The defendant firm of solicitors had acted for a Danish Research Institute. They wrote to several parties regarding a patent. B initiated a threat action. IBB appealed against an order striking out their defence, saying that the issue of whether what they said amounted to a threat was a question of fact to be decided at trial, and not on a summary application.
Held: The appeal succeeded. Until the patent was granted before trial, the defendant could justify his action. Whilst the judge could ascertain the meaning of the letter complained of, whether it amounted to a threat remained a question for the trial.
Aldous LJ said: ‘the conclusion as to whether a document amounts to a threat of patent proceedings is essentially one of fact. It is a jury-type decision to be decided against the appropriate matrix of fact. Thus a letter or a statement may on its face seem innocuous, but when placed in context it could be a threat of proceedings. The contrary is less likely but could happen.’ and ‘even if it be assumed that the letter contained a threat in general terms it does not follow that the recipient would read it as making a threat of proceedings in respect of all potentially infringing acts. A letter, such as the letter of June 13, when written to a person who only operated a process, could be understood as being a threat of infringement by carrying out the process; whereas a letter written in general terms to a person who not only carried out the process but sold the products of that process, could be understood in a different way.’
Judges:
Aldous LJ
Citations:
[1996] FSR 341
Statutes:
Patents Act 1977 70, Rules of the Supreme Court 14A
Jurisdiction:
England and Wales
Citing:
Appeal From – Brain v Ingledew Brown Benson and Garrett and Another ChD 18-Apr-1995
A threats of an infringement claim regarding acts of the addressee between the Patent application being filed and the grant of the patent are actionable under the threat action procedure. . .
Cited by:
Cited – Cavity Trays Ltd v RMC Panel Products Ltd CA 2-Jan-1996
The exclusion provided in section 70(4) of the 1977 Act is of limited scope. Whatever the legislative intention, it does not give rise to a general entitlement to threaten manufacturers or importers or users. In particular, if a trader both . .
See Also – Brain v Ingledew Brown Bennison and Garrett (A Firm) (No 3) ChD 1997
The meaning of an alleged threat is to be decided in accordance with the understanding of an ordinary recipient in the position of the applicant, reading the letter in the normal course of business. Laddie J said: ‘the meaning and impact of the . .
Cited – Best Buy Co Inc and Another v Worldwide Sales Corp. Espana Sl ChD 8-Jul-2010
The claimant accused the defendant of making threats in connection with trade mark applications. The claimants operated under US trade marks associated with ‘Best Buy’ and sought similar marks in Europe. The defendant company traded under a similar . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 27 October 2022; Ref: scu.420494