• Copyright, Designs and Patents Act 1988 part 5

    The Copyright Designs & Patents Act 1988 is reproduced under the terms of Crown Copyright Policy Guidance issued by HMSO.

    Part V

    Patent Agents and Trade Mark Agents


    PATENT AGENTS
    Manual of Patent Practice Chapter

    Section 274: Persons permitted to carry on business of a patent agent

    274.- (1) Any individual, partnership or body corporate may, subject to the following provisions of this Part, carry on the business of acting as agent for others for the purpose of -

    (a) applying for or obtaining patents, in the United Kingdom or elsewhere, or
    (b) conducting proceedings before the comptroller relating to applications for, or otherwise in connection with, patents.

    (2) This does not affect any restriction under the European Patent Convention as to who may act on behalf of another for any purpose relating to European patents.

    Notes & References

    Relevant EPC Article(s): epi Rules of conduct , 134
    Relevant Rule(s): 90
    Manual of Patent Practice Chapter

    Section 275: The register of patent agents

    275.- (1) The Secretary of State may make rules requiring the keeping of a register of persons who act as agent for others for the purposes of applying for or obtaining patents; and in this Part a "registered patent agent" means a person whose name is entered in the register kept under this section.

    (2) The rules may contain such provision as the Secretary of State thinks fit regulating the registration of persons, and may in particular -

    (a) require the payment of such fees as may be prescribed, and
    (b) authorise in prescribed cases the erasure from the register of the name of any person registered in it, or the suspension of a person's registration.

    (3) The rules may delegate the keeping of the register to another person, and may confer on that person - v(a) power to make regulations -

    (i) with respect to the payment of fees, in the cases and subject to the limits prescribed by rules, and
    (ii) with respect to any other matter which could be regulated by rules, and
    (b) such other functions, including disciplinary functions, as may be prescribed by rules.

    (4) Rules under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

    Notes & References

    Relevant EPC Article(s): 134
    Relevant Rule(s): Register of Patent Agent Rules 1990
    Relevant PCT Article(s): Rule 90.1
    Manual of Patent Practice Chapter

    Section 276: Persons entitled to describe themselves as patent agents

    276.- (1) An individual who is not aregistered patent agent shall not -

    (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words "patent agent" or "patent attorney"; or
    (b) in the course of a business otherwise describe himself, or permit himself to be described, as a "patent agent" or "patent attorney".

    (2) A partnership shall not -

    (a) carry on a business under any name or other description which contains the words "patent agent" or "patent attorney"; or
    (b) in the course of a business otherwise describe itself, or permit itself to be described as, a firm of "patent agents" or "patent attorneys", unless all the partners are registered patent agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

    (3) A body corporate shall not -

    (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words "patent agent" or "patent attorney"; or
    (b) in the course of a business otherwise describe itself, or permit itself to be described as, a "patent agent" or "patent attorney", unless all the directors of the body corporate are registered patent agent s or the body satisfies such conditions as may be prescribed for the purposes of this section.

    (4) Subsection (3) does not apply to a company which began to carry on business as a patent agent before 17th November 1917 if the name of a director or the manager of the company who is a registered patent agent is mentioned as being so registered in all professional advertisements, circulars or letters issued by or with the company's consent on which its name appears.

    (5) Where this section would be contravened by the use of the words "patent agent" or "patent attorney" in reference to an individual, partnership or body corporate, it is equally contravened by the use of other expressions in reference to that person, or his business or place of business, which are likely to be understood as indicating that he is entitled to be described as a "patent agent" or "patent attorney".

    (6) A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding level 5 on the standard scale; and proceedings for such an offence may be begun at any time within a year from the date of the offence.

    (7) This section has effect subject to -

    (a) section 277 (persons entitled to describe themselves as European patent attorneys, &c), and
    (b) section 278(1) (use of term "patent attorney" in reference to solicitors).

