THREATS

Phillip Johnson
Threat of infringement proceedings
Section 70(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.
Good faith
• It does not matter whether the threat was made in good
faith or not:
Skinner & Co v Perry (1893) 10 RPC 1
Meaning of a threat
What amounts to a threatening communication is given a
wide meaning
Zeno Corpn v BSM-Bionic Solutions Management GmbH [2009] EWHC 1829
(Pat)

The whole communication must be considered

including any draft undertaking
FNM Corpn Ltd v Drammock International [2009] EWHC 1294 (Pat)

It must be a threat of patent infringement and not

of some related claim
Easycare Inc v Bryan Lawrence & Co [1995] FSR 597
Making a threat
A threat can be made orally
Ellis & Sons Ltd v Pogson (1923) 40 RPC 179
It can also made during enquiries about the licensing of a patent
Skinner & Co v Perry (1893) 10 RPC 1
It can also be made when notifying an internet service provider about a
particular product
Quads 4 Kids v Colin Campbell [2006] EWHC 2482(Ch)
It may even be a threat where it is specifically stated that there is no
intention to bring proceedings.
Grimme Landmaschinenfabrik GmbH v Scott [2009] EWHC 2691 (Pat)
Intention is immaterial to whether a threat has been made
L’Oreal (UK) Ltd v Johnson & Johnson [2000] FSR 686
Applications
• A threat can be made in relation to an application which
has been published; the rule applies as if the application
were a patent
Brain v Ingledew Brown Bennison [1995] FSR 552
Codified as PA 1977, s70E

[But patent needs to be granted before trial: Global Flood Defence Systems Ltd
v Johan Van Den Noort Beheer [2016] EWHC 1851 (Pat)]
Reasonable reader
A communication which is alleged to be a threat is read by
the ordinary reader
Luna Advertising Co Ltd v Burnham & Co (1928) 45 RPC 258
An express or implied statement can amount to a
threat
Surridges Patents Ltd v Trico-Folberth (1936) 53 RPC 420
‘[T]he conclusion as to whether a document amounts to a threat of
patent proceedings is essentially one of fact. It is a jury-type decision
to be decided against the appropriate matrix of fact. Thus a letter or a
statement may on its face seem innocuous, but when placed in
context it could be a threat of proceedings. The contrary is less likely
but could happen’.
Brain v Ingledew Brown Bennison and Garrett [1996] FSR 341
Probable “ordinary reader” is the same as “reasonable reader”
Without prejudice communication
• A communication made during without prejudice
communications is usually protected from being a threat
Unilever plc v Procter & Gamble Co [2000] FSR 344
• But without prejudice cannot be used as a cloak
to make a threat
Berry Trade Ltd v Moussavi [2003] EWCA Civ 715
Who can sue?
• Any person aggrieved by the threats meaning someone
who has suffered damage by reason of the threat.
John Summers & Sons Ltd v Cold Metal Process Co (1948) 65 RPC 75
• A threat to a third person that proceedings will be
brought against the claimant is still an actionable
threat.
Skinner & Co v Parry (1893) 10 RPC 1

[Now codified in section 70A(1)]

Who can be sued?
• A threat made by any person whether that person is the
proprietor of, or entitled to, any right under the patent is
actionable.
Protected threats
Section 70A Actionable Threats
(2) 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.
(3) A threat of infringement proceedings is not actionable if the infringement is
alleged to consist of an act which, if done, would constitute an infringement of a
kind mentioned in subsection (2)(a) or (b).
(4) A threat of infringement proceedings is not actionable if the threat—
(a) is made to a person who has done, or intends to do, an act mentioned in
subsection (2)(a) or (b) in relation to a product or process, and
(b) is a threat of proceedings for an infringement alleged to consist of doing
anything else in relation to that product or process.
Indirect infringement
• A threat relating to the importation or manufacture of a
product (whether or it is the patented product or not) is
protected.
Therm-a-Stor Ltd v Weatherseal Windows Ltd [1981] FSR 579
PERMITTED
COMMUNICATIONS
Two stage test
Section 70A
(5) A threat of infringement proceedings which is not an express threat is not
actionable if it is contained in a permitted communication.

Section 70B(1)
(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.

[As to necessary for the purpose see later slide]

Permitted purpose
Section 70B
(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.
(3) The court may, having regard to the nature of the
purposes listed in subsection (2)(a) to (c), treat any other
purpose as a “permitted purpose” if it considers that it is in
the interests of justice to do so.
Not a permitted purpose
Section 70B
(4) But the following may not be treated as a “permitted purpose”—
(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.
Necessary for that purpose
Section 70B
(5) If any of the following information is included in a communication
made for a permitted purpose, it is information that is “necessary for
that purpose” (see subsection (1)(b)(i))—
(a) a statement that a patent exists and is in force or that an
application for a patent has been made;
(b) details of the patent, or of a right in or under the patent, which
—
(i) are accurate in all material respects, and
(ii) are not misleading in any material respect; and
(c) information enabling the identification of the products or
processes in respect of which it is alleged that acts infringing the
patent have been carried out.
Justification and honest belief
• A defendant who proves the patent was valid and
infringed has a complete defence to a threats claim.
PA 1977, s 70C(3)

• Old law (defence no longer exists):

• The claimant who shows that the patent alleged to be infringed is
invalid in a relevant respect is not entitled to relief where the
defendant proves at the time of making the threats he or she did
not know, and had no reason to suspect, that the patent was invalid
in that respect.
PA 1977 s. 70(2A)(b)
When all else fails…
Section 70C Remedies and defences
(4) It is a defence for the person who made the threat to show—
(a) that, despite having taken reasonable steps, the person has
not identified anyone who has done an act mentioned in section
70A(2)(a) or (b) in relation to the product or the use of a process
which is the subject of the threat, and
(b) that the person notified the recipient, before or at the time of
making the threat, of the steps taken.

[New test reasonable steps, not best endevours]

Professional advisers
Section 70D: Professional advisers
(1) Proceedings in respect of an actionable threat may not be brought against a
professional adviser (or any person vicariously liable for the actions of that professional
adviser) if the conditions in subsection (3) are met.
(2) In this section “professional adviser” means a person who, in relation to the making of
the communication containing the threat—
(a) is acting in a professional capacity in providing legal services or the services of a
trade mark attorney or a patent attorney, and
(b) is regulated in the provision of legal services, or the services of a trade mark
attorney or a patent attorney, by one or more regulatory bodies (whether through
membership of a regulatory body, the issue of a licence to practise or any other
means).
(3) The conditions are that—
(a) in making the communication the professional adviser is acting on the instructions
of another person, and
(b) when the communication is made the professional adviser identifies the person on
whose instructions the adviser is acting.
[The immunity is new, prior to 2017 Act legal advisers were liable]
Relief
• Injunctions;
• Damages;
• Declaration.
THE END