Global Flood Defence Systems Ltd & Anor v Johan Van Den Noort Beheer BV & Ors

A threat of patent infringement proceedings made before grant is capable of justification after grant. Section 70(2A) focuses on whether the acts identified in the threat constitute, or would constitute, infringement, including infringement of rights arising under section 69. It does not require the wording of the threat to have accurately described rights already conferred by a granted patent.

Where grant is imminent, the court may adjourn the threats trial so that the defendant can attempt to establish justification. An interim injunction restraining further threats may protect the claimant during the delay.

The claimants appealed from decisions of His Honour Judge Hacon in the Intellectual Property Enterprise Court concerning threats of patent infringement proceedings. The threats were made when the defendants held a published European patent application but no granted UK patent.

The first appeal concerned whether the threats were incapable of justification under section 70(2A) of the Patents Act 1977. The second concerned the judge’s decision to adjourn the threats trial until shortly after the European patent was due to be granted. The central issues were whether subsequent grant could permit justification and whether an adjournment was an appropriate exercise of case-management discretion.

Both appeals were dismissed.

1. Justification under section 70(2A). The threats were capable of justification after grant. Section 70 creates a strict-liability tort, restrains commercial freedom of speech and may hinder settlement of patent disputes. The court should therefore be slow to make a class of threats incapable of justification without clear statutory wording.
2. The statutory question is whether the acts in respect of which proceedings were threatened constitute, or would constitute, infringement of a patent. It is not whether the precise terms of the threat accurately described rights existing when the threat was made. Sections 60 and 69 must be read together. Accordingly, “infringement of a patent” in section 70(2A) can include infringement of rights arising under section 69 after publication of an application.
3. The availability of justification does not depend on the form of the threat or on whether the threatener carefully distinguished present rights under a granted patent from contingent rights arising if the application proceeded to grant. The possibility of uncertainty pending grant does not require a different construction.
4. Adjournment. The decision to adjourn was a case-management decision, reviewable only for error of principle. The judge had made provision for directions to be adjusted when the position regarding grant became clearer. By the trial date the claims were fixed and grant was imminent. The adjournment was therefore within the judge’s discretion and fully justified.
5. An interim injunction restraining further threats may protect a claimant during the delay. In those circumstances, the claimant will usually suffer no recoverable prejudice merely because determination of justification is postponed until grant.

• High Court (Patents Court): appeals from the Intellectual Property Enterprise Court were dismissed.
• Intellectual Property Enterprise Court: the summary judgment application was dismissed in [2015] EWHC 153 (IPEC); the threats trial was later adjourned in [2016] EWHC 99 (IPEC).