Groundless Threats of Infringement Proceedings
In accordance with S. 77(1) of the Singapore Patents Act, a person aggrieved by threats made by another person may bring proceedings in Court against that person making the threats.
S. 77(2) further states that a threat of infringement proceedings would be justified if:
a) the party who made the threats proves that the threatening acts constitute or would constitute an infringement of his patent; and
b) the patent is not shown by the claimant to be invalid.
Maka’s counterclaim for groundless threats of infringement was based on the cease-and-decease letters sent by Lee. Sending these letters was deemed to amount to a threat of infringement as the patent was not infringed by the Maka devices.
Is Maka Entitled to Relief?
S. 77(3) states that a threatened person may seek the following relief:
a) a declaration that the threats are unjustified;
b) an injunction against continuance of threats; and
c) damages sustained by the threats made.
The Appeal Court has confirmed that for a claimant to be entitled to claim relief, the claimant must prove they are aggrieved. The grant of relief is therefore at the Court’s discretion, upon the claimant showing that:
- loss was suffered as a result of the threats; or
- it is appropriate for the Court to intervene.
No relief was granted as Maka had not proven that it had suffered loss as a result of the threats, and it was not deemed appropriate for the Court to intervene as it was not expected that Lee would make further threats of infringement,.
Take Away Points
1. When proving that the claimant is aggrieved, it remains unclear whether “loss” must be quantifiable (e.g. loss of sales) or may be intangible (e.g. diminished reputation/credibility).