10) Threats

Question 1

Section 70
Threats of Infringement Proceedings
(1) Is there a threat?

Answer 1

[“Patent” also includes published applications (s70E).]

(1) A communication contains a “threat of infringement proceedings” if a reasonable person in the shoes of the recipient would understand from the communication that:
(a) a patent exists; and
(b) a person intends to bring infringement proceedings (in the UK or elsewhere) against another person by an act done in the UK or an act intended to be done in the UK.

(2) A “recipient” is any person to whom the communication is directed.

Question 2

Section 70A
Actionable Threats
(2.1) Is the threat actionable?

Answer 2

(1) A threat is actionable by any person [i.e., not necessarily just the recipient] aggrieved by the threat.

(2, 3) A threat is not actionable if it is in respect of making or importing a product for disposal, using a process, or an intention to do either.

(4) A threat is not actionable if it is made to the person who has done, or intends to do, one of the above acts, even if the threat relates to something else.

(5) A threat is not actionable if it is a permitted communication under s70B.

Question 3

Section 70B
Permitted Communications
(2.2) Is the threat actionable?

Answer 3

[“Patent” also includes published applications (s70E).]

(1) A threat is a permitted communication if
(a) the communication is made for a permitted purpose; and
(b) all information relating to the threat is necessary for that purpose and is reasonably believed to be true by the person making the communication.

(2) The following are permitted purposes:
(a) giving notice that a patent exists;
(b) discovering whether, or by whom, a patent has been infringed by an act mentioned in s70A(2);
(c) giving notice that a person has a right in or under a patent, where another person’s awareness of that right is relevant to any future proceedings.

(3) The court may treat any other purpose as a permitted purpose if it in the interests of justice to do so.

(4) But the following are not permitted purposes:
(a) requesting a person to cease doing, for commercial purposes, anything in relation to a product or process;
(b) requesting a person to deliver up or destroy a product;
(c) requesting a person to give an undertaking relating to a product or process.

(5) Information “necessary” for the permitted purpose could include:
(a) a statement that a patent exists and is in force or that an application has been filed;
(b) details of the patent, or of a right in or under it, which are accurate and not misleading; and
(c) information enabling the identification of the products or processes in respect of which alleged infringments have been carried out.

Question 4

Section 70C
Remedies and Defects
(3) Remedy for an actionable threat.

Answer 4

(1) Proceedings for an actionable threat may be brought against the threatener for
(a) a declaration that the threat is unjustified;
(b) an injunction against continued threats;
(c) damages in respect of any loss suffered by the aggrieved person because of the threat.

…

(3) It is a defence for the threatener to show that the action for which proceedings were threatened does (or if done, would) constitute an infringement of the patent [or, in the case of a published application, the patent as it will eventually grant (s70E)].

[NB Section 70E(2) sets out that, when the infringement defence is relied upon, it relates to the scope of the patent as granted rather than the scope of the patent application when published under section 16.]

(4) It is a defence for the threatener to show that, despite taking reasonable steps, the threatener has failed to identify who has committed an act mentioned in s70A(2), and that they have notified the recipient of the threat, before or at the time of making the threat, of the steps taken.

Question 5

Section 70D
Professional Advisors

Answer 5

(1, 3) Professional advisors (and those vicariously liable for them) are not liable if the adviser is acting on the instructions of the threatener, and identifies the threatener in the communication.

(2) A “professional adviser” is someone who provides legal, trade mark or patent services in a professional capacity, and is regulated by one or more regulatory bodies.

(4) This section does not affect the liability of the threatener themselves.

(5) A person relying on this section has the burden of proving that the above requirements were met.