Published: 2 May 2017
Disputes over intellectual property such as patents and trade marks should become easier to resolve following the reform of a law governing threats of legal action.
The Intellectual Property (Unjustified Threats) Bill has received Royal Assent and the Chartered Institute of Patent Attorneys (CIPA) has congratulated the Government and the Law Commission, which proposed the reform. Formal secondary legislation is still required before the Bill can become law. This is expected to be passed later this year.
The current law places restrictions on what can be said out of court in order to settle a dispute. If an IP owner is found to have gone too far, the alleged infringer could sue for damages for having to face “unjustified threats”. A professional advisor, such as a patent or trade mark attorney, acting on instructions from a client could also be liable. The law differs depending on which IP right is involved, with some IP regimes being more practical than others.
This new law harmonises the different regimes and clarifies what can and cannot be said in pre-action correspondence. The reform also protects professional advisors from legal action.
CIPA contributed to the legislation through the submission of a number of written consultation responses and written evidence to the House of Lords. Also, Vicki Salmon, Chair of CIPA’s Litigation Committee, gave oral evidence to the House of Lords Special Bill Committee in October last year.
Mrs Salmon 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.
“This is a small area of IP law which comes into play when the owner of patent, trade mark or design seeks to enforce their rights. The Government has made the regime more practical and easier to administer.
“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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