Dr Martin O’Brien - Unjustified threats of legal proceedings
Dr Martin O’Brien, Principal at Spruson & Ferguson, reviews Occupational and Medical Innovations Limited (ACN 091 192 871) v Retractable Technologies Inc [2007] FCA 1364 (31 August 2007) in which Occupational and Medical Innovations Limited (OMI), an Australian company and patentee of a patent directed to retractable syringes, alleged that Retractable Technologies Inc (RTI), an American company with Australian and US patents in the same field of technology, had made unjustified threats of patent infringement proceedings. In 2004 and 2006 OMI was the recipient of several letters written on behalf of RTI which stated, among other things, that RTI: ‘is prepared to take any legal action necessary to protect its patented and unpatented technology, its products and its proprietary position with respect to [RTI’s supplier] and any company with which [the supplier] or its affiliates may be dealing.’
Dr Martin O’Brien notes that the RTI letter did not explicitly assert infringing conduct in Australia nor did it explicitly refer to the commencement of infringement proceedings. Nevertheless, the reference in the RTI letter to “protecting patented technology” was interpreted by the Court to “suggest infringement proceedings or, perhaps, an application to revoke [OMI’s] patent with the intention that infringement proceedings follow”.
Accordingly, the Court was satisfied that “a recipient in the position of [OMI] would have understood the letter to threaten enforcement or similar proceedings in Australia, pursuant to an Australian patent held by RTI, in connection with the importation into, and/or other exploitation in, Australia of retractable needles manufactured in China.” The Court therefore held the letter referred to above included unjustified threats.
Unjustified threats of legal proceedings