Patents Act 1977

PART IIIMiscellaneous and General

Legal Proceedings

96The Patents Court

(1)There shall be constituted, as part of the Chancery Division of the High Court, a Patents Court to take such proceedings relating to patents and other matters as may be prescribed by rules of court.

(2)The judges of the Patents Court shall be such of the puisne judges of the High Court as the Lord Chancellor may from time to time nominate.

(3)The foregoing provisions of this section shall not be taken as prejudicing the provisions of the [1925 c. 49.] Supreme Court of Judicature (Consolidation) Act 1925 which enable the whole jurisdiction of the High Court to be exercised by any judge of that court.

(4)Rules of court shall make provision for the appointment of scientific advisers to assist the Patents Court in proceedings under this Act and for regulating the functions of such advisers.

(5)The remuneration of any such adviser shall be determined by the Lord Chancellor with the consent of the Minister for the Civil Service and shall be defrayed out of moneys provided by Parliament.

97Appeals from the comptroller

(1)Except as provided by subsection (4) below, an appeal shall lie to the Patents Court from any decision of the comptroller under this Act or rules except any of the following decisions, that is to say—

(a)a decision falling within section 14(7) above ;

(b)a decision under section 16(2) above to omit matter from a specification;

(c)a decision to give directions under subsection (1) or (2) of section 22 above ;

(d)a decision under rules which is excepted by rules from the right of appeal conferred by this section.

(2)For the purpose of hearing appeals under this section the Patents Court may consist of one or more judges of that court in accordance with directions given by or on behalf of the Lord Chancellor; and the Patents Court shall not be treated as a divisional court for the purposes of section 31(1)(f) of the Supreme Court of Judicature (Consolidation) Act 1925 (appeals from divisional courts).

(3)An appeal shall not lie to the Court of Appeal from a decision of the Patents Court on appeal from a decision of the comptroller under this Act or rules—

(a)except where the comptroller's decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or

(b)except where the ground of appeal is that the decision of the Patents Court is wrong in law;

but an appeal shall only lie to the Court of Appeal under this section if leave to appeal is given by the Patents Court or the Court of Appeal.

(4)An appeal shall lie to the Court of Session from any decision of the comptroller in proceedings which under rules are held in Scotland, except any decision mentioned in paragraphs (a) to (d) of subsection (1) above.

(5)An appeal shall not lie to the Inner House of the Court of Session from a decision of an Outer House judge on appeal from a decision of the comptroller under this Act or rules—

(a)except where the comptroller's decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or

(b)except where the ground of appeal is that the decision of the Outer House judge is wrong in law.

98Proceedings in Scotland

(1)In Scotland proceedings relating primarily to patents (other than proceedings before the comptroller) shall be competent in the Court of Session only, and any jurisdiction of the sheriff court relating to patents is hereby abolished except in relation to questions which are incidental to the issue in proceedings which are otherwise competent there.

(2)The remuneration of any assessor appointed to assist the court in proceedings under this Act in the Court of Session shall be determined by the Lord President of the Court of Session with the consent of the Minister for the Civil Service and shall be defrayed out of moneys provided by Parliament.

99General powers of the court

The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Act or any treaty or international convention to which the United Kingdom is a party, make any order or exercise any other power which the comptroller could have made or exercised for the purpose of determining that question.

100Burden of proof in certain cases

(1)If the invention for which a patent is granted is a process for obtaining a new product, the same product produced by a person other than the proprietor of the patent or a licensee of his shall, unless the contrary is proved, be taken in any proceedings to have been obtained by that process.

(2)In considering whether a party has discharged the burden imposed upon him by this section, the court shall not require him to disclose any manufacturing or commercial secrets if it appears to the court that it would be unreasonable to do so.

101Exercise of comptroller's discretionary powers

Without prejudice to any rule of law, the comptroller shall give any party to a proceeding before him an opportunity of being heard before exercising adversely to that party any discretion vested in the comptroller by this Act or rules.

102Right of audience in patent proceedings

(1)Any party to any proceedings before the comptroller under this Act or any treaty or international convention to which the United Kingdom is a party may appear before the comptroller in person or be represented by counsel or a solicitor (of any part of the United Kingdom) or a patent agent or, subject to rules under section 115 below, by any other person whom he desires to represent him.