    Notes & References

    Manual of Patent Practice Chapter

    Section 277: Persons entitled to describe themselves as European patent attorneys, &c

    277.- (1) The term "European patent attorney" or "European patent agent" may be used in the following cases without any contravention of section 276 .

    (2) An individual who is on the European list may -

    (a) carry on business under a name or other description which contains the words "European patent attorney" or "European patent agent", or
    (b) otherwise describe himself, or permit himself to be described, as a "European patent attorney" or "European patent agent".

    (3) A partnership of which not less than the prescribed number or proportion of partners is on the European list may -

    (a) carry on a business under a name or other description which contains the words "European patent attorneys" or "European patent agents", or
    (b) otherwise describe itself, or permit itself to be described, as a firm which carries on the business of a "European patent attorney" or "European patent agent".

    (4) A body corporate of which not less than the prescribed number or proportion of directors is on the European list may -

    (a) carry on a business under a name or other description which contains the words "European patent attorney" or "European patent agent", or
    (b) otherwise describe itself, or permit itself to be described as, a company which carries on the business of a "European patent attorney" or "European patent agent".

    (5) Where the term "European patent attorney" or "European patent agent" may, in accordance with this section, be used in reference to an individual, partnership or body corporate, it is equally permissible to use other expressions in reference to that person, or to his business or place of business, which are likely to be understood as indicating that he is entitled to be described as a "European patent attorney" or "European patent agent."

    Notes & References

    Relevant EPC Article(s): epi Rules of conduct, 134
    Relevant Rule(s): 90, Partnerships (Unrestricted size) Regulations 1997
    Manual of Patent Practice Chapter

    Section 278: Use of the term "patent attorney": supplementary provisions

    278.- (1) The term "patent attorney" may be used in reference to a solicitor, and a firm of solicitors may be described as a firm of "patent attorneys", without any contravention of section 276.

    (2) No offence is committed under the enactments restricting the use of certain expressions in reference to persons not qualified to act as solicitors -

    (a) by the use of the term "patent attorney" in reference to a registered patent agent, or
    (b) by the use of the term "European patent attorney" in reference to a person on the European list.

    (3) The enactments referred to in subsection (2) are section 21 of the Solicitors Act 1974, section 31 of the Solicitors (Scotland) Act 1980 and Article 22 of the Solicitors (Northern Ireland) Order 1976.

    Notes & References

    Relevant EPC Article(s): epi Rules of conduct, 134
    Manual of Patent Practice Chapter

    Section 279: Power to prescribe conditions etc for mixed partnerships and bodies corporate

    279.- (1) The Secretary of State may make rules -

    (a) prescribing the conditions to be satisfied for the purposes of section 276
    (persons entitled to describe themselves as patent agents) in relation to a partnership where not all the partners are qualified persons or a body corporate where not all the directors are qualified persons, and
    (b) imposing requirements to be complied with by such partnerships and bodies corporate.

    (2) The rules may, in particular -

    (a) prescribe conditions as to the number or proportion of partners or directors who must be qualified persons;
    (b) impose requirements as to -
    (i) the identification of qualified and unqualified persons in professional advertisements, circulars or letters issued by or with the consent of the partnership or body corporate and which relate to it or to its business; and
    (ii) the manner in which a partnership or body corporate is to organise its affairs so as to secure that qualified persons exercise a sufficient degree of control over the activities of unqualified persons.

    (3) Contravention of a requirement imposed by the rules is an offence for which a person is liable on summary conviction to a fine not exceeding level 5 on the standard scale.

    (4) The Secretary of State may make rules prescribing for the purposes of section 277 the number or proportion of partners of a partnership or director s of a body corporate who must be qualified persons in order for the partnership or body to take advantage of that section.

    (5) In this section "qualified person" -

    (a) in subsections (1) and (2), means a person who is a registered patent agent, and
    (b) in subsection (4), means a person who is on the European list.

