Manual of Patent Practice

Section 70: Remedy for groundless threats of infringement proceedings

Sections (70.01 - 70.08) last updated: April 2015.

70.01

This section enables a person aggrieved by threats of infringement proceedings to claim relief before the court.

70.02

For the applicability of s.70 in relation to European patents, see 60.02.

 
Section 70(1)
Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below.

70.03

A threat within the meaning of this section may thus be made by “circulars, advertisements or otherwise” (but not by the actions defined by s.70(5), see 70.07). In Speedcranes Ltd v Thomson and another [1978] RPC 221, when considering the wording of 1949 Act s.65(1) which was closely similar to that of the present s.70(1), the court held that “otherwise” should not be construed to cover only members of the same genus as circulars and advertisements but should instead be construed in its widest sense so as to include a relevant threat, however made. It was further held that in order to have made such a threat, a person must have in substance alleged that particular acts (past, present or future) by a particular person or persons constitute or will or may constitute an infringement of a patent; and have in substance threatened that person or persons with proceedings for that infringement. In Unilever plc v Procter & Gamble Company ([2000] FSR 344), the Court of Appeal held that it would be an abuse of process to plead that anything that was said at a without prejudice meeting was a threat or a claim of right for the purposes of this section. In the words of Simon Brown LJ, “…it is preferable that those engaged in without prejudice negotiations should be entirely candid in stating their future intentions …”. Subsequently, in Kooltrade Ltd v XTS Ltd [2001] FSR 13, the defendants attempted to argue that it followed from Unilever that their letter to the claimants marked ‘without prejudice’ could not constitute a threat. They failed because the court held that they were not in, or attempting to enter, without prejudice negotiations with the claimant when the letter was sent. Thus Unilever did not apply and the threat was held to have been made.

70.03.1

In FH Brundle v Perry [2014] EWHC 475 (IPEC) 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.”

70.04

s.70(2) is also relevant

The person making the threats need not have any right in a patent, nor need the threats have been made to the claimant. However, the claimant is required to satisfy the court that such threats were made and that he is a person aggrieved by them, in order to obtain relief. The available reliefs are listed in s.70(3).

 
Section 70(2)
In any such proceedings the claimant or pursuer shall, subject to subsection (2A) below, be entitled to the relief claimed if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them.
 
Section 70(2A)
If the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent
(a) the claimant or pursuer shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;
(b) even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect.

70.05

Subsection (2A) provides a defence for someone who is sued for making groundless threats. The defendant will not be liable if he proves that the acts in respect of which the threats have been made would infringe the patent. However, if this is proven, the defence will then fail if the claimant shows that the patent is invalid, unless the defendant proves that at the time of making the threats he did not know, or had no reason to suspect, that the patent was invalid in that respect. The defence of not knowing and having no reason to suspect invalidity of the patent when making a threat was inserted by the Patents Act 2004, and only applies to communications alleged to be threats made on or after 1 January 2005.

 
Section 70(3)
The said relief is
(a) a declaration or declarator to the effect that the threats are unjustifiable;
(b) an injunction or interdict against the continuance of the threats; and
(c) damages in respect of any loss which the claimant or pursuer has sustained by the threats.
 
Section 70(4)
Proceedings may not be brought under this section for
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process;
(b) a threat, made to a person who has made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.

70.06

Subsection (4)(a) excludes from proceedings under s.70 threats where the infringement allegedly consists of making or importing a product for disposal or of using a process. Threats of proceedings in respect of such infringements can therefore be made with impunity. For threats to bring infringement proceedings made from 1 January 2005 onwards, subsection (4)(b) (inserted by the Patents Act 2004) extends protection against claims made under s.70 to threats to bring proceedings in respect of other acts of infringement in relation to a product or process, provided that the person being threatened has made or imported that product for disposal or used that process.

 
Section 70(5)
For the purposes of this section a person does not threaten another person with proceedings for infringement of a patent if he merely
(a) provides factual information about the patent;
(b) makes enquires of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed as mentioned in subsection (4)(a) above; or
(c) makes an assertion about the patent for the purpose of any enquires so made.

70.07

Section 70(5) defines actions that cannot be construed as a threat to bring proceedings for infringement of a patent. This subsection was amended by the Patents Act 2004, enlarging the definition to include providing purely factual information about a patent, making enquiries the sole purpose of which is to find out if there has been a primary infringement or find out who has committed a primary infringement, and making assertions about the patent for the purpose of making such enquiries. The enlarged definition applies to actions made on or after 1 January 2005. Before this date, this subsection only excluded mere notification of the existence of a patent from constituting a threat of infringement proceedings within the meaning of s.70.

 
Section 70(6)
In proceedings under this section for threats made by one person (A) to another (B) in respect of an alleged infringement of a patent for an invention, it shall be a defence for A to prove that he used his best endeavours, without success, to discover
(a) where the invention is a product, the identity of the person (if any) who made or (in the case of an imported product) imported it for disposal;
(b) where the invention is a process and the alleged infringement consists of offering it for use, the identity of a person who used the process;
(c) where the invention is a process and the alleged infringement is an act falling within section 60(1)(c) above, the identity of the person who used the process to produce the product in question; and that he notified B accordingly, before or at the time of making the threats, identifying the endeavours used.

70.08

The Patents Act 2004 inserted section 70(6) and applies to threats of infringement proceedings made on or after 1 January 2005. This subsection provides a defence in proceedings under s.70 for a person who makes threats of infringement against someone other than the alleged primary infringer, provided he makes the threats after he has used his best endeavours to discover the identity of the manufacturer or other alleged primary infringer, but without success. For this defence to apply, the person threatened by infringement proceedings must be notified before or at the time of making the threats of the efforts made to trace the alleged primary infringer.