Lawyers will no longer risk being sued personally for ‘making threats’ when pursuing breaches of intellectual property rights if Law Commission proposals that have been accepted by the government become law.
The commission last week published a draft bill that would implement recommendations made last year to reform ‘complex and inconsistent’ patent, trade mark and design law after a lengthy campaign by the Law Society.
It said that the government had accepted all 18 of its recommendations, with comments on three including the recommendation on professional adviser liability.
Current law provides a statutory right of redress against ‘unjustified threats’ to sue for infringement of a patent, trade mark or design right even by professional advisers, the commission said.
This liability ‘can be used tactically…. to drive a wedge between adviser and client’ and ‘may deprive a client of expert assistance at a time when they need it most’, the commission says in its report Patents, Trade Marks and Designs: unjustified threats.
The government has agreed to an exemption when an adviser clearly identifies the client and can show they were acting on instructions.
The Law Commission’s proposals follow a nine-year campaign by the Law Society’s intellectual property law committee. Mark Anderson (pictured), managing partner of IP specialist Anderson Law and chair of the committee, described the proposals as ‘great news’.
At present, he said, a solicitor who is not an expert in IP law ‘can fall in to an elephant trap by using what for lawyers is perfectly normal language’. He added that the proposals would bring intellectual property case procedure into line with the approach of modern civil procedure rather than rules that ‘almost incentivise people to be cagey’.