Patents Act 1977

European patents and patent applications U.K.

77 Effect of European patent (UK). U.K.

(1) Subject to the provisions of this Act, a European patent (UK) shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated for the purposes of Parts I and III of this Act as if it were a patent under this Act granted in pursuance of an application made under this Act and as if notice of the grant of the patent had, on the date of that publication, been published under section 24 above in the journal; and—

(a) the proprietor of a European patent (UK) shall accordingly as respects the United Kingdom have the same rights and remedies, subject to the same conditions, as the proprietor of a patent under this Act;

(b) references in Parts I and III of this Act to a patent shall be construed accordingly; and

(c) any statement made and any certificate filed for the purposes of the provision of the convention corresponding to section 2(4)(c) above shall be respectively treated as a statement made and written evidence filed for the purposes of the said paragraph (c).

(2) Subsection (1) above shall not affect the operation in relation to a European patent (UK) of any provisions of the European Patent Convention relating to the amendment or revocation of such a patent in proceedings before the European Patent Office.

[F1 (3) Where in the case of a European patent (UK)—

(a) proceedings for infringement, or proceedings under section 58 above, have been commenced before the court or the comptroller and have not been finally disposed of, and

(b) it is established in proceedings before the European Patent Office that the patent is only partially valid,

the provisions of section 63 or, as the case may be, of subsections (7) to (9) of section 58 apply as they apply to proceedings in which the validity of a patent is put in issue and in which it is found that the patent is only partially valid.]

[F2 (4) Where a European patent (UK) is amended in accordance with the European Patent Convention [F3 or the Agreement on a Unified Patent Court], the amendment shall have effect for the purposes of Parts I and III of this Act as if the specification of the patent had been amended under this Act; but subject to subsection (6)(b) below.

(4A) Where a European patent (UK) is revoked in accordance with the European Patent Convention [F4 or the Agreement on a Unified Patent Court], the patent shall be treated for the purposes of Parts I and III of this Act as having been revoked under this Act.]

(5) Where—

(a) under the European Patent Convention [F5 or the Agreement on a Unified Patent Court] a European patent (UK) is revoked for failure to observe a time limit and is subsequently restored [F6 or is revoked by the Board of Appeal and is subsequently restored by the Enlarged Board of Appeal] [F7 or is revoked and subsequently restored by the Unified Patent Court]; and

(b) between the revocation and publication of the fact that it has been restored a person begins in good faith to do an act which would, apart from section 55 above, constitute an infringement of the patent or makes in good faith effective and serious preparations to do such an act;

he shall have the rights conferred by [F8 section 28A(4) and (5) above, and subsections (6) and (7) of that section shall apply accordingly.]

[F9 (5A) Where, under the European Patent Convention [F10 or the Agreement on a Unified Patent Court], a European patent (UK) is revoked and subsequently restored (including where it is revoked by the Board of Appeal and subsequently restored by the Enlarged Board of Appeal), any fee that would have been imposed in relation to the patent after the revocation but before the restoration is payable within the prescribed period following the restoration.]

(6) [F11 While this subsection is in force—

(a) subsection (1) above shall not apply to a European patent (UK) the specification of which was published in French or German, unless a translation of the specification into English is filed at the Patent Office and the prescribed fee is paid before the end of the prescribed period;

(b) subsection (4) above shall not apply to an amendment made in French or German unless [F12 a translation into English of the specification as amended] is filed at the Patent Office and the prescribed fee is paid before the end of the prescribed period.]

(7) Where [F13 such a translation is not filed], the patent shall be treated as always having been void.

(8) The comptroller shall publish any translation filed at the Patent Office under subsection (6) above.

(9) Subsection (6) above shall come into force on a day appointed for the purpose by rules and shall cease to have effect on a day so appointed, without prejudice, however, to the power to bring it into force again.

[F14 (10) Subsection (1) does not apply and is to be treated as never having applied in respect of a European patent (UK) whose unitary effect is registered by the European Patent Office in the Register for unitary patent protection (see, in particular, the Unitary Patent Regulation).]

