Patents Act 1977

1. Introductory Text

2. Part I New Domestic Law

   1. Patentability

      1. 1. Patentable inventions.

      2. 2. Novelty.

      3. 3. Inventive step.

      4. 4. Industrial application.

      5. 4A. Methods of treatment or diagnosis

      6. 5. Priority date.

      7. 6. Disclosure of matter, etc., between earlier and later applications.

   2. Right to apply for and obtain a patent and be mentioned as inventor

      1. 7. Right to apply for and obtain a patent.

      2. 8. Determination before grant of questions about entitlement to patents, etc.

      3. 9. Determination after grant of questions referred before grant.

      4. 10. Handling of application by joint applicants.

      5. 11. Effect of transfer of application under s. 8 or 10.

      6. 12. Determination of questions about entitlement to foreign and convention patents, etc.

      7. 13. Mention of inventor.

   3. Applications

      1. 14. Making of application.

      2. 15. Date of filing application.

      3. 15A. Preliminary examination

      4. 16. Publication of application.

   4. Examination and search

      1. 17. Search.

      2. 18. Substantive examination and grant or refusal of patent.

      3. 19. General power to amend application before grant.

      4. 20. Failure of application.

      5. 20A. Reinstatement of applications

      6. 20B. Effect of reinstatement under section 20A

      7. 21. Observations by third party on patentability.

   5. Security and safety

      1. 22. Information prejudicial to national security or safety of public.

      2. 23. Restrictions on applications abroad by United Kingdom residents.

   6. Provisions as to patents after grant

      1. 24. Publication and certificate of grant.

      2. 25. Term of patent.

      3. 26. Patent not to be impugned for lack of unity.

      4. 27. General power to amend specification after grant.

      5. 28. Restoration of lapsed patents.

      6. 28A. Effect of order for restoration of patent.

      7. 29. Surrender of patents.

   7. Property in patents and applications, and registration

      1. 30. Nature of, and transactions in, patents and applications for patents.

      2. 31. Nature of, and transactions in, patents and applications for patents in Scotland.

      3. 32. Register of patents etc.

      4. 33. Effect of registration, etc., on rights in patents.

      5. 34. Rectification of register.

      6. 35. New Domestic Law

      7. 36. Co-ownership of patents and applications for patents.

      8. 37. Determination of right to patent after grant.

      9. 38. Effect of transfer of patent under s. 37.

   8. Employees’ inventions

      1. 39. Right to employees’ inventions.

      2. 40. Compensation of employees for certain inventions.

      3. 41. Amount of compensation.

      4. 42. Enforceability of contracts relating to employees’ inventions.

      5. 43. Supplementary.

   9. Contracts as to patented products, etc.

      1. 44. New Domestic Law

      2. 45. Determination of parts of certain contracts.

   10. Licences of right and compulsory licences

       1. 46. Patentee’s application for entry in register that licences are available as of right.

       2. 47. Cancellation of entry made under s. 46.

       3. 48. Compulsory licences: general.

       4. 48A. Compulsory licences: WTO proprietors.

       5. 48B. Compulsory licences: other cases.

       6. 49. Provisions about licences under s. 48.

       7. 50. Exercise of powers on applications under s. 48.

       8. 50A. Powers exercisable following merger and market investigations

       9. 51. Powers exercisable in consequence of report of Competition and Markets Authority.

       10. 52. Opposition, appeal and arbitration.

       11. 53. Compulsory licences; supplementary provisions.

       12. 54. Special provisions where patented invention is being worked abroad.

   11. Use of patented inventions for services of the Crown

       1. 55. Use of patented inventions for services of the Crown.

       2. 56. Interpretation, etc., of provisions about Crown use.

       3. 57. Rights of third parties in respect of Crown use.

       4. 57A. Compensation for loss of profit.

       5. 58. References of disputes as to Crown use.

       6. 59. Special provisions as to Crown use during emergency.

   12. Infringement

       1. 60. Meaning of infringement.

       2. 61. Proceedings for infringement of patent.

       3. 62. Restrictions on recovery of damages for infringement.

