Unjustified threats of patent infringement

The recent case of Zeno Corp & Another v BSM-Bionic Solutions Management GmbH & Another (2009) EWHC 1829 (PAT), heard in the High Court, has revisited the question of what constitutes unjustified threats of patent infringement.

Patent legislation in the UK provides that a person who is aggrieved by threats of patent litigation can issue proceedings seeking a declaration that the threats were unjustified.

The dispute in this case arose following a letter sent by German patent attorneys on behalf of the owner of a European patent for a hand-held device for the treatment of insect stings and insect bites. The letter was sent to retailers in Europe which stocked Zeno Corp’s hand-held device for the treatment of acne. As a consequence of the said letter, some of the retailers ceased stocking Zeno’s product.

Subsequently, Zeno issued an unjustified threats action. The owner of the patent counterclaimed for patent infringement.

The High Court ruled that although the patent was valid, there had been no patent infringement and subsequently, the threats made to the retailers were unjustified. The High Court noted that the said letter, which was not addressed to the manufacturer of the Zeno product, did not even mention patent infringement proceedings or explicitly threaten the retailers with litigation. The court stated that it was relevant that the Zeno packaging displayed the name and address of the manufacturer and distributor. Therefore, the German patent attorneys’ clear intention was not to discover who was infringing the patent, but to prevent sales of the Zeno product. The test was how a reasonable recipient of such a letter would understand it to mean. The court held that the letter amounted to a threat of infringement proceedings (which were unjustified).

Asserting infringement of a patent can be risky: the owner of a patent should always seek professional advice from a patent attorney if it feels that its patent is being infringed by a third party.

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