The Intellectual Property (Unjustified Threats) Bill received royal assent yesterday, a last-minute development in the current ’wash-up’ of legislation which has been welcomed by advisers.
The measure curtails a legal remedy available to a party threatened with patent or trademark litigation, who can argue that a letter constituted an ‘unjustified threat’. The new law instead creates instances where parties cannot be held liable for making such a threat.
Under the previous rules, a professional adviser acting in their professional capacity and on instructions from a client was also potentially liable.
The bill introduces a new provision preventing threats actions from being brought against advisers provided they act on instructions and identify their client in communications.
News of the granting of royal assent was welcomed by the Chartered Institute of Patent Attorneys. Vicki Salmon, Chair of CIPA’s litigation committee, who gave evidence to the House of Lords Special Bill Committee last year, said: ‘This is a small area of IP law which comes into play when the owner of patent, trademark or design seeks to enforce their rights. The government has made the regime more practical and easier to administer.’
Simon Miles, solicitor and member of the Chartered Institute of Trademark Attorneys, said: ’I welcome this new law. It provides clarity around the rules and conduct in relation to unjustified threats, and allows for certain permitted communications to take place without risk of facing a threats action. The new law is also important for professional advisers acting on instructions from their client, as they will not face personal liability for making threats as they can do under the existing law.’
Formal secondary legislation is still required before the measure can be implemented as law. This is expected to be passed later this year.