There have long been restrictions on owners of certain types of IP making “unjustified threats” of infringement action to third parties. Coupled with the fact that the maker of an unjustified threat (which could include a law firm on behalf of its client!) can face legal action, and a claim for damages; this has always been an area which requires careful consideration.
However from 1 October 2017 the law will change, and a new set of rules will apply. Any IP owner must make sure that it follows the new rules to ensure it remains on the right side of the law when it attempts to halt potential infringements by threatening legal action against infringers.
The aim of the new Act, the Intellectual Property (Unjustified Threats) Act 2017, is to introduce consistency approach across the different IP rights and new measures which properly balance the legitimate rights of IP owners to protect their investment in IP against the rights of others to take action where they suffer due to so called “groundless threats” where there has been no actual infringement.
The Act is accompanied by a detailed guidance note which clarifies:
- what constitutes a threat;
- who can bring an action;
- the circumstances in which no action can be brought e.g. making a patented product for sale;
- what “permitted communications” can be sent regarding alleged infringements – e.g. giving notice that a patent exists; and
- when professional advisers might also risk action and what they can do to avoid that risk
If you do find yourself in the situation where you suspect that your IP is being infringed, the clear message is: don’t jump straight in, take stock and take advice before making threats or you may be faced with injunctive proceedings, a claim for damages and more.
If you need advice on how to mitigate these risks and still protect your rights, then please contact Gill Hall or Nabil Asaad.