Changes to the law relating to threats of infringement of IP rights in the UK

01 十月 2017

On 1 October 2017 a number of significant changes to the law relating to threats of infringement of IP rights in the UK came into effect.

The circumstances and manner in which a person is able to send a cease-and-desist letter, or other warnings and enquiries, without a risk of being sued have been changed in a way that should now make it easier for IP rights owners to communicate with those they believe are involved in the infringement of their rights.

Specifically:

  • as well as sending letters in relation to granted IP rights, the immunity provisions will now apply equally before an IP right 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 granted or pending IP right; and
    • discovering details of infringement.
  • 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 infringement, namely that the acts referred to did or would infringe the IP right.

It is important to keep in mind that, while the changes to the law are welcome and will improve the ability of owners of IP rights to take appropriate action when they believe their rights are being infringed, this remains a complex area of law and advice should always be sought from your IP advisors before communicating with third parties alleging infringement.

The above is intended as a general summary of the changes in the UK law, and is not an exhaustive analysis or description of all details. Please refer to your normal Haseltine Lake contact for further information.

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David Brown
David Brown
Locations: Bristol (UK)
Martin Krause
Martin Krause
Locations: Bristol (UK)