Threats

Question 1

When does a communication contain a threat of infringement proceedings?

Answer 1

Anyone aggrieved by a communication containing a threat of infringement proceedings (so not just recipient) can bring a threats action.

(1) A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that—
(a) a patent exists, and
(b) a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the patent by—
(i) an act done in the United Kingdom, or
(ii) an act which, if done, would be done in the United Kingdom.

Question 2

Against whom are threat claims not actionable?

Answer 2

Anyone committing (basically) a primary act of infringement, but specfically

A threat of infringement proceedings is not actionable if the infringement is alleged to consist of—

(a) where the invention is a product, making a product for disposal or importing a product for disposal, or
(b) where the invention is a process, using a process.

FURTHERMORE
where threat is not an express threat, threat is not actionable if it is in a permitted communication

Question 3

In what circumstances can threats be made?

Answer 3

threat can be made orally;

threat can be expressed or implied;

can be made when:

• -enquiring about licensing a patent;
• -enquiring about a specific product;
• -even when you explicitly state you have no intention of bringing infringement proceedings;
• -intention of threat is immaterial.

Question 4

when is something a permitted communication?

Answer 4

Section 70B

(1) For the purposes of section 70A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—
(a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;
(b) all of the information that relates to the threat is information that—
(i) is necessary for that purpose (see subsection (5)(a) to (c) for some examples of necessary information), and
(ii) the person making the communication reasonably believes is true.

(2) Each of the following is a “permitted purpose”—
(a) giving notice that a patent exists;
(b) discovering whether, or by whom, a patent has been infringed by an act mentioned in section 70A(2)(a) or (b);
(c) giving notice that a person has a right in or under a patent, where another person’s awareness of the right is relevant to any proceedings that may be brought in respect of the patent.