Be it enacted by the Queen’s most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:—
Amendments of the 1977 Act relating to international obligations
After section 4 of the Patents Act 1977 (c. 37) (“the 1977 Act”) there is inserted—
In section 27 of the 1977 Act (general power to amend after grant), after subsection (5) there is inserted—
In section 58 of that Act (references of disputes as to Crown use)—
in subsection (6), after “satisfied that” there is inserted “ (a) ” and at the end there is inserted;
in subsection (8), after “proves that” there is inserted “ (a) ” and after “knowledge, and” there is inserted—.
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In section 75 of that Act (amendment in infringement or revocation proceedings), after subsection (4) there is inserted—
In section 63 of the 1977 Act (relief for infringement of partially valid patent), after subsection (3) there is inserted—
In section 58 of that Act (references of disputes as to Crown use), after subsection (9) there is inserted—
In section 72 of the 1977 Act (power to revoke patents on application), in subsection (4), “under section 75 below” is omitted and after that subsection there is inserted—
Schedule 1 (further amendments of the 1977 Act relating to international obligations) has effect.
Other amendments of the 1977 Act
In section 8 of the 1977 Act (reference before grant of patent of questions about entitlement etc), in paragraph (c) of subsection (3) (powers of comptroller), for “but after the publication of the application” there is substituted “ (whether the application is refused or withdrawn before or after its publication) ”.
In subsection (4) of that section, for “Any such licence” there is substituted “ A licence under subsection (3) or (3A) above ”.
In subsection (5) of that section—
after “(2)” there is inserted “ or (3A) ”;
after “proceed” there is inserted “ or, as the case may be, who makes the new application ”.
In section 23 of the 1977 Act (restrictions on applications abroad by United Kingdom residents), in subsection (1), after “an invention” there is inserted “ if subsection (1A) below applies to that application, ”.
After that subsection there is inserted—
After subsection (3) of that section there is inserted—
In section 25 of the 1977 Act (term of patent), for subsection (3) there is substituted—
In subsection (4) of that section, for “the period of six months immediately following the end of the prescribed period” there is substituted “ the period ending with the sixth month after the month in which the prescribed period ends ”.
In section 28 of that Act (restoration of lapsed patents), in subsection (3), for the words from the second “within” to “that period” there is substituted “ within the period ending with the sixth month after the month in which the prescribed period ended ”.
In section 46 of that Act (patentee’s application for entry in register that licences are available as of right)—
for paragraph (d) of subsection (3) there is substituted—;
after subsection (3A) there is inserted—
In section 36 of the 1977 Act (co-ownership), in subsection (3), after “others” there is inserted—.
In section 40 of the 1977 Act (compensation of employees for certain inventions), for subsection (1) there is substituted—
In subsection (2)(c) of that section, for “the patent” there is substituted “ the invention or the patent for it (or both) ”.
In section 41 of that Act (amount of compensation), for subsection (1) there is substituted—
In subsections (4) and (5) of that section, the words “a patent for” are omitted.
In subsection (5)(a) of that section, after “the patent” there is inserted “ for it ”.
In section 43 of that Act (provisions supplementing sections 39 to 42), in subsection (5)—
for “a patent” there is substituted “ an invention or patent ”;
for “the patent”, in both places, there is substituted “ it ”.
After subsection (5) of that section there is inserted—
This section, and the entry in Schedule 3 corresponding to subsection (4), apply in relation to an invention the patent for which is applied for on or after the commencement of this section. In this subsection “patent” has the meaning given by section 43(4) of the 1977 Act.
In section 61 of the 1977 Act (proceedings for infringement of a patent), after subsection (6) there is inserted—
Section 70 of the 1977 Act (remedy for groundless threats of infringement proceedings) is amended as follows.
For subsection (2) there is substituted—
For subsection (4) there is substituted—
For subsection (5) there is substituted—
After subsection (5) there is inserted—
After section 74 of the 1977 Act there is inserted—
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
In section 32(2) of that Act (rules about the register of patents), after paragraph (b) there is inserted—.
Section 106 of the 1977 Act (costs and expenses in proceedings before the Court under s. 40) is amended as follows.
In subsection (1) (relevance of parties' financial position), for the words from “proceedings” to “the court)” there is substituted “ proceedings to which this section applies ”.
After that subsection there is inserted—
This section applies in relation to proceedings commenced on or after the commencement of this section.
