Threats Flashcards
When will a communication be considered to contain a “threat of infringement proceedings” according to Section 70(1)?
If a reasonable person in the position of the recipient would understand:
s.70(1)(a). a patent (or published application; see s. 70E(1)) exists ; and
s.70(1)(b). a person intends to bring infringement proceedings (in the UK or elsewhere) for an act done (or that would be done) in the UK
Then there is a threat.
a threat may be implicit and does not need to be in writing
How does Section 70(2) define a ‘recipient’?
A ‘recipient’ is any person to which the communication is directed
Who can bring proceedings for an actionable threat according to Section 70A(1)?
Threats of infringements proceedings are actionable by any person aggrieved by the threat.
A “person aggrieved” means any person whose commercial interests have been or might be affected by the threat in a real way (rather than a fanciful way).
Commericial can mean reputational loss
the aggrieved person can be an indirect recipient of the threat
What is an actionable threat according to Section 70A(2)-(5)?
- The threat was made in relation to a non-primary act, or someone intending to do a non-primary act
- Express threat in a non permitted communication
If the primary act is carried out outside the UK, the person is not a primary actor.
What makes a communication a ‘permitted communication’ under Section 70B(1)?
A communication is a ‘permitted communication’ if:
- It is made for a permitted purpose
- All of the information it contains is necessary for the permitted purpose
- The person making the communication reasonably believes the information to be true
What are ‘permitted purposes’ according to Section 70B(2) and (3)?
Permitted purposes are: notice and discovery
- Giving notice that a patent (or published application) exists
- Discovering whether, or by whom, a patent has been infringed by an act under Section 70A(2)(a) or (b)
- Giving notice that a person has rights under a patent, if such awareness is relevant to any proceedings that may be brought
- Other purposes may be permitted at the court’s discretion
What are not ‘permitted purposes’ according to Section 70B(4)?
(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, or
(c) requesting a person to give an undertaking relating to a product or process.
What information in a ‘permitted communication’ will be considered as ‘necessary for that purpose’?
- A statement that a patent exists/is in force or that an application exists
- Details of the patent or right under the patent, as long as they are accurate and not misleading
- Information to enable indentification of a relevant product or process#
statement, details, info id
What remedies are available for an aggrieved person?
Remedies are set out in Section 70C(1):
- a decleration that the threat is unjustified
- an injunction against the continuance of the threat
- damages in respect of any loss sustained due to the threat
What defences are available for a person who makes an actionable threat (the threatener) under Section 70C(3) and (4)?
Subsection (3) - it is a defence if the person can show that the act mentioned in the threat was (or would have been) an infringement.
Subsection (4) - it is a defence if a person has taken reasonable steps to identify a primary infringer (Section 70A(2)(a) and (b)) but has been unable to do so AND they notified the recipient of these steps before or at the time of making the threat
What should an applicant do to rely on Section 70C(3) defence if the patent has not yet granted?
70C(3) refers to defences for the threatener
Accelerate prosection
PCT: request to enter national phase early
EP:
- Pay exam and designation fees early
- Waive right to be asked to confirm continuation
- File PACE request
- Limit claims to cover infringing act and file a div
UK:
- Request combined search and examination
- Request accelerated examination for reason of infringement
- Limit claims to cover infringing act and file a div
How can a person aggrieved by a threat respond to the Section 70C(3) defense?
If they can show that the patent is invalid then there will never be any infringement - therefore threat will be unjustified and actionable
What is the meaning of “professional adviser”?
Section 70D(2) defines a “professional adviser”, in the context of a communication containing a threat as someone:
- acting in a professional capacity in providing legal services or the services of a patent or trade mark attorney; and
- regulated in the provision of those services by a regulatory body
When are professional advisers exempted from liability for an actionable threat?
Section 70D(1) - proceedings can’t be brought against PA (or someone vicariously liable for the actions of that PA) if the conditions of subsection (3) are met.
Section 70D(3):
- the PA is acting on the instructions of another person; and
- the PA identifies the person instructing them in the communication
(Subsection (4) - doesn’t affect liability of person instructing; Subsection (5) - burden of evidence is on the PA to show that they were acting as a PA and that the conditions of (3) are met)
