Reform of 'groundless threats' regime in IP law is a boost for SME innovation

Businesses will be able to enforce their intellectual property (IP) rights without expensive and pointless satellite litigation under government reforms.

The current provisions make an IP owner vulnerable to an action for making groundless threats when communicating with potential infringers of patents, trademarks, and design rights. Many have suggested that these have created a trap for naïve IP owners, particularly small and medium sized enterprises that cannot afford advice from specialist lawyers.

The government's announcement came after the Department for Business, Innovation and Skills and the UK Intellectual Property Office (UKIPO) asked the Law Commission to review the law in 2012. The commission published its proposals in 2014.

However, the Law Society has revealed that its Intellectual Property Law Committee (IPLC), led by its chair, Isabel Davies, and her former IPLC colleague Robin Fry, have worked behind the scenes for nearly a decade to persuade the judiciary, lawyers, the UKIPO, and politicians that certain provisions of IP legislation have not worked as intended.

This covert lobbying by Davies and her colleagues bore fruit when the Law Commission produced its report recommending changes to the law that were in line with the Law Society's position:

• 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; and,

• the rules are not in line with wider Civil Procedure Rules and discourage negotiation and settling out of court.

Commenting on the government's decision to implement the commission's recommendations, Davies said: "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."

John van der Luit-Drummond is legal reporter for Solicitors Journal