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Patent laws and unjustifed threats

Written by Michael Coyle on 01 August 2009

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Zeno Corporation and Adept Scientific Plc -and- BSM-Bionic Solutions Management GMBH and Riemser Arzneimitel AG

What would you do if your patent was infringed. Instruct your lawyers to write a letter of claim. Well yes but be careful of threats.

Section 70 of the Patents Act 1977 as amended provides:

"(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.

(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 made and satisfies the court that he is a person aggrieved by them.

(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.

(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 enquiries 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 enquiries so made."

This was interpreted in the Court of Appeal in the Zeno Corp case as

"It is not a question of how [the recipient] understood the letter; but how a reasonable person in the position of [the recipient] would have understood it. Read in context, through the eyes of a retailer, the letter amounted, to a veiled threat of infringement proceedings".

So while threats can be made do not make threats to all and sundry and above all do not send circulars to retailers saying "selling this product infringes my patent; remove it at once or I will sue" This will almost certainly lead to a threats claim being made against you.

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