Section 128 of the Australian Patents Act 1990 provides
relief for a person threatened with patent infringement where such
threats are later shown to have been "unjustified". The
aggrieved person may be entitled to various forms of relief:
a declaration that the threats are unjustifiable;
an injunction against the continuance of the threats; and
the recovery of any damages sustained by the Applicant (i.e.
the aggrieved person) as a result of the threats.
A largely equivalent provision exists under s.74 of New
Zealand's Patents Act 1953. However, a corresponding
section is surprisingly absent from the New Zealand Patents
Bill 2008, which is presently awaiting its second reading
The rationale underpinning s.128 (AU) and s.74 (NZ) is that if a
person "threatens" another with patent infringement, the
onus then falls upon that person to prove it. If infringement is
proved, then no relief will be available under these sections.
However, the flip side is that a threat will generally be held to
have been "unjustified" if the acts subject to the threat
cannot be shown to amount to an infringement.
Mere notification of the existence of a patent does not
constitute an unjustified threat; this is codified in s.131 (AU)
and s.74(3) (NZ). Under these sections, it is also permissible to
seek confirmation that the recipient is unaware of any improper use
or infringement of a patent. However, stray beyond these confines
and a correspondent risks exposing themself to an action for having
made an unjustified threat. In the Australian case of U & I
Global Trading v Tasman-Warajay (1995) 60 FCR 26, it was held
that a threat of infringement proceedings following grant of the
relevant patent fell within the ambit of s.128 and was thus an
unjustified threat. Further, the New Zealand case of Tapley v
White Star  NZLR 612 established that even oral threats
may fall foul of s.74.
However, the most authoritative guidance as to what does and
does not amount to an actionable threat was provided in the
Australian case of JMVB Enterprises v Camoflag (2005) 67
IPR 68. An actionable threat was held to arise where the language,
directly or impliedly, conveys to a reasonable person that the
correspondent intends to bring infringement proceedings. In
considering whether a threat has been made, one is to assume the
position of the recipient of the communication, considering it
within the normal course of business.
Therefore, to be liable for more than nominal damages, the
recipient of the communication must also have altered their
position in reliance upon the threat, with the most common scenario
being withdrawing from sale an alleged infringing product. This, in
turn, opens the door for alleged infringers (who are not, in fact,
infringing) to claim substantial damages. In the recent case of
World of Technologies v Tempo  FCA 114, the
Australian Federal Court awarded AU$213,059 in damages to an
alleged infringer who removed a product from sale after receiving a
letter threatening design infringement (s.77 of the Australian
Designs Act 2003 contains a largely analogous provision to
s.128 of the Patents Act 1990).
While an action to restrain an unjustified threat may be a
viable option, s.130 of the Australian Patents Act 1990
must first be considered. This section provides basis for filing a
counterclaim for the relief to which the Respondent would be
entitled in separate proceedings for an infringement by the
Applicant of the patent to which the threats relate.
Accordingly, given the remedies available to the recipient of an
unjustified threat, one should always err on the side of caution.
Patentees should be wary of initiating such correspondence in the
first instance without – at a minimum –
obtaining an infringement opinion from a registered Australian or
New Zealand patent attorney.
Shelston IP has legal practitioners experienced in how best to
initiate such pre-action correspondence. It goes without saying
that these types of letters should always be sent by one's
authorised representatives, rather than the Patentee
For further information contact GarethDixon@ShelstonIP.com or
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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