29 September 2017
The Intellectual Property (Unjustified Threats) Act 2017 (the Act) received Royal Assent on 27 April 2017 and will apply from 1 October 2017, making a number of amendments to the Patents Act 1977.
The Act has three key aims:
There are a number of changes to the law surrounding unjustified threats as a result of the Act, in particular it:
The Act modifies the "threat test", introducing an objective, two-step test to determine whether a communication amounts to a "threat of infringement proceedings". This requires that a reasonable person in the position of a recipient of the threat would understand from the communication that:
Threats need no longer be understood to relate only to bringing infringement proceedings in the UK. As a result, the provisions will apply to the unitary patent and the Act also inserts a new Schedule into the Patents Act 1977 in respect of unitary patents, for when the UPC Agreement comes into force.
Furthermore, the new threat test ensures that threats to bring proceedings before the UPC in respect of patents falling within its jurisdiction will, where appropriate, fall within the scope of the threat provisions.
It remains the law that:
In these cases, it is also not actionable to threaten proceedings for any other alleged infringement in respect of the product or process.
The Act also provides protection against threats made through mass communication, such as press releases. Such threats do not have to be directed at a particular individual.
he Act provides a "safe harbour" to allow a patent holder to communicate with someone who might otherwise be entitled to bring an unjustified threats action if threatened. The "permitted communication" must be done for a "permitted purpose".
A communication containing a threat of infringement proceedings is a "permitted communication" if:
Permitted purposes include:
The Act also grants the court the power to treat any other purpose as a "permitted purposes" if it is in the "interests of justice". The aim of this is to provide certainty over what will be considered a permitted purpose, whilst allowing the court the flexibility to take the surrounding circumstances of a case into account.
The Act also lists purposes which cannot be considered "permitted purposes".
The old defence for making threats to secondary actors is retained, but reformed to the extent that the threatener must first use reasonable steps to discover the primary actor who is making or importing the product, or using the process.
The person making the threat must also inform the person threatened either before or at the time of making the threat of the reasonable steps used.
It is also a defence to show that the act for which the threat was made is an actual or potential infringement.
Lawyers and registered patent attorneys are not liable for making threats where they have acted in their professional capacity on instructions from their client and have made that client known.
The Act aims to strike an appropriate balance between enabling rights holders to enforce their IP assets, while preventing attempts to misuse threats to distort competition or stifle innovation. Among its other provisions, the Act is bringing in necessary changes to ensure protection against unjustified threats that will fall within the jurisdiction of the UPC.