Threats and Injunctions

Question 1

Has there been a threat?

Answer 1

• Would a reasonable person understand that a patent/app exists?
• Would a reasonable person understand that there is an intention to bring proceedings for an act done in the UK/could be done in the UK?

Question 2

Is the threat actionable?

Answer 2

• Is the claimant aggreived by the threat?
  Actionable, unless
• threat is in respect of primary act = making/importing product for disposal or using a process (actual or intention); OR
• threat is made to a primary actor in respect of any act = person who makes/imports product for disposal or uses process (actual or intention); OR
• threat is not an express threat AND is in a permitted communication

Question 3

Is the threat a permitted communication?

Answer 3

• for a permitted purpose?
• Is all the information neccessary for that purpose?
• does the person making the communication reasonably believe it is true?

Question 4

What are the permitted purposes?

Answer 4

• Giving notice that the patent/app exists
• Discovering whether, or by whom, a patent/app has been infringed by a primary act
• Giving notice that a person has a right in or under a patent/app, when the notice is relevant to any proceedings that may be brought in respect of the patent
• Other acts at the court’s discretion

Question 5

What are the non-permitted purposes?

Answer 5

requesting a person;
* cease commercial activities in relation to a product or process; or
* deliver up or destroys a product; or
* gives an undertaking in relation to a product or process

Question 6

Is there a defence?

Answer 6

Defence if:
* threat is in relation to an act that constitutes (or would constitute) infringement of the granted patent (or app once granted); or
* have failed to identify primary actor despite taking reasonable steps, and have notified recipient of these steps with the threat at latest

Question 7

What are the remedies?

Answer 7

• declaration that threat was unjustified
• injunction against further threats
• damages in respect of any loss

Question 8

Is the professional advisor at risk?

Answer 8

Professional advisor is not liable provided:
* acting on instructions of another person; and
* other person identified by the professional advisor in the threat

Question 9

What are the stages of threats?

Answer 9

• Has there been a threat?
• Is the threat actionable?
• Is the threat a permitted communication?
• Is there a defence?
• What are the remedies?
• Is the professional advisor at risk?

Question 10

Interim Injunction Considerations

Answer 10

• Are Damages an adequate remedy?
• Is there a serious issue to be tried?
• Where is the balance of injustice?
• What is the status quo?
• Who has the strongest case (only considered if status quo equal)?
• What is the likelihood that the injunction will be granted?
• Cross undertaking for damages required