Intellectual Property (Unjustified Threats) Act 2017

The Patents Act 1977 is amended as follows.

For section 70 (remedy for unjustified threats of infringement proceedings) substitute—

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Before section 71 insert— “ Declaration or declarator as to non-infringement ”.

In section 74 (proceedings in which validity of a patent may be put in issue) in subsection (1)(b), for “under section 70” substitute “ in respect of an actionable threat under section 70A ”.

In section 78 (effect of filing an application for a European patent (UK)), in subsection (2) at the appropriate place insert “ sections 70 to 70F ”.

In section 106 (costs and expenses in proceedings before the Court) in subsection (1A)(c), for “under section 70” substitute “ in respect of an actionable threat under section 70A ”.

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The Trade Marks Act 1994 is amended as follows.

For section 21 (remedy for unjustified threats of infringement proceedings) substitute—

In section 52(3)(a) (power to provide for the application of certain provisions in relation to a European Union trade mark) for sub-paragraph (i) substitute—.

In section 54(3) (power to provide for the application of certain provisions in relation to an international trade mark (UK)) for paragraph (a) substitute—.

Regulation 6 of the Community Trade Mark Regulations 2006 (S.I. 2006/1027) (unjustified threats of infringement proceedings) is amended as follows.

In paragraph (1), for “section 21” substitute “sections 21 to 21D and section 21F”.

After paragraph (1) insert—

For paragraph (2) substitute—

For the heading substitute “Unjustified threats”.

The Registered Designs Act 1949 is amended as follows.

For the heading before sections 24A to 28 substitute— “ Legal proceedings: general ”.

For section 26 (remedy for unjustified threats of infringement proceedings) substitute—

Before section 27 insert— “ Meaning of “the court” and appeals ”.

In section 45 (application to Scotland) after subsection (1) insert—

Part 3 of the Copyright, Designs and Patents Act 1988 (design right) is amended as follows.

For section 253 (remedy for unjustified threats of infringement proceedings), and the heading immediately before that section, substitute—

Before section 254 insert— “ Licensee under licence of right not to claim connection with design right owner ”.

“declaration” means “declarator”;

The Community Design Regulations 2005 (S.I. 2005/2339) are amended as follows.

For regulation 2 (remedy for unjustified threats of infringement proceedings) substitute—

“declaration” means “declarator”;

This Act extends to England and Wales, Scotland and Northern Ireland.

The following provisions also extend to the Isle of Man, subject to such modifications as Her Majesty may by Order in Council provide—

Her Majesty may by Order in Council provide for the amendments made by section 1(3) and (8) of this Act to the Patents Act 1977 to extend, with or without modifications, to the Isle of Man.

The power to make an Order in Council under section 255(2) of the Copyright, Designs and Patents Act 1988 (extension of certain provisions to the Isle of Man, the Channel Islands or other territories, with or without modifications) may be exercised in relation to any amendment made by section 5 above (and in section 255(4) and (5) of that Act the references to Part 3 include references to the provisions substituted or inserted by the amendments made by section 5).

This section, section 7(1) to (3) and section 9 come into force on the day on which this Act is passed.

The other provisions of this Act come into force on such day or days as the Secretary of State may by regulations made by statutory instrument appoint.

Regulations under subsection (2) may—