In section 107 of the 1977 Act (costs and expenses), for subsection (4) there is substituted—
Supplemental
Schedule 2 (minor and consequential amendments) has effect.
The enactments set out in Schedule 3 are repealed to the extent specified.
Article 6 of the Patent Office Trading Fund Order 1991 (S.I. 1991/1796) is revoked.
The preceding provisions of this Act (except those mentioned in subsection (2)) come into force on such day as the Secretary of State may by order made by statutory instrument appoint.
Paragraphs 7 and 23 of Schedule 2 come into force with the commencement of the Regulatory Reform (Patents) Order 2004.
An order under this section may appoint different days for different purposes.
An order under this section may make—that the Secretary of State considers necessary or expedient for the purposes of, in consequence of or for giving full effect to any provision of this Act.
any supplementary, incidental or consequential provision, or
any transitory, transitional or saving provision,
A statutory instrument containing provision made by virtue of subsection (4) is subject to annulment in pursuance of a resolution of either House of Parliament, unless the only such provision it contains is transitory, transitional or saving provision.
The provision that may be made under subsection (4) includes provision amending or repealing any enactment or instrument.
A statutory instrument containing an order under this section that adds to, replaces or omits any part of the text of an Act is not to be made unless a draft of the instrument has been laid before, and approved by a resolution of, each House of Parliament; and subsection (5) does not apply to such an instrument.
This Act may be cited as the Patents Act 2004.
This Act has the same extent as the 1977 Act.
Amendments relating to international obligations
The 1977 Act is amended as follows.
In section 77 (effect of European patent (UK)), in subsection (5)(a), after “restored” there is inserted “ or is revoked by the Board of Appeal and is subsequently restored by the Enlarged Board of Appeal ”.
Section 78 (effect of filing an application for a European patent (UK)) is amended as follows.
In subsection (5A), at the end there is inserted “ ; 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. ”
For subsection (6) there is substituted—
In section 80 (authentic text of European patents and patent applications), for subsection (4) there is substituted—
Section 81 (conversion of European patent applications) is amended as follows.
In subsection (1), for the words following “this Act” there is substituted “ 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 ”.
In subsection (2)—
paragraph (a) and the “that” preceding it are omitted;
in paragraph (b), for the words preceding sub-paragraph (i) there is substituted “ that ”;
in paragraph (c), for “in either case” there is substituted “ that ”.
Sections 86 and 87 (implementation of Community Patent Convention and decisions under it) are omitted.
Section 89(4) (circumstances in which application treated as an international application for a patent (UK)) is omitted.
In section 89B(2) (adaptation of provisions in relation to international applications), for the words following “when the” there is substituted “ national phase of the application begins or, if later, when published in accordance with the Treaty ”.
Section 130 (interpretation) is amended as follows.
In subsection (1)—
in the definition of “application for a European patent (UK)” and “international application for a patent (UK)”, after “and” there is inserted “ (subject to subsection (4A) below) ”;
at the end of the definition of “designate” there is inserted “ and includes a reference to a country being treated as designated in pursuance of the convention or treaty ”.
After subsection (4) there is inserted—
After subsection (5) there is inserted—
Minor and consequential amendments
The 1977 Act is amended as follows.
In this Schedule, “the Regulatory Reform Order” means the Regulatory Reform (Patents) Order 2004.
In section 1 (patentable inventions), in subsection (1)(d), after “subsections (2) and (3)” there is inserted “ or section 4A ”.
In section 2 (novelty), subsection (6) is omitted.
In section 4 (industrial application)—are omitted.
in subsection (1), “Subject to subsection (2) below”, and
subsections (2) and (3),
In section 12 (reference before grant of foreign or convention patent of questions about entitlement etc), in subsection (6)—
in paragraph (a), after “application is withdrawn” there is inserted “ whether before or ”;
in paragraph (c), for “but after” there is substituted “ or the ”.
In section 16(1) (publication of application), after “section 22 below” there is inserted “ and to any prescribed restrictions ”.
In section 20B (inserted by the Regulatory Reform Order) (effect of reinstatement of applications), after subsection (6) there is inserted—
Section 22 (information prejudicial to defence of realm or safety of public) is amended as follows.
In the heading, for “defence of realm” there is substituted “ national security ”.
In subsections (1) and (5)(a), (c) and (d), for “the defence of the realm” there is substituted “ national security ”.