       4. 63. Relief for infringement of partially valid patent.

       5. 64. Right to continue use begun before priority date.

       6. 65. Certificate of contested validity of patent.

       7. 66. Proceedings for infringement by a co-owner.

       8. 67. Proceedings for infringement by exclusive licensee.

       9. 68. Effect of non-registration on infringement proceedings.

       10. 69. Infringement of rights conferred by publication of application.

       11. 70. Threats of infringement proceedings

       12. 70A. Actionable threats

       13. 70B. Permitted communications

       14. 70C. Remedies and defences

       15. 70D. Professional advisers

       16. 70E. Supplementary: pending registration

       17. 70F. Supplementary: proceedings for delivery up etc.

   13. Declaration or declarator as to non-infringement

       1. 71. Declaration or declarator as to non-infringement

   14. Revocation of patents

       1. 72. Power to revoke patents on application.

       2. 73. Comptroller’s power to revoke patents on his own initiative.

   15. Putting validity in issue

       1. 74. Proceedings in which validity of patent may be put in issue.

   16. Opinions by Patent Office

       1. 74A. Opinions on matters prescribed in the rules

       2. 74B. Reviews of opinions under section 74A

   17. General provisions as to amendment of patents and applications

       1. 75. Amendment of patent in infringement or revocation proceedings.

       2. 76. Amendments of applications and patents not to include added matter.

       3. 76A. Biotechnological inventions

3. Part II Provisions about International Conventions

   1. European patents and patent applications

      1. 77. Effect of European patent (UK).

      2. 78. Effect of filing an application for a European patent (UK).

      3. 79. Operation of s. 78 in relation to certain European patent applications.

      4. 80. Authentic text of European patents and patent applications.

      5. 81. Conversion of European patent applications.

      6. 82. Jurisdiction to determine questions as to right to a patent.

      7. 83. Effect of patent decisions of competent authorities of other states.

      8. 83A. European patent with unitary effect and Unified Patent Court

      9. 84. Provisions about International Conventions

      10. 85. Provisions about International Conventions

   2. Community patents

      1. 86. Implementation of Community Patent Convention.

      2. 87. Decisions on Community Patent Convention.

      3. 88. Provisions about International Conventions

   3. Unified Patent Court

      1. 88A. Implementation of Agreement on a Unified Patent Court

      2. 88B. Designation as international organisation of which UK is member

   4. International applications for patents

      1. 89. Effect of international application for patent.

      2. 89A. International and national phases of application.

      3. 89B. Adaptation of provisions in relation to international application.

   5. Convention countries

      1. 90. Orders in Council as to convention countries.

   6. Miscellaneous

      1. 91. Evidence of conventions and instruments under conventions.

      2. 92. Obtaining evidence for proceedings under the European Patent Convention.

      3. 93. Enforcement of orders for costs.

      4. 94. Communication of information to the European Patent Office, etc.

      5. 95. Financial provisions.

4. Part III Miscellaneous and General

   1. Legal Proceedings

      1. 96. The Patents Court.

      2. 97. Appeals from the comptroller.

      3. 98. Proceedings in Scotland.

      4. 99. General powers of the court.

      5. 99A. Power of Patents Court to order report.

      6. 99B. Power of Court of Session to order report.

      7. 100. Burden of proof in certain cases.

      8. 101. Exercise of comptroller’s discretionary powers.

      9. 102. Right of audience, &c. in proceedings before comptroller.

      10. 102A. Right of audience, &c. in proceedings on appeal from the comptroller.

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

      12. 104. Privilege for communications with patent agents relating to patent proceedings.

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

      14. 106. Costs and expenses in proceedings before the Court ....

      15. 107. Costs and expenses in proceedings before the comptroller.

      16. 108. Licences granted by order of comptroller.

   2. Offences

      1. 109. Falsification of register etc.

      2. 110. Unauthorised claim of patent rights.

      3. 111. Unauthorised claim that patent has been applied for.

      4. 112. Misuse of title “Patent Office”.

      5. 113. Offences by corporations.

