Monday August 10th 2009, by Piers Strickland
When patentees think they have spotted a patent infringement they have to be very careful about approaching the alleged infringer of the patent. If the approach is misjudged, then the approach can result in a claim being made against the patentee for unjustified / groundless threats of patent infringement proceedings.
The relevant provision in UK patents law is s.70 of the Patents Act 1977, which states that:
70 Remedy for groundless threats of infringement proceedings
(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 plaintiff or pursuer shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless-
(a)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; and
(b)the patent alleged to be infringed is not shown by the plaintiff or pursuer to be invalid in a relevant respect.
(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 plaintiff or pursuer has sustained by the threats.
(4)Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.
(5)It is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.
This case started when a letter was sent to a large number of Boots stores who were stocking the patented “Zeno” device (the invention claimed in the patent is a hand-held unit for the treatment of insect stings and insect bites) and to other retailers in Europe. The letter set out the patent and continued:
“Our client has now found out that your company offers in the United Kingdom under the trademark Zeno a medical device for the treatment of acne which is also based on the principle of the application of heat over a specific period of time …
Up to this point we cannot see any difference to the technical solution for which our client was granted protection, all the more so since the temperature range is also within the limits of the range that is protected by the patent, and the patent discloses a lower limit in respect of the period of time.”
The Judge had to decide whether the sole purpose of this letter was to: “make enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed”. This is because is it permitted to make such enquiries without incurring liability for unjustified threats pursuant to s.70 of the UK’s Patents Act 1977.
In this case, the Judge held that the letter was not designed just to find out if the patent had been infringed. In effect the Judge held that the letter amounted to a “veiled” threat of infringement. Case law has long-established that a threat can be made in a “veiled or covert, conditional or future” manner.
It will be interesting to find out the level of damages, which will have to be paid out as a result of these unjustified threats. Even if the damages are not great, the level of legal fees incurred by the losing party before the High Court will no doubt be significant and act as a large deterrent to others. All of which goes to emphasise that companies must consider carefully how to approach the issue of a potential patent infringement claim. A well thought out letter before action for patent infringement may ensure that the matter does not spiral disastrously in the wrong direction from the outset.
