|
| |
|
| |
15 | Amendments, repeals and revocations |
| |
(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(2) | The enactments set out in Schedule 3 are repealed to the extent specified.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 |
| 5 |
| |
| |
(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 |
| |
statutory instrument appoint. |
| 10 |
(2) | Paragraphs 7 and 23 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— |
| |
(a) | any supplementary, incidental or consequential provision, or |
| 15 |
(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) |
| |
is subject to annulment in pursuance of a resolution of either House of |
| 20 |
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. |
| |
(7) | A statutory instrument containing an order under this section that adds to, |
| 25 |
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 |
| |
(1) | This Act may be cited as the Patents Act 2004. |
| 30 |
(2) | This Act has the same extent as the 1977 Act. |
| |
|
| |
|
| |
|
| |
| |
| |
Amendments relating to international obligations |
| |
1 | The 1977 Act is amended as follows. |
| |
2 | In section 77 (effect of European patent (UK)), in subsection (5)(a), after |
| 5 |
“restored” there is inserted “or is revoked by the Board of Appeal and is |
| |
subsequently restored by the Enlarged Board of Appeal”. |
| |
3 (1) | Section 78 (effect of filing an application for a European patent (UK)) is |
| |
| |
(2) | In subsection (5A), at the end there is inserted “; and the occurrence of any |
| 10 |
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.” |
| |
(3) | For subsection (6) there is substituted— |
| 15 |
“(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 |
| 20 |
application if those subsections then applied, or |
| |
(b) | makes in good faith effective and serious preparations to do |
| |
| |
| 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 |
| 25 |
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. |
| 30 |
(6B) | Subject to subsection (6A) above, the right conferred by subsection |
| |
(6) above does not extend to granting a licence to another person to |
| |
| |
(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 |
| 35 |
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.” |
| |
|
| |
|
| |
|
4 | In section 80 (authentic text of European patents and patent applications), |
| |
for subsection (4) there is substituted— |
| |
“(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 |
| 5 |
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 |
| |
| |
(b) | makes in good faith effective and serious preparations to do |
| 10 |
| |
| 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 |
| 15 |
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 |
| |
| |
(b) | the reference to the registered proprietor of the patent |
| 20 |
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 |
| |
| |
(7) | Subsections (4) to (6) above apply in relation to the use of a patented |
| 25 |
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.” |
| |
5 (1) | Section 81 (conversion of European patent applications) is amended as |
| 30 |
| |
(2) | In subsection (1), for the words following “this Act” there is substituted |
| |
“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”. |
| 35 |
| |
(a) | paragraph (a) and the “that” preceding it are omitted; |
| |
(b) | in paragraph (b), for the words preceding sub-paragraph (i) there is |
| |
| |
(c) | in paragraph (c), for “in either case” there is substituted “that”. |
| 40 |
6 | Sections 86 and 87 (implementation of Community Patent Convention and |
| |
decisions under it) are omitted. |
| |
7 | Section 89(4) (circumstances in which application treated as an international |
| |
application for a patent (UK)) is omitted. |
| |
8 | In section 89B(2) (adaptation of provisions in relation to international |
| 45 |
applications), for the words following “when the” there is substituted |
| |
“national phase of the application begins or, if later, when published in |
| |
accordance with the Treaty”. |
| |
|
| |
|
| |
|
9 (1) | Section 130 (interpretation) is amended as follows. |
| |
| |
(a) | in the definition of “application for a European patent (UK)” and |
| |
“international application for a patent (UK)”, after “and” there is |
| |
inserted “(subject to subsection (4A) below)”; |
| 5 |
(b) | at the end of the definition of “designate” there is inserted “and |
| |
includes a reference to a country being treated as designated in |
| |
pursuance of the convention or treaty”. |
| |
(3) | After subsection (4) there is inserted— |
| |
“(4A) | An international application for a patent is not, by reason of being |
| 10 |
treated by virtue of the European Patent Convention as an |
| |
application for a European patent (UK), to be treated also as an |
| |
international application for a patent (UK).” |
| |
(4) | After subsection (5) there is inserted— |
| |
“(5A) | References in this Act to the amendment of a patent or its |
| 15 |
specification (whether under this Act or by the European Patent |
| |
Office) include, in particular, limitation of the claims (as interpreted |
| |
by the description and any drawings referred to in the description or |
| |
| |
| 20 |
| |
Minor and consequential amendments |
| |
1 (1) | The 1977 Act is amended as follows. |
| |
(2) | In this Schedule, “the Regulatory Reform Order” means the Regulatory |
| |
Reform (Patents) Order 2004. |
| |
2 | In section 1 (patentable inventions), in subsection (1)(d), after “subsections |
| 25 |
(2) and (3)” there is inserted “or section 4A”. |
| |
3 | In section 2 (novelty), subsection (6) is omitted. |
| |
4 | In section 4 (industrial application)— |
| |
(a) | in subsection (1), “Subject to subsection (2) below”, and |
| |
(b) | subsections (2) and (3), |
| 30 |
| |
5 | In section 12 (reference before grant of foreign or convention patent of |
| |
questions about entitlement etc), in subsection (6)— |
| |
(a) | in paragraph (a), after “application is withdrawn” there is inserted |
| |
| 35 |
(b) | in paragraph (c), for “but after” there is substituted “or the”. |
| |
