Boost for SME innovation as law changes protect intellectual property
Law Societys 9 year campaign to civilise IP disputes bears fruit.
Following nearly a decade of Law Society campaigning, changes to the law will mean businesses can enforce their intellectual property (IP) rights without expensive and pointless satellite litigation over ‘threats’.
For the last nine years, the Law Society’s Intellectual Property Law Committee (IPLC), led by chairman Isabel Davies and her former IPLC colleague Robin Fry, has worked to persuade the judiciary, lawyers, the UK Intellectual Property Office and politicians that certain provisions of UK IP legislation are not working as intended. These provisions make an IP owner vulnerable to an action for making ‘groundless threats’ when communicating with potential infringers. The effect of these provisions has been to create a bear-trap for naïve IP owners, particularly small and medium sized enterprises that cannot afford expensive IP lawyers to advise them.
This behind the scenes work by Isabel and her colleagues bore fruit when the Law Commission produced a report that recommended changes to the law this area. The Government has now announced that it intends to introduce legislation that largely follows the Law Commission’s recommendations.
Isabel Davies, chair of the Law Society's Intellectual Property Committee, said:
"When the government implements the Law Commission's recommendations, the result will support innovation and competition, and will benefit businesses, including SMEs. It will simplify the overly complex and inconsistent provisions reducing costs and risk of being drawn into unexpected litigation - a win for business.
"The Intellectual Property Law Committee has been at the forefront of thinking on this issue and initiated conversations about the concerns in 2006, convening meetings between the judiciary, the Bar and IPLC representatives to draw attention to an area of law that is unwieldy and unclear. With clear support for reform, the matter was raised by the IPLC with the UK Intellectual Property Office, a move which has now resulted in these recommendations.
"We welcome the government’s announcement that it intends to introduce legislation that largely reflects the Law Commission's recommendations. This is an important step towards ensuring IP law is clear, coherent and applicable and the IPLC will be continuing to press for swift enactment of these proposals."
The Law Commission's report found, in line with the Law Society’s position, that the problems with the current law include the following:
- The provisions are inconsistent between the various intellectual property rights, and inconsistent with the position in other EU countries.
- The rules are extremely complicated and contain a myriad of traps for those who do not specialise in IP law.
- The rules are not in line with wider litigation rules (the Civil Procedure Rules) and discourage negotiation and settling out of court.
The 18 proposals for reform, which have been largely accepted by the government, include:
- Permitting legitimate communication with secondary actors using safe harbour provisions.
- Enabling appropriate communications about intended acts.
- Simplifying the acts that can be referred to when approaching prospective defendants.
- Professional advisers should not be liable for threats when acting in their professional capacity and on their clients' instructions.
