Intellectual Property (Unjustified Threats) Bill (HL Bill 78)

A

BILL

[AS AMENDED ON REPORT]

TO

Amend the law relating to unjustified threats to bring proceedings for
infringement of patents, registered trade marks, rights in registered designs,
design right or Community designs.

Be it enacted by the Queen’s most Excellent Majesty, by and with the advice and
consent of the Lords Spiritual and Temporal, and Commons, in this present
Parliament assembled, and by the authority of the same, as follows:—

Patents

1 Patents

(1) The Patents Act 1977 is amended as follows.

(2) For section 70 (remedy for unjustified threats of infringement proceedings)
5substitute—

“Unjustified threats

70 Threats of infringement proceedings

(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
10the communication that—

(a) a patent exists, and

(b) a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the patent by—

(i) 15an act done in the United Kingdom, or

(ii) an act which, if done, would be done in the United
Kingdom.

Intellectual Property (Unjustified Threats) BillPage 2

(2) References in this section and in section 70C to a “recipient” include, in
the case of a communication directed to the public or a section of the
public, references to a person to whom the communication is directed.

70A Actionable threats

(1) 5Subject to subsections (2) to (5), a threat of infringement proceedings
made by any person is actionable by any person aggrieved by the
threat.

(2) A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of—

(a) 10where the invention is a product, making a product for disposal
or importing a product for disposal, or

(b) where the invention is a process, using a process.

(3) A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
15constitute an infringement of a kind mentioned in subsection (2)(a) or
(b).

(4) A threat of infringement proceedings is not actionable if the threat—

(a) is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b) in relation to a product or
20process, and

(b) is a threat of proceedings for an infringement alleged to consist
of doing anything else in relation to that product or process.

(5) A threat of infringement proceedings which is not an express threat is
not actionable if it is contained in a permitted communication.

(6) 25In sections 70C and 70D “an actionable threat” means a threat of
infringement proceedings that is actionable in accordance with this
section.

70B Permitted communications

(1) For the purposes of section 70A(5), a communication containing a
30threat of infringement proceedings is a “permitted communication”
if—

(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;

(b) all of the information that relates to the threat is information
35that—

(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and

(ii) the person making the communication reasonably
believes is true.

(2) 40Each of the following is a “permitted purpose”—

(a) giving notice that a patent exists;

(b) discovering whether, or by whom, a patent has been infringed
by an act mentioned in section 70A(2)(a) or (b);

(c) giving notice that a person has a right in or under a patent,
45where another person’s awareness of the right is relevant to any
proceedings that may be brought in respect of the patent.

Intellectual Property (Unjustified Threats) BillPage 3

(3) The court may, having regard to the nature of the purposes listed in
subsection (2)(a) to (c), treat any other purpose as a “permitted
purpose” if it considers that it is in the interests of justice to do so.

(4) But the following may not be treated as a “permitted purpose”—

(a) 5requesting a person to cease doing, for commercial purposes,
anything in relation to a product or process,

(b) requesting a person to deliver up or destroy a product, or

(c) requesting a person to give an undertaking relating to a product
or process.

(5) 10If any of the following information is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—

(a) a statement that a patent exists and is in force or that an
application for a patent has been made;

(b) 15details of the patent, or of a right in or under the patent, which—

(i) are accurate in all material respects, and

(ii) are not misleading in any material respect; and

(c) information enabling the identification of the products or
processes in respect of which it is alleged that acts infringing the
20patent have been carried out.

70C Remedies and defences

(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—

(a) a declaration that the threat is unjustified;

(b) 25an injunction against the continuance of the threat;

(c) damages in respect of any loss sustained by the aggrieved
person by reason of the threat.

(2) In the application of subsection (1) to Scotland—

(a) “declaration” means “declarator”, and

(b) 30“injunction” means “interdict”.

(3) It is a defence for the person who made the threat to show that the act
in respect of which proceedings were threatened constitutes (or if done
would constitute) an infringement of the patent.

