UK Government publishes response on groundless threats

02 April 2015

Back in July 2013, we responded to the UK Law Commission’s consultation on the reform of the law of groundless threats (the regime whereby certain parties threatened unjustifiably with a claim for infringement of a relevant IP right can bring proceedings to remedy the damage caused to their business by the threat). The report was published on 15 April 2014, and we were delighted that the Law Commission had adopted a number of our proposals. 

The Government has now published its response to the Law Commission’s report, and it has accepted a number of the recommendations.

Key recommendations

  • No actions to be brought for groundless threats of proceedings made against primary infringers (for example, manufacturers or importers) as opposed to secondary infringers (for example, distributors). This is currently the case for patents and would be extended to trade marks and designs. 
  • An exemption to enable IP right owners to notify a third party of their rights, and to make enquiries in order to identify an infringer, without fear of a threats action being brought as a result.
  • A new defence whereby the IP right owner can make allegations against secondary infringers without being subject to an action for groundless threats if it can demonstrate that it has made endeavours to track down the primary infringer. 
  • Repeal of section 70(2A)(b) of the Patents Act 1977, so that aggrieved parties are no longer denied remedies for groundless threats in circumstances where they have demonstrated to the court that the right is invalid although and but for the finding of invalidity the patent would have been infringed.
  • Solicitors and patent and trade mark attorneys no longer to be liable for making a threat where they have acted in their professional capacity and on instructions from their client. Under the law as it presently stands, the individual adviser who made the allegation can be sued.

Given the upcoming election, it will remain to be seen whether these recommendations become law, but they do strongly suggest that these reforms are likely to be on their way.

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