(2)Subsection (1) above, in its application to proceedings under any such treaty or convention, shall have effect subject to section 84(1) or (3) above.

(3)Without prejudice to the right of counsel to appear before the High Court, a member of the Bar of England and Wales who is not in actual practice, a solicitor of the Supreme Court and a patent agent shall each have the right to appear and be heard on behalf of any party to an appeal under this Act from the comptroller to the Patents Court.

103Extension of privilege for communications with solicitors relating to patent proceedings

(1)It is hereby declared that the rule of law which confers privilege from disclosure in legal proceedings in respect of communications made with a solicitor or a person acting on his behalf, or in relation to information obtained or supplied for submission to a solicitor or a person acting on his behalf, for the purpose of any pending or contemplated proceedings before a court in the United Kingdom extends to such communications so made for the purpose of any pending or contemplated—

(a)proceedings before the comptroller under this Act or any of the relevant conventions, or

(b)proceedings before the relevant convention court under any of those conventions.

(2)In this section—

• " legal proceedings " includes proceedings before the comptroller ;

• the references to legal proceedings and pending or contemplated proceedings include references to applications for a patent or a European patent and to international applications for a patent; and

• " the relevant conventions " means the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty.

(3)This section shall not extend to Scotland.

104Privilege for communications with patent agents relating to patent proceedings

(1)This section applies to any communication made for the purpose of any pending or contemplated patent proceedings, being either—

(a)a communication between the patent agent of a party to those proceedings and that party or any other person ; or

(b)a communication between a party to those proceedings and a person other than his patent agent made for the purpose of obtaining, or in response to a request for, information which that party is seeking for the purpose of submitting it to his patent agent.

(2)For the purposes of subsection (1) above a communication made by or to a person acting—

(i)on behalf of a patent agent; or

(ii)on behalf of a party to any pending or contemplated proceedings,

shall be treated as made by or to that patent agent or party, as the case may be.

(3)In any legal proceedings other than criminal proceedings a communication to which this section applies shall be privileged from disclosure in like manner as if any proceedings before the comptroller or the relevant convention court for the purpose of which the communication was made were proceedings before the court (within the meaning of this Act) and the patent agent in in question had been the solicitor of the party concerned

(4)In this section—

• " legal proceedings " includes proceedings before the comptroller ;

• " patent agent " means an individual registered as a patent agent in the register of patent agents, a company lawfully practising as a patent agent in the United Kingdom or a person who satisfies the condition mentioned in section 84(1) or (3) above;

• " patent proceedings " means proceedings under this Act or any of the relevant conventions before the court, the comptroller or the relevant convention court, whether contested or uncontested and including an application for a patent;

• " party ", in relation to any contemplated proceedings, means a prospective party to the proceedings; and

• " the relevant conventions " means the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty.

(5)This section shall not extend to Scotland.

105Extension of privilege in Scotland for communications relating to patent proceedings

It is hereby declared that in Scotland the rules of law which confer privilege from disclosure in legal proceedings in respect of communications, reports or other documents (by whomsoever made) made for the purpose of any pending or contemplated proceedings in a court in the United Kingdom extend to communications, reports or other documents made for the purpose of patent proceedings within the meaning of section 104 above.

106Costs and expenses in proceedings before the Court under s. 40

(1)In proceedings before the court under section 40 above (whether on an application or on appeal to the court), the court, in determining whether to award costs or expenses to any party and what costs or expenses to award, shall have regard to all the relevant circumstances, including the financial position of the parties.

(2)If in any such proceedings the Patents Court directs that any costs of one party shall be paid by another party, the court may settle the amount of the costs by fixing a lump sum or may direct that the costs shall be taxed on a scale specified by the court, being a scale of costs prescribed by the Rules of the Supreme Court or by the County Court Rules.

107Costs and expenses in proceedings before the comptroller

(1)The comptroller may, in proceedings before him under this Act, by order award to any party such costs or, in Scotland, such expenses as he may consider reasonable and direct how and by what parties they are to be paid.

(2)In England and Wales any costs awarded under this section shall, if a county court so orders, be recoverable by execution issued from the county court or otherwise as if they were payable under an order of that court.

(3)In Scotland any order under this section for the payment of expenses may be enforced in like manner as a recorded decree arbitral.

