Part I New Domestic Law

Infringement

70BF1Permitted communications

1

For the purposes of section 70A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—

a

the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;

b

all of the information that relates to the threat is information that—

i

is necessary for that purpose (see subsection (5)(a) to (c) for some examples of necessary information), and

ii

the person making the communication reasonably believes is true.

2

Each of the following is a “permitted purpose”—

a

giving notice that a patent exists;

b

discovering whether, or by whom, a patent has been infringed by an act mentioned in section 70A(2)(a) or (b);

c

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.

3

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.

4

But the following may not be treated as a “permitted purpose”—

a

requesting a person to cease doing, for commercial purposes, anything in relation to a product or process,

b

requesting a person to deliver up or destroy a product, or

c

requesting a person to give an undertaking relating to a product or process.

5

If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see subsection (1)(b)(i))—

a

a statement that a patent exists and is in force or that an application for a patent has been made;

b

details of the patent, or of a right in or under the patent, which—

i

are accurate in all material respects, and

ii

are not misleading in any material respect; and

c

information enabling the identification of the products or processes in respect of which it is alleged that acts infringing the patent have been carried out.