11) Threats

Question 1

What does the recipient need to understand from a letter for it to qualify as “an express threat of infringement proceedings”?

Answer 1

1. Patent/ Published application exists
2. Someone intends to bring proceedings (anywhere) of an act (done in the UK)

Question 2

What form can a threat be in?

Answer 2

1.Written
2. Oral
3. Implied
4. Express

Question 3

What is the opposite of express threat to sue? Give an example.

Are they actionable?

Answer 3

Implied (eg. in a permitted communication)

Not actionable

Question 4

What must the information be, for a letter to qualify as a permitted communication?

Answer 4

(a) for a permitted purpose
AND
(b) necessary for that purpose (person making the comm. must believe this) eg. patent number

Question 5

What are considered permitted purposes (s70B)?

Answer 5

1. Giving notice that
   a) a patent/app exists
   b) a person has a right (pat/app) , when a 3P’s awareness could be relevant for future proceedings
2. Discovering whether or by whom a patent has been infringed
3. Anything else, at Court’s discretion

Question 6

If a patentee contacts a retailer to identify a Manufacturer or Importer of an allegedly infringing product, is that a threat?

Answer 6

No, it’s permitted communication - s70B(2)(b)

Question 7

What is definitely NOT a permitted purpose?

Clue: think remedies

Answer 7

Requesting that a person:
1. Ceases commercial activity (Injunct)
2. Delivers up or destroys
3. Gives an undertaking (legal promise)

Question 8

Who can a threat of infringement proceedings be actioned by?

Against who?

Answer 8

Any person aggrieved by the threat can bring proceedings against the threatener

NB. does not have to be the recipient of the letter

Could be anyone whose commercial interests have/might have been affected by the threat in a “real rather than fanciful way” (eg. loss of business/clients due to circulation of threat)

Question 9

When is threat of infringement proceeding not actionable? [The “primary acts” exception]

Answer 9

If the act (or intended act) referred to in the threat is

• Making
• Importing
  A product for disposal
• Using a process

Question 10

When is threat of infringement proceeding not actionable? [The “primary actor” exception]

Answer 10

If the threatened person is:
- A manufacturer or importer of the product
- A user of the process

NB. the threat does not have to relate exempted primary acts (MIU), could be doing anything else in relation to that product or process (eg. secondary acts, such as selling)

However, the mentioned secondary act must be in relation to the same product or process as the primary act

Question 11

What remedies can the aggrieved person get for an unjustified actionable threat? DID

Answer 11

1. Declaration that threat was unjustified
2. Injunction against more threats
3. Damages of any loss sustained by the aggrieved person in consequence of the threat

Question 12

What are the 2 defences to an unjustified threat action?

Answer 12

1. The threatener has a patent/published app, and the recipient is infringing.
   Often the the recipient will counterclaim for invalidity
2. The threatener has taken ‘reasonable steps’ and failed to find the primary actor, and when threatening a secondary actor they informed them of their steps.

Question 13

Which professionals are protected (not liable) from proceedings in respect of an actionable threat?

What must be clear in the communication to satisfy this exemption?

Answer 13

Professional advisers making a threat on behalf of a client
(can be non-UK adviser, in-house attorneys etc.)

The professional adviser must identify the client whose instructions they are acting on