Threats of patent infringement—pre 1 October 2017 [Archived]
Threats of patent infringement—pre 1 October 2017 [Archived]

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Threats of patent infringement—pre 1 October 2017 [Archived]
  • Threats to bring patent infringement proceedings
  • Actionable groundless threats
  • Location of the threat
  • Defences
  • Relief
  • Unjustified threats actions
  • Practical points

ARCHIVED: This Practice Note has been archived and is not maintained. This Practice Note sets out the law of unjustified threats of patent infringement prior to its amendment by the Intellectual Property (Unjustified Threats) Act 2017 (IP(UT)A 2017). Communications made prior to 1 October 2017 continue to be governed by the old regime in respect of patents, trade marks and designs, as appropriate.

All references in this Practice Note to the Patents Act 1977 (PA 1977), are references to the legislation as it was prior to its amendment by the Intellectual Property (Unjustified Threats) Act 2017 (IP(UT)A 2017) on 1 October 2017.

For information about the current threats regime, which applies to communications made since 1 October 2017, see the maintained Practice Note: Unjustified threats of intellectual property right infringement.

Threats to bring patent infringement proceedings

Patent litigation is recognised as being time consuming and often costly. The statutory threats provisions have attempted to minimise the disruption to businesses that are threatened by rights owners wielding their registered 'monopoly' rights in an overly aggressive and unjustified way.

Under PA 1977, a ‘threat’ of bringing infringement proceedings may allow a person 'aggrieved' by the threat to bring proceedings against the person who made the threat in circumstances where that threat is 'groundless'. An allegation of unjustified threats can also form part of