      6. 114. Miscellaneous and General

      7. 115. Miscellaneous and General

   3. Immunity of department

      1. 116. Immunity of department as regards official acts.

   4. Administrative provisions

      1. 117. Correction of errors in patents and applications.

      2. 117A. Effect of resuscitating a withdrawn application under section 117

      3. 117B. Extension of time limits specified by comptroller

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

      5. 118A. Copyright in documents made available electronically for inspection under section 118(1)

      6. 119. Service by post.

      7. 120. Hours of business and excluded days.

      8. 121. Comptroller’s annual report.

   5. Supplemental

      1. 122. Crown’s right to sell forfeited articles.

      2. 123. Rules.

      3. 124. Rules, regulations and orders; supplementary.

      4. 124A. Use of electronic communications

      5. 125. Extent of invention.

      6. 125A. Disclosure of invention by specification: availablity of samples of biological material.

      7. 126. Supplemental

      8. 127. Existing patents and applications.

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

      10. 128A. Compulsory pharmaceutical licences

      11. 128B. Supplementary protection certificates

      12. 129. Application of Act to Crown.

      13. 130. Interpretation.

      14. 131. Northern Ireland.

      15. 131A. Scotland

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

5. SCHEDULES

   1. SCHEDULE A1

      DEROGATION FROM PATENT PROTECTION IN RESPECT OF BIOTECHNOLOGICAL INVENTIONS

      1. 1. Interpretation

      2. 2. Specified species

      3. 3. Liability to pay equitable remuneration

      4. 4. Exemption for small farmers

      5. 5. Information to be supplied by farmer

      6. 6. Information to be supplied by seed processor

      7. 7. Information to be supplied by relevant rights holder

      8. 8. Period in respect of which inquiry may be made

      9. 9. Restriction on movement for processing from the holding

      10. 10. Confidentiality

      11. 11. Formalities

      12. 12. Remedies

   2. SCHEDULE A2

      BIOTECHNOLOGICAL INVENTIONS

      1. 1. An invention shall not be considered unpatentable solely on the...

      2. 2. Biological material which is isolated from its natural environment or...

      3. 3. The following are not patentable inventions— (a) the human body,...

      4. 4. Inventions which concern plants or animals may be patentable if...

      5. 5. An element isolated from the human body or otherwise produced...

      6. 6. The industrial application of a sequence or partial sequence of...

      7. 7. The protection conferred by a patent on a biological material...

      8. 8. The protection conferred by a patent on a process that...

      9. 9. The protection conferred by a patent on a product containing...

      10. 10. The protection referred to in paragraphs 7, 8 and 9...

      11. 11. In this Schedule: “essentially biological process” means a process for...

   3. SCHEDULE A3

      EUROPEAN PATENT WITH UNITARY EFFECT

      1. Meaning of “relevant statutory provisions”

         1. 1. In this Schedule “relevant statutory provisions” means—

      2. Provisions applied by this Schedule to the European patent with unitary effect

         1. 2. The following provisions of this Act apply in relation to...

      3. Manner of application of relevant statutory provisions

         1. 3. The relevant statutory provisions apply in relation to a European...

      4. Modifications of relevant statutory provisions

         1. 4. (1) In their application in relation to the European patent...

      5. Interpretation

         1. 5. In this Schedule— (a) “Contracting Member State” has the same...

   4. SCHEDULE A4

      THE UNIFIED PATENT COURT

      1. Jurisdiction

         1. 1. The Unified Patent Court has exclusive jurisdiction in respect of...

      2. Transitional provisions

         1. 2. (1) The transitional provisions in Article 83 apply in relation...

      3. Modifications of law applicable where UPC has jurisdiction

         1. 3. (1) In the case of an Article 32(1) action relating...

      4. Enforcement

         1. 4. (1) For the purposes of enforcement of a decision or...

      5. Interpretation

         1. 5. In this Schedule— (a) “Article 32(1) action” means an action...

   5. SCHEDULE 1

      Application of 1949 Act to existing patents and applications

      1. 1. (1) The provisions of the 1949 Act referred to in...

      2. 2. (1) In section 6 of the 1949 Act, at the...

