Patents, Trade Marks and Design Rights: Groundless Threats

Open date: 17 April 2013

Close date: 17 July 2013

The consultation period has now closed.  We may, however, be able to offer a short extension in time for late responses.

Background

Intellectual property rights are a vital foundation of economic growth.  Patents, trade marks and design rights ensure that innovation is rewarded and encouraged.  If misused, however, they can stifle new ideas and inventions.  Infringement litigation can be disruptive and expensive.  The law provides a remedy in the shape of the threats provisions.  Where a threat is made without a genuine intention to litigate; where there has been no infringement or where the right is invalid the threat is said to be groundless (or unjustified).  Any person aggrieved by a groundless threat may apply to court for an injunction, declaration or damages.

There are problems with the current law.  The provisions do not distinguish well between the trade source of the infringement and others with a lesser connection, such as customers.  Groundless threats actions can also be used tactically to drive a wedge between legal advisers and their clients or to drive cases to court rather than encourage negotiations over settlement.

Consultation

The Commission is consulting on two approaches to reform.

The first is to build on the reforms made to patent law in 2004 and to extend these to the other rights.  We also propose that legal advisers should be protected from liability for groundless threats.

The second approach is to treat groundless threats as a form of unfair competition and to introduce a new and broader cause of action based on the Paris Convention.

How to respond

We are happy to accept responses in any form but it would be helpful to us if you were able to use the consultation response form and send it to us by email.

Please send your responses to:
Email: intel.prop@lawcommission.gsi.gov.uk, or
Post: Julia Jarzabkowski, Law Commission, Steel House, 11 Tothill Street, London SW1H 9LJ

This consultation relates to our Patents, Trade Marks and Design Rights: Groundless Threats project.

Reference number: LCCP212

 

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