ANNEX TO EXPLANATORY NOTES: PATENTS ACT 2004:AMENDMENTS TO THE PATENTS ACT 1977 Section 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.
(2)In any such proceedings the claimant or pursuer shall, subject to subsection (2A) below, be entitled to the relief claimed if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them.
(2A)If 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 –
(a)the claimant or pursuer shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;
(b)even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that 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 claimant 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.
(4)Proceedings may not be brought under this section for –
(a)a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process, or
(b)a threat, made to a person who has made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or 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.
(5)For the purposes of this section a person does not threaten another person with proceedings for infringement of a patent if he merely –
(a)provides factual information about the patent,
(b)makes enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed as mentioned in subsection (4)(a) above, or
(c)makes an assertion about the patent for the purpose of any enquiries so made.
(6)In proceedings under this section for threats made by one person (A) to another (B) in respect of an alleged infringement of a patent for an invention, it shall be a defence for A to prove that he used his best endeavours, without success, to discover –
(a)where the invention is a product, the identity of the person (if any) who made or (in the case of an imported product) imported it for disposal;
(b)where the invention is a process and the alleged infringement consists of offering it for use, the identity of a person who used the process;
(c)where the invention is a process and the alleged infringement is an act falling within section 60(1)(c) above, the identity of the person who used the process to produce the product in question;
and that he notified B accordingly, before or at the time of making the threats, identifying the endeavours used.