9.5.5 Threats actions
Threats to bring proceedings for infringement of a patent can have a chilling effect on trade, particularly when made to a trader’s customers or potential customers. The Act therefore makes provision to allow persons aggrieved by such threats to bring proceedings and seek relief. Such actions:
- can only be brought in respect of communications from which a reasonable person in the position of a recipient would understand that a patent exists and that a person intends to bring proceedings against another for infringement of the patent by an act done, or to be done, in the United Kingdom;91
- cannot be brought if the alleged infringement consists of making or importing a product for disposal or using a process, or consists of any other act in respect of that product or process by a person who has made or imported the product or used the process (or intends to do so);92
- cannot be brought if the threat is not express and is made in a “permitted communication” (in essence, one that contains only information necessary to give notice of a patent proprietor’s rights or to seek information about the manufacture or importation of a product or the use of a process);93 and
- cannot be brought against professional advisers acting on the instructions of another identified person.94
The relief that can be sought in threats actions is:
- a declaration that the threats are unjustified;
- an injunction against the continuance of the threats; or
- damages in respect of any loss sustained by the person aggrieved by reason of the threats.95
It is a defense for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or, if done, would constitute) an infringement of the patent.96 Most threats actions will therefore lead to such a defense being raised, together with a counterclaim for infringement, to which the claimant will respond with a defense of invalidity and a counterclaim for revocation.