Letters before action are encouraged by the Courts in the UK as a way of potentially avoiding the need for litigation. In IP cases, particularly in the life sciences industry, such letters are very regularly sent between patentees and potential infringers. For example, it would be seen as standard practice in the UK for a patentee pharmaceutical company to write to a generics company when that generics company obtains a marketing authorisation in the UK for a medicine which, if launched in the UK, would infringe the relevant patent. However, before writing such letters, patentees and their legal advisers need to be wary of the recently updated rules on unjustified threats.
In particular, the Intellectual Property (Unjustified Threats) Act 2017 came into force on 1 October 2017. The Act serves to update and also to harmonise the unjustified threats provisions in relation to patents, UK and EU trade marks, and UK and EU designs (both registered and unregistered). It is intended to provide a clearer framework for resolving disputes (and thus avoiding litigation) and protect retailers, suppliers and customers against unjustified threats.
The new provisions for each type of right follow a similar structure and are worded to be as similar as possible to each other. In summary, for each type of right, the Act follows the following sequence:
- Defines a threat. Notably this can relate to proceedings which may be brought outside the UK (as well as in the UK) in relation to acts done in the UK.
- Defines which threats are actionable.The previous exception in patent cases for threats made to a primary actor (e.g. a maker or importer) is extended to trade marks and designs.
- Defines “permitted communications” and provides guidance on what may be said and for what purpose.
- Sets out remedies and defences.The defence, which was previously only available for patents, whereby someone is not liable for threats where efforts to find the primary actor were unsuccessful, is extended to trade marks and designs.
- Prevents threats actions from being brought against professional advisers who act on instructions and who identify their client in the communication.
- Clarifies that a threat made before grant is taken as a threat to sue once the relevant right is granted (as is already expressly the case for patents).
- Clarifies that reference to infringement proceedings includes orders for delivery up or destruction in those proceedings.
Permitted communications are a new concept introduced in the Act to provide rights holders with safety from a threats action if they are making the communication for a “permitted purpose” and only include information relating to the threat that is necessary for the purpose and which the person making the communication reasonably believes to be true. The Act includes a non-exhaustive list of examples of permitted purposes, including giving notice that a right exists and discovering whether or by whom the right has been infringed.
It remains to be seen how this new law will be interpreted by the Courts, but hopefully the increased harmonisation will lead to increased certainty for rights holders