(4) It is a defence for the person who made the threat to show—

(a) 35that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in section
70A(2)(a) or (b) in relation to the product or the use of a process
which is the subject of the threat, and

(b) that the person notified the recipient, before or at the time of
40making the threat, of the steps taken.

70D Professional advisers

(1) Proceedings in respect of an actionable threat may not be brought
against a professional adviser (or any person vicariously liable for the
actions of that professional adviser) if the conditions in subsection (3)
45are met.

Intellectual Property (Unjustified Threats) BillPage 4

(2) In this section “professional adviser” means a person who, in relation
to the making of the communication containing the threat—

(a) is acting in a professional capacity in providing legal services or
the services of a trade mark attorney or a patent attorney, and

(b) 5is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or more
regulatory bodies (whether through membership of a
regulatory body, the issue of a licence to practise or any other
means).

(3) 10The conditions are that—

(a) in making the communication the professional adviser is acting
on the instructions of another person, and

(b) when the communication is made the professional adviser
identifies the person on whose instructions the adviser is acting.

(4) 15This section does not affect any liability of the person on whose
instructions the professional adviser is acting.

(5) It is for a person asserting that subsection (1) applies to prove (if
required) that at the material time—

(a) the person concerned was acting as a professional adviser, and

(b) 20the conditions in subsection (3) were met.

70E Supplementary: pending registration

(1) In sections 70 and 70B references to a patent include references to an
application for a patent that has been published under section 16.

(2) Where the threat of infringement proceedings is made after an
25application has been published (but before grant) the reference in
section 70C(3) to “the patent” is to be treated as a reference to the patent
as granted in pursuance of that application.

70F Supplementary: proceedings for delivery up etc.

In section 70(1)(b) the reference to proceedings for infringement of a
30patent includes a reference to proceedings for an order under section
61(1)(b) (order to deliver up or destroy patented products etc.).”

(3) In section 70F (inserted by subsection (2)) at the end insert “and proceedings in
the Unified Patent Court for an order for delivery up made in accordance with
articles 32(1)(c) and 62(3) of the Agreement on a Unified Patent Court.”

(4) 35Before section 71 insert—

“Declaration or declarator as to non-infringement”.

(5) In section 74 (proceedings in which validity of a patent may be put in issue) in
subsection (1)(b), for “under section 70” substitute “in respect of an actionable
threat under section 70A”.

(6) 40In section 78 (effect of filing an application for a European patent (UK)), in
subsection (2) at the appropriate place insert “sections 70 to 70F”.

(7) In section 106 (costs and expenses in proceedings before the Court) in
subsection (1A)(c), for “under section 70” substitute “in respect of an actionable
threat under section 70A”.

Intellectual Property (Unjustified Threats) BillPage 5

(8) In paragraph 2 of Schedule A3 (application of relevant statutory provisions to
European patent with unitary effect) at the appropriate place insert “sections
70 to 70F (unjustified threats);”.

Trade marks

2 5Trade marks

(1) The Trade Marks Act 1994 is amended as follows.

(2) For section 21 (remedy for unjustified threats of infringement proceedings)
substitute—

“Unjustified threats

21 10Threats of infringement proceedings

(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—

(a) a registered trade mark exists, and

(b) 15a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the registered trade mark by—

(i) an act done in the United Kingdom, or

(ii) an act which, if done, would be done in the United
20Kingdom.

(2) References in this section and in section 21C to a “recipient” include, in
the case of a communication directed to the public or a section of the
public, references to a person to whom the communication is directed.

21A Actionable threats

(1) 25Subject to subsections (2) to (6), a threat of infringement proceedings
made by any person is actionable by any person aggrieved by the
threat.

(2) A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of—

(a) 30applying, or causing another person to apply, a sign to goods or
their packaging,

(b) importing, for disposal, goods to which, or to the packaging of
which, a sign has been applied, or

(c) supplying services under a sign.

(3) 35A threat of infringement proceedings is not actionable if the
infringement is alleged to consist of an act which, if done, would
constitute an infringement of a kind mentioned in subsection (2)(a), (b)
or (c).

