Making threats to protect your intellectual property

by Josh Makin

The Intellectual Property (Unjustified Threats) Act 2017 came into force on 27 April 2017. With the intention of amending and clarifying the law on making unjustified threats against people who may be infringing on another’s intellectual property, the Act introduces consistency in the law for threats against patents, trade marks and designs. 

As intellectual property is a complex area of law, it has been common for someone to threaten to sue somebody else for infringement in the hope that the person who has allegedly infringed on their intellectual property will want to avoid getting involved in a dispute which is often expensive, time-consuming and complicated. As a result of this, the Act looks to strike a balance between giving people an appropriate remedy if somebody does infringe on their intellectual property and to discourage those who would wrongly use such threats which are made to either restrict competition or damage another’s commercial interests. This has been done by clearly setting out what conduct will constitute an actionable and unjustified threat, whilst also allowing and potentially favouring those aggrieved holder’s of such rights to write to the infringer, without the fear of facing a claim for having made an unjustified threat, for the purposes of either giving them notice of their rights or discovering whether their rights have been infringed.              

The introduction of the Act is also welcome news for professional advisers who no longer face liability for making unjustified threats of infringement provided that they can show that they are acting in a professional capacity and on their client’s instructions. 

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