    (6) Rules under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

    Notes & References

    Relevant Rule(s): Patent Agents (Mixed Partnerships and Bodies Corporate) Rules 1994
    Manual of Patent Practice Chapter

    Section 280: Privilege for communications with patent agents

    280.- (1) This section applies to communications as to any matter relating to the protection of any invention, design, technical information, trade mark or service mark, or as to any matter involving passing off.

    (2) Any such communication -

    (a) between a person and his patent agent, or
    (b) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his patent agent, is privileged from disclosure in legal proceedings in England, Wales or Northern Ireland in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person seeks for the purpose of instructing his solicitor.

    (3) In subsection (2) "patent agents" means -

    (a) a registered patent agent or a person who is on the European list ,
    (b) a partnership entitled to describe itself as a firm of patent agents or as a firm carrying on the business of a European patent attorney, or
    (c) a body corporate entitled to describe itself as a patent agent or as a company carrying on the business of a European patent attorney.

    (4) It is hereby declared that in Scotland the rules of law which confer privilege from disclosure in legal proceedings in respect of communications extend to such communications as are mentioned in this section.

    Notes & References

    Civil Evidence Act 1968: 15
    Manual of Patent Practice Chapter
    The Community Design Regulations 2005 Regulation 4

    Section 281: Power of comptroller to refuse to deal with certain agents

    281.- (1) This section applies to business under the Patents Act 1949, the Registered Designs Act 1949 or the Patents Act 1977.

    (2) The Secretary of State may make rules authorising the comptroller to refuse to recognise as agent in respect of any business to which this section applies -

    (a) a person who has been convicted of an offence under section 88 of the Patents Act 1949, section 114 of the Patents Act 1977 or section 276 of this Act;
    (b) an individual whose name has been erased from and not restored to, or who is suspended from, the register of patent agents on the ground of misconduct;
    (c) a person who is found by the Secretary of State to have been guilty of such conduct as would, in the case of an individual registered in the register of patent agents, render him liable to have his name erased from the register on the ground of misconduct;
    (d) a partnership or body corporate of which one of the partners or directors is a person whom the comptroller could refuse to recognise under paragraph (a), (b) or (c) above.

    (3) The rules may contain such incidental and supplementary provisions as appear to the Secretary of State to be appropriate and may, in particular, prescribe circumstances in which a person is or is not to be taken to have been guilty of misconduct.

    (4) Rules made under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

    (5) The comptroller shall refuse to recognise as agent in respect of any business to which this section applies a person who neither resides nor has a place of business in the United Kingdom, the Isle of Man or another member State of the European Economic Community.

    Notes & References

    Relevant EPC Article(s): epi Rules of conduct, 134
    Relevant Rule(s): The Patent Agents (Non-Recognition of certain agents) Rules 1990
    Similar 1949 Act Sections: 88, 89
    Manual of Patent Practice Chapter


    TRADE MARK AGENTS

    Section 282: The register of trade mark agents

    282.- (1) The Secretary of State may make rules requiring the keeping of a register of persons who act as agent for others for the purpose of applying for or obtaining the registration of trade marks; and in this Part a "registered trade mark agent" means a person whose name is entered in the register kept under this section.

    (2) The rules may contain such provision as the Secretary of State thinks fit regulating the registration of persons, and may in particular-

    (a) require the payment of such fees as may be prescribed, and
    (b) authorise in prescribed cases the erasure from the register of the name of any person registered in it, or the suspension of a person's registration.

    (3) The rules may delegate the keeping of the register to another person, and may confer on that person-

    (a) power to make regulations
    (i) with respect to the payment of fees, in the cases and subject to the limits prescribed by rules, and
    (ii) with respect to any other matter which could be regulated by rules, and
    (b) such other functions, including disciplinary functions, as may be prescribed by rules.

    (4) Rules under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

    Section 283: Unregistered persons not to be described as registered trade mark agents

    283.- (1) An individual who is not aregistered trade mark agent shall not-

    (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words "registered trade mark agent"; or
    (b) in the course of a business otherwise describe or hold himself out, or permit himself to be described or held out, as a registered trade mark agent.

