he added.
Under the new rules, a threat exists if the recipient reasonably understands that a right exists and that legal action is intended to remedy the alleged infringement.
Threats can take the form of verbal, digital and written communications and, according to Sherliker, even press or general statements that mention IP rights could be included.
“Such general communications could be a significant liability due to their public nature, and the large number of people who could be affected by them,” he said.
Aisla Carter, senior associate professional support lawyer at Gowling WLG, added that the law enables the UK’s threats regime to apply to unitary patents, when the Unified Patent Court and unitary patent regime come into force.
“Legal advisers across Europe and beyond should therefore note that, provided the alleged act of infringement occurs in the UK, the UK threats regime could apply irrespective of the location of the sender or receiver of the communication,” explained Carter.
The defence of justification continues under the law.
If the party that made the threat can show that the act for which proceedings were threatened constitutes (or, if carried out, would constitute) infringement of the IP right, then it has a defence.
Sherliker said: “Though this is the natural answer, running the defence can be an unattractive prospect in reality.”
This is because proving justification means showing that the threat was true, which “effectively requires a finding of infringement, with all the attendant cost implications of a full infringement action”.
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