Section 20B - Effect of reinstatement of applications
(proposed to be inserted by the proposed draft RRO)
(6A) The above provisions apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to infringement of the rights conferred by publication of the application for a patent (or, as the case may be, infringement of the patent).
"Patented invention" has the same meaning as in section 55 below.
Section 22 - Information prejudicial to defence of realm national security or safety of public
(1) Where an application for a patent is filed in the Patent Office (whether under this Act or any treaty or international convention to which the United Kingdom is a party and whether before or after the appointed day) and it appears to the comptroller that the application contains information of a description notified to him by the Secretary of State as being information the publication of which might be prejudicial to the defence of the realm national security, the comptroller may give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons.
[ Subsections (2) to (4) are unchanged ]
(5) Where the comptroller gives directions under this section with respect to any application, he shall give notice of the application and of the directions to the Secretary of State, and the following provisions shall then have effect -
(a) the Secretary of State shall, on receipt of the notice, consider whether the publication of the application or the publication or communication of the information in question would be prejudicial to the defence of the realm national security or the safety of the public;
(b) if the Secretary of State determines under paragraph (a) above that the publication of the application or the publication or communication of that information would be prejudicial to the safety of the public, he shall notify the comptroller who shall continue his directions under subsection (2) above until they are revoked under paragraph (e) below;
(c) if the Secretary of State determines under paragraph (a) above that the publication of the application or the publication or communication of that information would be prejudicial to the defence of the realm national security or the safety of the public, he shall (unless a notice under paragraph (d) below has previously been given by the Secretary of State to the comptroller) reconsider that question during the period of nine months from the date of filing the application and at least once in every subsequent period of twelve months;
(d) if on consideration of an application at any time it appears to the Secretary of State that the publication of the application or the publication or communication of the information contained in it would not, or would no longer, be prejudicial to the defence of the realm national security or the safety of the public, he shall give notice to the comptroller to that effect; and
(e) on receipt of such a notice the comptroller shall revoke the directions and may, subject to such conditions (if any) as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application, whether or not that time has previously expired.
(6) The Secretary of State may do the following for the purpose of enabling him to decide the question referred to in subsection (5)(c) above -
(a) where the application contains information relating to the production or use of atomic energy or research into matters connected with such production or use, he may at any time do one or both of the following, that is to say, inspect and authorise the United Kingdom Atomic Energy Authority to inspect the application and any documents sent to the comptroller in connection with it
(i) inspect the application and any documents sent to the comptroller in connection with it;
(ii) authorise a government body with responsibility for the production of atomic energy or for research into matters connected with its production or use, or a person appointed by such a government body, to inspect the application and any documents sent to the comptroller in connection with it;
(b) in any other case, he may at any time after (or, with the applicant's consent, before) the end of the period prescribed for the purposes of section 16 above inspect the application and any such documents;
and where that Authority are authorised under paragraph (a) above they shall as soon as practicable report on their inspection to the Secretary of State a government body or a person appointed by a government body carries out an inspection which the body or person is authorised to carry out under paragraph (a) above, the body or (as the case may be) the person shall report on the inspection to the Secretary of State as soon as practicable.
[ Subsequent subsections are unchanged ]
Section 23 - Restrictions on applications abroad by United Kingdom residents
(1) Subject to the following provisions of this section, no person resident in the United Kingdom shall, without written authority granted by the comptroller, file or cause to be filed outside the United Kingdom an application for a patent for an invention if subsection (1A) below applies to that application, unless -
(a) an application for a patent for the same invention has been filed in the Patent Office (whether before, on or after the appointed day) not less than six weeks before the application outside the United Kingdom; and
(b) either no directions have been given under section 22 above in relation to the application in the United Kingdom or all such directions have been revoked.
(1A) This subsection applies to an application if -
(a) the application contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or
(b) the application contains information the publication of which might be prejudicial to the safety of the public.
(2) Subsection (1) above does not apply to an application for a patent for an invention for which an application for a patent has first been filed (whether before or after the appointed day) in a country outside the United Kingdom by a person resident outside the United Kingdom.
(3) A person who files or causes to be filed an application for the grant of a patent in contravention of this section shall be liable -
(a) on summary conviction, to a fine not exceeding the prescribed sum; or
(b) on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both.
(3A) A person is liable under subsection (3) above only if -
(a) he knows that filing the application, or causing it to be filed, would contravene this section; or
(b) he is reckless as to whether filing this application, or causing it to be filed, would contravene this section.