(4)If any of the following persons, that is to say—

(a)any person by whom a reference is made to the comptroller under section 8, 12 or 37 above;

(b)any person by whom an application is made to the comptroller for the revocation of a patent;

(c)any person by whom notice of opposition is given to the comptroller under section 27(5), 29(2), 47(6) or 52(1) above, or section 117(2) below ;

neither resides nor carries on business in the United Kingdom, the comptroller may require him to give security for the costs or expenses of the proceedings and in default of such security being given may treat the reference, application or notice as abandoned.

(5)In Northern Ireland any order under this section for the payment of costs may be enforced as if it were a money judgment.

108Licences granted by order of comptroller

Any order for the grant of a licence under section 11, 38, 48 or 49 above shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.

Offences

109Falsification of register, etc.

If a person makes or causes to be made a false entry in any register kept under this Act, or a writing falsely purporting to be a copy or reproduction of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be liable—

(a)on summary conviction, to a fine not exceeding £1,000;

(b)on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both.

110Unauthorised claim of patent rights

(1)If a person falsely represents that anything disposed of by him for value is a patented product he shall, subject to the following provisions of this section, be liable on summary conviction to a fine not exceeding £200.

(2)For the purposes of subsection (1) above a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the word " patent" or " patented " or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.

(3)Subsection (1) above does not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has expired or been revoked and before the end of a period which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made (or does not continue to be made).

(4)In proceedings for an offence under this section it shall be a defence for the accused to prove that he used due diligence to prevent the commission of the offence.

111Unauthorised claim that patent has been applied for

(1)If a person represents that a patent has been applied for in respect of any article disposed of for value by him and—

(a)no such application has been made, or

(b)any such application has been refused or withdrawn,

he shall, subject to the following provisions of this section, be liable on summary conviction to a fine not exceeding £200.

(2)Subsection (1)(b) above does not apply where the representation is made (or continues to be made) before the expiry of a period which commences with the refusal or withdrawal and which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made (or does not continue to be made).

(3)For the purposes of subsection (1) above a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the words " patent applied for " or " patent pending ", or anything expressing or implying that a patent has been applied for in respect of the article, shall be taken to represent that a patent has been applied for in respect of it.

(4)In any proceedings for an offence under this section it shall be a defence for the accused to prove that he used due diligence to prevent the commission of such an offence.

112Misuse of title " Patent Office "

If any person uses on his place of business, or on any document issued by him, or otherwise, the words " Patent Office " or any other words suggesting that his place of business is, or is officially connected with, the Patent Office, he shall be liable on summary conviction to a fine not exceeding £500.

113Offences by corporations

(1)Where an offence under this Act which has been committed by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to any neglect on the part of, a director, manager, secretary or other similar officer of the body corporate, or any person who was purporting to act in any such capacity, he, as well as the body corporate, shall be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

(2)Where the affairs of a body corporate are managed by its members, subsection (1) above shall apply in relation to the acts and defaults of a member in connection with his functions of management as if he were a director of the body corporate.

Patent agents

114Restrictions on practice as patent agent

(1)An individual shall not, either alone or in partnership with any other person, practise, describe himself or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent in the register of patent agents or (as the case may be) unless he and all his partners are so registered.

(2)A body corporate shall not practise, describe itself or hold itself out or permit itself to be described or held out as mentioned in subsection (1) above unless—

(a)in the case of a company within the meaning of the [1948 c. 38.] Companies Act 1948 which began to carry on business as a patent agent before 17th November 1917, a director or the manager of the company is registered as a patent agent in the register of patent agents and the name of that director or manager is mentioned as being so registered in all professional advertisements, circulars or letters issued by or with the consent of the company in which the name of the company appears;

(b)in any other case, every director or, where the body's affairs are managed by its members, every member of the body and in any event, if it has a manager who is not a director or member, that manager, is so registered.

(3)Any person who contravenes the provisions of this section shall be liable on summary conviction to a fine not exceeding £1,000.

(4)Proceedings for an offence under this section may be begun at any time within twelve months from the date of the offence.

(5)This section shall not be construed as prohibiting solicitors from taking such part in proceedings relating to patents and applications for patents as has heretofore been taken by solicitors and, in particular, shall not derogate from the provisions of section 102 above as it applies to solicitors.

