Recent case law has cast a wide net with the potential to catch patent owners making threats of patent infringement litigation in Australia.

In OMI v Retractable Technologies Limited [2007] FCA 1364, the federal court issued a declaration of unjustified threats against an American company that had only implied that their Australian patent rights may have been infringed.

The case dealt with retractable syringes. Occupational & Medical Innovations (OMI) had signed a contract with a foreign syringe manufacturer who also happened to manufacture syringes for Retractable Technologies Limited (RTL) for the American market. RTL attempted to prohibit the foreign manufacturer from dealing with OMI by threatening to sue for breach of contract and to vigorously assert their patent rights on a worldwide basis. OMI claimed that RTL's actions amounted to an unjustified threat.

His honour looked to the position of the recipient of the threats and found that an unjustified threat of infringement litigation had occurred. His honour highlighted the fact that our unjustified threats legislation was "designed to discourage allegations of infringement based on construction of a patent which is too wide" indicating that "over-generalization will often be an element of an unjustified threat".

Accordingly, foreign patent applicants need to carefully consider the implications in Australia of threatening worldwide infringement litigation in respect of patents in their portfolio. It would appear that even vague statements designed to leave recipients in doubt as to the location of a possible infringement action could have undesirable ramifications in this jurisdiction.

Peter Treloar

Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000
Australia
Tel: +61 2 9777 1111
Fax: +61 2 9241 4666
email@shelstonip.com
www.shelstonip.com