(4) In this section -
(a) any reference to an application for a patent includes a reference to an application for other protection for an invention;
(b) any reference to either kind of application is a reference to an application under this Act, under the law of any country other than the United Kingdom or under any treaty or international convention to which the United Kingdom is a party.
Section 24 - Publication and certificate of grant
(1) As soon as practicable after a patent has been granted under this Act the comptroller shall publish in the journal a notice that it has been granted.
(2) The comptroller shall, as soon as practicable after he publishes a notice under subsection (1) above, send the proprietor of the patent a certificate in the prescribed form that the patent has been granted to the proprietor.
(3) The comptroller shall, at the same time as he publishes a notice under subsection (1) above in relation to a patent publish the specification of the patent, the names of the proprietor and (if different) the inventor and any other matters constituting or relating to the patent which in the comptroller's opinion it is desirable to publish.
(4) Subsection (3) above shall not require the comptroller to identify as inventor a person who has waived his right to be mentioned as inventor in any patent granted for the invention.
Section 25 - Term of patent
(3) A patent shall cease to have effect at the end of the period prescribed for the payment of any renewal fee if it is not paid within that period.
(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.
(4) If during the period of six months immediately following the end of the prescribed period the period ending with the sixth month after the month in which the prescribed period ends the renewal fee and any prescribed additional fee are paid, the patent shall be treated for the purposes of this Act as if it had never expired, and accordingly -
(a) anything done under or in relation to it during that further period shall be valid;
(b) an act which would constitute an infringement of it if it had not expired shall constitute such an infringement; and
(c) an act which would constitute the use of the patented invention for the services of the Crown if the patent had not expired shall constitute that use.
Section 27 - General power to amend specification after grant
(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.
Section 28 - Restoration of lapsed patents
( as proposed to be amended by the proposed draft RRO )
(3) If the comptroller is satisfied that the failure of the proprietor of the patent -
(a) to pay the renewal fee within the prescribed period; or
(b) to pay that fee and any prescribed additional fee within the period of six months immediately following the end of that period within the period ending with the sixth month after the month in which the prescribed period ended,
was unintentional, the comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.
Section 32 - Register of patents etc
(2) Without prejudice to any other provision of this Act or rules, rules may make provision with respect to the following matters, including provision imposing requirements as to any of those matters -
(a) the registration of patents and of published applications for patents;
(b) the registration of transactions, instruments or events affecting rights in or under patents and applications;
(ba) the entering on the register of notices concerning opinions issued, or to be issued, under section 74A below;
[ subsequent sub-paragraphs are unchanged ]
Section 36 - Co-ownership
(3) Subject to the provisions of sections 8 and 12 above and section 37 below and to any agreement for the time being in force, where two or more persons are proprietors of a patent one of them shall not without the consent of the other or others -
(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) grant a licence under the patent or assign or mortgage a share in the patent or in Scotland cause or permit security to be granted over it.
Section 38 - Effect of transfer of patent under section 37
(3) Where an order is so made that a patent shall be transferred as mentioned in subsection (2) above or that a person other than an old proprietor may make a new application for a patent and before the reference of the question under that section resulting in the making of any such order is registered, the old proprietor or proprietors or a licensee of the patent, acting in good faith, worked the invention in question in the United Kingdom or made effective and serious preparations to do so, the old proprietor or proprietors or the licensee shall, on making a request to the new proprietor or proprietors or, as the case may be, the new applicant within the prescribed period, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention, so far as it is the subject of the new application.
(5) The new proprietor or proprietors of the patent or, as the case may be, the new applicant or any person claiming that he is entitled to be granted any such licence may refer to the comptroller the question whether that person is so entitled and whether any such period is or terms are reasonable, and the comptroller shall determine the question and may, if he considers it appropriate, order the grant of such a licence.
Section 40 - Compensation of employees for certain inventions
(1) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that the employee has made an invention belonging to the employer for which a patent has been granted, that the patent is (having regard among other things to the size and nature of the employer's undertaking) of outstanding benefit to the employer and that by reason of those facts it is just that the employee should be 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.
(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,
(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 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) Where it appears to the court or the comptroller on an application made by an employee within the prescribed period that -
(a) a patent has been granted for an invention made by and belonging to the employee;
(b) his rights in the invention, or in any patent or application for a patent for the invention, have since the appointed day been assigned to the employer or an exclusive licence under the patent or application has since the appointed day been granted to the employer;
(c) the benefit derived by the employee from the contract of assignment, assignation or grant or any ancillary contract ("the relevant contract") is inadequate in relation to the benefit derived by the employer from the patent the invention or the patent for it (or both); and
(d) by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer in addition to the benefit derived from the relevant contract;
the court or the comptroller may award him such compensation of an amount determined under section 41 below.
