On 1 October 2017 a number of significant changes to the law relating to threats of infringement of IP rights in the UK will come into effect.
Specifically:
- a person will still be able to send cease-and-desist letters, and other warnings and enquiries, specifically relating to manufacture and importation of products and use of processes, without a risk of being sued for making a threat of patent infringement;
- that person, however, will now get the same immunity if he/she does this before a patent is granted or before an infringing act takes place;
- furthermore, professional advisers will now get complete immunity from risk of being sued personally for threats issued on behalf of their client, provided that they identify the client (but this does not affect the client's liability, if any);
- a person sending any statement other than an express threat will get complete immunity from risk of being sued, provided that the statement is contained in a "permitted communication", namely a communication that is necessary for a "permitted purpose", with a discretion given to the court to decide what qualifies;
- examples of "permitted purposes" that are specifically given are: giving notice of a patent or patent application; discovering details of infringement; and making someone aware of a right in a patent or patent application;
- a person who takes reasonable, but unsuccessful, steps to identify an infringer and then issues a threat of patent infringement will now be able to use that as a defence if sued for making the threat, provided that he notified the recipient no later than the issuing of the threat;
- the general defence of justification remains available to anyone sued for making a threat of patent infringement, namely that the acts referred to did or would infringe the patent;
- corresponding provisions will also apply to: UK and EU registered trade marks and pending applications therefor; UK and EU registered designs and pending applications therefor; unregistered EU designs; and unregistered UK design right under section 253 of the Copyright, Designs and Patents Act 1988;
- in the case of UK and EU registered trade marks, cease-and-desist letters and other warnings and enquiries will be non-actionable when specifically relating to applying a sign to goods or packaging, importation of goods or packaging bearing a sign, and supplying services under a sign;
- in the case of UK and EU registered designs, unregistered EU designs and unregistered UK design right under section 253 of the Copyright, Designs and Patents Act 1988, cease-and-desist letters and other warnings and enquiries will be non-actionable when specifically relating to making or importing a product.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.