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Law Commission Report on Patents (Government Response)

Volume 593: debated on Thursday 26 February 2015

My noble Friend the Under-Secretary of State for Business, Innovation and Skills, Minister for Intellectual Property (Baroness Neville-Rolfe) will today make the following statement.

In 2012, the Department for Business, Innovation and Skills together with the Intellectual Property Office (IPO) asked the Law Commission to review the law relating to the making of groundless threats to bring proceedings for infringement of patents, trade marks and design rights.

The review was sought because of concerns that the threats provisions are overly complex and do not work as intended. In particular, there were questions over whether the provisions sit well with the expectation, under the civil procedure rules, that parties in disputes should try to negotiate a settlement before turning to litigation. There were also concerns about inconsistency between the different intellectual property rights.

The Law Commission’s report was published in April 2014, and the Government have now the opportunity to consider the report fully.

The Government are grateful to the Law Commission for a report which is exhaustive and careful in its treatment of this complex matter, and which makes very clear and detailed recommendations for reform. I was also grateful for the Law Commission’s willingness to have further discussions with IPO officials on a number of the detailed issues raised by the report.

The Government accept the Law Commission’s conclusion that the threats provisions should be retained but reformed. As well as accepting the overarching thrust of the recommendations, the Government welcome many of the detailed suggestions for reform. There are just a few recommendations where the Government’s acceptance is in some way qualified. We will want to reflect further on these points, and take discussions forward with the Law Commission, stakeholders and others.

Copies of the Government’s full response to the report’s recommendations will be placed in the Libraries of both Houses.

Aside from the recommendations made, the report also discusses the possibility of removing the threats provisions entirely and introducing a new tort of making unfair allegations, either within UK law or as part of wider EU reforms. No recommendations are made in this respect, and the Law Commission suggests that it makes sense to progress first with what the report calls the more “evolutionary” changes to the threats regime. The Government agree that the idea of a wider, new tort may deserve more consideration in the longer term, but agree with the conclusion that the more evolutionary reforms should be focussed upon at this stage.

The Government are also grateful for the report’s careful treatment of issues concerning the interplay between the threats regime and the proposed Unitary Patent and Unified Patent Court. Although no specific recommendations are made, the report (and subsequent dialogue with the Law Commission) has been very helpful to Government in developing draft UK legislation with respect to threats provisions for Unitary Patents and the Unified Patent Court.

More widely, I know that the level of stakeholder interaction with the Law Commission during the groundless threats work has been excellent, particularly within the IP legal community. I recognise that there is wide support among that community for the proposed reforms.

The Government are therefore keen that this work should move forward, and intend to bring primary legislation to enact the necessary reforms in due course. The Government will want to look carefully at whether it might be possible to do this via the special parliamentary procedure which is available for Bills that implement uncontroversial Law Commission recommendations.