|
| |
|
11 | 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— |
| 5 |
(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 |
| 10 |
warrant for execution issued by the sheriff court of any |
| |
| |
(c) | in Northern Ireland, payment of the sum may be enforced as if |
| |
it were a money judgment.” |
| |
12 | Threats of infringement proceedings |
| 15 |
(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 |
| 20 |
the threats were so made and satisfies the court that he is a person |
| |
| |
(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— |
| 25 |
(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 |
| |
| |
(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 |
| 30 |
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— |
| 35 |
(a) | a threat to bring proceedings for an infringement alleged to |
| |
consist of making or importing a product for disposal or of |
| |
| |
(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 |
| 40 |
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— |
| 45 |
(a) | provides factual information about the patent, |
| |
|
| |
|
| |
|
(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 |
| |
| 5 |
(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— |
| 10 |
(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 |
| 15 |
| |
(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 |
| |
| 20 |
| and that he notified B accordingly, before or at the time of making the |
| |
threats, identifying the endeavours used.” |
| |
13 | Opinions by Patent Office as to validity or infringement |
| |
(1) | After section 74 of the 1977 Act there is inserted— |
| |
“Opinions by Patent Office |
| 25 |
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; |
| 30 |
(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 |
| |
| |
(2) | Subsection (1) above applies even if the patent has expired or has been |
| |
| 35 |
(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 |
| |
| 40 |
(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) | 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 |
| 5 |
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; |
| 10 |
(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 |
| 15 |
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 |
| 20 |
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 |
| 25 |
| |
“(ba) | the entering on the register of notices concerning opinions |
| |
issued, or to be issued, under section 74A below;”. |
| |
| |
In section 107 of the 1977 Act (costs and expenses), for subsection (4) there is |
| 30 |
| |
“(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 |
| 35 |
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.” |
| |
| |
15 | Amendments, repeals and revocations |
| 40 |
(1) | Schedule 2 (minor and consequential amendments) has effect. |
| |
(2) | The enactments set out in Schedule 3 are repealed to the extent specified. |
| |
|
| |
|
| |
|
(3) | Article 6 of the Patent Office Trading Fund Order 1991 (S.I. 1991/1796) is |
| |
| |
| |
(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 |
| 5 |
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— |
| 10 |
(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) |
| 15 |
is subject to annulment in pursuance of a resolution of either House of |
| |
Parliament, unless the only such provision it contains is transitory, transitional |
| |
| |
(6) | The provision that may be made under subsection (4) includes provision |
| |
amending or repealing any enactment or instrument. |
| 20 |
(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. |
| |
17 | Short title and extent |
| 25 |
(1) | This Act may be cited as the Patents Act 2004. |
| |
(2) | This Act has the same extent as the 1977 Act. |
| |
|
| |
|