(1) Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat.
(2) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of—
(a) where the invention is a product, making a product for disposal or importing a product for disposal, or
(b) where the invention is a process, using a process.
(3) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in subsection (2)(a) or (b).
(4) A threat of infringement proceedings is not actionable if the threat—
(a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to a product or process, and
(b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.
(5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.
(6) In sections 70C and 70D “an actionable threat” means a threat of infringement proceedings that is actionable in accordance with this section.
(1) For the purposes of section 70A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—
(a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;
(b) all of the information that relates to the threat is information that—
(i) is necessary for that purpose (see subsection (5)(a) to (c) for some examples of necessary information), and
(ii) the person making the communication reasonably believes is true.
(2) Each of the following is a “permitted purpose”—
(a) giving notice that a patent exists;
(b) discovering whether, or by whom, a patent has been infringed by an act mentioned in section 70A(2)(a) or (b);
(c) giving notice that a person has a right in or under a patent, where another person's awareness of the right is relevant to any proceedings that may be brought in respect of the patent.
(3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.
(4) But the following may not be treated as a “permitted purpose”—
(a) requesting a person to cease doing, for commercial purposes, anything in relation to a product or process,
(b) requesting a person to deliver up or destroy a product, or
(c) requesting a person to give an undertaking relating to a product or process.
(5) If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see subsection (1)(b)(i))—
(a) a statement that a patent exists and is in force or that an application for a patent has been made;
(b) details of the patent, or of a right in or under the patent, which—
(i) are accurate in all material respects, and
(ii) are not misleading in any material respect; and
(c) information enabling the identification of the products or processes in respect of which it is alleged that acts infringing the patent have been carried out.
(1) Proceedings in respect of an actionable threat may be brought against the person who made the threat for—
(a) a declaration that the threat is unjustified;
(b) an injunction against the continuance of the threat;
(c) damages in respect of any loss sustained by the aggrieved person by reason of the threat.
(2) In the application of subsection (1) to Scotland—
(a) “declaration” means “declarator”, and
(b) “injunction” means “interdict”.
(3) It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the patent.
(4) It is a defence for the person who made the threat to show—
(a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in section 70A(2)(a) or (b) in relation to the product or the use of a process which is the subject of the threat, and
(b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.
(1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.
(2) In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat—
(a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and
(b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).
(3) The conditions are that—
(a) in making the communication the professional adviser is acting on the instructions of another person, and
(b) when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.
(4) This section does not affect any liability of the person on whose instructions the professional adviser is acting.
(5) It is for a person asserting that subsection (1) applies to prove (if required) that at the material time—
(a) the person concerned was acting as a professional adviser, and
(b) the conditions in subsection (3) were met.
(1) In sections 70 and 70B references to a patent include references to an application for a patent that has been published under section 16.
(2) Where the threat of infringement proceedings is made after an application has been published (but before grant) the reference in section 70C(3) to “the patent” is to be treated as a reference to the patent as granted in pursuance of that application.
70F Supplementary: proceedings for delivery up etc.
In section 70(1)(b) the reference to proceedings for infringement of a patent includes a reference to proceedings for an order under section 61(1)(b) (order to deliver up or destroy patented products etc.) and proceedings in the Unified Patent Court for an order for delivery up made in accordance with articles 32(1)(c) and 62(3) of the Agreement on a Unified Patent Court.
71 Declaration or declarator as to non-infringement
(1) Without prejudice to the court’s jurisdiction to make a declaration or declarator apart from this section, a declaration or declarator that an act does not, or a proposed act would not, constitute an infringement of a patent may be made by the court or the comptroller in proceedings between the person doing or proposing to do the act and the proprietor of the patent, notwithstanding that no assertion to the contrary has been made by the proprietor, if it is shown—
(a) that that person has applied in writing to the proprietor for a written acknowledgment to the effect of the declaration or declarator claimed, and has furnished him with full particulars in writing of the act in question; and
(b) that the proprietor has refused or failed to give any such acknowledgment.
(2) Subject to section 72(5) below, a declaration made by the comptroller under this section shall have the same effect as a declaration or declarator by the court.
(1) Subject to the following provisions of this Act, the court or the comptroller may ... by order revoke a patent for an invention on the application of any person (including the proprietor of the patent) on (but only on) any of the following grounds, that is to say—
(a) the invention is not a patentable invention;
(b) that the patent was granted to a person who was not entitled to be granted that patent;
(c) the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art;
(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8(3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed;
(e) the protection conferred by the patent has been extended by an amendment which should not have been allowed.
(2) An application for the revocation of a patent on the ground mentioned in subsection (1)(b) above—
(a) may only be made by a person found by the court in an action for a declaration or declarator, or found by the court or the comptroller on a reference under section 37 above, to be entitled to be granted that patent or to be granted a patent for part of the matter comprised in the specification of the patent sought to be revoked; and
(b) may not be made if that action was commenced or that reference was made after the second anniversary of the date of the grant of the patent sought to be revoked, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.
(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(4) An order under this section may be an order for the unconditional revocation of the patent or, where the court or the comptroller determines that one of the grounds mentioned in subsection (1) above has been established, but only so as to invalidate the patent to a limited extent, an order that the patent should be revoked unless within a specified time the specification is amended ... to the satisfaction of the court or the comptroller, as the case may be.
