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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Compensation of employees for certain inventions
(1)
In section 40 of the 1977 Act (compensation of employees for certain
inventions), for subsection (1) there is substituted—
“(1)
Where it appears to the court or the comptroller on an application made
by an employee within the prescribed period that—
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(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
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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.”
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(2)
In subsection (2)(c) of that section, for “the patent” there is substituted “the
invention or the patent for it (or both)”.
(3)
In section 41 of that Act (amount of compensation), for subsection (1) there is
substituted—
“(1)
An award of compensation to an employee under section 40(1) or (2)
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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;
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(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,
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to a person connected with the employer.”
(4)
In subsections (4) and (5) of that section, the words “a patent for” are omitted.
(5)
In subsection (5)(a) of that section, after “the patent” there is inserted “for it”.
(6)
In section 43 of that Act (provisions supplementing sections 39 to 42), in
subsection (5)—
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(a)
for “a patent” there is substituted “an invention or patent”;
(b)
for “the patent”, in both places, there is substituted “it”.
(7)
After subsection (5) of that section there is inserted—
“(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
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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.”
(8)
This section, and the entry in Schedule 3 corresponding to subsection (4), apply
in relation to an invention the patent for which is applied for on or after the
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commencement of this section.

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In this subsection “patent” has the meaning given by section 43(4) of the 1977
Act.
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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—
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“(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;
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(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
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it were a money judgment.”
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Threats of infringement proceedings
(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—
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“(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
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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;
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(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.”
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(3)
For subsection (4) there is substituted—
“(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
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(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.”

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(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—
(a)
provides factual information about the patent,
(b)
makes enquiries of the other person for the sole purpose of
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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.”
(5)
After subsection (5) there is inserted—
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“(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
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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;
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(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
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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
74A
Opinions as to validity or infringement
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(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
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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
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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.
(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.
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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—
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(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;
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(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
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on a review only in prescribed cases.”
(2)
In section 74 of that Act (proceedings in which validity of patent may be put in
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
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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
(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
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—
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(a)
the prescribed conditions are met, and
(b)
he is satisfied that it is just to make the order, having regard to
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.”
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