(6)A patent agent shall not be guilty of an offence under section 22 of the [1974 c. 47.] Solicitors Act 1974 or section 39 of the [1933 c. 21.] Solicitors (Scotland) Act 1933 (which prohibit the preparation for reward of certain instruments or writs by persons not legally qualified) by reason only of the preparation by him for use in proceedings under this Act before the comptroller or on appeal under this Act to the Patents Court from the comptroller of any document other than a deed.

(7)For Article 23(2)(d) of the [S.I. 1976/582 (N.I. 12).] Solicitors (Northern Ireland) Order 1976 there shall be substituted the following paragraph—

“(d)a patent agent within the meaning of the Patents Act 1977 preparing, for use in proceedings under that Act or the Patents Act 1949 before the comptroller (as defined in the former Act) or on appeal under either of those Acts to the Patents Court from the comptroller, any document other than a deed ;”.

115Power of comptroller to refuse to deal with certain agents

(1)Rules may authorise the controller to refuse to recognise as agent in respect of any business under this Act—

(a)any individual whose name has been erased from, and not restored to, the register of patent agents, or who is for the time being suspended from acting as a patent agent;

(b)any person who has been convicted of an offence under section 114 above or section 88 of the 1949 Act (which is replaced by section 114);

(c)any person who is found by the Secretary of State to have been convicted of any offence or to have been guilty of any such misconduct as, in the case of an individual registered in the register of patent agents, would render him liable to have his name erased from it;

(d)any person, not being registered as a patent agent, who in the opinion of the comptroller is engaged wholly or mainly in acting as agent in applying for patents in the United Kingdom or elsewhere in the name or for the benefit of a person by whom he is employed;

(e)any company or firm, if any person whom the comptroller could refuse to recognise as agent in respect of any business under this Act is acting as a director or manager of the company or is a partner in the firm.

(2)The comptroller shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor has a place of business in the United Kingdom.

(3)Rules may authorise the comptroller to refuse to recognise as agent or other representative for the purpose of applying for European patents any person who does not satisfy the condition mentioned in section 84(1) above and does not fall within the exemption in subsection (2) of that section.

Immunity of department

116Immunity of department as regards official acts

Neither the Secretary of State nor any officer of his—

(a)shall be taken to warrant the validity of any patent granted under this Act or any treaty or international convention to which the United Kingdom is a party; or

(b)shall incur any liability by reason of or in connection with any examination or investigation required or authorised by this Act or any such treaty or convention, or any report or other proceedings consequent on any such examination or investigation.

Administrative provisions

117Correction of errors in patents and applications

(1)The comptroller may, subject to any provision of rules, correct any error of translation or transcription, clerical error or mistake in any specification of a patent or application for a patent or any document filed in connection with a patent or such an application.

(2)Where the comptroller is requested to correct such an error or mistake, any person may in accordance with rules give the comptroller notice of opposition to the request and the comptroller shall determine the matter.

118Information about patent applications and patents, and inspection of documents

(1)After publication of an application for a patent in accordance with section 16 above the comptroller shall on a request being made to him in the prescribed manner and on payment of the prescribed fee (if any) give the person making the request such information, and permit him to inspect such documents, relating to the application or to any patent granted in pursuance of the application as may be specified in the request, subject, however, to any prescribed restrictions.

(2)Subject to the following provisions of this section, until an application for a patent is so published documents or information constituting or relating to the application shall not, without the consent of the applicant, be published or communicated to any person by the comptroller.

(3)Subsection (2) above shall not prevent the comptroller from—

(a)sending the European Patent Office information which it is his duty to send that office in accordance with any provision of the European Patent Convention; or

(b)publishing or communicating to others any prescribed bibliographic information about an unpublished application for a patent;

nor shall that subsection prevent the Secretary of State from inspecting or authorising the inspection of an application for a patent or any connected documents under section 22(6)(a) above.

(4)Where a person is notified that an application for a patent has been made, but not published in accordance with section 16 above, and that the applicant will, if the patent is granted, bring proceedings against that person in the event of his doing an act specified in the notification after the application is so published, that person may make a request under subsection (1) above, notwithstanding that the application has not been published, and that subsection shall apply accordingly.

