PA 70, 70A-70F – Remedy for groundless threats of infringement proceedings

Question 1

What does S70 concern

Answer 1

Threats of infringement proceedings

Question 2

When does a communication contain a threat

Answer 2

S70(1)
A communication contains a “threat of infringement proceedings” if its RECIPIENT would REASONABLY understand that:
a) a patent (or published application) exists AND
b) someone intends to bring PROCEEDINGS (anywhere) in respect of an act done, or which would be done, in the UK

Question 3

Who is a recipient of a threat if directed as a mass communication or directed to the public

Answer 3

S70(2)
the understanding recipient will be a member of the public , or of the group to which the communication was directed

Question 4

What does S70A concern

Answer 4

Actionable threats

Question 5

What make a threat ACTIONABLE

Answer 5

S70A
(1) by any person AGGRIEVED BY the threat
UNLESS
(2) the threat is in respect of MAKING or IMPORTING a product FOR DISPOSAL, or USING a process (its a primary act)
(3) the threat is in respect of INTENDING to perform a primary act
or
(4) the threat was made to a PERSON who has performed or intends to perform any infringing act, and in relation to doing anything else in relation to that act
or
(5) the threat is NOT AN EXPRESS THREAT and is in a PERMITTED COMMUNICATION

Question 6

What does S70B concern

Answer 6

Permitted communications

Question 7

What makes a communication a permitted communication

Answer 7

S70B(1)
It is a permitted communication IF
a) the information that relates to the threat is for a PERMITTED PURPOSE and
b) that the information is NECESSARY for that purpose, and that person making the communication reasonably believes it is true

Question 8

What are permitted purposes for a communication containing a threat

Answer 8

S70B(2)
a) giving notice that a patent (or PUBLISHED application) EXISTS
b) discovering WHETHER or BY WHOM the primary act of INFRINGEMENT was done by
c) giving notice that a person has a RIGHT in or under a patent/application, when a third party’s AWARENESS of that right may be relevant for future proceedings

Question 9

What are NOT permitted purposes for a communication containing a threat

Answer 9

S70B(4)
a) requesting a person ceases commercial activities in relation to a product or process
b) requesting a person delivers up or destroys a product
c) requesting a person gives an undertaking relating to a product or process

Question 10

Are there any exceptions to the list of permitted communications for threats

Answer 10

S70B(3)
The court can treat any purpose as a permitted purpose if it is just to do so, except for the listed NOT permitted purposes

Question 11

What can necessary information in a permitted communication include

Answer 11

S70B(5)
a) a statement that a patent is in force, or an application has been filed
b) details of a patent or published application or a right in or under it that are accurate and do not mislead
c) identification of a product or process relating to an alleged infringement by a primary act

Question 12

What does S70C concern

Answer 12

Remedies and defences for threats

Question 13

When can proceedings for an actionable threat be brought

Answer 13

S70C(1)
Proceedings may be brought AGAINST the threatener FOR:
a) a declaration that a threat was unjustified
b) damages in respect of any loss sustained by the aggrieved person as a consequence of the threats

Question 14

What are the defences for making an actionable threat

Answer 14

S70C
(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 (of application once granted)
OR
(4) to show that despite taking reasonable steps, the threatener failed to identify who has committed the relevant act, and notified the recipient of the steps taken before or when making the threat.

Question 15

When are professional advisors not liable for making a threat

Answer 15

S70D(1)(3)
Professional advisors (or their employers) are not liable if the adviser is acting on the instructions of the threatener, and identifies the threatener in the communication

Question 16

What does S70D concern

Answer 16

Professional advisors

Question 17

What constitutes a professional advisor in terms of threat provisions

Answer 17

S70D(2)
A professional advisor provides legal, trademark, or patent services in a professional capacity, and is regulated by one or more regulatory bodies (e.g. IPReg)

Question 18

How does professional indemnity affect the liability in threats provisions

Answer 18

S70D(4)
it does not affect the liability of the person who issued the instructions (i.e. the client who is the threatener)

Question 19

Where does the burden of proof lie for a professional advisor being indemnified against threatening behavior

Answer 19

S70D(5)
The person (i.e. professional) relying on the indemnity has the burden of proving all the requirements are met

Question 20

What does S70E concern

Answer 20

patent applications pending registration

Question 21

What do threat provisions apply to

Answer 21

S70E(1)
both granted patents, and published applications

Question 22

How a threats regarding published applications treated

Answer 22

S70E(2)
it is treated as a reference to the patent once granted

Question 23

When can you send a threat to a secondary infringer rather than a primary infringer

Answer 23

ONLY if reasonable attempts have been made to find the primary infringer AND you notify the secondary infringer of your attempts

Question 24

What should you do if a client has been threatened

Answer 24

• Ensure that PROOF of the threat is available
• Ask the client to prepare a submission on how/why they are the aggrieved party

Question 25

Are there any alternatives to threat remedies

Answer 25

In some circumstances the tort of malicious falsehood ay be an additional or alternative remedy