Threats

Question 1

When did the Intellectual Property (Unjustified Threats) Act come into force?

Answer 1

1st October 2017

New law applies to communications sent after this date.

Brought in to harmonise provisions between patents, trademarks and designs

Question 2

When will a communication be considered to contain a “threat of infringement proceedings” according to Section 70(1)?

Answer 2

If a reasonable person in the position of the recipient would understand:

1. a patent (or published application; see s. 70E(1)) exists; and
2. a person intends to bring infringement proceedings (in the UK or elsewhere) for an act done (or that would be done) in the UK

NB a threat may be implicit and does not need to be in writing (may be verbal)

Question 3

How does Section 70(2) define a ‘recipient’?

Answer 3

A ‘recipient’ is any person to which the communication is directed

Question 4

Who can bring proceedings for an actionable threat according to Section 70A(1)?

Answer 4

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).

NB the aggrieved person can be an indirect recipient of the threat

Question 5

What are not actionable threats according to Section 70A(2)-(3)?

Answer 5

Threats made in relation to an allegedly infringing primary act:

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

Or threats against acts that, if done, would be one of the primary infringringing act above.

Question 6

What threats are not actionable according to Section 70A(4)?

Answer 6

Threats made to a person who has carried out, or intends to carry out a primary act in the UK (a primary actor) cannot bring an action for threats made against them which refer to related secondary acts.

The secondary act must be relating to the same product/process as the primary act.

If the primary act is carried out outside the UK, the person is not a primary actor.

Question 7

What is not an actionable threat according to Section 70A(5)?

Answer 7

Threats which are not express threats and which are contained within a permitted communication

Question 8

What is a ‘permitted communication’ under Section 70B(1)?

Answer 8

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

Question 9

What are ‘permitted purposes’ according to Section 70B(2) and (3)?

Answer 9

Permitted purposes are:

• 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

Question 10

What are not ‘permitted purposes’ according to Section 70B(4)?

Answer 10

(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.

Question 11

What information in a ‘permitted communication’ will be considered as ‘necessary for that purpose’?

Answer 11

• 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

Question 12

What remedies are available for an aggrieved person?

Answer 12

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

Question 13

What defences are available for a person who makes an actionable threat under Section 70C(3) and (4)?

Answer 13

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.

Question 14

What should an applicant do to rely on Section 70C(3) if the patent has not yet granted?

Answer 14

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

Question 15

How can a person aggrieved by a threat respond to the Section 70C(3) defense?

Answer 15

If they can show that the patent is invalid then there will never be any infringement - therefore threat will be unjustified and actionable

Question 16

What is the meaning of “professional adviser”?

Answer 16

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

Question 17

When are professional advisers exempted from liability for an actionable threat?

Answer 17

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)