(4A) The reference in subsection (4) above to the specification being amended is to its being amended under section 75 below and also, in the case of a European patent (UK), to its being amended under any provision of the European Patent Convention under which the claims of the patent may be limited by amendment at the request of the proprietor.
(5) A decision of the comptroller or on appeal from the comptroller shall not estop any party to civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds referred to in subsection (1) above, whether or not any of the issues involved were decided in the said decision.
(6) Where the comptroller refuses to grant an application made to him by any person under this section, no application (otherwise than by way of appeal or by way of putting validity in issue in proceedings for infringement) may be made to the court by that person under this section in relation to the patent concerned, without the leave of the court.
(7) Where the comptroller has not disposed of an application made to him under this section, the applicant may not apply to the court under this section in respect of the patent concerned unless either—
(a) the proprietor of the patent agrees that the applicant may so apply, or
(b) the comptroller certifies in writing that it appears to him that the question whether the patent should be revoked is one which would more properly be determined by the court.
73 Comptroller’s power to revoke patents on his own initiative.
(1) If it appears to the comptroller that an invention for which a patent has been granted formed part of the state of the art by virtue only of section 2(3) above, he may on his own initiative by order revoke the patent, but shall not do so without giving the proprietor of the patent an opportunity of making any observations and of amending the specification of the patent so as to exclude any matter which formed part of the state of the art as aforesaid without contravening section 76 below.
(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.
(1B) The power under subsection (1A) may not be exercised before—
(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or
(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).
(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.
(2) If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date, and that the applications for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent.
(3) The comptroller shall not take action under subsection (2) above before—
(a) the end of the period for filing an opposition to the European patent (UK) under the European Patent Convention, or
(b) if later, the date on which opposition proceedings are finally disposed of;
and he shall not then take any action if the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention.
(4) The comptroller shall not take action under subsection (2) above if the European patent (UK) has been surrendered under section 29(1) above before the date on which by virtue of section 25(1) above the patent under this Act is to be treated as having been granted or, if proceedings for the surrender of the European patent (UK) have been begun before that date, until those proceedings are finally disposed of; and he shall not then take any action if the decision is to accept the surrender of the European patent.
74 Proceedings in which validity of patent may be put in issue.
(1) Subject to the following provisions of this section, the validity of a patent may be put in issue—
(a) by way of defence, in proceedings for infringement of the patent under section 61 above or proceedings under section 69 above for infringement of rights conferred by the publication of an application;
(b) in proceedings in respect of an actionable threat under section 70A above;
(c) in proceedings in which a declaration in relation to the patent is sought under section 71 above;
(d) in proceedings before the court or the comptroller under section 72 above for the revocation of the patent;
(e) in proceedings under section 58 above.
(2) The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent.
(3) The only grounds on which the validity of a patent may be put in issue (whether in proceedings for revocation under section 72 above or otherwise) are the grounds on which the patent may be revoked under that section.
(4) No determination shall be made in any proceedings mentioned in subsection (1) above on the validity of a patent which any person puts in issue on the ground mentioned in section 72(1)(b) above unless—
(a) it has been determined in entitlement proceedings commenced by that person or in the proceedings in which the validity of the patent is in issue that the patent should have been granted to him and not some other person; and
(b) except where it has been so determined in entitlement proceedings, the proceedings in which the validity of the patent is in issue are commenced on or before the second anniversary of the date of the grant of the patent or it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.
(5) Where the validity of a patent is put in issue by way of defence or counterclaim the court or the comptroller shall, if it or he thinks it just to do so, give the defendant an opportunity to comply with the condition in subsection (4)(a) above.
(6) In subsection (4) above “entitlement proceedings”, in relation to a patent, means a reference under section 37(1) above on the ground that the patent was granted to a person not entitled to it or proceedings for a declaration or declarator that it was so granted.
(7) Where proceedings with respect to a patent are pending in the court under any provision of this Act mentioned in subsection (1) above, no proceedings may be instituted without the leave of the court before the comptroller with respect to that patent under section 61(3), 69, 71 or 72 above.
(8) It is hereby declared that for the purposes of this Act the validity of a patent is not put in issue merely because
(a) the comptroller is considering its validity in order to decide whether to revoke it under section 73 above, or
(b) its validity is being considered in connection with an opinion under section 74A below or a review of such an opinion.
(1) The proprietor of a patent or any other person may request the comptroller to issue an opinion on a prescribed matter in relation to the patent.
(2) Subsection (1) above applies even if the patent has expired or has been surrendered.
(3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so—
(a) in such circumstances as may be prescribed, or
(b) if for any reason he considers it inappropriate in all the circumstances to do so.
(4) An opinion under this section shall not be binding for any purposes.
(5) An opinion under this section shall be prepared by an examiner.
(6) In relation to a decision of the comptroller whether to issue an opinion under this section—
(a) for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
(b) no appeal shall lie at the instance of any other person.
(1) Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, of an opinion under section 74A above.
(2) The rules may, in particular—
(a) prescribe the circumstances in which, and the period within which, an application may be made;
(b) provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(d) provide for there to be a right of appeal against a decision made on a review only in prescribed cases.
75 Amendment of patent in infringement or revocation proceedings.
(1) In any proceedings before the court or the comptroller in which the validity of a patent may be put in issue the court or, as the case may be, the comptroller may, subject to section 76 below, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the court or comptroller thinks fit.
(2) A person may give notice to the court or the comptroller of his opposition to an amendment proposed by the proprietor of the patent under this section, and if he does so the court or the comptroller shall notify the proprietor and consider the opposition in deciding whether the amendment or any amendment should be allowed.