(4) A threat of infringement proceedings is not actionable if the threat—

(a) 40is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(a) or (b) in relation to goods or their
packaging, and

Intellectual Property (Unjustified Threats) BillPage 6

(b) is a threat of proceedings for an infringement alleged to consist
of doing anything else in relation to those goods or their
packaging.

(5) A threat of infringement proceedings is not actionable if the threat—

(a) 5is made to a person who has done, or intends to do, an act
mentioned in subsection (2)(c) in relation to services, and

(b) is a threat of proceedings for an infringement alleged to consist
of doing anything else in relation to those services.

(6) A threat of infringement proceedings which is not an express threat is
10not actionable if it is contained in a permitted communication.

(7) In sections 21C and 21D “an actionable threat” means a threat of
infringement proceedings that is actionable in accordance with this
section.

21B Permitted communications

(1) 15For the purposes of section 21A(6), a communication containing a
threat of infringement proceedings is a “permitted communication”
if—

(a) the communication, so far as it contains information that relates
to the threat, is made for a permitted purpose;

(b) 20all of the information that relates to the threat is information
that—

(i) is necessary for that purpose (see subsection (5)(a) to (c)
for some examples of necessary information), and

(ii) the person making the communication reasonably
25believes is true.

(2) Each of the following is a “permitted purpose”—

(a) giving notice that a registered trade mark exists;

(b) discovering whether, or by whom, a registered trade mark has
been infringed by an act mentioned in section 21A(2)(a), (b) or
30(c);

(c) giving notice that a person has a right in or under a registered
trade mark, where another person’s awareness of the right is
relevant to any proceedings that may be brought in respect of
the registered trade mark.

(3) 35The court may, having regard to the nature of the purposes listed in
subsection (2)(a) to (c), treat any other purpose as a “permitted
purpose” if it considers that it is in the interests of justice to do so.

(4) But the following may not be treated as a “permitted purpose”—

(a) requesting a person to cease using, in the course of trade, a sign
40in relation to goods or services,

(b) requesting a person to deliver up or destroy goods, or

(c) requesting a person to give an undertaking relating to the use of
a sign in relation to goods or services.

(5) If any of the following information is included in a communication
45made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—

Intellectual Property (Unjustified Threats) BillPage 7

(a) a statement that a registered trade mark exists and is in force or
that an application for the registration of a trade mark has been
made;

(b) details of the registered trade mark, or of a right in or under the
5registered trade mark, which—

(i) are accurate in all material respects, and

(ii) are not misleading in any material respect; and

(c) information enabling the identification of the goods or their
packaging, or the services, in relation to which it is alleged that
10the use of a sign constitutes an infringement of the registered
trade mark.

21C Remedies and defences

(1) Proceedings in respect of an actionable threat may be brought against
the person who made the threat for—

(a) 15a declaration that the threat is unjustified;

(b) an injunction against the continuance of the threat;

(c) damages in respect of any loss sustained by the aggrieved
person by reason of the threat.

(2) It is a defence for the person who made the threat to show that the act
20in respect of which proceedings were threatened constitutes (or if done
would constitute) an infringement of the registered trade mark.

(3) It is a defence for the person who made the threat to show—

(a) that, despite having taken reasonable steps, the person has not
identified anyone who has done an act mentioned in section
2521A(2)(a), (b) or (c) in relation to the goods or their packaging or
the services which are the subject of the threat, and

(b) that the person notified the recipient, before or at the time of
making the threat, of the steps taken.

21D Professional advisers

(1) 30Proceedings in respect of an actionable threat may not be brought
against a professional adviser (or any person vicariously liable for the
actions of that professional adviser) if the conditions in subsection (3)
are met.

(2) In this section “professional adviser” means a person who, in relation
35to the making of the communication containing the threat—

(a) is acting in a professional capacity in providing legal services or
the services of a trade mark attorney or a patent attorney, and

(b) is regulated in the provision of legal services, or the services of
a trade mark attorney or a patent attorney, by one or more
40regulatory bodies (whether through membership of a
regulatory body, the issue of a licence to practise or any other
means).