In subsection (6)—
in paragraph (a), for the words from “inspect and authorise” to “in connection with it” there is substituted—;
for the words from “that Authority” to the end there is substituted “ a government body or a person appointed by a government body carries out an inspection which the body or person is authorised to carry out under paragraph (a) above, the body or (as the case may be) the person shall report on the inspection to the Secretary of State as soon as practicable. ”
In section 24 (publication and certificate of grant), after subsection (3) there is inserted—
Section 38 (effect of transfer of patent under section 37) is amended as follows.
In subsection (3), after “new proprietor or proprietors” there is inserted “ or, as the case may be, the new applicant ”.
In subsection (5), after “proprietors of the patent” there is inserted “ or, as the case may be, the new applicant ”.
In section 41(10) (method of enforcing in Scotland certain orders made by comptroller), for “a recorded decree arbitral” there is substituted “ an extract registered decree arbitral bearing a warrant for execution issued by the sheriff court of any sheriffdom in Scotland. ”
Section 53(1) (compulsory licences: Community Patent Convention) is omitted.
Section 60(4) (meaning of infringement: Community Patent Convention) is omitted.
In section 61 (proceedings for infringement of patent), in subsection (4)(b), for “plaintiff” there is substituted “ claimant ”.
In section 62(2) (discretion to refuse damages etc for infringement committed while fees unpaid), for “any further period specified under” there is substituted “ the further period specified in ”.
In section 63 (relief for infringement of partially valid patent), in subsection (2), for “plaintiff” there is substituted “ claimant ”.
In section 70 (remedy for groundless threats of infringement proceedings), in subsection (3)(c), for “plaintiff” there is substituted “ claimant ”.
In section 72(1) (power to revoke patents on application), “on the application of any person” is omitted and after the first mention of “invention” there is inserted “ on the application of any person (including the proprietor of the patent) ”.
In section 75 (amendment of patent in infringement or revocation proceedings), in subsection (1), for “is” there is substituted “ may be ”.
In section 91(1) (evidence relating to the conventions: judicial notice), for “or Community patents kept under it” there is substituted “ patents kept under the European Patent Convention ”.
In section 95 (financial provision)—
in subsection (1), “the Community Patent Convention” is omitted;
in subsection (2), for “either of those conventions” there is substituted “ that convention ”.
In sections 103 and 105 (legal privilege), in the definition of “the relevant conventions” in subsection (2), “the Community Patent Convention” is omitted.
In section 117A (inserted by the Regulatory Reform Order) (effect of resuscitating applications), after subsection (6) there is inserted—
Section 120 (hours of business and excluded days) is amended as follows.
In subsection (1)—
for “Rules may specify” there is substituted “ The comptroller may give directions specifying ”;
for “and may specify” there is substituted “ and the directions may specify ”.
After subsection (2) there is inserted—
In section 121 (comptroller’s annual report)—
for “1st June” there is substituted “ 1st December ”;
for “year”, in both places, there is substituted “ financial year ”;
“the Community Patent Convention” is omitted;
for “those conventions” there is substituted “ that convention ”.
Section 123 (rules) is amended as follows.
In subsection (2), for paragraph (i) there is substituted—.
After that subsection there is inserted—
Subsections (4) and (5) are omitted.
In section 130(1) (interpretation)—
the definition of “Community patent” and the “and” preceding it are omitted;
in the definition of “relevant convention court”, “the Community Patent Convention” is omitted.
In section 131 (Northern Ireland), at the end there is inserted—
Repeals
Section 2(6).
In section 4—in subsection (1), the words “Subject to subsection (2) below”; subsections (2) and (3).
In section 41(4) and (5), the words “a patent for”.
Section 53(1).
Section 60(4).
In section 72—in subsection (1), the words “on the application of any person”; in subsection (4), the words “under section 75 below”.
In section 81(2), paragraph (a) and the word “that” preceding it.
Sections 86 and 87.
Section 89(4).
In section 95(1), the words “the Community Patent Convention”.
In section 103(2), in the definition of “the relevant conventions”, the words “the Community Patent Convention”.
In section 105(2), in the definition of “the relevant conventions”, the words “the Community Patent Convention”.
In section 106, in the heading, the words “under s. 40”.
In section 121, the words “the Community Patent Convention”.
In section 123, subsections (4) and (5).
In section 130(1)—the definition of “Community patent” and the word “and” preceding it; in the definition of “relevant convention court”, the words “the Community Patent Convention”.