Section 41 - Amount of compensation
(1) An award of compensation to an employee under section 40(1) and (2) above in relation to a patent for an invention 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 derived, or may reasonably be expected to derive, from the patent or from the assignment, assignation or grant to a person connected with the employer of the property or any right in the invention or the property in, or any right in or under, an application for that patent.
(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 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 -
(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.
[ Subsections (2) and (3) are unchanged ]
(4) In determining the fair share of the benefit to be secured for an employee in respect of a patent for an invention which has always belonged to an employer, the court or the comptroller shall, among other things, take the following matters into account, that is to say -
[ sub-paragraphs are unchanged ]
(5) In determining the fair share of the benefit to be secured for an employee in respect of a patent for an invention which originally belonged to him, the court or the comptroller shall, amount other things, take the following matters into account, that is to say -
(a) any conditions in a licence or licences granted under this Act or otherwise in respect of the invention or the patent for it;
[ subsequent sub-paragraphs are unchanged ]
[ Subsections (6) to (9) are unchanged ]
(10) In Scotland an order made under section 40 above by the comptroller for the payment of any sums may be enforced in like manner as a recorded decree arbitral an extract registered decree arbitral bearing a warrant for execution issued by the sheriff court of any sheriffdom in Scotland.
[ Subsequent subsections are unchanged ]
Section 43 - Supplementary
(5) For the purposes of sections 40 and 41 above the benefit derived or expected to be derived by an employer from a patent an invention or patent shall, where he dies before any award is made under section 40 above in respect of the patent it, include any benefit derived or expected to be derived from the patent it by his personal representatives or by any person in whom it was vested by their assent.
(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 revoked.
Section 46 - Patentee's application for entry in register that licences are available as of right
(3) Where such an entry is made in respect of a patent -
[ sub-paragraphs (a) to (c) are unchanged ]
(d) the renewal fee payable in respect of the patent after the date of the entry shall be half the fee which would be payable if the entry had not been made.
(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.
(3A) An undertaking under subsection (3)(c) above may be given at any time before final order in the proceedings, without any admission of liability.
(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.
Section 53 - Compulsory licences; supplementary provisions
(1) Without prejudice to section 86 below (by virtue of which the Community Patent Convention has effect in the United Kingdom), sections 48 to 51 above shall have effect subject to any provision of that convention relating to the grant of compulsory licences for lack or insufficiency of exploitation as that provision applies by virtue of that section.
Section 58 - References of disputes as to Crown use
(6) Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, the court shall not grant relief by way of compensation under this section in respect of any such use before the decision to allow the amendment unless the court is satisfied that -
(a) the specification of the patent as published was framed in good faith and with reasonable skill and knowledge, and
(b) the relief is sought in good faith.
(8) Where in any such proceedings it is found that a patent is only partially valid the Court shall not grant relief by way of compensation, costs or expenses except where the proprietor of the patent proves that -
(a) the specification of the patent was framed in good faith and with reasonable skill and knowledge, and
(b) the relief is sought in good faith,
and in that event the court may grant relief in respect of the part of the patent which is valid and has been so used, subject to the discretion of the court as to costs and expenses and as to the date from which compensation should be awarded.
(9) As a condition of any such relief the court may direct that the specification of the patent shall be amended to its satisfaction upon an application made for that purpose under section 75 below, and an application may be so made accordingly, whether or not all other issues in the proceedings have been determined.
(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.
Section 60 - Meaning of infringement
(4) Without prejudice to section 86 below, subsections (1) and (2) above shall not apply to any act which, under any provision of the Community Patent Convention relating to the exhaustion of the rights of the proprietor of a patent, as that provision applies by virtue of that section, cannot be prevented by the proprietor of the patent.
Section 61 - Proceedings for infringement of patent
(4) Except so far as the context requires, in the following provisions of this Act -
(a) any reference to proceedings for infringement and the bringing of such proceedings includes a reference to a reference under subsection (3) above and the making of such a reference;
(b) any reference to a plaintiff claimant or pursuer includes a reference to the proprietor of the patent; and
(c) any reference to a defendant or defender includes a reference to any other party to the reference.
[ Subsections (5) and (6) are unchanged ]
(7) If the comptroller awards any sum by way of damages on a reference under subsection (3) above, then -
(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 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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