6 | In section 16(1) (publication of application), after “section 22 below” there is |
| |
inserted “and to any prescribed restrictions”. |
| |
7 | In section 20B (inserted by the Regulatory Reform Order) (effect of |
| |
|
| |
|
| |
|
reinstatement of applications), after subsection (6) there is inserted— |
| |
“(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). |
| 5 |
| “Patented invention” has the same meaning as in section 55 below.” |
| |
8 (1) | Section 22 (information prejudicial to defence of realm or safety of public) is |
| |
| |
(2) | In the heading, for “defence of realm” there is substituted “national |
| |
| 10 |
(3) | In subsections (1) and (5)(a), (c) and (d), for “the defence of the realm” there |
| |
is substituted “national security”. |
| |
| |
(a) | in paragraph (a), for the words from “inspect and authorise” to “in |
| |
connection with it” there is substituted— |
| 15 |
“(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 |
| 20 |
person appointed by such a government body, to |
| |
inspect the application and any documents sent to the |
| |
comptroller in connection with it;”; |
| |
(b) | for the words from “that Authority” to the end there is substituted “a |
| |
government body or a person appointed by a government body |
| 25 |
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 |
| |
| |
9 | In section 24 (publication and certificate of grant), after subsection (3) there |
| 30 |
| |
“(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.” |
| |
10 (1) | Section 38 (effect of transfer of patent under section 37) is amended as |
| 35 |
| |
(2) | In subsection (3), after “new proprietor or proprietors” there is inserted “or, |
| |
as the case may be, the new applicant”. |
| |
(3) | In subsection (5), after “proprietors of the patent” there is inserted “or, as the |
| |
case may be, the new applicant”. |
| 40 |
11 | In section 41(10) (method of enforcing in Scotland certain orders made by |
| |
comptroller), for “a recorded decree arbitral” there is substituted “an extract |
| |
registered decree arbitral bearing a warrant for execution issued by the |
| |
sheriff court of any sheriffdom in Scotland.” |
| |
12 | Section 53(1) (compulsory licences: Community Patent Convention) is |
| 45 |
| |
|
| |
|
| |
|
13 | Section 60(4) (meaning of infringement: Community Patent Convention) is |
| |
| |
14 | In section 61 (proceedings for infringement of patent), in subsection (4)(b), |
| |
for “plaintiff” there is substituted “claimant”. |
| |
15 | In section 62(2) (discretion to refuse damages etc for infringement |
| 5 |
committed while fees unpaid), for “any further period specified under” |
| |
there is substituted “the further period specified in”. |
| |
16 | In section 63 (relief for infringement of partially valid patent), in subsection |
| |
(2), for “plaintiff” there is substituted “claimant”. |
| |
17 | In section 70 (remedy for groundless threats of infringement proceedings), |
| 10 |
in subsection (3)(c), for “plaintiff” there is substituted “claimant”. |
| |
18 | In section 72(1) (power to revoke patents on application), “on the application |
| |
of any person” is omitted and after the first mention of “invention” there is |
| |
inserted “on the application of any person (including the proprietor of the |
| |
| 15 |
19 | In section 75 (amendment of patent in infringement or revocation |
| |
proceedings), in subsection (1), for “is” there is substituted “may be”. |
| |
20 | In section 91(1) (evidence relating to the conventions: judicial notice), for “or |
| |
Community patents kept under it” there is substituted “patents kept under |
| |
the European Patent Convention”. |
| 20 |
21 | In section 95 (financial provision)— |
| |
(a) | in subsection (1), “the Community Patent Convention” is omitted; |
| |
(b) | in subsection (2), for “either of those conventions” there is |
| |
substituted “that convention”. |
| |
22 | In sections 103 and 105 (legal privilege), in the definition of “the relevant |
| 25 |
conventions” in subsection (2), “the Community Patent Convention” is |
| |
| |
23 | In section 117A (inserted by the Regulatory Reform Order) (effect of |
| |
resuscitating applications), after subsection (6) there is inserted— |
| |
“(7) | The above provisions apply in relation to the use of a patented |
| 30 |
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 above.” |
| |
24 (1) | Section 120 (hours of business and excluded days) is amended as follows. |
| 35 |
| |
(a) | for “Rules may specify” there is substituted “The comptroller may |
| |
give directions specifying”; |
| |
(b) | for “and may specify” there is substituted “and the directions may |
| |
| 40 |
(3) | After subsection (2) there is inserted— |
| |
“(3) | Directions under this section shall be published in the prescribed |
| |
| |
25 | In section 121 (comptroller’s annual report)— |
| |
|
| |
|
| |
|
(a) | for “1st June” there is substituted “1st December”; |
| |
(b) | for “year”, in both places, there is substituted “financial year”; |
| |
(c) | “the Community Patent Convention” is omitted; |
| |
(d) | for “those conventions” there is substituted “that convention”. |
| |
26 (1) | Section 123 (rules) is amended as follows. |
| 5 |
(2) | In subsection (2), for paragraph (i) there is substituted— |
| |
“(i) | giving effect to an inventor’s rights to be mentioned |
| |
conferred by section 13, and providing for an inventor’s |
| |
waiver of any such right to be subject to acceptance by the |
| |
| 10 |
(3) | After that subsection there is inserted— |
| |
“(2A) | The comptroller may set out in directions any forms the use of which |
| |
is required by rules; and any such directions shall be published in the |
| |
| |
(4) | Subsections (4) and (5) are omitted. |
| 15 |
27 | In section 130(1) (interpretation)— |
| |
(a) | the definition of “Community patent” and the “and” preceding it are |
| |
| |
(b) | in the definition of “relevant convention court”, “the Community |
| |
Patent Convention” is omitted. |
| 20 |
28 | In section 131 (Northern Ireland), at the end there is inserted— |
| |
“(f) | any reference to a claimant includes a reference to a plaintiff.” |
| |
|
| |
|