Patent infringement: the future of groundless threats

The phrase ‘groundless threats’ refers to provisions in UK legislation that were originally introduced to provide a level of protection against threats of patent infringement. They have their origin in the 19th century, when persons (typically large companies) who claimed to be patentees, would threaten, often without justification, to initiate infringement proceedings against actual or potential customers of rivals in order to deter them from dealing with those rivals. In the absence of a statutory provision to the contrary, it was difficult for the rival or the customer to bring any claim based on such a threat, even if it caused them serious loss. Section 32 of the Patents, Designs and Trade Marks Act 1883 (now section 70 of the Patents Act 1977) was enacted so as to provide an aggrieved person with a remedy for groundless threats of patent infringement proceedings. This remedy was later extended to trademarks, registered designs and unregistered designs. Notably, no similar provisions have ever been enacted for copyright works.

The threats legislation varies between the different intellectual property rights. For patents, for example, section 70(1) of the Patents Act 1977 states ‘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’.

Section 21(1) of the Trade Marks Act 1994 states that an actionable threat arises ‘where a person threatens another with proceedings for infringement of a registered trademark other than: (a) the application of the mark to goods or their packaging; (b) the importation of goods to which, or to the packaging of which, the mark has been applied; or (c) the supply of services under the mark’…

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