The threats provisions have been amended and re-enacted many times. While the patent provisions were reformed in 2004, no equivalent changes were made for trade marks and designs (see News brief "Patents Act 2004: key changes"). There are no similar provisions for copyright. The provisions are also complex. They set out a number of activities that do not constitute an actionable threat, such as making or importing infringing goods but, in practice, these are narrowly construed and the excluded activities vary between the various IPR.

Given the difficulties in judging what can and cannot be said in pre-action correspondence, the current provisions discourage parties from setting out allegations in detail, particularly in relation to patents. This sits uncomfortably with the Civil Procedure Rules, which encourage parties to set out their case at an early stage with the aim of avoiding litigation. These difficulties lead to uncertainty, added expense and risk for businesses.

In response to this situation, the Law Commission carried out a wide-ranging review of the law and published its report in April 2014 (see Briefing "Groundless threats of IP proceedings: a potential solution?"). The government responded to the report in February 2015, accepting 15 of the Law Commission's 18 recommendations and calling for a Bill to be drawn up, which was published on 12 October 2015 (www.lawcom.gov.uk/wp-content/uploads/2015/04/lc360_patents_unjustified_threats.pdf).

The Bill is intended to introduce clarity and consistency. Currently, the threats provisions in relation to patents are more permissive: a threats action cannot be brought in respect of a patent where the threat was made to a person that had carried out a primary act, such as making or importing, even if the threat also refers to other secondary acts, such as selling or supplying. So a patent owner can assert its rights against those committing the most commercially damaging acts without incurring the risk of liability for making an actionable threat. The Bill proposes that the law on threats for registered trade marks and designs is brought into line with patents. In addition, in respect of all rights, a threat will not be actionable if it is made to a person that intends to carry out a primary act.

Another aim of the Bill is to facilitate communication between parties so that they can comply more easily with their obligations under the Civil Procedure Rules. Traditionally, communicating with secondary infringers, such as customers or retailers, has been fraught with difficulty as they were particularly protected from threats on the basis that they were less likely to have been involved in the creation of the infringing product.

To that end, the Bill introduces the so-called safe harbour of "permitted communications" so that where certain conditions are met, communicating with someone committing a secondary act will not be actionable. This does not apply to express threats to sue for infringement but allows communications for permitted purposes. For example, it is possible to provide factual evidence about a patent or seek information to identify an infringer but it is expressly not permitted to ask someone to cease doing an act. Significantly, the Law Commission commentary with the Bill states that communications with secondary infringers should be the exception and not the rule.

The other principal reforms are: the removal of the liability that professional advisers, such as lawyers and registered patent or trade mark attorneys, currently face for making threats; and changes to the law so that the threats provisions can apply to the unitary patent, which is expected to be introduced in 2017 (see feature article "The new unitary patent: prepare and protect your portfolio").

The Intellectual Property Office has recently concluded a short consultation on the Bill to explore whether the proposed reforms have support. The Bill is therefore at the start of its formal legislative process although, as it follows wide-ranging review and consultation, it should proceed smoothly.

While the Bill provides greater certainty for those seeking to enforce their rights, there remain areas of ambiguity and IPR owners will need to exercise care when applying the new provisions, including the proposed permitted communications.

In addition, there remain scenarios that present particular difficulties in application. An example of this is the recent case of T&A Textiles and Hosiery Ltd v Hala Textile UK Ltd and others where the Intellectual Property Enterprise Court considered whether a notification sent to eBay under its Verified Rights Owner system that gave notice of registered rights and potentially infringing goods constituted an actionable threat ([2015] EWHC 2888 (IPEC); see "Designs: unjustified threats", Bulletin, IP and IT, this issue).

The court recognised that the legal position is unclear, noting differing judicial interpretations as to whether a notification sent to eBay is an actionable threat or is merely notice that the claimant's design is registered, a practice which is expressly permitted under the Registered Designs Act 1949 but is generally construed strictly by the courts as permitting little more than a "bare" notification.