Textual Amendments

F1 S. 77(3) substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 295, Sch. 5 para. 21(2)

F2 S. 77(4)(4A) substituted for subsection (4) by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 295, Sch. 5 para. 21(3)

F3 Words in s. 77(4) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(a) (with art. 3)

F4 Words in s. 77(4A) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(a) (with art. 3)

F5 Words in s. 77(5)(a) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(b)(i) (with art. 3)

F6 Words in s. 77(5)(a) inserted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 2; S.I. 2007/3396, art. 2(j)

F7 Words in s. 77(5)(a) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(b)(ii) (with art. 3)

F8 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 295, Sch. 5 para. 8(b)

F9 S. 77(5A) inserted (1.10.2014) by Intellectual Property Act 2014 (c. 18), s. 24(1), Sch. para. 6; S.I. 2014/2330, art. 3, Sch. (with art. 8)

F10 Words in s. 77(5A) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(a) (with art. 3)

F11 S. 77(6) ceased to have effect (6.4.2005) by virtue of The Patents (Translations) Rules 2005 (S.I. 2005/687), art. 1rule 23

F12 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 295, Sch. 5 para. 21(4)

F13 Words substituted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 295, Sch. 5 para. 21(5)

F14 S. 77(10) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(c) (with art. 3)

Modifications etc. (not altering text)

C1 S. 77(9): 1.9.1987 appointed by S.I. 1987/288, rule 4(1) (subject to a saving in rule 4(2))

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

(1) Subject to the provisions of this Act, an application for a European patent (UK) having a date of filing under the European Patent Convention shall be treated for the purposes of the provisions of this Act to which this section applies as an application for a patent under this Act having that date as its date of filing and having the other incidents listed in subsection (3) below, but subject to the modifications mentioned in the following provisions of this section.

(2) This section applies to the following provisions of this Act:—

• section 2(3) and so much of section 14(7) as relates to section 2(3);

• section 5;

• section 6;

• so much of section 13(3) as relates to an application for and issue of a certificate under that subsection;

• sections 30 to 33;

• section 36;

• sections 55 to 69;

• [F15 sections 70 to 70F ]

• section 74, so far as relevant to any of the provisions mentioned above;

• section 111; and

• section 125.

(3) The incidents referred to in subsection (1) above in relation to an application for a European patent (UK) are as follows:—

(a) any declaration of priority made in connection with the application under the European Patent Convention shall be treated for the purposes of this Act as a declaration made under section 5(2) above;

(b) where a period of time relevant to priority is extended under that convention, the period of twelve months [F16 allowed under section 5(2A)(a)] above shall be so treated as altered correspondingly;

(c) where the date of filing an application is re-dated under that convention to a later date, that date shall be so treated as the date of filing the application;

(d) the application, if published in accordance with that convention, shall, subject to subsection (7) and section 79 below, be so treated as published under section 16 above;

(e) any designation of the inventor under that convention or any statement under it indicating the origin of the right to a European patent shall be treated for the purposes of section 13(3) above as a statement filed under section 13(2) above;

(f) registration of the application in the register of European patents shall be treated as registration under this Act.

(4) Rules under section 32 above may not impose any requirements as to the registration of applications for European patents (UK) but may provide for the registration of copies of entries relating to such applications in the European register of patents.

[F17 (5) Subsections (1) to (3) above shall cease to apply to an application for a European patent (UK), except as mentioned in subsection (5A) below, if—

(a) the application is refused or withdrawn or deemed to be withdrawn, or

(b) the designation of the United Kingdom in the application is withdrawn or deemed to be withdrawn,

but shall apply again if the rights of the applicant are re-established under the European Patent Convention, as from their re-establishment.

(5A) The occurrence of any of the events mentioned in subsection (5)(a) or (b) shall not affect the continued operation of section 2(3) above in relation to matter contained in an application for a European patent (UK) which by virtue of that provision has become part of the state of the art as regards other inventions.] [F18 ; and the occurrence of any event mentioned in subsection (5)(b) shall not prevent matter contained in an application for a European patent (UK) becoming part of the state of the art by virtue of section 2(3) above as regards other inventions where the event occurs before the publication of that application.]

[F19 (6) Where, between subsections (1) to (3) above ceasing to apply to an application for a European patent (UK) and the re-establishment of the rights of the applicant, a person—

(a) begins in good faith to do an act which would constitute an infringement of the rights conferred by publication of the application if those subsections then applied, or

(b) makes in good faith effective and serious preparations to do such an act,

he shall have the right to continue to do the act or, as the case may be, to do the act, notwithstanding subsections (1) to (3) applying again and notwithstanding the grant of the patent.

(6A) Subsections (5) and (6) of section 20B above have effect for the purposes of subsection (6) above as they have effect for the purposes of that section and as if the references to subsection (4) of that section were references to subsection (6) above.

(6B) Subject to subsection (6A) above, the right conferred by subsection (6) above does not extend to granting a licence to another person to do the act in question.

(6C) Subsections (6) to (6B) above apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to an infringement of the rights conferred by publication of the application (or, as the case may be, infringement of the patent).

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

(7) While this subsection is in force, an application for a European patent (UK) published by the European Patent Office under the European Patent Convention in French or German shall be treated for the purposes of sections 55 and 69 above as published under section 16 above when a translation into English of the claims of the specification of the application has been filed at and published by the Patent Office and the prescribed fee has been paid, but an applicant—

(a) may recover a payment by virtue of section 55(5) above in respect of the use of the invention in question before publication of that translation; or

(b) may bring proceedings by virtue of section 69 above in respect of an act mentioned in that section which is done before publication of that translation;

if before that use or the doing of that act he has sent by post or delivered to the government department who made use or authorised the use of the invention, or, as the case may be, to the person alleged to have done the act, a translation into English of those claims.

(8) Subsection (7) above shall come into force on a day appointed for the purpose by rules and shall cease to have effect on a day so appointed, without prejudice, however, to the power to bring it into force again.

Textual Amendments

F15 Words in s. 78(2) inserted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(6), 8; S.I. 2017/771, reg. 2(1)(a) (with reg. 3)

F16 Words in s. 78(3)(b) substituted (1.1.2005) by The Regulatory Reform (Patents) Order 2004 (S.I. 2004/2357), arts. 1(2), 14 (with arts. 20-23)

F17 S. 78(5)(5A) substituted for subsection (5) by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 295, Sch. 5 para. 22

F18 Words in s. 78(5A) inserted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 3(2); S.I. 2007/3396, art. 2(j) (with art. 3)

F19 S. 78(6)-(6C) substituted for s. 78(6) (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 3(3); S.I. 2007/3396, art. 2(j)

Modifications etc. (not altering text)

C2 S. 78(8): 1.9.1986 appointed by S.I. 1987/288, rule 4(1) (subject to saving in rule 4(2))

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

(1) Subject to the following provisions of this section, section 78 above, in its operation in relation to an international application for a patent (UK) which is treated by virtue of the European Patent Convention as an application for a European patent (UK), shall have effect as if any reference in that section to anything done in relation to the application under the European Patent Convention included a reference to the corresponding thing done under the Patent Co-operation Treaty.

(2) Any such international application which is published under that treaty shall be treated for the purposes of section 2(3) above as published only when a copy of the application has been supplied to the European Patent Office in English, French or German and the relevant fee has been paid under that convention.

(3) Any such international application which is published under that treaty in a language other than English, French or German shall, subject to section 78(7) above, be treated for the purposes of sections 55 and 69 above as published only when it is re-published in English, French or German by the European Patent Office under that convention.

80 Authentic text of European patents and patent applications. U.K.

(1) Subject to subsection (2) below, the text of a European patent or application for such a patent in the language of the proceedings, that is to say, the language in which proceedings relating to the patent or the application are to be conducted before the European Patent Office, shall be the authentic text for the purposes of any domestic proceedings, that is to say, any proceedings relating to the patent or application before the comptroller or the court.

(2) Where the language of the proceedings is French or German, a translation into English of the specification of the patent under section 77 above or of the claims of the application under section 78 above shall be treated as the authentic text for the purpose of any domestic proceedings, other than proceedings for the revocation of the patent, if the patent or application as translated into English confers protection which is narrower than that conferred by it in French or German.

(3) If any such translation results in a European patent or application conferring the narrower protection, the proprietor of or applicant for the patent may file a corrected translation with the Patent Office and, if he pays the prescribed fee within the prescribed period, the Patent Office shall publish it, but—

(a) any payment for any use of the invention which (apart from section 55 above) would have infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted, shall not be recoverable under that section,

(b) the proprietor or applicant shall not be entitled to bring proceedings in respect of an act which infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted,

unless before that use or the doing of the act the corrected translation has been published by the Patent Office or the proprietor or applicant has sent the corrected translation by post or delivered it to the government department who made use or authorised the use of the invention or, as the case may be, to the person alleged to have done that act.

[F20 (4) Where a correction of a translation is published under subsection (3) above and before it is so published a person—

(a) begins in good faith to do an act which would not constitute an infringement of the patent as originally translated, or of the rights conferred by publication of the application as originally translated, but would do so under the amended translation, or

(b) makes in good faith effective and serious preparations to do such an act,

he shall have the right to continue to do the act or, as the case may be, to do the act, notwithstanding the publication of the corrected translation and notwithstanding the grant of the patent.

(5) Subsections (5) and (6) of section 28A above have effect for the purposes of subsection (4) above as they have effect for the purposes of that section and as if—

(a) the references to subsection (4) of that section were references to subsection (4) above;

(b) the reference to the registered proprietor of the patent included a reference to the applicant.

(6) Subject to subsection (5) above, the right conferred by subsection (4) above does not extend to granting a licence to another person to do the act in question.

(7) Subsections (4) to (6) above apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to an infringement of the patent or of the rights conferred by the publication of the application.

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

Textual Amendments

F20 S. 80(4)-(7) substituted for s. 80(4) (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 4; S.I. 2007/3396, art. 2(j)

81 Conversion of European patent applications. U.K.

(1) The comptroller may direct that on compliance with the relevant conditions mentioned in subsection (2) below an application for a European patent (UK) shall be treated as an application for a patent under this Act [F21 where the application is deemed to be withdrawn under the provisions of the European Patent Convention relating to the time for forwarding applications to the European Patent Office]

(2) The relevant conditions referred to above are F22 ...—

(a) F22 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(b) [F23 that] ,—

(i) the applicant requests the comptroller within the relevant prescribed period (where the application was filed with the Patent Office) to give a direction under this section, or

(ii) the central industrial property office of a country which is party to the convention, other than the United Kingdom, with which the application was filed transmits within the relevant prescribed period a request that the application should be converted into an application under this Act, together with a copy of the application; and

(c) [F24 that] the applicant within the relevant prescribed period pays the [F25 application fee] and if the application is in a language other than English, files a translation into English of the application and of any amendments previously made in accordance with the convention.

(3) Where an application for a European patent falls to be treated as an application for a patent under this Act by virtue of a direction under this section—

(a) the date which is the date of filing the application under the European Patent Convention shall be treated as its date of filing for the purposes of this Act, but if that date is re-dated under the convention to a later date, that later date shall be treated for those purposes as the date of filing the application;

(b) if the application satisfies a requirement of the convention corresponding to any of the requirements of this Act or rules designated as formal requirements, it shall be treated as satisfying that formal requirement;

(c) any document filed with the European Patent Office under any provision of the convention corresponding to any of the following provisions of this Act, that is to say, sections 2(4)(c), 5, 13(2) and 14, or any rule made for the purposes of any of those provisions, shall be treated as filed with the Patent Office under that provision or rule; and

(d) the comptroller shall refer the application for only so much of the examination and search required by sections [F26 15A,] 17 and 18 above as he considers appropriate in view of any examination and search carried out under the convention, and those sections shall apply with any necessary modifications accordingly.

Textual Amendments

F21 Words in s. 81(1) substituted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(2); S.I. 2007/3396, art. 2(j)

F22 S. 81(2)(a) and word repealed (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(3)(a), Sch. 3; S.I. 2007/3396, art. 2(i)(j)

F23 Word in s. 81(2)(b) substituted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(3)(b); S.I. 2007/3396, art. 2(j)

F24 Word in s. 81(2)(c) substituted (13.12.2007) by Patents Act 2004 (c. 16), s. 17(1), Sch. 1 para. 5(3)(c); S.I. 2007/3396, art. 2(j)

F25 Words in s. 81(2)(c) substituted (1.1.2005) by The Regulatory Reform (Patents) Order 2004 (S.I. 2004/2357), arts. 1(2), 15(2) (with arts. 20-23)

F26 Word in s. 81(3)(d) inserted (1.1.2005) by The Regulatory Reform (Patents) Order 2004 (S.I. 2004/2357), arts. 1(2), 15(3) (with arts. 20-23)

82 Jurisdiction to determine questions as to right to a patent. U.K.

(1) The court shall not have jurisdiction to determine a question to which this section applies except in accordance with the following provisions of this section.

(2) Section 12 above shall not confer jurisdiction on the comptroller to determine a question to which this section applies except in accordance with the following provisions of this section.

(3) This section applies to a question arising before the grant of a European patent whether a person has a right to be granted a European patent, or a share in any such patent, and in this section “employer-employee question” means any such question between an employer and an employee, or their successors in title, arising out of an application for a European patent for an invention made by the employee.

(4) The court and the comptroller shall have jurisdiction to determine any question to which this section applies, other than an employer-employee question, if either of the following conditions is satisfied, that is to say—

(a) the applicant has his residence or principal place of business in the United Kingdom; or

(b) the other party claims that the patent should be granted to him and he has his residence or principal place of business in the United Kingdom and the applicant does not have his residence or principal place of business in any of the relevant contracting states;

and also if in either of those cases there is no written evidence that the parties have agreed to submit to the jurisdiction of the competent authority of a relevant contracting state other than the United Kingdom.

(5) The court and the comptroller shall have jurisdiction to determine an employer-employee question if either of the following conditions is satisfied, that is to say—

(a) the employee is mainly employed in the United Kingdom; or

(b) the employee is not mainly employed anywhere or his place of main employment cannot be determined, but the employer has a place of business in the United Kingdom to which the employee is attached (whether or not he is also attached elsewhere);

and also if in either of those cases there is no written evidence that the parties have agreed to submit to the jurisdiction of the competent authority of a relevant contracting state other than the United Kingdom or, where there is such evidence of such an agreement, if the [F27 law applicable to] the contract of employment does not recognise the validity of the agreement.

(6) Without prejudice to subsections (2) to (5) above, the court and the comptroller shall have jurisdiction to determine any question to which this section applies if there is written evidence that the parties have agreed to submit to the jurisdiction of the court or the comptroller, as the case may be, and, in the case of an employer-employee question, the [F27 law applicable to] the contract of employment recognises the validity of the agreement.

(7) If, after proceedings to determine a question to which this section applies have been brought before the competent authority of a relevant contracting state other than the United Kingdom, proceedings are begun before the court or a reference is made to the comptroller under section 12 above to determine that question, the court or the comptroller, as the case may be, shall stay or sist the proceedings before the court or the comptroller unless or until the competent authority of that other state either—

(a) determines to decline jurisdiction and no appeal lies from the determination or the time for appealing expires, or

(b) makes a determination which the court or the comptroller refuses to recognise under section 83 below.

(8) References in this section to the determination of a question include respectively references to—

(a) the making of a declaration or the grant of a declarator with respect to that question (in the case of the court); and

(b) the making of an order under section 12 above in relation to that question (in the case of the court or the comptroller).

(9) In this section and section 83 below “relevant contracting state” means a country which is a party to the European Patent Convention and has not exercised its right under the convention to exclude the application of the protocol to the convention known as the Protocol on Recognition.

Textual Amendments

F27 Words in s. 82(5)(6) substituted (1.4.1991) by Contracts (Applicable Law) Act 1990 (c. 36, SIF 30), s. 5, Sch. 4 para. 3; S.I. 1991/707, art. 2

83 Effect of patent decisions of competent authorities of other states. U.K.

(1) A determination of a question to which section 82 above applies by the competent authority of a relevant contracting state other than the United Kingdom shall, if no appeal lies from the determination or the time for appealing has expired, be recognised in the United Kingdom as if it had been made by the court or the comptroller unless the court or he refuses to recognise it under subsection (2) below.

(2) The court or the comptroller may refuse to recognise any such determination that the applicant for a European patent had no right to be granted the patent, or any share in it, if either—

(a) the applicant did not contest the proceedings in question because he was not notified of them at all or in the proper manner or was not notified of them in time for him to contest the proceedings; or

(b) the determination in the proceedings in question conflicts with the determination of the competent authority of any relevant contracting state in proceedings instituted earlier between the same parties as in the proceedings in question.

[F28 83A European patent with unitary effect and Unified Patent Court U.K.

(1) Schedule A3 contains provision about the application of this Act in relation to the European patent with unitary effect.

(2) Schedule A4 contains provision about the jurisdiction of the Unified Patent Court in relation to the European patent (UK) and the European patent with unitary effect.]

Textual Amendments

F28 S. 83A inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(6) (with art. 3)

84 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F29 U.K.

Textual Amendments

F29 S. 84 repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 303(2), Sch. 8

85 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . F30 U.K.

Textual Amendments

F30 S. 85 repealed by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 303(2), Sch. 8