(5)Where an application for a patent is filed, but not published, and a new application is filed in respect of any part of the subject-matter of the earlier application (either in accordance with rules or in pursuance of an order under section 8 above) and is published, any person may make a request under subsection (1) above relating to the earlier application and on payment of the prescribed fee the comptroller shall give him such information and permit him to inspect such documents as could have been given or inspected if the earlier application had been published.

119Service by post

Any notice required or authorised to be given by this Act or rules, and any application or other document so authorised or required to be made or filed, may be given, made or filed by post.

120Hours of business and excluded days

(1)Rules may specify the hour at which the Patent Office shall be taken to be closed on any day for purposes of the transaction by the public of business under this Act or of any class of such business, and may specify days as excluded days for any such purposes.

(2)Any business done under this Act on any day after the hour so specified in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be taken to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day that time shall be extended to the next following day not being an excluded day.

121Comptroller's annual report

Before 1st June in every year the comptroller shall cause to be laid before both Houses of Parliament a report with respect to the execution of this Act and the discharge of his functions under the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty, and every such report shall include an account of all fees, salaries and allowances, and other money received and paid by him under this Act, those conventions and that treaty during the previous year.

Supplemental

122Crown's right to sell forfeited articles

Nothing in this Act affects the right of the Crown or any person deriving title directly or indirectly from the Crown to dispose of or use articles forfeited under the laws relating to customs or excise.

123Rules

(1)The Secretary of State may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to patents and applications for patents (including European patents, applications for European patents and international applications for patents) and for regulating all matters placed by this Act under the direction or control of the comptroller ; and in this Act, except so far as the context otherwise requires, " prescribed " means prescribed by rules and " rules " means rules made under this section.

(2)Without prejudice to the generality of subsection (1) above, rules may make provision—

(a)prescribing the form and contents of applications for patents and other documents which may be filed at the Patent Office and requiring copies to be furnished of any such documents ;

(b)regulating the procedure to be followed in connection with any proceeding or other matter before the comptroller or the Patent Office and authorising the rectification of irregularities of procedure;

(c)requiring fees to be paid in connection with any such proceeding or matter or in connection with the provision of any service by the Patent Office and providing for the remission of fees in the prescribed circumstances ;

(d)regulating the mode of giving evidence in any such proceeding and empowering the comptroller to compel the attendance of witnesses and the discovery of and production of documents;

(e)requiring the comptroller to advertise any proposed amendments of patents and any other prescribed matters, including any prescribed steps in any such proceeding;

(f)requiring the comptroller to hold proceedings in Scotland in such circumstances as may be specified in the rules where there is more than one party to proceedings under section 8, 12, 37, 40(1) or (2), 41(8), 61(3), 71 or 72 above ;

(g)providing for the appointment of advisers to assist the comptroller in any proceeding before him ;

(h)prescribing time limits for doing anything required to be done in connection with any such proceeding by this Act or the rules and providing for the alteration of any period of time specified in this Act or the rules;

(i)giving effect to the right of an inventor of an invention to be mentioned in an application for a patent for the invention;

(j)without prejudice to any other provision of this Act, requiring and regulating the translation of documents in connection with an application for a patent or a European patent or an international application for a patent and the filing and authentication of any such translations;

(k)requiring the keeping of a register of patent agents and regulating the registration of patent agents and authorising in prescribed cases the erasure from the register of patent agents of the name of any person registered therein or the suspension of the right of any such person to act as a patent agent;

(l)providing for the publication and sale of documents in the Patent Office and of information about such documents.

(3)Rules may make different provision for different cases.

(4)Rules prescribing fees shall not be made except with the consent of the Treasury.

(5)The remuneration of any adviser appointed under rules to assist the comptroller in any proceeding shall be determined by the Secretary of State with the consent of the Minister for the Civil Service and shall be defrayed out of moneys provided by Parliament.

(6)Rules shall provide for the publication by the comptroller of a journal (in this Act referred to as " the journal") containing particulars of applications for and grants of patents, and of other proceedings under this Act.

(7)Rules shall require or authorise the comptroller to make arrangements for the publication of reports of cases relating to patents, trade marks and registered designs decided by him and of cases relating to patents (whether under this Act or otherwise) trade marks, registered designs and copyright decided by any court or body (whether in the United Kingdom or elsewhere).

