The document discusses imminent changes to the law around unjustified threats relating to intellectual property rights. It summarizes the key aspects of the current law and how it will change following the Intellectual Property (Unjustified Threats) Act 2017. Specifically, it notes that the Act will expand the scope of what constitutes a threat, allow threats relating to acts done in the UK rather than just proceedings in the UK, and remove the ability to defend unjustified threat claims by arguing invalidity of the patent. The document encourages questions and provides contact information for an expert in this area.

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Unjustified threats:
Imminent changes to the law

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Unjustified threats
Imminent changes to the law
Connect with Kathleen
Kathleen.FoxMurphy@brownejacobson.com
+44 (0)207 337 1013

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Unjustified threats
Imminent changes to the law
Connect with Kathleen
Kathleen.FoxMurphy@brownejacobson.com
+44 (0)207 337 1013

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Why is this important?
• The Intellectual Property
(Unjustified Threats) Act
2017 received royal assent on
27 April 2017. It is expected
to come into force later this
year (1 October 2017).
• The UK’s unjustified threats
regime applies to all core IP
rights apart from copyright
and passing off.
• Threats is a hurdle that
frequently trips up rights
holders.
• The Act will make a number
of substantive changes to the
law on unjustified threats.

8. What is an actionable threat?
Current The Act Change?
A person threatens another
with an infringement action
A person threatens another with an infringement
action
No
The threat is to an
infringement action in the UK
A reasonable person in receipt of that threat
would understand that:
• a patent/trade mark/design exists; and
• the threat is to an infringement action, to be
brought anywhere in the world, in relation to
an act taking place in the UK, for an act, which
if done, would be done in the UK
Yes
Someone is aggrieved by that
threat
Someone is aggrieved by that threat No
The threat is not excluded The threat is not excluded Yes
The threat cannot be
justified
The threat cannot be justified Yes

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One: there is a
threat

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There is a threat:
Best Buy v Worldwide Sales Corporation [2011]
“reasonable person, in the position of the recipient of the letter,
with its knowledge of all the relevant circumstances as at the date
the letter was written, would have understood the writer of the
passage to have intended, when read in the context of the letter as a
whole.”
This test is enshrined in the Act.

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There is a threat:
Grimme v Scott [2009]
“Please note that our client does not intend to commence
proceedings against you as its action is against Mr Scott, but of course
our client reserves all its rights in this matter”
Without prejudice communication will not always preclude a threats
action – careful drafting remains necessary. See, for example,
Unilever v Procter & Gamble [1999]

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Two: the threat
relates to the UK

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The threat relates
to the UK
• Current position: the threat
must be of proceedings in the
UK.
• Position under the Act: the
threat must be of a claim to
infringement by acts done or
to be done in the UK.

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The threat relates to the UK
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 the
communication that
• (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) an act done in the United Kingdom, or
– (ii) an act which, if done, would be done in the United Kingdom

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The threat relates
to the UK
• There is no need for an
underlying right to actually
exist, the communication
merely needs to suggests
enforcement of one (to do so
indirectly is sufficient).

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The threat relates
to the UK
• “Infringement of the
[relevant IP right] by an act
done in the United Kingdom”.
• Does “by” mean “exclusively
by” or “in part by”?

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Three: someone is
aggrieved

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Someone is aggrieved
• Can be done indirectly (e.g.
by threatening customers).
• Does not require serious
harm, just that the aggrieved
person’s:
“commercial interests are or are
likely to be adversely affected
in a real as opposed to a
fanciful or minimal way”
Brain v Ingledew [1997]
• The Act does not change
anything here.

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Four: the threat is
not excluded

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The threat is not excluded
Currently, for all rights, you can
threaten on the basis of alleged
acts of ‘primary’ infringement
(different for each right, but
defined in the relevant statutory
provisions). In addition and only
in relation to patents, you can
also threaten an actual ‘primary’
infringer with a claim for acts of
secondary infringement.
• The Act will allow rights
holders to threaten actual or
intended ‘primary’ infringers
with any act of infringement.
• ‘Intention’ is not defined and
intended to allow judicial
flexibility. Taking preparatory
steps should be sufficient to
evidence intention.

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The threat is not
excluded
The ‘permitted purposes’ are:
• giving notice that a right
exists
• discovering who the primary
infringers are
• any other purpose the court
considers in the interests of
justice to allow.

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Five: the threat
cannot be
justified

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The threat cannot be justified
• For all rights, the main
defence to an unjustified
threats claim is to justify the
threats – i.e. prove that the
right subsists and is infringed.
• The Act removes the ability
of parties threatening patent
infringement to defend a
threats action on the basis
they had no reasonable belief
in the invalidity of the
patent.

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Final thoughts
• Regimes harmonised.
• No threats provisions for
copyright or passing off (as is
currently the case).
• The scope of what is and is
not a threat has changed, to
varying extents, for every
right (patents have seen the
least change).
• Greater scope for
communicating with and
enquiring about primary
infringers without threats
risk.
• Professional advisors will no
longer be liable for sending
threats on behalf of their
clients. Protects the lawyer-
client relationship.
• .

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Final thoughts
• There is still a conflict with
pre-action obligations, but
the added clarity and wider
scope given by the Act should
reduce this tension.
• Particularly important for
Community designs.
• Threats continue to allow
alleged infringers to seize the
first-mover advantages:
– a greater influence over
timings;
– choice of forum; and
– open and close oral
submissions at trial.
• The threat of a threats action
also gives an infringer greater
negotiating clout.

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Connect with Kathleen
Kathleen.FoxMurphy@brownejacobson.com
+44 (0)207 337 1013
Keep your questions coming
or get in touch if you have a specific query

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Thank you for
joining today
Follow us on LinkedIn for
news, legal updates, real
opinions and training:
https://www.linkedin.com/s
howcase/9463974/

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The cases mentioned today
• Best Buy v Worldwide Sales Corporation [2011] EWCA Civ 618
• Grimme v Scott [2009] EWHC 2691
• Unilever v Procter & Gamble [1999] EWCA Civ 3027
• Brain v Ingledew [1997] F.S.R. 511
• FNM Corporation v Drammock International [2009] EWHC 1294
• Sudarshan v Clariant [2013] EWCA Civ 919
• Nvidia v Hardware Labs [2016] EWHC 3135

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Connect with Kathleen
Kathleen.FoxMurphy@brownejacobson.com
+44 (0)207 337 1013
Keep your questions coming
or get in touch if you have a specific query