(3) An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent.
(4) Where an application for an order under this section is made to the court, the applicant shall notify the comptroller, who shall be entitled to appear and be heard and shall appear if so directed by the court.
(5) In considering whether or not to allow an amendment proposed under this section, the court or the comptroller shall have regard to any relevant principles applicable under the European Patent Convention.
76 Amendments of applications and patents not to include added matter.
(1) An application for a patent which—
(a) is made in respect of matter disclosed in an earlier application, or in the specification of a patent which has been granted, and
(b) discloses additional matter, that is, matter extending beyond that disclosed in the earlier application, as filed, or the application for the patent, as filed,
may be filed under section 8(3), 12 or 37(4) above, or as mentioned in section 15(9) above, but shall not be allowed to proceed unless it is amended so as to exclude the additional matter.
(1A) Where, in relation to an application for a patent—
(a) a reference to an earlier relevant application has been filed as mentioned in section 15(1)(c)(ii) above; and
(b) the description filed under section 15(10)(b)(i) above discloses additional matter, that is, matter extending beyond that disclosed in the earlier relevant application,
the application shall not be allowed to proceed unless it is amended so as to exclude the additional matter.
(2) No amendment of an application for a patent shall be allowed under section 15A(6) , 18(3) or 19(1) if it results in the application disclosing matter extending beyond that disclosed in the application as filed.
(3) No amendment of the specification of a patent shall be allowed under section 27(1), 73 or 75 if it—
(a) results in the specification disclosing additional matter, or
(b) extends the protection conferred by the patent.
(4) In subsection (1A) above “relevant application” has the meaning given by section 5(5) above.
(1) Any provision of, or made under, this Act is to have effect in relation to a patent or an application for a patent which concerns a biotechnological invention, subject to the provisions of Schedule A2.
(2) Nothing in this section or Schedule A2 is to be read as affecting the application of any provision in relation to any other kind of patent or application for a patent.
(1) Subject to the provisions of this Act, a European patent (UK) shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated for the purposes of Parts I and III of this Act as if it were a patent under this Act granted in pursuance of an application made under this Act and as if notice of the grant of the patent had, on the date of that publication, been published under section 24 above in the journal; and—
(a) the proprietor of a European patent (UK) shall accordingly as respects the United Kingdom have the same rights and remedies, subject to the same conditions, as the proprietor of a patent under this Act;
(b) references in Parts I and III of this Act to a patent shall be construed accordingly; and
(c) any statement made and any certificate filed for the purposes of the provision of the convention corresponding to section 2(4)(c) above shall be respectively treated as a statement made and written evidence filed for the purposes of the said paragraph (c).
(2) Subsection (1) above shall not affect the operation in relation to a European patent (UK) of any provisions of the European Patent Convention relating to the amendment or revocation of such a patent in proceedings before the European Patent Office.
(3) Where in the case of a European patent (UK)—
(a) proceedings for infringement, or proceedings under section 58 above, have been commenced before the court or the comptroller and have not been finally disposed of, and
(b) it is established in proceedings before the European Patent Office that the patent is only partially valid,
the provisions of section 63 or, as the case may be, of subsections (7) to (9) of section 58 apply as they apply to proceedings in which the validity of a patent is put in issue and in which it is found that the patent is only partially valid.
(4) Where a European patent (UK) is amended in accordance with the European Patent Convention or the Agreement on a Unified Patent Court, the amendment shall have effect for the purposes of Parts I and III of this Act as if the specification of the patent had been amended under this Act; but subject to subsection (6)(b) below.
(4A) Where a European patent (UK) is revoked in accordance with the European Patent Convention or the Agreement on a Unified Patent Court, the patent shall be treated for the purposes of Parts I and III of this Act as having been revoked under this Act.
(5) Where—
(a) under the European Patent Convention or the Agreement on a Unified Patent Court a European patent (UK) is revoked for failure to observe a time limit and is subsequently restored or is revoked by the Board of Appeal and is subsequently restored by the Enlarged Board of Appeal or is revoked and subsequently restored by the Unified Patent Court; and
(b) between the revocation and publication of the fact that it has been restored a person begins in good faith to do an act which would, apart from section 55 above, constitute an infringement of the patent or makes in good faith effective and serious preparations to do such an act;
he shall have the rights conferred by section 28A(4) and (5) above, and subsections (6) and (7) of that section shall apply accordingly.
(5A) Where, under the European Patent Convention or the Agreement on a Unified Patent Court, a European patent (UK) is revoked and subsequently restored (including where it is revoked by the Board of Appeal and subsequently restored by the Enlarged Board of Appeal), any fee that would have been imposed in relation to the patent after the revocation but before the restoration is payable within the prescribed period following the restoration.
(6) While this subsection is in force—
(a) subsection (1) above shall not apply to a European patent (UK) the specification of which was published in French or German, unless a translation of the specification into English is filed at the Patent Office and the prescribed fee is paid before the end of the prescribed period;
(b) subsection (4) above shall not apply to an amendment made in French or German unless a translation into English of the specification as amended is filed at the Patent Office and the prescribed fee is paid before the end of the prescribed period.
(7) Where such a translation is not filed, the patent shall be treated as always having been void.
(8) The comptroller shall publish any translation filed at the Patent Office under subsection (6) above.
