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DTM Legal successfully obtained Judgments for their client at first instance and on appeal regarding two issues in the law of groundless threats of patent infringement proceedings.


The issues that were decided by the Court are a result of a situation in which one party threatened another party with a claim for infringement of a granted patent at a time when the party that made the threat only had a pending patent application.

It was successfully argued, both at first instance and on appeal, that the First and Second Defendant were entitled to raise a defence of justification for threats made based on a patent application once the patent had been granted.

What happened and where do we go from here?

If a party threatens infringement proceedings on the basis of a pending patent application, it does so at its own risk. The party that makes a threat may not be able to raise a defence that the threat was justified if the trial takes place before the patent is granted.

This case provides an example of an exception to the above approach. If the patent is not actually granted it does not necessarily mean it is the end for a defendant. However, the final form of the patent claims which will be granted were fixed at the time the adjournment was ordered. This case provides one of the circumstances when a Court may adjourn a trial if the patent has not been granted by the trial date.

Interestingly, in his Judgment on the Appeal, Mr Justice Arnold considered a circumstance which had not been considered before – the availability (and existence) of an interim injunction.

As noted by Mr Justice Arnold, if a claimant is protected by an interim injunction then “in most cases it should not be prejudiced by a delay in the trial of the issue of justification until the patent is granted.”

It will now be interesting to see how this area develops. Is there the potential for the Court to take a new approach? If a claim is issued relating to threats based on a patent application and the Court orders an interim injunction and there is no prejudice to either party, then should any trial of the threats claim be adjourned until the patent is granted?

This approach provides the party that feels aggrieved by the threats the protection for their business, which is often the reason the claim has been issued in the first place. It also still allows the party that made the threat to defend the claim based on justification.

It also avoids a situation that could lead to a party being liable in a threats claim by default –for example, the party ran out of time for the patent to be granted. In such circumstances, if and when the patent is finally granted, the patent owner has been denied the opportunity to put forward a justification defence. It also avoids a further unwanted situation in which the patent owner can potentially bring an infringement claim now that the patent has been granted for the acts it threatened against even though the patent owner is deemed liable for unjustified threats by default.

Do you want to know more?

The case citation for the Appeal is Global Flood Defence Systems and UK Flood Barriers Limited v Johann Van Den Noort Beheer BV and Johann Heinrich Reindert Van Den Noort [2016] EWHC 1851 and a more detailed background to the claim and the decisions at both first instance and on appeal can be found in DTM’s latest legal update.

Dispute Resolution Photo

If you have any queries about intellectual property disputes, please contact Jim Morris or Richard Harris on 0151 321 000.

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