      3. 3. (1) This paragraph and paragraph 4 below shall have effect...

      4. 4. (1) The term of every new existing patent under section...

      5. 4A. (1) If the proprietor of a patent for an invention...

      6. 4B. (1) An application under section 46(3)(a) or (b) above for...

      7. 5. In section 26(3) of the 1949 Act (no patent of...

      8. 6. Notwithstanding anything in section 32(1)(j) of the 1949 Act (ground...

      9. 7. (1) In section 33 of the 1949 Act (revocation of...

      10. 8. In section 101(1) of the 1949 Act (interpretation) there shall...

   6. SCHEDULE 2

      Application of this Act to Existing Patents and Applications

      1. 1. (1) Without prejudice to those provisions of Schedule 4 below...

      2. 2. In those provisions as they apply by virtue of this...

   7. SCHEDULE 3

      REPEALS OF PROVISIONS OF 1949 ACT

      1. 1. Subject to the provisions of Schedule 4 below, the provisions...

      2. 2. The provisions are:— (a) section 14 (opposition to grant of...

   8. SCHEDULE 4

      Transitional Provisions

      1. General

         1. 1. In so far as any instrument made or other thing...

      2. Use of patented invention for services of the Crown

         1. 2. (1) Any question whether— (a) an act done before the...

      3. Infringement

         1. 3. (1) Any question whether an act done before the appointed...

      4. Notice of opposition

         1. 4. (1) Where notice of opposition to the grant of a...

      5. Secrecy

         1. 5. (1) Where directions given under section 18 of the 1949...

      6. Revocation

         1. 6. (1) Where before the appointed day an application has been...

         2. 7. (1) This paragraph applies where an application has been made...

      7. Licences of right and compulsory licences

         1. 8. (1) Sections 35 to 41 and 43 to 45 of...

      8. Convention countries

         1. 9. (1) Without prejudice to paragraph 1 above, an Order in...

      9. Appeals from court on certain petitions for revocation

         1. 10. Where the court has given judgment on a petition under...

      10. Appeals from comptroller under continuing provisions of 1949 Act

          1. 11. (1) In this paragraph “the continuing 1949 Act provisions” means...

      11. Appeals from comptroller under repealed provisions of 1949 Act

          1. 12. (1) This paragraph applies where an appeal to the Appeal...

      12. Appeals from Appeal Tribunal to Court of Appeal

          1. 13. Section 87(1) of the 1949 Act shall continue to apply...

      13. Rules

          1. 14. The power to make rules under section 123 of this...

      14. Supplementary

          1. 15. Section 97(2) of this Act applies to—

          2. 16. In this Schedule “the old law” means the 1949 Act,...

          3. 17. For the purposes of this Schedule— (a) issue is joined...

          4. 18. (1) Nothing in the repeals made by this Act in...

   9. SCHEDULE 4A

      SUPPLEMENTARY PROTECTION CERTIFICATES

      1. 1. References to patents etc

      2. 2. (1) In the case of the provisions of this Act...

      3. 3. References to this Act etc

      4. 4. Other references

      5. 5. Fees

      6. 6. Interpretation

      7. 7. In this Act— (a) “the Medicinal Products Regulation” means Regulation...

      8. 8. Transitional provision

   10. SCHEDULE 5

       CONSEQUENTIAL AMENDMENTS

       1. 1, 2. CONSEQUENTIAL AMENDMENTS

       2. 3. In sections 42 and 44(1) of the Registered Designs Act...

       3. Defence Contracts Act 1958 (c. 38)

          1. 4. In subsection (4) of section 4 of the Defence Contracts...

       4. Administration of Justice Act 1970 (c. 31)

          1. 5. (1) In subsections (2) and (3) of section 10 of...

       5. Atomic Energy Authority (Weapons Group) Act 1973 (c. 4)

          1. 6. In section 5(2) of the Atomic Energy Authority (Weapons Group)...

          2. 7, 8. CONSEQUENTIAL AMENDMENTS

   11. SCHEDULE 6

       ENACTMENTS REPEALED