124Rules, regulations and orders; supplementary

(1)Any power conferred on the Secretary of State by this Act to make rules, regulations or orders shall be exercisable by statutory instrument.

(2)Any Order in Council and any statutory instrument containing an order, rules or regulations under this Act, other than an order or rule required to be laid before Parliament in draft or an order under section 132(5) below, shall be subject to annulment in pursuance of a resolution of either House of Parliament.

(3)Any Order in Council or order under any provision of this Act may be varied or revoked by a subsequent order.

125Extent of invention

(1)For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.

(2)It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 5 above.

(3)The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article.

126Stamp duty

(1)An instrument relating to a Community patent or to an application for a European patent shall not be chargeable with stamp duty by reason only of all or any of the provisions of the Community Patent Convention mentioned in subsection (2) below.

(2)The said provisions are—

(a)Article 2.2 (Community patent and application for European patent in which the contracting states are designated to have effect throughout the territories to which the Convention applies);

(b)Article 39.1(c) (Community patent treated as national patent of contracting state in which applicant's representative has place of business);

(c)Article 39.1(c) as applied by Article 45 to an application for a European patent in which the contracting states are designated.

127Existing patents and applications

(1)No application for a patent may be made under the 1949 Act on or after the appointed day.

(2)Schedule 1 to this Act shall have effect for securing that certain provisions of the 1949 Act shall continue to apply on and after the appointed day to—

(a)a patent granted before that day ;

(b)an application for a patent which is filed before that day, and which is accompanied by a complete specification or in respect of which a complete specification is filed before that day;

(c)a patent granted in pursuance of such an application.

(3)Schedule 2 to this Act shall have effect for securing that (subject to the provisions of that Schedule) certain provisions of this Act shall apply on and after the appointed day to any patent and application to which subsection (2) above relates, but, except as provided by the following provisions of this Act, this Act shall not apply to any such patent or application.

(4)An application for a patent which is made before the appointed day, but which does not comply with subsection (2)(b) above, shall be taken to have been abandoned immediately before that day, but, notwithstanding anything in section 5(3) above, the application may nevertheless serve to establish a priority date in relation to a later application for a patent under this Act if the date of filing the abandoned application falls within the period of fifteen months immediately preceding the filing of the later application.

(5)Schedule 3 to this Act shall have effect for repealing certain provisions of the 1949 Act.

(6)The transitional provisions and savings in Schedule 4 to this Act shall have effect.

(7)In Schedules 1 to 4 to this Act " existing patent " means a patent mentioned in subsection (2)(a) and (c) above, " existing application" means an application mentioned in subsection (2)(b) above, and expressions used in the 1949 Act and those Schedules have the same meanings in those Schedules as in that Act.

128Priorities between patents and applications under 1949 Act and this Act

(1)The following provisions of this section shall have effect for the purpose of resolving questions of priority arising between patents and applications for patents under the 1949 Act and patents and applications for patents under this Act.

(2)A complete specification under the 1949 Act shall be treated for the purposes of sections 2(3) and 5(2) above—

(a)if published under that Act, as a published application for a patent under this Act;

(b)if it has a date of filing under that Act, as an application for a patent under this Act which has a date of filing under this Act;

and in the said section 2(3), as it applies by virtue of this subsection in relation to any such specification, the words " both as filed and " shall be omitted.

(3)In section 8(1), (2) and (4) of the 1949 Act (search for anticipation by prior claim) the references to any claim of a complete specification, other than the applicant's, published and filed as mentioned in section 8(1) shall include references to any claim contained in an application made and published under this Act or in the specification of a patent granted under this Act, being a claim in respect of an invention having a priority date earlier than the date of filing the complete specification under the 1949 Act.

(4)In section 32(1)(a) of the 1949 Act (which specifies, as one of the grounds of revoking a patent, that the invention was claimed in a valid claim of earlier priority date contained in the complete specification of another patent), the reference to such a claim shall include a reference to a claim contained in the specification of a patent granted under this Act (a new claim) which satisfies the following conditions:—

(a)the new claim must be in respect of an invention having an earlier priority date than that of the relevant claim of the complete specification of the patent sought to be revoked; and

(b)the patent containing the new claim must be wholly valid or be valid in those respects which have a bearing on that relevant claim.

