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Patents and groundless threats

Written by Paul Bicknell on 24 September 2010

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Patents and threats

The purpose of the unjustified threats rules is to prevent a rights hold from "overly" exploiting their rights beyond the scope of the same. That is the ensure that claims are: "not made casually or recklessly, because of the potential damage and concern that they can cause": Prince v Prince Sports Group [1998] FSR 21.

Section 70, Patents Act 1977

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.

"Aggrieved"

It is for the claimant to show that he has been aggrieved subject to sub subject to subsection (4) (see below). It is possible for a person to launch an application notwithstanding that the threats were not directed to him, provided of course that person has been aggrieved. The meaning of aggrieved seeks to narrow the scope of potential applicants bringing minor or farcical applications.

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, or

(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.

Relief

(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.

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