Patents Act 2004

Section 16

SCHEDULE 2 E+W+S+N.I. Minor and consequential amendments

Prospective

1 (1) The 1977 Act is amended as follows. E+W+S+N.I.

(2) In this Schedule, “the Regulatory Reform Order” means the Regulatory Reform (Patents) Order 2004.

Prospective

2 In section 1 (patentable inventions), in subsection (1)(d), after “subsections (2) and (3)” there is inserted “ or section 4A ”. E+W+S+N.I.

Prospective

3 In section 2 (novelty), subsection (6) is omitted. E+W+S+N.I.

Prospective

4 In section 4 (industrial application)— E+W+S+N.I.

(a) in subsection (1), “Subject to subsection (2) below”, and

(b) subsections (2) and (3),

are omitted.

Prospective

5 In section 12 (reference before grant of foreign or convention patent of questions about entitlement etc), in subsection (6)— E+W+S+N.I.

(a) in paragraph (a), after “application is withdrawn” there is inserted “ whether before or ”;

(b) in paragraph (c), for “but after” there is substituted “ or the ”.

Prospective

6 In section 16(1) (publication of application), after “section 22 below” there is inserted “ and to any prescribed restrictions ”. E+W+S+N.I.

7 In section 20B (inserted by the Regulatory Reform Order) (effect of reinstatement of applications), after subsection (6) there is inserted— E+W+S+N.I.

“(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).

“Patented invention” has the same meaning as in section 55 below.”

Prospective

8 (1) Section 22 (information prejudicial to defence of realm or safety of public) is amended as follows. E+W+S+N.I.

(2) In the heading, for “defence of realm” there is substituted “ national security ”.

(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—

“(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 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 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. ”

Prospective

9 In section 24 (publication and certificate of grant), after subsection (3) there is inserted— E+W+S+N.I.

“(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.”

Prospective

10 (1) Section 38 (effect of transfer of patent under section 37) is amended as follows. E+W+S+N.I.

(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 ”.

Prospective

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. ” E+W+S+N.I.

Prospective

12 Section 53(1) (compulsory licences: Community Patent Convention) is omitted. E+W+S+N.I.

Prospective

13 Section 60(4) (meaning of infringement: Community Patent Convention) is omitted. E+W+S+N.I.

Prospective

14 In section 61 (proceedings for infringement of patent), in subsection (4)(b), for “plaintiff” there is substituted “ claimant ”. E+W+S+N.I.

Prospective

15 In section 62(2) (discretion to refuse damages etc for infringement committed while fees unpaid), for “any further period specified under” there is substituted “ the further period specified in ”. E+W+S+N.I.

Prospective

16 In section 63 (relief for infringement of partially valid patent), in subsection (2), for “plaintiff” there is substituted “ claimant ”. E+W+S+N.I.

Prospective

17 In section 70 (remedy for groundless threats of infringement proceedings), in subsection (3)(c), for “plaintiff” there is substituted “ claimant ”. E+W+S+N.I.

Prospective

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) ”. E+W+S+N.I.

Prospective

19 In section 75 (amendment of patent in infringement or revocation proceedings), in subsection (1), for “is” there is substituted “ may be ”. E+W+S+N.I.

Prospective

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 ”. E+W+S+N.I.

Prospective

21 In section 95 (financial provision)— E+W+S+N.I.

(a) in subsection (1), “the Community Patent Convention” is omitted;

(b) in subsection (2), for “either of those conventions” there is substituted “ that convention ”.

Prospective

22 In sections 103 and 105 (legal privilege), in the definition of “the relevant conventions” in subsection (2), “the Community Patent Convention” is omitted. E+W+S+N.I.

23 In section 117A (inserted by the Regulatory Reform Order) (effect of resuscitating applications), after subsection (6) there is inserted— E+W+S+N.I.

“(7) 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).

“Patented invention” has the same meaning as in section 55 above.”

Prospective

24 (1) Section 120 (hours of business and excluded days) is amended as follows. E+W+S+N.I.

(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 ”.

(3) After subsection (2) there is inserted—

“(3) Directions under this section shall be published in the prescribed manner.”

Prospective

25 In section 121 (comptroller’s annual report)— E+W+S+N.I.

(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 ”.

Prospective

26 (1) Section 123 (rules) is amended as follows. E+W+S+N.I.

(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;”.

(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.

Prospective

27 In section 130(1) (interpretation)— E+W+S+N.I.

(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.

Prospective

28 In section 131 (Northern Ireland), at the end there is inserted— E+W+S+N.I.

“(f) any reference to a claimant includes a reference to a plaintiff.”