Patent trolls should be deterred from threatening litigation by making spurious allegations of IP infringement. On the other hand, holders of IP rights need to be able to investigate whether their IP rights are being infringed by third parties. UK law therefore distinguishes between ‘justified’ and ‘unjustified’ threats regarding infringement proceedings and offers remedies to persons aggrieved by the latter.
However, the current law is unclear and has been accused of failing to strike the right balance between allowing IP rights holders to protect their IP assets and preventing the misuse of threats of litigation to gain an unfair advantage. New legislation is therefore being introduced.
The Intellectual Property (Unjustified Threats) Act 2017 received Royal Assent on 27 April 2017, although most of the provisions are unlikely to take effect until later this year.
Key changes introduced by the bill are set out in a guidance document produced by the UK Intellectual Property Office.
The Act aims to make it easier for those involved in a dispute over IP infringement to negotiate a settlement and avoid litigation. An important new provision is that a threat of infringement proceedings which is not an express threat is not actionable if it is contained in a ‘permitted communication’ (e.g. giving notice of the existence of a relevant IP right).
However, IP rights holders are still required to go through multiple hoops before writing to a suspected infringer. Moreover, letters will still have to be couched in cautious terms, increasing the risk that they may fail to communicate the message strongly enough to be taken seriously by the receiving party.
Whilst making some welcome changes, the Act does not go far enough to simplify correspondence between IP rights holders and alleged infringers. It remains the case that professional advice should always be sought prior to communicating with alleged infringers, whether orally or in writing.