The Patents Act 2004 (Commencement No. 2 and Consequential, etc. and Transitional Provisions) Order 2004

Explanatory Note

(This note is not part of the Order)

Article 2 of this Order brings into force, on 1st January 2005, a number of provisions of the Patents Act 2004, all but one of which make amendments to the Patents Act 1977 (“the 1977 Act”). The Order also makes a number of consequential, incidental or supplementary amendments to the Patents Rules 1995, and makes appropriate transitional provision.

Remedies in entitlement proceedings

Section 6 is brought into force, together with paragraphs 5 and 10 of Schedule 2.

Articles 4 to 7 make consequential amendments to rules 9 and 13, and also restate those rules (and the corresponding rules 57 and 58) in a clearer form.

Article 9(2) contains a transitional provision related to the amendments to sections 8, 11 and 12 of the 1977 Act and to rules 9 and 13. Thus as regards “pre-grant” entitlement questions, the changes will have effect only for questions referred to the comptroller on or after 1st January 2005. No transitional provision is necessary as regards the amendments to section 38 of the 1977 Act or rules 57 and 58, which concern “post-grant” entitlement, as these merely clarify the existing law.

Restrictions on applications abroad

Section 7 is brought into force, together with paragraph 8 of Schedule 2. No transitional provision is necessary.

Compensation of employees for certain inventions

Section 10 is brought into force, together with paragraph 11 of Schedule 2.

A transitional provision is already contained in section 10(8), with the result that the section will apply only to an invention the patent for which is applied for on or after 1st January 2005.

Enforcement of damages

Section 11 is brought into force. No transitional provision is necessary.

Threats of infringement proceedings

Section 12 is brought into force, together with paragraphs 14, 16, 17 and 28 of Schedule 2 (which make consequential terminological amendments).

Article 8 makes consequential terminological amendments to rules 72 and 73.

Article 9(3) contains a transitional provision relating to the amendments to section 70 of the 1977 Act made by section 12. Thus the changes will have effect only in relation to communications alleged to be threats which are made on or after 1st January 2005.

Costs and expenses in court proceedings

Section 14 is brought into force.

A transitional provision is already contained in section 14(4), with the result that the section will apply only to proceedings commenced on or after 1st January 2005.

Removal of references to the Community Patent Convention.

Paragraph 6 of Schedule 1, and paragraphs 12, 13, 20 to 22, 25(c), 25(d) and 27 of Schedule 2, are brought into force. No transitional provision is necessary.

Jurisdiction over post-grant amendment

Paragraph 19 of Schedule 2 is brought into force.

Article 9(4) contains a transitional provision relating to the amendment of section 75(1). Thus the amended section 75(1) will apply only to proceedings commenced on or after 1st January 2005.

Patent Co-operation Treaty

Paragraphs 7, 8, 9(2) and 9(3) of Schedule 1 are brought into force, but paragraph 9(2)(b) is brought into force only for the purposes of the Patent Co-operation Treaty. It is not brought into force for the purposes of the European Patent Convention.

Article 9(5) contains a transitional provision relating to the amendment of section 89B(2) of the 1977 Act made by paragraph 8 of Schedule 1. Thus the amended section 89B(2) will apply only to international applications which enter the UK national phase on or after 1st January 2005.

Comptroller’s annual report

Section 16(3) and paragraph 25(a) and (b) of Schedule 2 are brought into force. No transitional provision is necessary.