(5)For the purposes of this section and the provisions of the 1949 Act mentioned in this section the date of filing an application for a patent under that Act and the priority date of a claim of a complete specification under that Act shall be determined in accordance with the provisions of that Act, and the priority date of an invention which is the subject of a patent or application for a patent under this Act shall be determined in accordance with the provisions of this Act.

129Application of Act to Crown

—This Act does not affect Her Majesty in her private capacity but, subject to that, it binds the Crown.

130Interpretation

(1)In this Act, except so far as the context otherwise requires—

• " application for a European patent (UK) " and " international application for a patent (UK) " each mean an application of the relevant description which, on its date of filing, designates the United Kingdom;

• " appointed day ", in any provision of this Act, means the day appointed under section 132 below for the coming into operation of that provision ;

• " Community Patent Convention " means the Convention for the European Patent for the Common Market and " Community patent" means a patent granted under that convention;

• " comptroller " means the Comptroller-General of Patents, Designs and Trade Marks ;

• " Convention on International Exhibitions " means the Convention relating to International Exhibitions signed in Paris on 22nd November 1928, as amended or supplemented by any protocol to that convention which is for the time being in force ;

• " court " means

  (a)

  as respects England and Wales, the High Court;

  (b)

  as respects Scotland, the Court of Session ;

  (c)

  as respects Northern Ireland, the High Court in Northern Ireland;

• " date of filing " means—

  (a)

  in relation to an application for a patent made under this Act, the date which is the date of filing that application by virtue of section 15 above; and

  (b)

  in relation to any other application, the date which, under the law of the country where the application was made or in accordance with the terms of a treaty or convention to which that country is a party, is to be treated as the date of filing that application or is equivalent to the date of filing an application in that country (whatever the outcome of the application);

• " designate " in relation to an application or a patent, means designate the country or countries (in pursuance of the European Patent Convention or the Patent Co-operation Treaty) in which protection is sought for the invention which is the subject of the application or patent;

• " employee " means a person who works or (where the employment has ceased) worked under a contract of employment or in employment under or for the purposes of a government department;

• " employer ", in relation to an employee, means the person by whom the employee is or was employed;

• " European Patent Convention " means the Convention on the Grant of European Patents, "European patent" means a patent granted under that convention, " European patent (UK) " means a European patent designating the United Kingdom, "European Patent Bulletin " means the bulletin of that name published under that convention, and " European Patent Office " means the office of that name established by that convention ;

• " exclusive licence " means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and " exclusive licensee " and " non-exclusive licence " shall be construed accordingly;

• " filing fee " means the fee prescribed for the purposes of section 14 above;

• " formal requirements " means those requirements designated as such by rules made for the purposes of section 17 above;

• " international application for a patent " means an application made under the Patent Co-operation Treaty;

• " International Bureau " means the secretariat of the World Intellectual Property Organization established by a convention signed at Stockholm on 14th July 1967 ;

• " international exhibition " means an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions or falling within the terms of any subsequent treaty or convention replacing that convention ;

• " inventor " has the meaning assigned to it by section 7 above;

• " journal " has the meaning assigned to it by section 123 (6) above;

• " mortgage ", when used as a noun, includes a charge for securing money or money's worth and, when used as a verb, shall be construed accordingly;

• " 1949 Act " means the [1949 c. 87.] Patents Act 1949 ;

• " patent " means a patent under this Act;

• " patent agent " means a person carrying on for gain in the United Kingdom the business of acting as agent for other persons for the purpose of applying for or obtaining patents (other than European patents) in the United Kingdom or elsewhere or for the purpose of conducting proceedings in connection with such patents before the comptroller;

• " Patent Co-operation Treaty " means the treaty of that name signed at Washington on 19th June 1970;

• " patented invention " means an invention for which a patent is granted and " patented process" shall be construed accordingly;

• " patented product " means a product which is a patented invention or, in relation to a patented process, a product obtained directly by means of the process or to which the process has been applied ;

• " prescribed " and " rules " have the meanings assigned to them by section 123 above ;

• " priority date " means the date determined as such under section 5 above;

