Australian patent owners need to be cautious of their actions, which may be deemed as a threat of infringement proceedings


2 min read

In a Federal Court judgment, Mizzi Family Holdings Pty Ltd v Morellini, patent owners were cautioned about making threats of infringement proceedings. The case involved Mizzi's allegation that Morellini’s 'cane billet planter' infringed their patent, which Morellini countered with a claim of unjustified threats and sought revocation of Mizzi’s patent.

While Mizzi’s patent was upheld as valid, their infringement claim against Morellini’s device was unsuccessful. It was determined that Morellini’s device did not infringe upon the specific mound profiles stipulated in Mizzi's patent claims.

However, Morellini’s claim of unjustified threats proved successful. The case centred around two instances deemed threats by Mizzi – a direct demand for royalties to a user of Morellini’s device and a combination of an advertisement for Mizzi's machine and a cautionary article in ‘Canegrowers magazine. The court found these actions to constitute threats of infringement proceedings. Since Mizzi failed to prove infringement, these threats were ruled unjustifiable under section 129A(3) of the Patents Act 1990.

This judgment serves as a reminder that threats of infringement can be risky if not backed by a solid case of infringement. Patent owners should be cautious in their communication, ensuring that any mention of their patents doesn’t imply a threat of legal action. The mere notification of a patent’s existence is permissible, but combining this with statements that imply potential legal action can be construed as an unjustified threat. This case highlights the need for strategic and thoughtful intellectual property management, particularly when dealing with potential infringements.