In August I blogged about the proposed changes to the UK’s unjustified threats provisions.
Earlier this month, the Law Commission for England and Wales produced a second report (the “Report”) on the reforms project, publishing and explaining the new Intellectual Property (Unjustified Threats) Bill. You can find the Report here.
I had pointed out the dichotomy between the UK and the rest of Europe in respect of unjustified threats provisions.
An entire chapter of the Report is devoted to what is described as “The Link with the UK”. In other words, the fact that these threats provisions are unique to the UK (and the Republic of Ireland) means that when European rights are at play, complications inevitably arise.
What happens when EU-wide rights are involved?
The existing provisions only extend to threats to raise proceedings in the UK courts. The question of whether or not a threat is caught by the provisions turns in each case on whether the threat can be interpreted by a reasonable person as being a threat to bring proceedings before the UK courts. The existing EU-wide IP rights – community designs, community trademarks and European patents (UK) – can be enforced in domestic courts and so an assessment can be made on a case by case basis of whether the reasonable man would construe the communication in question as a threat of proceedings before a UK court.
The European Patent with unitary effect (the “Unitary Patent”)
However, when the Unitary Patent arrives, which may be in late 2016 or early 2017, it will be the subject of the exclusive jurisdiction of the Unified Patent Court (“UPC”) which – despite partially having a physical UK presence – will be a European court. The Law Commission concedes in the Report that to try to extend the provisions to cover any threat of action at the UPC would be to “greatly expand the scope of the provisions” and risk “exporting” UK policy into mainland Europe.
Nevertheless, a new test for establishing the existence of an actionable unjustified threat has been proposed which, the Law Commission suggests, should apply to all threats provisions (including in respect of domestic IP rights to which the existing threats provisions apply). The element of the test aimed at addressing the UPC problem requires that a reasonable person, when put into the position of the recipient of a threat, would understand that threat as meaning that the person making the threat intends to bring proceedings for infringement of rights caused by an act done in the UK, or an act which if done would be done in the UK.
Therefore, while the UK need no longer be the jurisdiction in which the threatened court action would be raised for threats provisions to bite, it must now be the jurisdiction in which the allegedly infringing act is done or would be done. This would presumably mean that threats of action in the UK courts in respect of acts done outside the UK would no longer be caught by the provisions. On the other hand, threats of actions elsewhere in the EU for acts done in the UK would presumably (theoretically at least) be subject to threats provisions. If we accept that unjustified threats provisions are here to stay, it is difficult to find a better compromise than the one proffered by the Law Commission. Indeed it concedes in the Report that this is the best that can be done under the circumstances.
The Intellectual Property Office has now launched a consultation on the Bill and is asking for responses by 13 November 2015. It is hoped that contributions to that consultation will inform the Government’s review of the draft Bill, allowing it to progress through the legislative process. It is still too early to estimate a timeframe for the Bill passing into law, but watch this space.
On October 27, 2015