IP threats: If it were not assize time, I would not take such language from you!

swordApologies for the odd title.  This posting is about the threats provisions in UK IP legislation.  Thinking about this subject reminded IP Draughts of the above quotation, which is from a seventeenth century criminal case, Turberville v Savage, that IP Draughts half-remembers from law school.  The issue was whether a conditional statement amounted to a threat and therefore to common law assault.  Or something like that.

archReminiscing further, IP Draughts’ glittering career as a criminal barrister ended shortly after it started, in 1984.  As a pupil barrister he was sent to the Old Bailey to be stand-in counsel for a client, part-way through a criminal trial.  The client was charged with some serious firearms and assault offences. The offences related to a dispute between neighbouring businesses which occupied workshops beneath the arches of a railway bridge.  Classy stuff.

The evidence had been given, the judge had summed up, and the jury had been deliberating for some time.  Unfortunately, the client’s “proper” counsel couldn’t wait any longer for the jury, and had to attend another trial.  At short notice, IP Draughts had to read the papers and decide what to say in a plea in mitigation, if the jury found the client guilty.

Edward_Marshall_HallFortunately, IP Draughts’ client was found not guilty of all the serious charges (did counsel and judge know this was likely before agreeing that a 24 year old know-nothing could take over the case?).  All that was left was a conviction for possession of an unlicensed firearm, which was a shotgun that didn’t work.  IP Draughts’ oratory, in best Marshall Hall style, no doubt had a tremendous effect on the judge’s sentence.  The client received a conditional discharge, almost the lowest sentence that could be given.  IP Draughts claims all due credit for this sentencing victory.

Anyway, back to the real world.  As IP Draughts has previously reported, the Law Commission is undertaking a review of whether the provisions of UK IP legislation concerning threats should be revised or abolished.  These provisions are intended to prevent an IP owner from making unjustified threats to sue others for IP infringement.  By saying the wrong thing in pre-action correspondence, an IP owner may find himself being sued by the would-be defendant, as this case illustrates.  In addition, a party’s legal advisers can be sued for making threats, even if they are just putting forward their client’s position.

The IP Working Party of the Law Society, of which IP Draughts is a member, produced a report some years ago which recommended that these provisions be abolished. (The previous link – at Schedule E – is to a version of the recommendations in a Gowers response; the stand alone report not immediately findable on the Law Society website.)

law commissionThe Law Commission has now considered the subject of threats and has come up with its provisional conclusions, on which it is inviting comments.  Its consultation papers can be found here.  The summary version of their consultation paper runs to 31 pages, so this is not a subject for the faint-hearted.  In a nutshell, the Law Commission’s proposals are either:

  1. To revise the threats provisions rather than abolish them, but end the right to sue a party’s legal advisers; or
  2. Move to remedies based on a more general concept of “unfair competition” which is familiar in civil code countries and in Canada.

Please make your views known to the Law Commission.  The deadline for making responses is 17 July 2013.  Responses should be made:

By email to: intel.prop@lawcommission.gsi.gov.uk; or
By post to: Julia Jarzabkowski, Law Commission, Steel House, 11 Tothill Street, London SW1H 9LJ.

1 Comment

Filed under Intellectual Property, Legal policy

One response to “IP threats: If it were not assize time, I would not take such language from you!

  1. Posting this on behalf of Jai Atal, who experienced difficulties in posting directly:

    Hi Mark,

    An interesting case in point given the fact of the recent article in the papers about the OFT allegedly accusing a large Pharma Co for allegedly threatening some smaller Pharma Co’s with action for alleged breach of the larger Pharma Co’s Patents in respect of a drug, which I think, the article said, is used to treat Depression.

    The said smaller Pharma Co’s, were also producing the the same or similar drug and, the allegation that those threats allegedly amounted to an abuse of a dominant position and the alleged acquiescence of the other parties allegedly amounting to a possible price fixing cartel resulting in the NHS paying more for the drug than otherwise they may have had to..

    The question is this..Will the threat of action for infringement of the Patent be sufficient defense (duress perhaps) to a charge against the smaller Pharma co’s in the story, of the creation of a Price Fixing Cartel?

    I tried to post this as a comment but for some reason it wouldnt let me. I hope you are well.

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