Patents Bill [HL]

House of Commons

Session 2003 - 04
Internet Publications
Other Bills before Parliament

Patents Bill [HL]

Patents Bill [HL]
9

Supplemental
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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The enactments set out in Schedule 3 are repealed to the extent specified.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
revoked.
16
Commencement etc
(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
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(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
or saving provision.
(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,
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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.
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Short title and extent
(1)
This Act may be cited as the Patents Act 2004.
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(2)
This Act has the same extent as the 1977 Act.

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Patents Bill [HL]
Schedule 1 — Amendments relating to international obligations

Schedules
Schedule 1
Section 5

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
amended as follows.
      (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—
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“(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
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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
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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.
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(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
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.”

Patents Bill [HL]
Schedule 1 — Amendments relating to international obligations
11

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
translation, or
(b)
makes in good faith effective and serious preparations to do
10
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
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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
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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
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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
follows.
      (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”.
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      (3)
In subsection (2)—
(a)
paragraph (a) and the “that” preceding it are omitted;
(b)
in paragraph (b), for the words preceding sub-paragraph (i) there is
substituted “that”;
(c)
in paragraph (c), for “in either case” there is substituted “that”.
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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”.

Patents Bill [HL]
Schedule 2 — Minor and consequential amendments
12

9     (1)
Section 130 (interpretation) is amended as follows.
      (2)
In subsection (1)—
(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
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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
claims).”
Schedule 2
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Section 15

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
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(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),
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are omitted.
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
“whether before or”;
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(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

Patents Bill [HL]
Schedule 2 — Minor and consequential amendments
13

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
amended as follows.
      (2)
In the heading, for “defence of realm” there is substituted “national
security”.
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      (3)
In subsections (1) and (5)(a), (c) and (d), for “the defence of the realm” there
is substituted “national security”.
      (4)
In subsection (6)—
(a)
in paragraph (a), for the words from “inspect and authorise” to “in
connection with it” there is substituted—
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“(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
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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
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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.”
9
In section 24 (publication and certificate of grant), after subsection (3) there
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is inserted—
“(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
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follows.
      (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”.
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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
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omitted.

Patents Bill [HL]
Schedule 2 — Minor and consequential amendments
14

13
Section 60(4) (meaning of infringement: Community Patent Convention) is
omitted.
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
patent)”.
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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”.
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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
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conventions” in subsection (2), “the Community Patent Convention” is
omitted.
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.
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      (2)
In subsection (1)—
(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
specify”.
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      (3)
After subsection (2) there is inserted—
“(3)
Directions under this section shall be published in the prescribed
manner.”
25
In section 121 (comptroller’s annual report)—

Patents Bill [HL]
Schedule 2 — Minor and consequential amendments
15

(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
comptroller;”.
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      (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
prescribed manner.”
      (4)
Subsections (4) and (5) are omitted.
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27
In section 130(1) (interpretation)—
(a)
the definition of “Community patent” and the “and” preceding it are
omitted;
(b)
in the definition of “relevant convention court”, “the Community
Patent Convention” is omitted.
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28
In section 131 (Northern Ireland), at the end there is inserted—
“(f)
any reference to a claimant includes a reference to a plaintiff.”