(9) Subsection (6) above shall come into force on a day appointed for the purpose by rules and shall cease to have effect on a day so appointed, without prejudice, however, to the power to bring it into force again.
(10) Subsection (1) does not apply and is to be treated as never having applied in respect of a European patent (UK) whose unitary effect is registered by the European Patent Office in the Register for unitary patent protection (see, in particular, the Unitary Patent Regulation).
78 Effect of filing an application for a European patent (UK).
(1) Subject to the provisions of this Act, an application for a European patent (UK) having a date of filing under the European Patent Convention shall be treated for the purposes of the provisions of this Act to which this section applies as an application for a patent under this Act having that date as its date of filing and having the other incidents listed in subsection (3) below, but subject to the modifications mentioned in the following provisions of this section.
(2) This section applies to the following provisions of this Act:—
section 2(3) and so much of section 14(7) as relates to section 2(3);
section 5;
section 6;
so much of section 13(3) as relates to an application for and issue of a certificate under that subsection;
sections 30 to 33;
section 36;
sections 55 to 69;
sections 70 to 70F
section 74, so far as relevant to any of the provisions mentioned above;
section 111; and
section 125.
(3) The incidents referred to in subsection (1) above in relation to an application for a European patent (UK) are as follows:—
(a) any declaration of priority made in connection with the application under the European Patent Convention shall be treated for the purposes of this Act as a declaration made under section 5(2) above;
(b) where a period of time relevant to priority is extended under that convention, the period of twelve months allowed under section 5(2A)(a) above shall be so treated as altered correspondingly;
(c) where the date of filing an application is re-dated under that convention to a later date, that date shall be so treated as the date of filing the application;
(d) the application, if published in accordance with that convention, shall, subject to subsection (7) and section 79 below, be so treated as published under section 16 above;
(e) any designation of the inventor under that convention or any statement under it indicating the origin of the right to a European patent shall be treated for the purposes of section 13(3) above as a statement filed under section 13(2) above;
(f) registration of the application in the register of European patents shall be treated as registration under this Act.
(4) Rules under section 32 above may not impose any requirements as to the registration of applications for European patents (UK) but may provide for the registration of copies of entries relating to such applications in the European register of patents.
(5) Subsections (1) to (3) above shall cease to apply to an application for a European patent (UK), except as mentioned in subsection (5A) below, if—
(a) the application is refused or withdrawn or deemed to be withdrawn, or
(b) the designation of the United Kingdom in the application is withdrawn or deemed to be withdrawn,
but shall apply again if the rights of the applicant are re-established under the European Patent Convention, as from their re-establishment.
(5A) The occurrence of any of the events mentioned in subsection (5)(a) or (b) shall not affect the continued operation of section 2(3) above in relation to matter contained in an application for a European patent (UK) which by virtue of that provision has become part of the state of the art as regards other inventions. ; and the occurrence of any event mentioned in subsection (5)(b) shall not prevent matter contained in an application for a European patent (UK) becoming part of the state of the art by virtue of section 2(3) above as regards other inventions where the event occurs before the publication of that application.
(6) Where, between subsections (1) to (3) above ceasing to apply to an application for a European patent (UK) and the re-establishment of the rights of the applicant, a person—
(a) begins in good faith to do an act which would constitute an infringement of the rights conferred by publication of the application if those subsections then applied, or
(b) makes in good faith effective and serious preparations to do such an act,
he shall have the right to continue to do the act or, as the case may be, to do the act, notwithstanding subsections (1) to (3) applying again and notwithstanding the grant of the patent.
(6A) Subsections (5) and (6) of section 20B above have effect for the purposes of subsection (6) above as they have effect for the purposes of that section and as if the references to subsection (4) of that section were references to subsection (6) above.
(6B) Subject to subsection (6A) above, the right conferred by subsection (6) above does not extend to granting a licence to another person to do the act in question.
(6C) Subsections (6) to (6B) above apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to an infringement of the rights conferred by publication of the application (or, as the case may be, infringement of the patent).
“Patented invention” has the same meaning as in section 55 above.
(7) While this subsection is in force, an application for a European patent (UK) published by the European Patent Office under the European Patent Convention in French or German shall be treated for the purposes of sections 55 and 69 above as published under section 16 above when a translation into English of the claims of the specification of the application has been filed at and published by the Patent Office and the prescribed fee has been paid, but an applicant—
(a) may recover a payment by virtue of section 55(5) above in respect of the use of the invention in question before publication of that translation; or
(b) may bring proceedings by virtue of section 69 above in respect of an act mentioned in that section which is done before publication of that translation;
if before that use or the doing of that act he has sent by post or delivered to the government department who made use or authorised the use of the invention, or, as the case may be, to the person alleged to have done the act, a translation into English of those claims.
(8) Subsection (7) above shall come into force on a day appointed for the purpose by rules and shall cease to have effect on a day so appointed, without prejudice, however, to the power to bring it into force again.
79 Operation of s. 78 in relation to certain European patent applications.
(1) Subject to the following provisions of this section, section 78 above, in its operation in relation to an international application for a patent (UK) which is treated by virtue of the European Patent Convention as an application for a European patent (UK), shall have effect as if any reference in that section to anything done in relation to the application under the European Patent Convention included a reference to the corresponding thing done under the Patent Co-operation Treaty.
(2) Any such international application which is published under that treaty shall be treated for the purposes of section 2(3) above as published only when a copy of the application has been supplied to the European Patent Office in English, French or German and the relevant fee has been paid under that convention.
