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Other Bills before Parliament

Patents Bill [HL]


Patents Bill [HL]

1

 

A

Bill

To

amend the law relating to patents.                                                                      

Be it enacted by the Queen’s most Excellent Majesty, by and with the advice and

consent of the Lords Spiritual and Temporal, and Commons, in this present

Parliament assembled, and by the authority of the same, as follows:—

Amendments of the 1977 Act relating to international obligations

1       

Methods of treatment or diagnosis

After section 4 of the Patents Act 1977 (c. 37) (“the 1977 Act”) there is inserted—

“4A     

Methods of treatment or diagnosis

(1)   

A patent shall not be granted for the invention of—

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(a)   

a method of treatment of the human or animal body by surgery

or therapy, or

(b)   

a method of diagnosis practised on the human or animal body.

(2)   

Subsection (1) above does not apply to an invention consisting of a

substance or composition for use in any such method.

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(3)   

In the case of an invention consisting of a substance or composition for

use in any such method, the fact that the substance or composition

forms part of the state of the art shall not prevent the invention from

being taken to be new if the use of the substance or composition in any

such method does not form part of the state of the art.

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(4)   

In the case of an invention consisting of a substance or composition for

a specific use in any such method, the fact that the substance or

composition forms part of the state of the art shall not prevent the

invention from being taken to be new if that specific use does not form

part of the state of the art.”

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2       

Amendment of patents after grant

(1)   

In section 27 of the 1977 Act (general power to amend after grant), after

 
Bill 9053/3
 
 

Patents Bill [HL]

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subsection (5) there is inserted—

“(6)   

In considering whether or not to allow an application under this

section, the comptroller shall have regard to any relevant principles

applicable under the European Patent Convention.”

(2)   

In section 58 of that Act (references of disputes as to Crown use)—

5

(a)   

in subsection (6), after “satisfied that” there is inserted “(a)” and at the

end there is inserted “and

(b)   

the relief is sought in good faith”;

(b)   

in subsection (8), after “proves that” there is inserted “(a)” and after

“knowledge, and” there is inserted—

10

“(b)   

the relief is sought in good faith,

   

and”.

(3)   

In section 62 of that Act (restrictions on recovery of damages for infringement),

in subsection (3), after “satisfied that” there is inserted “(a)” and at the end there

is inserted “and

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(b)   

the proceedings are brought in good faith.”

(4)   

In section 63 of that Act (relief for infringement of partially valid patent), in

subsection (2), after “proves that” there is inserted “(a)” and after “knowledge,

and” there is inserted—

“(b)   

the proceedings are brought in good faith,

20

   

and”.

(5)   

In section 75 of that Act (amendment in infringement or revocation

proceedings), after subsection (4) there is inserted—

“(5)   

In considering whether or not to allow an amendment proposed under

this section, the court or the comptroller shall have regard to any

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relevant principles applicable under the European Patent Convention.”

3       

Relief for partially valid patent

(1)   

In section 63 of the 1977 Act (relief for infringement of partially valid patent),

after subsection (3) there is inserted—

“(4)   

The court or the comptroller may also grant relief under this section in

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the case of a European patent (UK) on condition that the claims of the

patent are limited to its or his satisfaction by the European Patent Office

at the request of the proprietor.”

(2)   

In section 58 of that Act (references of disputes as to Crown use), after

subsection (9) there is inserted—

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“(9A)   

The court may also grant such relief in the case of a European patent

(UK) on condition that the claims of the patent are limited to its

satisfaction by the European Patent Office at the request of the

proprietor.”

4       

Revocation

40

In section 72 of the 1977 Act (power to revoke patents on application), in

subsection (4), “under section 75 below” is omitted and after that subsection

 

 

Patents Bill [HL]

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there is inserted—

“(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

5

of the patent may be limited by amendment at the request of the

proprietor.”

5       

Further amendments relating to international obligations

Schedule 1 (further amendments of the 1977 Act relating to international

obligations) has effect.

10

Other amendments of the 1977 Act

6       

Remedies in entitlement proceedings

(1)   

In section 8 of the 1977 Act (reference before grant of patent of questions about

entitlement etc), in paragraph (c) of subsection (3) (powers of comptroller), for

“but after the publication of the application” there is substituted “(whether the

15

application is refused or withdrawn before or after its publication)”.

(2)   

In section 11 of that Act (effect of transfer of application under section 8 or 10)

after subsection (3) (protection of original applicant or his licensee) there is

inserted—

“(3A)   

If, before registration of a reference under section 8 above resulting in

20

the making of an order under subsection (3) of that section, the

condition in subsection (3)(a) or (b) above is met, the original applicant

or any of the applicants or the licensee shall, on making a request

within the prescribed period to the new applicant, be entitled to be

granted a licence (but not an exclusive licence) to continue working or,

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as the case may be, to work the invention so far as it is the subject of the

new application.”

(3)   

In subsection (4) of that section, for “Any such licence” there is substituted “A

licence under subsection (3) or (3A) above”.

