The changes affect threats of litigation for patents, trade marks and design rights but not copyright or other unregistered rights. In summary the report recommends:
- Protection against groundless threats should be retained, but should be reformed
- A threats action may not be brought for all threats made to a “primary actor” (as is already the case for patents)
- It should be possible to communicate with “secondary actors” where there is a legitimate commercial purpose behind the communication and there are reasonable grounds for believing that the information provided is true.
- For patents, it should no longer be possible to avoid liability for making threats by showing that the threatener did not know, or had no reason to suspect, that the patent was invalid.
- A lawyer, patent or trade mark attorney should not be jointly liable for making threats when acting in their professional capacity and on client instructions.
The Commission said the recommendations “will make the law clearer, easier to follow and apply, and will ensure that the protection against groundless threats is more consistent between patents, trade marks and design rights”.
It acknowledged that there are benefits in replacing the threats provisions by a new cause of action based on unfair competition law, but said that consultees felt this was too big a change at this stage.
The Commission also said the recommendations do not address “the more fundamental issue of the uneasy relationship between UK national law and the enforcement of European and Community IP rights”.
The report does not include a draft bill, and there is no published timetable for implementing the changes.
Managing IP will have further analysis later this week.
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