Threatening proceedings for intellectual property right infringement can sometimes backfire. In relation to patents, trade marks and designs, there is a right for any person aggrieved by the threat to bring an action against the threatener. The “aggrieved” person may not necessarily be the person directly threatened with proceedings, it could be anyone whose commercial interests are damaged by the threat – such as a manufacturer whose suppliers or distributors are threatened. Not only does the threats action expose the IP rights-holder to the risk of damages, it also turns the potential claimant into a defendant. This in turn creates a tension with the requirements of the Civil Procedure Rules to communicate a litigant’s case early before issuing proceedings, with rights holders more likely to sue first than to threaten first.
The new Intellectual Property (Unjustified Threats) Act 2017, which comes into force on 1 October, attempts to encourage more pre-action communication by detailing what an actionable threat is, whilst providing for “permitted communications” or communications for “permitted purposes” which cannot amount to an actionable threat. It harmonises the position across patent, trade mark and design rights (including providing for unitary patents and European patents under the proposed Unified Patent Court jurisdiction) and allows pursuit of information on primary infringers from secondary parties where reasonable efforts have been made to find the primary infringer already.
To watch a video on the new unjustified threats regime click here.
Summary and Business Impact
Lithuania has now ratified the UPC Agreement (UPCA) (on 24th August 2017) making it the 14th state to do so (see the UPCA ratification index here).
Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Estonia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland. Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.
What is causing the delay? Continue reading
The Unified Patent Court (Immunities and Privileges) Order 2017 was laid before Parliament on 26 June 2017 – see the explanatory memorandum here. This Order implements the Protocol on Privileges and Immunities of the UPC (the Protocol) and confers legal status in the UK on the United Patent Court and privileges and immunities on the Court, its judges and staff under the International Organisations Act 1968 (which allows the grant of certain immunities and privileges to the international organisation and its officers and employees). This Order needs to be passed before the UK can ratify the Protocol as well as the UPC Agreement itself. However, both Houses of Parliament will be required to debate the measure before approving it and it will also need the approval of the Privy Council.
As we have reported on our Intellectual Property Notes blog and on our UPC Hub here, the timetable for the UPC appears to be slipping, due not only to delays by the UK, in part due to the recent general election, but also the recent challenge to German ratification mounted in the German Constitutional Court. The UPC Preparatory Committee have withdrawn their 1 December 2017 start date and are as yet unable to confirm any further dates.
Consistent progress has been made towards the establishment of a unitary patent right (UP) across most countries in the EU. 26 of the 28 European Union Member States (MSs) have participated in the enhanced cooperation needed to establish this new right, which will be enforceable via a new court system – the Unified Patent Court (UPC) – which now looks likely to be established in December 2017.
The UPC preparatory committee has released an updated version of the 18th draft of thee UPC Rules of Procedure (with amendments being dated 15 March 2017), which can be accessed here. Subject to formal adoption, we understand that this update may represent the final version of the UPC Rules of Procedure.
The UPC Preparatory Committee held its final meeting on 15 March at which it agreed a collection of legal, HR and financial documents and confirmed that the Provisional Application Phase could commence once the final Signatory States had acceded to the Protocol on Provisional Application. The Committee was confident this would be met in time to allow the Provisional Application Phase to commence at the end of May 2017 in order to allow for all the practical preparations to be made for a 1 December 2017 start for the UPC.
Whatever future relationship the UK has with the rest of the EU, the effect of the Great Repeal Bill, once enacted, will mean that any existing intellectual property law having effect in the UK will continue to apply as it did post-Brexit, although it will be for the UK Government to adapt or amend it subsequently. That means that intellectual property law will continue to contain all of the concepts implemented from EU Directives or applicable from EU Regulations. However, EU-wide rights defined as applying “in the EU” will no longer apply in the UK and the Government will need to consider providing replacement rights, provision for which would need to be in place prior to Brexit.
At yesterday's meeting of the Competitiveness Council, Minister of State for Intellectual Property Baroness Neville-Rolfe announced that the UK would proceed to ratify the Unified Patent Court Agreement, so allowing the Agreement to come into force (once Germany has also ratified). This was followed by a Government announcement here. The Unified Patent Court and unitary patent now look to become realities as early as 2017.
No fee for opt-out or withdrawal of opt-out; fixed fees and value based fees finalised with guidelines
Following a lengthy consultation (see our ebulletin of May 2015 here), The Preparatory Committee for the Unified Patent Court (UPC) has published its Rules on Court fees and recoverable costs (here "the Rules") along with Guidelines for the determination of value–based Court fees and the ceiling of recoverable costs of the successful party (here "the Guidance").