• " published " means made available to the public (whether in the United Kingdom or elsewhere) and a document shall be taken to be published under any provision of this Act if it can be inspected as of right at any place in the United Kingdom by members of the public, whether on payment of a fee or not; and " republished " shall be construed accordingly ;

• " register " and cognate expressions have the meanings assigned to them by section 32 above ;

• " relevant convention court ", in relation to any proceedings under the European Patent Convention, the Community Patent Convention or the Patent Co-operation Treaty, means that court or other body which under that convention or treaty has jurisdiction over those proceedings, including (where it has such jurisdiction) any department of the European Patent Office ;

• " right ", in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;

• " search fee " means the fee prescribed for the purposes of section 17 above;

• " services of the Crown " and " use for the services of the Crown " have the meanings assigned to them by section 56(2) above, including, as respects any period of emergency within the meaning of section 59 above, the meanings assigned to them by the said section 59.

(2)Rules may provide for stating in the journal that an exhibition falls within the definition of international exhibition in subsection (1) above and any such statement shall be conclusive evidence that the exhibition falls within that definition.

(3)For the purposes of this Act matter shall be taken to have been disclosed in any relevant application within the meaning of section 5 above or in the specification of a patent if it was either claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or specification.

(4)References in this Act to an application for a patent, as filed, are references to such an application in the state it was on the date of filing.

(5)References in this Act to an application for a patent being published are references to its being published under section 16 above.

(6)References in this Act to any of the following conventions, that is to say—

(a)The European Patent Convention ;

(b)The Community Patent Convention ;

(c)The Patent Co-operation Treaty;

are references to that convention or any other international convention or agreement replacing it, as amended or supplemented by any convention or international agreement (including in either case any protocol or annex), or in accordance with the terms of any such convention or agreement, and include references to any instrument made under any such convention or agreement.

(7)Whereas by a resolution made on the signature of the Community Patent Convention the governments of the member states of the European Economic Community resolved to adjust their laws relating to patents so as (among other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty, it is hereby declared that the following provisions of this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, 88(6) and (7), 100 and 125, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply.

(8)The [1950 c. 27.] Arbitration Act 1950 shall not apply to any proceedings before the comptroller under this Act.

(9)Except so far as the context otherwise requires, any reference in this Act to any enactment shall be construed as a reference to that enactment as amended or extended by or under any other enactment, including this Act.

131Northern Ireland

In the application of this Act to Northern Ireland—

(a)" enactment" includes an enactment of the Parliament of Northern Ireland and a Measure of the Northern Ireland Assembly;

(b)any reference to a government department includes a reference to a Department of the Government of Northern Ireland;

(c)any reference to the Crown includes a reference to the Crown in right of Her Majesty's Government in Northern Ireland;

(d)any reference to the [1948 c. 38.] Companies Act 1948 includes a reference to the corresponding enactments in force in Northern Ireland; and

(e)the [1937 c. 8 (N.I.).] Arbitration Act (Northern Ireland) 1937 shall apply in relation to an arbitration in pursuance of this Act as if this Act related to a matter in respect of which the Parliament of Northern Ireland had power to make laws.

132Short title, extent, commencement, consequential amendments and repeals

(1)This Act may be cited as the Patents Act 1977.

(2)This Act shall extend to the Isle of Man. subject to any modifications contained in an Order made by Her Majesty in Council, and accordingly, subject to any such order, references in this Act to the United Kingdom shall be construed as including references to the Isle of Man.

(3)For the purposes of this Act the territorial waters of the United Kingdom shall be treated as part of the United Kingdom.

(4)This Act applies to acts done in an area designated by order under section 1(7) of the [1964 c. 29.] Continental Shelf Act 1964, in connection with the exploration of the sea bed or subsoil or exploitation of their natural resources, as it applies to acts done in the United Kingdom.

(5)This Act (except sections 77(6), (7) and (9), 78(7) and (8), this subsection and the repeal of section 41 of the 1949 Act) shall come into operation on such day as may be appointed by the Secretary of State by order, and different days may be appointed under this subsection for different purposes.

(6)The consequential amendments in Schedule 5 shall have effect.

(7)Subject to the provisions of Schedule 4 to this Act, the enactments specified in Schedule 6 to this Act (which include certain enactments which were spent before the passing of this Act) are hereby repealed to the extent specified in column 3 of that Schedule.