    (2) A partnership shall not-

    (a) carry on a business under any name or other description which contains the words "registered trade mark agent "; or
    (b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a firm of registered trade mark agents,

    unless all the partners are registered trade mark agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

    (3) A body corporate shall not-

    (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words "registered trade mark agent"; or
    (b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a registered trade mark agent,

    unless all the directors of the body corporate are registered trade mark agent s or the body satisfies such conditions as may be prescribed for the purposes of this section.

    (4) The Secretary of State may make rules prescribing the conditions to be satisfied for the purposes of this section in relation to a partnership where not all the partners are registered trade mark agent s or a body corporate where not all the directors are registered trade mark agent s; and the rules may, in particular, prescribe conditions as to the number or proportion of partners or directors who must be registered trade mark agent s.

    (5) Rules under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

    (6) A person who contravenes this section commits an offence and is liable on summary conviction to a fine not exceeding level 5 on the standard scale; and proceedings for such an offence may be begun at any time within a year from the date of the offence.

    Section 284: Privilege for communications with trade mark agents

    284.- (1) This section applies to communications as to any matter relating to the protection of any, design, trade mark or service mark, or as to any matter involving passing off.

    (2) Any such communication -

    (a) between a person and his trade mark agent, or
    (b) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his trade mark agent, is privileged from disclosure in legal proceedings in England, Wales or Northern Ireland in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person seeks for the purpose of instructing his solicitor.

    (3) In subsection (2) "trade mark agents" means -

    (a) a registered trade mark agent , or
    (b) a partnership entitled to describe itself as a firm of registered trade mark agents, or
    (c) a body corporate entitled to describe itself as a registered trade mark agent.

    (4) It is hereby declared that in Scotland the rules of law which confer privilege from disclosure in legal proceedings in respect of communications extend to such communications as are mentioned in this section.

    SUPPLEMENTARY
    Manual of Patent Practice Chapter

    Section 285: Offences committed by partnerships and bodies corporate

    285.- (1) Proceedings for an offence under this Part alleged to have been committed by a partnership shall be brought in the name of the partnership and not in that of the partners; but without prejudice to any liability of theirs under subsection (4) below.

    (2) The following provisions apply for the purposes of such proceedings as in relation to a body corporate -

    (a) any rules of court relating to the service of documents;
    (b) in England, Wales or Northern Ireland, Schedule 3 to the Magistrates' Courts Act 1980 or Schedule 4 to the Magistrates' Courts (Northern Ireland) Order 1981 (procedure on charge of offence).

    (3) A fine imposed on a partnership on its conviction in such proceedings shall be paid out of the partnership assets.

    (4) Where a partnership is guilty of an offence under this Part, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, is also guilty of the offence and liable to be proceeded against and punished accordingly.

    (5) Where an offence under this Part committed by a body corporate is proved to have been committed with the consent or connivance of a director , manager, secretary or other similar officer of the body, or a person purporting to act in any such capacity, he as well as the body corporate is guilty of the offence and liable to be proceeded against and punished accordingly.

    Notes & References

    Manual of Patent Practice Chapter

    Section 286: Interpretation

    286.- (1) In this part -

    "the comptroller" means the Comptroller-General of Patents, Designs and Trade Marks;

    "director", in relation to a body corporate whose affairs are managed by its members, means any member of the body corporate;

    "the European list" means the list of professional representatives maintained by the European Patent Office in pursuance of the European Patent Convention;

    "registered patent agent" has the meaning given by section 275(1);

    "registered trade mark agent" has the meaning given by section 282(1).

    Notes & References

    Manual of Patent Practice Chapter


    Part VI

    Patents

    PATENTS COUNTY COURTS
    Manual of Patent Practice Chapter

    Section 287: Patents county courts: special jurisdiction

    287.- (1) The Lord Chancellor may, with the concurrence of the Lord Chief Justice, by order made by statutory instrument designate any county court as a patents county court and confer on it jurisdiction (its "special jurisdiction") to hear and determine such descriptions of proceedings -

    (a) relating to patents or designs, or
    (b) ancillary to, or arising out of the same subject matter as, proceedings relating to patents or designs, as may be specified in the order.

