With claims involving intellectual property there is a further important aspect to a PAP letter in the UK. The Intellectual Property (Unjustified Threats) Act 2017 makes it a requirement that if a Claimant in a PAP threatens to sue a Defendant for infringement of certain intellectual property rights and those claims of infringement are false or misguided, then it is possible for a UK court to find that the threat was unjustified and it an order the Claimant to pay damages to the Defendant. The practical consequence of this law means that it is essential that in cases where patent infringement is claimed:
Specialist Patent Counsel’s Opinion in writing is sought prior a PAP letter being sent to a Defendant;
The Claimant’s patent has been granted and is subsisting - and there is evidence to that effect at the UK IPO;
A Claim Chart is prepared whereby the activities of the Defendant are mapped against the Integers in the patent Claims to ensure that the aspects of infringement are present. This Claim Chart needs to confirm that, on the balance of probabilities given the information available about the Defendant’s activities, it is likely that the Defendant is infringing the Claimant’s patent;
Specialist Patent Counsel approves the PAP letter that is sent to the Defendant.
All of these four requirements are standard in the bringing of patent infringement proceedings by any barrister who is a member of the specialist sets of patent chambers in London. All barristers in private practice carry professional indemnity insurance and no UK patents barrister in any of the specialist sets would consider approving a Protocol Letter unless he/she had satisfied himself/herself of these requirements.
These requirements mean that considerable work needs to be done prior to issuing court proceedings for patent infringement. Expert witnesses may be required to investigate the activities of a Defendant before it is possible for there to be court supervised disclosure of evidence. The preparation of the Claim Chart is likely to contain evidentiary gaps where assumptions have to be made. The Claim Chart must nevertheless represent the “honest belief” of the Claimant that the Defendant is infringing the patent.
Part 22 “Statement of Truth” requirement