Patents Bill [HL]

House of Commons

Session 2003 - 04
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Other Bills before Parliament

Patents Bill [HL]

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Enforcement of damages
In section 61 of the 1977 Act (proceedings for infringement of a patent), after
subsection (6) there is inserted—
“(7)
If the comptroller awards any sum by way of damages on a reference
under subsection (3) above, then—
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(a)
in England and Wales, the sum shall be recoverable, if a county
court so orders, by execution issued from the county court or
otherwise as if it were payable under an order of that court;
(b)
in Scotland, payment of the sum may be enforced in like
manner as an extract registered decree arbitral bearing a
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warrant for execution issued by the sheriff court of any
sheriffdom in Scotland;
(c)
in Northern Ireland, payment of the sum may be enforced as if
it were a money judgment.”
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Threats of infringement proceedings
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(1)
Section 70 of the 1977 Act (remedy for groundless threats of infringement
proceedings) is amended as follows.
(2)
For subsection (2) there is substituted—
“(2)
In any such proceedings the claimant or pursuer shall, subject to
subsection (2A) below, be entitled to the relief claimed if he proves that
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the threats were so made and satisfies the court that he is a person
aggrieved by them.
(2A)
If the defendant or defender proves that the acts in respect of which
proceedings were threatened constitute or, if done, would constitute an
infringement of a patent—
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(a)
the claimant or pursuer shall be entitled to the relief claimed
only if he shows that the patent alleged to be infringed is invalid
in a relevant respect;
(b)
even if the claimant or pursuer does show that the patent is
invalid in a relevant respect, he shall not be entitled to the relief
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claimed if the defendant or defender proves that at the time of
making the threats he did not know, and had no reason to
suspect, that the patent was invalid in that respect.”
(3)
For subsection (4) there is substituted—
“(4)
Proceedings may not be brought under this section for—
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(a)
a threat to bring proceedings for an infringement alleged to
consist of making or importing a product for disposal or of
using a process, or
(b)
a threat, made to a person who has made or imported a product
for disposal or used a process, to bring proceedings for an
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infringement alleged to consist of doing anything else in
relation to that product or process.”
(4)
For subsection (5) there is substituted—
“(5)
For the purposes of this section a person does not threaten another
person with proceedings for infringement of a patent if he merely—
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(a)
provides factual information about the patent,

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(b)
makes enquiries of the other person for the sole purpose of
discovering whether, or by whom, the patent has been
infringed as mentioned in subsection (4)(a) above, or
(c)
makes an assertion about the patent for the purpose of any
enquiries so made.”
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(5)
After subsection (5) there is inserted—
“(6)
In proceedings under this section for threats made by one person (A) to
another (B) in respect of an alleged infringement of a patent for an
invention, it shall be a defence for A to prove that he used his best
endeavours, without success, to discover—
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(a)
where the invention is a product, the identity of the person (if
any) who made or (in the case of an imported product)
imported it for disposal;
(b)
where the invention is a process and the alleged infringement
consists of offering it for use, the identity of a person who used
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the process;
(c)
where the invention is a process and the alleged infringement is
an act falling within section 60(1)(c) above, the identity of the
person who used the process to produce the product in
question;
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and that he notified B accordingly, before or at the time of making the
threats, identifying the endeavours used.”
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Opinions by Patent Office as to validity or infringement
(1)
After section 74 of the 1977 Act there is inserted—
“Opinions by Patent Office
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74A
Opinions as to validity or infringement
(1)
The proprietor of a patent or any other person may request the
comptroller to issue an opinion—
(a)
as to whether a particular act constitutes, or (if done) would
constitute, an infringement of the patent;
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(b)
as to whether, or to what extent, the invention in question is not
patentable because the condition in section 1(1)(a) or (b) above
is not satisfied.
(2)
Subsection (1) above applies even if the patent has expired or has been
surrendered.
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(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.
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(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.

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(6)
For the purposes of section 101 below, only the person making a
request under subsection (1) above shall be regarded as a party to a
proceeding before the comptroller in relation to that request.
74B
Reviews of opinions under section 74A
(1)
Rules may make provision for a review before the comptroller, on an
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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;
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(b)
provide that, in prescribed circumstances, proceedings for a
review may not be brought or continued where other
proceedings have been brought;
(c)
make provision under which, in prescribed circumstances,
proceedings on a review are to be treated for prescribed
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purposes as if they were proceedings under section 61(1)(c) or
(e), 71(1) or 72(1)(a) above;
(d)
provide for there to be a right of appeal against a decision made
on a review only in prescribed cases.”
(2)
In section 74 of that Act (proceedings in which validity of patent may be put in
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issue), in subsection (8), after “the validity of a patent is not put in issue merely
because” there is inserted “(a)” and at the end there is inserted “or
(b)
its validity is being considered in connection with an opinion
under section 74A below or a review of such an opinion.”
(3)
In section 32(2) of that Act (rules about the register of patents), after paragraph
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(b) there is inserted—
“(ba)
the entering on the register of notices concerning opinions
issued, or to be issued, under section 74A below;”.
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Security for costs
In section 107 of the 1977 Act (costs and expenses), for subsection (4) there is
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substituted—
“(4)
The comptroller may make an order for security for costs or expenses
against any party to proceedings before him under this Act if—
(a)
the prescribed conditions are met, and
(b)
he is satisfied that it is just to make the order, having regard to
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all the circumstances of the case;

and in default of the required security being given the comptroller may
treat the reference, application or notice in question as abandoned.”
Supplemental
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Amendments, repeals and revocations
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(1)
Schedule 2 (minor and consequential amendments) has effect.
(2)
The enactments set out in Schedule 3 are repealed to the extent specified.

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(3)
Article 6 of the Patent Office Trading Fund Order 1991 (S.I. 1991/1796) is
revoked.
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Commencement etc
(1)
The preceding provisions of this Act (except those mentioned in subsection (2))
come into force on such day as the Secretary of State may by order made by
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statutory instrument appoint.
(2)
Paragraphs 6 and 22 of Schedule 2 come into force with the commencement of
the Regulatory Reform (Patents) Order 2004.
(3)
An order under this section may appoint different days for different purposes.
(4)
An order under this section may make—
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(a)
any supplementary, incidental or consequential provision, or
(b)
any transitory, transitional or saving provision,

that the Secretary of State considers necessary or expedient for the purposes of,
in consequence of or for giving full effect to any provision of this Act.
(5)
A statutory instrument containing provision made by virtue of subsection (4)
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is subject to annulment in pursuance of a resolution of either House of
Parliament, unless the only such provision it contains is transitory, transitional
or saving provision.
(6)
The provision that may be made under subsection (4) includes provision
amending or repealing any enactment or instrument.
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(7)
A statutory instrument containing an order under this section that adds to,
replaces or omits any part of the text of an Act is not to be made unless a draft
of the instrument has been laid before, and approved by a resolution of, each
House of Parliament; and subsection (5) does not apply to such an instrument.
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Short title and extent
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(1)
This Act may be cited as the Patents Act 2004.
(2)
This Act has the same extent as the 1977 Act.