Patents Act 1977

Supplemental

122 Crown'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.

123 Rules

(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).

124 Rules, 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.

125 Extent 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.

126 Stamp 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.

127 Existing 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.

128 Priorities 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.

129 Application of Act to Crown

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

130 Interpretation

(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.

131 Northern 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.

132 Short 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.