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Intellectual Property (Unjustified Threats) Act 2017 (Version in vigour from 2021-04-12 to )

Consolidated Text As Enacted Cited authorities 7 Cited in Related
Vincent
CurrencyNo known outstanding effects
Coming into Force12 April 2021
(1) The Patents Act 1977 is amended as follows.(2) For section 70 (remedy for unjustified threats of infringement proceedings) substitute—
    Unjustified threats
    (70) Threats of infringement proceedings
  • “(1) A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that—
  • (a) a patent exists, and
  • (b) a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the patent by—
  • (i) an act done in the United Kingdom, or
  • (ii) an act which, if done, would be done in the United Kingdom.
a patent exists, andan act done in the United Kingdom, oran act which, if done, would be done in the United Kingdom.References in this section and in section 70C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed.Subject to subsections (2) to (5) , a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat.where the invention is a product, making a product for disposal or importing a product for disposal, orwhere the invention is a process, using a process.A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in subsection (2) (a) or (b) .is made to a person who has done, or intends to do, an act mentioned in subsection (2) (a) or (b) in relation to a product or process, andis a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.In sections 70C and 70D “an actionable threat” means a threat of infringement proceedings that is actionable in accordance with this section.the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;is necessary for that purpose (see subsection (5) (a) to (c) for some examples of necessary information) , andthe person making the communication reasonably believes is true.giving notice that a patent exists;discovering whether, or by whom, a patent has been infringed by an act mentioned in section 70A(2) (a) or (b) ;giving notice that a person has a right in or under a patent, where another person's awareness of the right is relevant to any proceedings that may be brought in respect of the patent.The court may, having regard to the nature of the purposes listed in subsection (2) (a) to (c) , treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.requesting a person to cease doing, for commercial purposes, anything in relation to a product or process,requesting a person to deliver up or destroy a product, orrequesting a person to give an undertaking relating to a product or process.a statement that a patent exists and is in force or that an application for a patent has been made;are accurate in all material respects, andare not misleading in any material respect; andinformation enabling the identification of the products or processes in respect of which it is alleged that acts infringing the patent have been carried out.a declaration that the threat is unjustified;an injunction against the continuance of the threat;damages in respect of any loss sustained by the aggrieved person by reason of the threat.“declaration” means “declarator”, and“injunction” means “interdict”.It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the patent.that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in section 70A(2) (a) or (b) in relation to the product or the use of a process which is the subject of the threat, andthat the person notified the recipient, before or at the time of making the threat, of the steps taken.Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, andis regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means) .in making the communication the professional adviser is acting on the instructions of another person, andwhen the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.This section does not affect any liability of the person on whose instructions the professional adviser is acting.the person concerned was acting as a professional adviser, andthe conditions in subsection (3) were met.In sections 70 and 70B references to a patent include references to an application for a patent that has been published under section 16.Where the threat of infringement proceedings is made after an application has been published (but before grant) the reference in section 70C(3) to “the patent” is to be treated as a reference to the patent as granted in pursuance of that application.In section 70(1) (b) the reference to proceedings for infringement of a patent includes a reference to proceedings for an order under section 61(1) (b) (order to deliver up or destroy patented products etc.) .(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .(4) Before section 71 insert— “ Declaration or declarator as to non-infringement ”.(5) In section 74 (proceedings in which validity of a patent may be put in issue) in subsection (1) (b) , for “under section 70” substitute “ in respect of an actionable threat under section 70A ”.(6) In section 78 (effect of filing an application for a European patent (UK) ) , in subsection (2) at the appropriate place insert “ sections 70 to 70F ”.(7) In section 106 (costs and expenses in proceedings before the Court) in subsection (1A) (c) , for “under section 70” substitute “ in respect of an actionable threat under section

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