(3) Any such international application which is published under that treaty in a language other than English, French or German shall, subject to section 78(7) above, be treated for the purposes of sections 55 and 69 above as published only when it is re-published in English, French or German by the European Patent Office under that convention.
80 Authentic text of European patents and patent applications.
(1) Subject to subsection (2) below, the text of a European patent or application for such a patent in the language of the proceedings, that is to say, the language in which proceedings relating to the patent or the application are to be conducted before the European Patent Office, shall be the authentic text for the purposes of any domestic proceedings, that is to say, any proceedings relating to the patent or application before the comptroller or the court.
(2) Where the language of the proceedings is French or German, a translation into English of the specification of the patent under section 77 above or of the claims of the application under section 78 above shall be treated as the authentic text for the purpose of any domestic proceedings, other than proceedings for the revocation of the patent, if the patent or application as translated into English confers protection which is narrower than that conferred by it in French or German.
(3) If any such translation results in a European patent or application conferring the narrower protection, the proprietor of or applicant for the patent may file a corrected translation with the Patent Office and, if he pays the prescribed fee within the prescribed period, the Patent Office shall publish it, but—
(a) any payment for any use of the invention which (apart from section 55 above) would have infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted, shall not be recoverable under that section,
(b) the proprietor or applicant shall not be entitled to bring proceedings in respect of an act which infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted,
unless before that use or the doing of the act the corrected translation has been published by the Patent Office or the proprietor or applicant has sent the corrected translation by post or delivered it to the government department who made use or authorised the use of the invention or, as the case may be, to the person alleged to have done that act.
(4) Where a correction of a translation is published under subsection (3) above and before it is so published a person—
(a) begins in good faith to do an act which would not constitute an infringement of the patent as originally translated, or of the rights conferred by publication of the application as originally translated, but would do so under the amended translation, or
(b) makes in good faith effective and serious preparations to do such an act,
he shall have the right to continue to do the act or, as the case may be, to do the act, notwithstanding the publication of the corrected translation and notwithstanding the grant of the patent.
(5) Subsections (5) and (6) of section 28A above have effect for the purposes of subsection (4) above as they have effect for the purposes of that section and as if—
(a) the references to subsection (4) of that section were references to subsection (4) above;
(b) the reference to the registered proprietor of the patent included a reference to the applicant.
(6) Subject to subsection (5) above, the right conferred by subsection (4) above does not extend to granting a licence to another person to do the act in question.
(7) Subsections (4) to (6) above apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to an infringement of the patent or of the rights conferred by the publication of the application.
“Patented invention” has the same meaning as in section 55 above.
(1) The comptroller may direct that on compliance with the relevant conditions mentioned in subsection (2) below an application for a European patent (UK) shall be treated as an application for a patent under this Act where the application is deemed to be withdrawn under the provisions of the European Patent Convention relating to the time for forwarding applications to the European Patent Office
(2) The relevant conditions referred to above are ...—
(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(b) that ,—
(i) the applicant requests the comptroller within the relevant prescribed period (where the application was filed with the Patent Office) to give a direction under this section, or
(ii) the central industrial property office of a country which is party to the convention, other than the United Kingdom, with which the application was filed transmits within the relevant prescribed period a request that the application should be converted into an application under this Act, together with a copy of the application; and
(c) that the applicant within the relevant prescribed period pays the application fee and if the application is in a language other than English, files a translation into English of the application and of any amendments previously made in accordance with the convention.
(3) Where an application for a European patent falls to be treated as an application for a patent under this Act by virtue of a direction under this section—
(a) the date which is the date of filing the application under the European Patent Convention shall be treated as its date of filing for the purposes of this Act, but if that date is re-dated under the convention to a later date, that later date shall be treated for those purposes as the date of filing the application;
(b) if the application satisfies a requirement of the convention corresponding to any of the requirements of this Act or rules designated as formal requirements, it shall be treated as satisfying that formal requirement;
(c) any document filed with the European Patent Office under any provision of the convention corresponding to any of the following provisions of this Act, that is to say, sections 2(4)(c), 5, 13(2) and 14, or any rule made for the purposes of any of those provisions, shall be treated as filed with the Patent Office under that provision or rule; and
(d) the comptroller shall refer the application for only so much of the examination and search required by sections 15A, 17 and 18 above as he considers appropriate in view of any examination and search carried out under the convention, and those sections shall apply with any necessary modifications accordingly.
82 Jurisdiction to determine questions as to right to a patent.
(1) The court shall not have jurisdiction to determine a question to which this section applies except in accordance with the following provisions of this section.
(2) Section 12 above shall not confer jurisdiction on the comptroller to determine a question to which this section applies except in accordance with the following provisions of this section.
(3) This section applies to a question arising before the grant of a European patent whether a person has a right to be granted a European patent, or a share in any such patent, and in this section “employer-employee question” means any such question between an employer and an employee, or their successors in title, arising out of an application for a European patent for an invention made by the employee.
(4) The court and the comptroller shall have jurisdiction to determine any question to which this section applies, other than an employer-employee question, if either of the following conditions is satisfied, that is to say—
(a) the applicant has his residence or principal place of business in the United Kingdom; or
(b) the other party claims that the patent should be granted to him and he has his residence or principal place of business in the United Kingdom and the applicant does not have his residence or principal place of business in any of the relevant contracting states;
and also if in either of those cases there is no written evidence that the parties have agreed to submit to the jurisdiction of the competent authority of a relevant contracting state other than the United Kingdom.
