Patents, Trade Marks and Design Rights: Groundless Threats

The Law Commission for England and Wales has today published a Report on Patents, Trade Marks and Design Rights:  Groundless Threats.

Although this is not a joint project, the Scottish Law Commission, led by Professor Hector MacQueen, assisted the Law Commission during the course of the project.  The groundless threats provisions considered apply to Scotland.  

The principal recommendations are that:

• the protection against groundless threats of infringement proceedings should be retained, for patents, trade marks, registered and unregistered design right but it should be reformed;

• a threats action may not be brought for all threats made to a primary actor; this is already part of patent law but should also apply for the other rights. Primary actors are those who have carried out primary acts, such as the importation of goods or the application of a mark to packaging. Primary acts can cause the greatest commercial damage to a rights holder;

• it should be possible to communicate with secondary actors, that is those who have not carried out primary acts.  This will be where there is a legitimate commercial purpose behind the communication and where there are reasonable grounds for believing that the information provided is true. Guidance as to what may be said should be provided by the legislation;

• for patents, it should no longer be possible to avoid liability for making threats by showing that at the time the threat was made the threatener did not know, or had no reason to suspect, that the patent was invalid; and

• a lawyer, registered patent attorney or registered trade mark attorney should no longer be jointly liable for making threats they have acted in their professional capacity and on instructions from their client.