Manual of Patent Practice

Section 70: Threats of infringement proceedings

Sections (70.01 - 70.08) last updated: September 2017.

Unjustified threats

Section 70 of the Patents Act 1977 was replaced on 1 October 2017 by the Intellectual Property (Unjustified Threats) Act 2017 with new sections 70-70F. Sections 70-70F apply to alleged threats made from 1 October 2017 onwards. Any alleged threats made before 1 October 2017 are subject to the law as it was before the changes made by the 2017 Act.

Section 70A: Threats of infringement proceedings

70.01

This section sets out the test for determining whether a communication contains a threat of infringement proceedings.

70.02

For the applicability of sections 70-70F in relation to European patents, [see 60.02](/guidance/manual-of-patent-practice-mopp/section-60-meaning-of-infringement/#ref60.

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.

70.03

Section 70 defines what amounts to a “threat of infringement proceedings”. In applying the two-part test, the contents of the communication are considered from the perspective of a reasonable person in the position of the recipient of a communication. The first part is whether the communication would be understood by a reasonable person in the position of a recipient to mean that a patent (or application for a patent) exists. The second part is whether the communication would be understood by such a person to mean that someone intends to bring infringement proceedings in respect of that patent (or application for a patent) for an act done (or which would be done) in the UK. If both parts of the test are satisfied, the communication contains a threat of infringement proceedings. It is worth noting that the second part of the test specifically covers an act which, if done, would be done in the UK; this provides for threats made in relation to acts which have not taken place yet. Threats can be in any form, for example written, oral, implied or express. The intention of the person making the threat is not important; it is only important whether a communication would be considered to contain a threat from the point of view of a reasonable person in the position of the recipient.

70.04

In FH Brundle v Perry [2014] EWHC 475 (IPEC) (a case decided under the previous threats provisions) the defendant, Mr Perry, submitted that the letter containing the alleged threat was addressed to the “Chief Executive/Chairman” of Brundle, and went on to claim that the CEO or Chairman of such a company would not take such letters seriously. The IPEC judge held that: “If a reasonable person in the shoes of a CEO or Chairman would understand the words of a communication as containing a threat of infringement proceedings, the extent to which he or she goes on to treat the threat seriously is irrelevant. The threat has still been made.”

Section 70(2)

References in this section and in section 70C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed.

70.05

Threats need not be made directly to an identified individual; a threat can be made more generally. However, it must be more than a general warning. Section 70(2) ensures that the threats provisions are engaged when a threat is made in a mass communication. It provides that, in such cases, the understanding of the reasonable person will be that of a recipient who is a member of the public, or a member of the section of the public to which the communication was directed.