(5) The court and the comptroller shall have jurisdiction to determine an employer-employee question if either of the following conditions is satisfied, that is to say—
(a) the employee is mainly employed in the United Kingdom; or
(b) the employee is not mainly employed anywhere or his place of main employment cannot be determined, but the employer has a place of business in the United Kingdom to which the employee is attached (whether or not he is also attached elsewhere);
and also if in either of those cases there is no written evidence that the parties have agreed to submit to the jurisdiction of the competent authority of a relevant contracting state other than the United Kingdom or, where there is such evidence of such an agreement, if the law applicable to the contract of employment does not recognise the validity of the agreement.
(6) Without prejudice to subsections (2) to (5) above, the court and the comptroller shall have jurisdiction to determine any question to which this section applies if there is written evidence that the parties have agreed to submit to the jurisdiction of the court or the comptroller, as the case may be, and, in the case of an employer-employee question, the law applicable to the contract of employment recognises the validity of the agreement.
(7) If, after proceedings to determine a question to which this section applies have been brought before the competent authority of a relevant contracting state other than the United Kingdom, proceedings are begun before the court or a reference is made to the comptroller under section 12 above to determine that question, the court or the comptroller, as the case may be, shall stay or sist the proceedings before the court or the comptroller unless or until the competent authority of that other state either—
(a) determines to decline jurisdiction and no appeal lies from the determination or the time for appealing expires, or
(b) makes a determination which the court or the comptroller refuses to recognise under section 83 below.
(8) References in this section to the determination of a question include respectively references to—
(a) the making of a declaration or the grant of a declarator with respect to that question (in the case of the court); and
(b) the making of an order under section 12 above in relation to that question (in the case of the court or the comptroller).
(9) In this section and section 83 below “relevant contracting state” means a country which is a party to the European Patent Convention and has not exercised its right under the convention to exclude the application of the protocol to the convention known as the Protocol on Recognition.
83 Effect of patent decisions of competent authorities of other states.
(1) A determination of a question to which section 82 above applies by the competent authority of a relevant contracting state other than the United Kingdom shall, if no appeal lies from the determination or the time for appealing has expired, be recognised in the United Kingdom as if it had been made by the court or the comptroller unless the court or he refuses to recognise it under subsection (2) below.
(2) The court or the comptroller may refuse to recognise any such determination that the applicant for a European patent had no right to be granted the patent, or any share in it, if either—
(a) the applicant did not contest the proceedings in question because he was not notified of them at all or in the proper manner or was not notified of them in time for him to contest the proceedings; or
(b) the determination in the proceedings in question conflicts with the determination of the competent authority of any relevant contracting state in proceedings instituted earlier between the same parties as in the proceedings in question.
83A European patent with unitary effect and Unified Patent Court
(1) Schedule A3 contains provision about the application of this Act in relation to the European patent with unitary effect.
(2) Schedule A4 contains provision about the jurisdiction of the Unified Patent Court in relation to the European patent (UK) and the European patent with unitary effect.
89 Effect of international application for patent.
(1) An international application for a patent (UK) for which a date of filing has been accorded under the Patent Co-operation Treaty shall, subject to—
section 89A (international and national phases of application), and
section 89B (adaptation of provisions in relation to international application),
be treated for the purposes of Parts I and III of this Act as an application for a patent under this Act.
(2) If the application, or the designation of the United Kingdom in it, is withdrawn or (except as mentioned in subsection (3)) deemed to be withdrawn under the Treaty, it shall be treated as withdrawn under this Act.
(3) An application shall not be treated as withdrawn under this Act if it, or the designation of the United Kingdom in it, is deemed to be withdrawn under the Treaty—
(a) because of an error or omission in an institution having functions under the Treaty, or
(b) because, owing to circumstances outside the applicant’s control, a copy of the application was not received by the International Bureau before the end of the time limited for that purpose under the Treaty,
or in such other circumstances as may be prescribed.
(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
(5) If an international application for a patent which designates the United Kingdom is refused a filing date under the Treaty and the comptroller determines that the refusal was caused by an error or omission in an institution having functions under the Treaty, he may direct that the application shall be treated as an application under this Act, having such date of filing as he may direct.
89A International and national phases of application.
(1) The provisions of the Patent Co-operation Treaty relating to publication, search, examination and amendment, and not those of this Act, apply to an international application for a patent (UK) during the international phase of the application.
(2) The international phase of the application means the period from the filing of the application in accordance with the Treaty until the national phase of the application begins.
(3) The national phase of the application begins—
(a) when the prescribed period expires, provided any necessary translation of the application into English has been filed at the Patent Office and the prescribed fee has been paid by the applicant; or
(b) on the applicant expressly requesting the comptroller to proceed earlier with the national phase of the application, filing at the Patent Office—
(i) a copy of the application, if none has yet been sent to the Patent Office in accordance with the Treaty, and
(ii) any necessary translation of the application into English,
and paying the prescribed fee.
For this purpose a “copy of the application” includes a copy published in accordance with the Treaty in a language other than that in which it was originally filed.
(4) If the prescribed period expires without the conditions mentioned in subsection (3)(a) being satisfied, the application shall be taken to be withdrawn.
