A groundless threat is one when one party threatens another person by circulars or advertisement or by oral or written communication, with proceedings for infringement of a patent, without having any basis for issuing such threats. If there is no ground for infringement, or if the Patent is invalid, then the threat can be held to be groundless.
Section 106 of the Patents Act, 1970 provides a means to curb the problem of groundless threats. Any person who is being threatened can file a suit for appropriate relief against such a threat including damages for any loss sustained as a result of the groundless threats.
Unless in such a suit, the Defendant proves that the acts done or if done by the Plaintiff constitute an infringement of a patent, the court may pass orders:
- declaring that the threats issued by the Defendant are groundless and unjustifiable.
- granting an injunction against the continuance of such threats.
- for grant of such damages, if any, sustained by reason of the groundless threats that the Plaintiff may have suffered.
Merely issuing a notification of the existence of a patent does not constitute a threat.
Similar provisions under the Trade Marks Act and Copyright Act
There are similar provisions for grant of relief in cases of groundless threats under Section 142 of the Trade Marks Act and also under Section 60 of the Copyright Act. However, there is one basic difference. Section 142 (2) of the Trade Marks Act provides that the remedy against groundless threats does not apply if the registered proprietor of the trade mark with due diligence files and prosecutes a suit for infringement against the person threatened. Similarly the proviso to Section 60 under the Copyright Act states that Section 60 will not apply if the person making the threat, with due diligence, commences and prosecutes an action for infringement of copyright claimed by him.
Similar provision appeared under the Patents and Designs Act 1911. However, no such provisions can be found in the Patent Act 1970 and the said provisions that made it at par with the Trade Marks Act and the Copyright Act, have been deleted! This raises a quandary. If a suit is subsequently filed by the patent holder which suit will be heard first? The ultimate result in both suits would be a decision as to whether the patent or any of its claims are valid or not. Prima facie it appears that there is no justification for creating such a differentiation. The only reason could be that the patent holder after being served with the suit for groundless threats would file a suit for infringement to defeat the same.