(4)   

In subsection (5) of that section—

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(a)   

after “(2)” there is inserted “or (3A)”;

(b)   

after “proceed” there is inserted “or, as the case may be, who makes the

new application”.

7       

Restrictions on applications abroad by United Kingdom residents

(1)   

In section 23 of the 1977 Act (restrictions on applications abroad by United

35

Kingdom residents), in subsection (1), after “an invention” there is inserted “if

subsection (1A) below applies to that application,”.

(2)   

After that subsection there is inserted—

“(1A)   

This subsection applies to an application if—

(a)   

the application contains information which relates to military

40

technology or for any other reason publication of the

information might be prejudicial to national security; or

 

 

Patents Bill [HL]

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(b)   

the application contains information the publication of which

might be prejudicial to the safety of the public.”

(3)   

After subsection (3) of that section there is inserted—

“(3A)   

A person is liable under subsection (3) above only if—

(a)   

he knows that filing the application, or causing it to be filed,

5

would contravene this section; or

(b)   

he is reckless as to whether filing the application, or causing it

to be filed, would contravene this section.”

8       

Term of patent and periods allowed for payment of renewal fees

(1)   

In section 25 of the 1977 Act (term of patent), for subsection (3) there is

10

substituted—

“(3)   

Where any renewal fee in respect of a patent is not paid by the end of

the period prescribed for payment (the “prescribed period”) the patent

shall cease to have effect at the end of such day, in the final month of

that period, as may be prescribed.”

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(2)   

In subsection (4) of that section, for “the period of six months immediately

following the end of the prescribed period” there is substituted “the period

ending with the sixth month after the month in which the prescribed period

ends”.

(3)   

In section 28 of that Act (restoration of lapsed patents), in subsection (3), for the

20

words from the second “within” to “that period” there is substituted “within

the period ending with the sixth month after the month in which the prescribed

period ended”.

(4)   

In section 46 of that Act (patentee’s application for entry in register that

licences are available as of right)—

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(a)   

for paragraph (d) of subsection (3) there is substituted—

“(d)   

if the expiry date in relation to a renewal fee falls after

the date of the entry, that fee shall be half the fee which

would be payable had the entry not been made.”;

(b)   

after subsection (3A) there is inserted—

30

“(3B)   

For the purposes of subsection (3)(d) above the expiry date in

relation to a renewal fee is the day at the end of which, by virtue

of section 25(3) above, the patent in question ceases to have

effect if that fee is not paid.”

9       

Co-ownership

35

In section 36 of the 1977 Act (co-ownership), in subsection (3), after “others”

there is inserted—

“(a)   

amend the specification of the patent or apply for such an

amendment to be allowed or for the patent to be revoked, or

(b)”.  

40

10      

Compensation of employees for certain inventions

(1)   

In section 40 of the 1977 Act (compensation of employees for certain

 

 

Patents Bill [HL]

5

 

inventions), for subsection (1) there is substituted—

“(1)   

Where it appears to the court or the comptroller on an application made

by an employee within the prescribed period that—

(a)   

the employee has made an invention belonging to the employer

for which a patent has been granted,

5

(b)   

having regard among other things to the size and nature of the

employer’s undertaking, the invention or the patent for it (or

the combination of both) is of outstanding benefit to the

employer, and

(c)   

by reason of those facts it is just that the employee should be

10

awarded compensation to be paid by the employer,

   

the court or the comptroller may award him such compensation of an

amount determined under section 41 below.”

(2)   

In subsection (2)(c) of that section, for “the patent” there is substituted “the

invention or the patent for it (or both)”.

15

(3)   

In section 41 of that Act (amount of compensation), for subsection (1) there is

substituted—

“(1)   

An award of compensation to an employee under section 40(1) or (2)

above shall be such as will secure for the employee a fair share (having

regard to all the circumstances) of the benefit which the employer has

20

derived, or may reasonably be expected to derive, from any of the

following—

(a)   

the invention in question;

(b)   

the patent for the invention;

(c)   

the assignment, assignation or grant of—

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(i)   

the property or any right in the invention, or

(ii)   

the property in, or any right in or under, an application

for the patent,

   

to a person connected with the employer.”

(4)   

In subsections (4) and (5) of that section, the words “a patent for” are omitted.

30

(5)   

In subsection (5)(a) of that section, after “the patent” there is inserted “for it”.

(6)   

In section 43 of that Act (provisions supplementing sections 39 to 42), in

subsection (5)—

(a)   

for “a patent” there is substituted “an invention or patent”;

(b)   

for “the patent”, in both places, there is substituted “it”.

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(7)   

After subsection (5) of that section there is inserted—

“(5A)   

For the purposes of sections 40 and 41 above the benefit derived or

expected to be derived by an employer from an invention shall not

include any benefit derived or expected to be derived from the

invention after the patent for it has expired or has been surrendered or

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revoked.”

(8)   

This section, and the entry in Schedule 3 corresponding to subsection (4), apply

in relation to an invention the patent for which is applied for on or after the

commencement of this section.

   

In this subsection “patent” has the meaning given by section 43(4) of the 1977

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Act.

 

 

 
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