10. Remedies for groundless threats

10. Remedies for groundless threats

A groundless threat is a threat to sue for infringement when there has been no infringement or if the right allegedly infringed is invalid. The aggrieved party may initiate proceedings against the party making the threats to apply for reliefs.

The available remedies include (a) a declaration that the threat was unjustifiable, (b) damages for any loss sustained by the threat and (c) an injunction to stop the continuance of the threat.

• Standard patent: In defence, the patent owner may prove that the act in respect of which the threat was made constitutes an infringement of his patent.  The aggrieved party would then have to show that the patent concerned is invalid in the relevant respect in order to claim relief.

• Short-term patent: In defence, the patent owner may prove that the act in respect of which the threat was made constitutes an infringement of his patent.  Further, if a certificate of substantive examination has not been issued, the patent owner would need to show that the patent concerned is valid in the relevant respect and comply with any access request for patent information.  The aggrieved party would not be able to obtain relief if the patent owner can prove the above.