(5) Where during the international phase the application is amended in accordance with the Treaty, the amendment shall be treated as made under this Act if—
(a) when the prescribed period expires, any necessary translation of the amendment into English has been filed at the Patent Office, or
(b) where the applicant expressly requests the comptroller to proceed earlier with the national phase of the application, there is then filed at the Patent Office—
(i) a copy of the amendment, if none has yet been sent to the Patent Office in accordance with the Treaty, and
(ii) any necessary translation of the amendment into English;
otherwise the amendment shall be disregarded.
(6) The comptroller shall on payment of the prescribed fee publish any translation filed at the Patent Office under subsection (3) or (5) above.
89B Adaptation of provisions in relation to international application.
(1) Where an international application for a patent (UK) is accorded a filing date under the Patent Co-operation Treaty—
(a) that date, or if the application is re-dated under the Treaty to a later date that later date, shall be treated as the date of filing the application under this Act,
(b) any declaration of priority made under the Treaty shall be treated as made under section 5(2) above, and where in accordance with the Treaty any extra days are allowed, the period of 12 months allowed under section 5(2A)(a) above shall be treated as altered accordingly, and
(c) any statement of the name of the inventor under the Treaty shall be treated as a statement filed under section 13(2) above.
(2) If the application, not having been published under this Act, is published in accordance with the Treaty it shall be treated, for purposes other than those mentioned in subsection (3), as published under section 16 above when the national phase of the application begins or, if later, when published in accordance with the Treaty .
(3) For the purposes of section 55 (use of invention for service of the Crown) and section 69 (infringement of rights conferred by publication) the application, not having been published under this Act, shall be treated as published under section 16 above-—
(a) if it is published in accordance with the Treaty in English, on its being so published; and
(b) if it is so published in a language other than English—
(i) on the publication of a translation of the application in accordance with section 89A(6) above, or
(ii) on the service by the applicant of a translation into English of the specification of the application of the government department concerned or, as the case may be, on the person committing the infringing act.
The reference in paragraph (b)(ii) to the service of a translation on a government department or other person is to its being sent by post or delivered to that department or person.
(4) During the international phase of the application, section 8 above does not apply (determination of questions of entitlement in relation to application under this Act) and section 12 above (determination of entitlement in relation to foreign and convention patents) applies notwithstanding the application; but after the end of the international phase, section 8 applies and section 12 does not.
(5) When the national phase begins the comptroller shall refer the application for so much of the examination and search under sections 15A, 17 and 18 above as he considers appropriate in view of any examination or search carried out under the Treaty.
(1) Her Majesty may with a view to the fulfilment of a treaty or international convention, arrangement or engagement, by Order in Council declare that any country specified in the Order is a convention country for the purposes of section 5 above.
(2) Her Majesty may by Order in Council direct that any of the Channel Islands, any colony . . . shall be taken to be a convention country for those purposes.
(3) For the purposes of subsection (1) above every colony, protectorate, and territory subject to the authority or under the suzerainty of another country, and every territory administered by another country under the trusteeship system of the United Nations shall be taken to be a country in the case of which a declaration may be made under that subsection.
91 Evidence of conventions and instruments under conventions.
(1) Judicial notice shall be taken of the following, that is to say—
(a) the European Patent Convention, the Community Patent Convention , the Agreement on a Unified Patent Court and the Patent Co-operation Treaty (each of which is hereafter in this section referred to as the relevant convention);
(b) any bulletin, journal or gazette published under the relevant convention and the register of European patents kept under the European Patent Convention; and
(c) any decision of, or expression of opinion by, the relevant convention court on any question arising under or in connection with the relevant convention.
(2) Any document mentioned in subsection (1)(b) above shall be admissible as evidence of any instrument or other act thereby communicated of any convention institution.
(3) Evidence of any instrument issued under the relevant convention by any such institution, including any judgment or order of the relevant convention court, or of any document in the custody of any such institution or reproducing in legible form any information in such custody otherwise than in legible form, or any entry in or extract from such a document, may be given in any legal proceedings by production of a copy certified as a true copy by an official of that institution; and any document purporting to be such a copy shall be received in evidence without proof of the official position or handwriting of the person signing the certificate.
(4) Evidence of any such instrument may also be given in any legal proceedings—
(a) by production of a copy purporting to be printed by the Queen’s Printer;
(b) where the instrument is in the custody of a government department, by production of a copy certified on behalf of the department to be a true copy by an officer of the department generally or specially authorised to do so;
and any document purporting to be such a copy as is mentioned in paragraph (b) above of an instrument in the custody of a department shall be received in evidence without proof of the official position or handwriting of the person singing the certificate, or of his authority to do so, or of the document being in the custody of the department.
(5) In any legal proceedings in Scotland evidence of any matter given in a manner authorised by this section shall be sufficient evidence of it.
(6) In this section—
“convention institution” means an institution established by or having functions under the relevant convention;
“relevant convention court” does not include a court of the United Kingdom or of any other country which is a party to the relevant convention but does include the Unified Patent Court; and
“legal proceedings”, in relation to the United Kingdom, includes proceedings before the comptroller.
92 Obtaining evidence for proceedings under the European Patent Convention.
(1) Sections 1 to 3 of the Evidence (Proceedings in Other Jurisdictions) Act 1975 (provisions enabling United Kingdom courts to assist in obtaining evidence for foreign courts) shall apply for the purpose of proceedings before a relevant convention court under the European Patent Convention or proceedings before the Unified Patent Court as they apply for the purpose of civil proceedings in a court exercising jurisdiction in a country outside the United Kingdom.
