Patents Bill [HL]

House of Commons

Session 2003 - 04
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Other Bills before Parliament

Patents Bill [HL]

Patents Bill [HL]
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A
Bill
[AS AMENDED IN STANDING COMMITTEE D]
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
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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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Patents Bill [HL]
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Amendment of patents after grant
(1)
In section 27 of the 1977 Act (general power to amend after grant), after
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
5
applicable under the European Patent Convention.”
(2)
In section 58 of that Act (references of disputes as to Crown use)—
(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”;
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(b)
in subsection (8), after “proves that” there is inserted “(a)” and after
“knowledge, and” there is inserted—
“(b)
the relief is sought in good faith,

and”.
(3)
In section 62 of that Act (restrictions on recovery of damages for infringement),
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in subsection (3), after “satisfied that” there is inserted “(a)” and at the end there
is inserted “and
(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,
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and” there is inserted—
“(b)
the proceedings are brought in good faith,

and”.
(5)
In section 75 of that Act (amendment in infringement or revocation
proceedings), after subsection (4) there is inserted—
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“(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.”
3
Relief for partially valid patent
(1)
In section 63 of the 1977 Act (relief for infringement of partially valid patent),
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after subsection (3) there is inserted—
“(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.”
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(2)
In section 58 of that Act (references of disputes as to Crown use), after
subsection (9) there is inserted—
“(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
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proprietor.”
4
Revocation
In section 72 of the 1977 Act (power to revoke patents on application), in

Patents Bill [HL]
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subsection (4), “under section 75 below” is omitted and after that subsection
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
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provision of the European Patent Convention under which the claims
of the patent may be limited by amendment at the request of the
proprietor.”
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Further amendments relating to international obligations
Schedule 1 (further amendments of the 1977 Act relating to international
10
obligations) has effect.
Other amendments of the 1977 Act
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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
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“but after the publication of the application” there is substituted “(whether the
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—
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“(3A)
If, before registration of a reference under section 8 above resulting in
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
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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.”
(3)
In subsection (4) of that section, for “Any such licence” there is substituted “A
licence under subsection (3) or (3A) above”.
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(4)
In subsection (5) of that section—
(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”.
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Restrictions on applications abroad by United Kingdom residents
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(1)
In section 23 of the 1977 Act (restrictions on applications abroad by United
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—
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Patents Bill [HL]
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(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.”
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(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,
would contravene this section; or
(b)
he is reckless as to whether filing the application, or causing it
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to be filed, would contravene this section.”
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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
substituted—
“(3)
Where any renewal fee in respect of a patent is not paid by the end of
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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.”
(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
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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
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
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period ended”.
(4)
In section 46 of that Act (patentee’s application for entry in register that
licences are available as of right)—
(a)
for paragraph (d) of subsection (3) there is substituted—
“(d)
if the expiry date in relation to a renewal fee falls after
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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—
“(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
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of section 25(3) above, the patent in question ceases to have
effect if that fee is not paid.”
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Co-ownership
In section 36 of the 1977 Act (co-ownership), in subsection (3), after “others”
there is inserted—
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“(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)”.