(3) The conditions are that—

(a) in making the communication the professional adviser is acting
45on the instructions of another person, and

(b) when the communication is made the professional adviser
identifies the person on whose instructions the adviser is acting.

Intellectual Property (Unjustified Threats) BillPage 8

(4) This section does not affect any liability of the person on whose
instructions the professional adviser is acting.

(5) It is for a person asserting that subsection (1) applies to prove (if
required) that at the material time—

(a) 5the person concerned was acting as a professional adviser, and

(b) the conditions in subsection (3) were met.

21E Supplementary: pending registration

(1) In sections 21 and 21B references to a registered trade mark include
references to a trade mark in respect of which an application for
10registration has been published under section 38.

(2) Where the threat of infringement proceedings is made after an
application for registration has been published (but before registration)
the reference in section 21C(2) to “the registered trade mark” is to be
treated as a reference to the trade mark registered in pursuance of that
15application.

21F Supplementary: proceedings for delivery up etc.

In section 21(1)(b) the reference to proceedings for infringement of a
registered trade mark includes a reference to—

(a) proceedings for an order under section 16 (order for delivery up
20of infringing goods, material or articles), and

(b) proceedings for an order under section 19 (order as to disposal
of infringing goods, material or articles).”

(3) In section 52(3)(a) (power to provide for the application of certain provisions in
relation to a European Union trade mark) for sub-paragraph (i) substitute—

(“i) 25sections 21 to 21F (unjustified threats);”.

(4) In section 54(3) (power to provide for the application of certain provisions in
relation to an international trade mark (UK)) for paragraph (a) substitute—

(a) sections 21 to 21F (unjustified threats);”.

3 European Union trade marks

(1) 30Regulation 6 of the Community Trade Mark Regulations 2006 (S.I. 2006/1027)
(unjustified threats of infringement proceedings) is amended as follows.

(2) In paragraph (1), for “section 21” substitute “sections 21 to 21D and section
21F”.

(3) After paragraph (1) insert—

(1A) 35In the application of sections 21 and 21B in relation to a European
Union trade mark, references to a registered trade mark are to be
treated as references to a European Union trade mark in respect of
which an application has been published in accordance with Article 39
of the European Union Trade Mark Regulation.

(1B) 40In the application of section 21C in relation to a European Union trade
mark in a case where the threat of infringement proceedings is made
after an application has been published (but before registration) the
reference in section 21C(2) to “the registered trade mark” is to be treated

Intellectual Property (Unjustified Threats) BillPage 9

as a reference to the European Union trade mark registered in
pursuance of that application.”

(4) For paragraph (2) substitute—

(2) In the application of sections 21 and 21B in relation to an international
5trade mark (EC), references to a registered trade mark are to be treated
as references to an international trade mark (EC) in respect of which
particulars of an international registration designating the European
Union have been published in accordance with Article 152 of the
European Union Trade Mark Regulation.

(3) 10In the application of section 21C in relation to an international trade
mark (EC) in a case where the threat of infringement proceedings is
made after particulars have been published (but before registration) the
reference in section 21C(2) to “the registered trade mark” is to be treated
as a reference to the international trade mark (EC) registered in
15pursuance of those particulars.”

(5) For the heading substitute “Unjustified threats”.

Registered designs, design right and Community design

4 Registered designs

(1) The Registered Designs Act 1949 is amended as follows.

(2) 20For the heading before sections 24A to 28 substitute—

"Legal proceedings: general".

(3) For section 26 (remedy for unjustified threats of infringement proceedings)
substitute—

“Unjustified threats

26 25Threats of infringement proceedings

(1) A communication contains a “threat of infringement proceedings” if a
reasonable person in the position of a recipient would understand from
the communication that—

(a) a registered design exists, and

(b) 30a person intends to bring proceedings (whether in a court in the
United Kingdom or elsewhere) against another person for
infringement of the right in the registered design by—

(i) an act done in the United Kingdom, or

(ii) an act which, if done, would be done in the United
35Kingdom.

(2) References in this section and in section 26C to a “recipient” include, in
the case of a communication directed to the public or a section of the
public, references to a person to whom the communication is directed.