(2) In the application of those sections by virtue of this section any reference to the High Court, the Court of Session or the High Court of Justice in Northern Ireland shall include a reference to the comptroller.
(3) Rules under this Act may include provision—
(a) as to the manner in which an application under section 1 of the said Act of 1975 is to be made to the comptroller for the purpose of proceedings before a relevant convention court under the European Patent Convention; and
(b) subject to the provisions of that Act, as to the circumstances in which an order can be made under section 2 of that Act on any such application.
(4) Rules of court and rules under this Act may provide for an officer of the European Patent Office to attend the hearing of an application under section 1 of that Act before the court or the comptroller, as the case may be, and examine the witnesses or request the court or comptroller to put specified questions to the witnesses.
(5) Section 1(4) of the Perjury Act 1911 and Article 3(4) of the Perjury (Northern Ireland) Order 1979 (statements made for the purposes, among others, of judicial proceedings in a tribunal of a foreign state) shall apply in relation to proceedings before a relevant convention court under the European Patent Convention or proceedings before the Unified Patent Court as they apply to a judicial proceeding in a tribunal of a foreign state.
If the European Patent Office orders the payment of costs in any proceedings before it—
(a) in England and Wales the costs shall, if the county court so orders, be recoverable under section 85 of the County Courts Act 1984 or otherwise as if they were payable under an order of that court;
(b) in Scotland the order may be enforced in like manner as a recorded decree arbitralan extract registered decree arbitral bearing a warrant for execution issued by the sheriff court of any sheriffdom in Scotland.
(c) in Northern Ireland the order may be enforced as if it were a money judgment.
94 Communication of information to the European Patent Office, etc.
It shall not be unlawful by virtue of any enactment to communicate the following information in pursuance of the European Patent Convention to the European Patent Office or the competent authority of any country which is party to the Convention, that is to say—
(a) information in the files of the court which, in accordance with rules of court, the court authorises to be so communicated;
(b) information in the files of the Patent Office which, in accordance with rules under this Act, the comptroller authorises to be so communicated.
(1) There shall be paid out of moneys provided by Parliament any sums required by any Minister of the Crown or government department to meet any financial obligation of the United Kingdom under the European Patent Convention, ... or the Patent Co-operation Treaty.
(2) Any sums received by any Minister of the Crown or government department in pursuance of that convention or that treaty shall be paid into the Consolidated Fund.
(1) There shall be constituted, as part of the Chancery Division of the High Court, a Patents Court to take such proceedings relating to patents and other matters as may be prescribed by rules of court.
(2) The judges of the Patents Court shall be such of the puisne judges of the High Court as the Lord Chancellor may from time to time nominate.
(3) The foregoing provisions of this section shall not be taken as prejudicing the provisions of the Supreme Court of Judicature (Consolidation) Act 1925 which enable the whole jurisdiction of the High Court to be exercised by any judge of that court.
(4) Rules of court shall make provision for the appointment of scientific advisers to assist the Patents Court in proceedings under this Act and for regulating the functions of such advisers.
(5) The remuneration of any such adviser shall be determined by the Lord Chancellor with the consent of the Minister for the Civil Service and shall be defrayed out of moneys provided by Parliament.
(1) Except as provided by subsection (4) below, an appeal shall lie to the Patents Court from any decision of the comptroller under this Act or rules except any of the following decisions, that is to say—
(a) a decision falling within section 14(7) above;
(b) a decision under section 16(2) above to omit matter from a specification;
(c) a decision to give directions under subsection (1) or (2) of section 22 above;
(d) a decision under rules which is excepted by rules from the right of appeal conferred by this section.
(2) For the purpose of hearing appeals under this section the Patents Court may consist of one or more judges of that court in accordance with directions given by the Lord Chief Justice of England and Wales after consulting the Lord Chancellor ; and the Patents Court shall not be treated as a divisional court for the purposes of section 31(1)(f) of the Supreme Court of Judicature (Consolidation) Act 1925 (appeals from divisional courts).
(3) An appeal shall not lie to the Court of Appeal from a decision of the Patents Court on appeal from a decision of the comptroller under this Act or rules—
(a) except where the comptroller’s decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or
(b) except where the ground of appeal is that the decision of the Patents Court is wrong in law;
but an appeal shall only lie to the Court of Appeal under this section if leave to appeal is given by the Patents Court or the Court of Appeal.
(4) The Lord Chief Justice may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under subsection (2).
(4) An appeal shall lie to the Court of Session from any decision of the comptroller in proceedings which under rules are held in Scotland, except any decision mentioned in paragraphs (a) to (d) of subsection (1) above.
(5) An appeal shall not lie to the Inner House of the Court of Session from a decision of an Outer House judge on appeal from a decision of the comptroller under this Act or rules—
(a) except where the comptroller’s decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or
(b) except where the ground of appeal is that the decision of the Outer House judge is wrong in law.
(1) In Scotland proceedings relating primarily to patents (other than proceedings before the comptroller) shall be competent in the Court of Session only, and any jurisdiction of the sheriff court relating to patents is hereby abolished except in relation to questions which are incidental to the issue in proceedings which are otherwise competent there.
(2) The remuneration of any assessor appointed to assist the court in proceedings under this Act in the Court of Session shall be determined by the Lord President of the Court of Session with the consent of the Treasury and shall be defrayed out of moneys provided by Parliament.