- Latest available (Revised)
- Original (As enacted)
The term provision is used to describe a definable element in a piece of legislation that has legislative effect – such as a Part, Chapter or section. A version of a provision is prospective either:
Commencement Orders listed in the ‘Changes to Legislation’ box as not yet applied may bring this prospective version into force.
There are outstanding changes not yet made by the legislation.gov.uk editorial team to Patents Act 2004. Any changes that have already been made by the team appear in the content and are referenced with annotations.
Revised legislation carried on this site may not be fully up to date. Changes and effects are recorded by our editorial team in lists which can be found in the ‘Changes to Legislation’ area. Where those effects have yet to be applied to the text of the legislation by the editorial team they are also listed alongside the legislation in the affected provisions. Use the ‘more’ link to open the changes and effects relevant to the provision you are viewing.
(1)After section 74 of the 1977 Act there is inserted—
(1)The proprietor of a patent or any other person may request the comptroller to issue an opinion—
(a)as to whether a particular act constitutes, or (if done) would constitute, an infringement of the patent;
(b)as to whether, or to what extent, the invention in question is not patentable because the condition in section 1(1)(a) or (b) above is not satisfied.
(2)Subsection (1) above applies even if the patent has expired or has been surrendered.
(3)The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so—
(a)in such circumstances as may be prescribed, or
(b)if for any reason he considers it inappropriate in all the circumstances to do so.
(4)An opinion under this section shall not be binding for any purposes.
(5)An opinion under this section shall be prepared by an examiner.
(6)In relation to a decision of the comptroller whether to issue an opinion under this section—
(a)for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
(b)no appeal shall lie at the instance of any other person.
(1)Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, of an opinion under section 74A above.
(2)The rules may, in particular—
(a)prescribe the circumstances in which, and the period within which, an application may be made;
(b)provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
(c)make provision under which, in prescribed circumstances, proceedings on a review are to be treated for prescribed purposes as if they were proceedings under section 61(1)(c) or (e), 71(1) or 72(1)(a) above;
(d)provide for there to be a right of appeal against a decision made on a review only in prescribed cases.”
(2)In section 74 of that Act (proceedings in which validity of patent may be put in issue), in subsection (8), after “the validity of a patent is not put in issue merely because” there is inserted “ (a) ” and at the end there is inserted “or
(b)its validity is being considered in connection with an opinion under section 74A below or a review of such an opinion.”
(3)In section 32(2) of that Act (rules about the register of patents), after paragraph (b) there is inserted—
“(ba)the entering on the register of notices concerning opinions issued, or to be issued, under section 74A below;”.
Geographical Extent: Indicates the geographical area that this provision applies to. For further information see ‘Frequently Asked Questions’.
Show Timeline of Changes: See how this legislation has or could change over time. Turning this feature on will show extra navigation options to go to these specific points in time. Return to the latest available version by using the controls above in the What Version box.
Text created by the government department responsible for the subject matter of the Act to explain what the Act sets out to achieve and to make the Act accessible to readers who are not legally qualified. Explanatory Notes were introduced in 1999 and accompany all Public Acts except Appropriation, Consolidated Fund, Finance and Consolidation Acts.
Use this menu to access essential accompanying documents and information for this legislation item. Dependent on the legislation item being viewed this may include:
Click 'View More' or select 'More Resources' tab for additional information including: