The Patents Act 2004 (Commencement No. 3 and Transitional Provisions) Order 2005

Explanatory Note

(This note is not part of the Order)

Article 2 of this Order brings into force, on 1st October 2005, a number of provisions of the Patents Act 2004 (c. 16), all of which make amendments to the Patents Act 1977 (c. 37) (“the 1977 Act”). The Order also makes appropriate transitional provision.

Changes to the Patents Rules 1995 (SI 1995/2093) and the Patents (Fees) Rules 1998 (SI 1998/1778) which are related to the commencement of those provisions are made by the Patents (Amendment) Rules 2005 (SI 2005/ ), which also come into force on 1st October 2005.

Term of patent and periods allowed for payment of renewal fees

Section 8 is brought into force, enabling both a period to be prescribed for the payment of a patent renewal fee and a date to be prescribed for the expiry of the patent for non-payment of the fee. As a result, the period prescribed for payment may end on a different date from that on which the patent expires (see rules 39 to 39B of the Patents Rules 1995 as substituted by rule 6 of the Patents (Amendment) Rules 2005). Section 8 also enables the period of grace for late payment of the fee to end at the end of the relevant month. The minor clarificatory amendment made by paragraph 15 of Schedule 2 is also brought into force.

Article 3 contains related transitional provisions. The effect of article 3(1) is that the changes in respect of the renewal fee payment period apply to a patent where the old payment period expires on or after 1st October 2005. The effect of article 3(2) and (3) is that the changes in respect of the period of grace for late payment apply to a patent where the old late payment period expires on or after 1st October 2005.

Co-ownership and revocation of patents

Section 9 and paragraph 18 of Schedule 2 are brought into force, clarifying the rights of owners and co-owners of a patent in respect of applying for its amendment or revocation.No transitional provision is necessary.

Opinions as to validity or infringement

Section 13 is brought into force, enabling requests to be made to the Patent Office for a non binding opinion on the questions of validity or infringement of a patent. (Procedures for such requests, and for the review of the resulting opinion, are contained in rules 77A to 77K of the Patents Rules 1995 inserted by rule 12 of the Patents (Amendment) Rules 2005.)No transitional provision is necessary.

Security for costs

Section 15 is brought into force, redefining the circumstances in which an order for security for costs may be made in proceedings before the comptroller and, in particular, enabling conditions for making such an order to be prescribed (for which see rule 89A of the Patents Rules 1995 inserted by rule 19 of the Patents (Amendment) Rules 2005).

Article 4 contains a transitional provision, with the result that the changes will apply only to proceedings commenced on or after 1st October 2005.

Publication of names and addresses of inventors

Paragraphs 6, 9 and 26(2) of Schedule 2 are brought into force, enabling provision to be made allowing an inventor to waive his right to be mentioned as such in documents published by the Patent Office (see rule 15A of the Patents Rules 1995 inserted by rule 2 of the Patents (Amendment) Rules 2005).

No transitional provision is necessary.