House of Commons - Explanatory Note
Patents Bill [HL] - continued          House of Commons

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     Section 62 - Restriction on recovery of damages for infringement

     (2) In proceedings for infringement of a patent the court or the comptroller may, if it or he thinks fit, refuse to award any damages or make any such order in respect of an infringement committed during any further period specified under the further period specified in section 25(4) above, but before the payment of the renewal fee and any additional fee prescribed for the purposes of that subsection.

     (3) Where an amendment of the specification of a patent has been allowed under any of the provisions of this Act, no damages shall be awarded in proceedings for an infringement of the patent committed before the decision to allow the amendment unless the court or the comptroller 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 proceedings are brought in good faith.

     Section 63 - Relief for infringement of partially valid patent

     (2) Where in any such proceedings it is found that a patent is only partially valid, the court or the comptroller shall not grant relief by way of damages, costs or expenses, except where the plaintiff claimant or pursuer proves that -

         (a) the specification for the patent was framed in good faith and with reasonable skill and knowledge, and

         (b) the proceedings are brought in good faith,

     and in that event the court or the comptroller may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the court or the comptroller as to costs or expenses and as to the date from which damages should be reckoned.

     (3) As a condition of relief under this section the court or comptroller may direct that the specification of the patent shall be amended to its or his 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.

     (4) The court or the comptroller may also grant relief under this section in 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.

     Section 70 - Remedy for groundless threats of infringement proceedings

(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below.

     (2) In any such proceedings the plaintiff or pursuer shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless -

         (a) 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; and

    (b) the patent alleged to be infringed is not shown by the plaintiff or pursuer to be invalid in a relevant respect.

(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 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 -

    (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 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) The said relief is -

         (a) a declaration or declarator to the effect that the threats are unjustifiable;

         (b) an injunction or interdict against the continuance of the threats; and

    (c) damages in respect of any loss which the plaintiff claimant or pursuer has sustained by the threats.

     (4) Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.

     (4) Proceedings may not be brought under this section for -

         (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 infringement alleged to consist of doing anything else in relation to that product or process.

     (5) It is hereby declared that a mere notification of the existence of a patent does not constitute a threat of proceedings within the meaning of this section.

     (5) For the purposes of this section a person does not threaten another person with proceedings for infringement of a patent if he merely -

         (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 enquiries so made.

     (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 -

         (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 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;

     and that he notified B accordingly, before or at the time of making the threats, identifying the endeavours used.

     Section 72 - Power to revoke patents on application

     (1) Subject to the following provisions of this Act, the court or the comptroller may on the application of any person 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 -

           [ sub-paragraphs are unchanged ]

     [ Subsections (2) and (3) are unchanged ]

     (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 under section 75 below 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.

     Section 74 - Proceedings in which validity of patent may be put in issue

     (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.

Opinions by Patent Office

     Section 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;

         (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.

     (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) 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.

     Section 74B - Reviews of opinions under section 74A

     (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) make provision under which, in prescribed circumstances, proceedings on a review are to be treated for prescribed 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.

     Section 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 is 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.

     [ Subsections (2) to (4) are unchanged ]

     (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.

     Section 77 - Effect of European patent (UK)

     (5) Where -

         (a) under the European Patent Convention 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; 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.

     Section 78 - Effect of filing an application for a European patent (UK)

     (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 those subsections ceasing to apply to any such application and the re-establishment of the rights of the applicant a person begins in good faith to do an act which would, apart from section 55 above, constitute an infringement of the application if those subsections then applied, 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.

     (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.

     Section 80 - Authentic text of European patents and patent applications

     (4) Where a correction of a translation is published under subsection (3) above and before it is so published a person begins in good faith to do an act which would not constitute an infringement of the patent or application as originally translated but would (apart from section 55 above) constitute an infringement of it under the amended translation, 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.

     (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.

     Section 81 - Conversion of European patent applications

     ( as proposed to be amended by the proposed draft RRO )

     (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 in the following cases -

         (a) where the application is deemed to be withdrawn under the provisions of the European Patent Convention relating to the restriction of the processing of applications;

         (b) where under the convention the application is deemed to be withdrawn because it has not, within the period required by the convention, been received by the European Patent Office

     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 that -

         (a) in the case of an application falling within subsection (1)(a) above, the European Patent Office transmits a request of the applicant to the Patent Office that his application should be converted into an application under this Act, together with a copy of the files relating to the application;

         (b) in the case of an application falling within subsection (1)(b) above 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) in either case 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.

     Section 86 - Implementation of Community Patent Convention

     (1) All rights, powers, liabilities, obligations and restrictions from time to time created or arising by or under the Community Patent Convention and all remedies and procedures from time to time provided for by or under that convention shall by virtue of this section have legal effect in the United Kingdom and shall be used there, be recognised and available in law and be enforced, allowed and followed accordingly.

     (2) The Secretary of State may by regulations make provision -

         (a) for implementing any obligation imposed by that convention on a domestic institution or enabling any such obligation to be implemented or enabling any rights or powers conferred on any such institution to be exercised; and

         (b) otherwise for giving effect to subsection (1) above and dealing with matters arising out of its commencement or operation.

     (3) Regulations under this section may include any incidental, consequential, transitional or supplementary provision appearing to the Secretary of State to be necessary or expedient, including provision amending any enactment, whenever passed, other than an enactment contained in this Part of this Act, and provision for the application of any provision of the regulations outside the United Kingdom.

     (4) Sections 12, 73(2), 77 to 80, 82 and 83 above shall not apply to any application for a European patent which under the Community Patent Convention is treated as an application for a Community patent, or to a Community patent (since any such application or patent falls within the foregoing provisions of this section).

     (5) In this section "domestic institution" means the court, the comptroller or the Patent Office, as the case may require.

     Section 87 - Decisions on Community Patent Convention

     (1) For the purposes of all legal proceedings, including proceedings before the comptroller, any question as to the meaning or effect of the Community Patent Convention, or as to the validity, meaning and effect of any instrument made under or in implementation of that convention by any relevant convention institution shall be treated as a question of law (and if not referred to the relevant convention court, be for determination as such in accordance with the principles laid down by and any relevant decision of that court).

     (2) In this section -

         "relevant convention institution" means any institution established by or having functions under the Community Patent Convention, not being an institution of the United Kingdom or any other member state, and

              "relevant convention court" does not include -

         (a) the European Patent Office or any of its departments; or

         (b) a court of the United Kingdom or any other member state.

     Section 89 - Effects of international application for patent

     (4) For the purposes of the above provisions an application shall not be treated as an international application for a patent (UK) by reason only of its containing an indication that the applicant wishes to obtain a European patent (UK), but an application shall be so treated if it also separately designates the United Kingdom.

     Section 89B - Adaptation of provisions in relation to international applications

     (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 conditions mentioned in section 89A(3)(a) are complied with national phase of the application begins or, if later, when published in accordance with the Treaty.

 
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Prepared: 20 April 2004