    (2) The special jurisdiction of a patents county court is exercisable throughout England and Wales, but rules of court may provide for a matter pending in one such court to be heard and determined in another or partly in that and partly in another.

    (3) A patents county court may entertain proceedings within its special jurisdiction notwithstanding that no pecuniary remedy is sought.

    (4) An order under this section providing for the discontinuance of any of the special jurisdiction of a patents county court may make provision as to proceedings pending in the court when the order comes into operation.

    (5) Nothing in this section shall be construed as affecting the ordinary jurisdiction of a county court.

    (6) The Lord Chief Justice of England and Wales may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under this section.

    Notes & References

    Relevant Rule(s): Patents County Court (Designation and Jurisdiction) Order 1994
    Patent Court Practice Direction CPR 49E
    Patent Court Guide
    Manual of Patent Practice Chapter

    Section 288: Financial limits in relation to proceedings within special jurisdiction of patents county court

    288.- (1) Her Majesty may by Order in Council provide for limits of amount or value in relation to any description of proceedings within the special jurisdiction of a patents county court.

    (2) If a limit is imposed on the amount of a claim of any description and the plaintiff has a cause of action for more than that amount, he may abandon the excess; in which case a patents county court shall have jurisdiction to hear and determine the action, but the plaintiff may not recover more than that amount.

    (3) Where the court has jurisdiction to hear and determine an action by virtue of subsection (2), the judgment of the court in the action is in full discharge of all demands in respect of the cause of action, and entry of the judgment shall be made accordingly.

    (4) If the parties agree, by a memorandum signed by them or by their respective solicitors or other agents, that a patents county court shall have jurisdiction in any proceedings, that court shall have jurisdiction to hear and determine the proceedings notwithstanding any limit imposed under this section.

    (5) No recommendation shall be made to Her Majesty to make an Order under this section unless a draft of the Order has been laid before and approved by a resolution of each House of Parliament.

    Notes & References

    At present, there is no financial limit.
    Manual of Patent Practice Chapter

    Section 289: Transfer of proceedings between High Court and patents county court

    289.- (1) No order shall be made under section 41 of the County Courts Act 1984 (power of High Court to order proceedings to be transferred from the county court) in respect of proceedings within the special jurisdiction of a patents county court.

    (2) In considering in relation to proceedings within the special jurisdiction of a patents county court whether an order should be made under section 40 or 42 of the County Courts Act 1984 (transfer of proceedings from or to the High Court), the court shall have regard to the financial position of the parties and may order the transfer of the proceedings to a patents county court or, as the case may be, refrain from ordering their transfer to the High Court notwithstanding that the proceedings are likely to raise an important question of fact or law.

    Notes & References

    Patent Court Practice Direction CPR 49E
    Patent Court Guide
    Manual of Patent Practice Chapter

    Section 290: Limitation of costs where pecuniary claim could have been brought in patents county court [never implemented, and to be repealed - Courts and Legal Services Act 1990]

    290.- (1) Where an action is commenced in the High Court which could have been commenced in a patents county court and in which a claim for a pecuniary remedy is made, then, subject to the provisions of this section, if the plaintiff recovers less than the prescribed amount, he is not entitled to recover any more costs than those to which he would have been entitled if the action had been brought in the county court.

    (2) For this purpose a plaintiff shall be treated as recovering the full amount recoverable in respect of his claim without regard to any deduction made in respect of matters not falling to be taken into account in determining whether the action could have been commenced in a patents county court.

    (3) This section does not affect any question as to costs if it appears to the High Court that there was reasonable ground for supposing the amount recoverable in respect of the plaintiff's claim to be in excess of the prescribed amount.

    (4) The High Court, if satisfied that there was sufficient reason for bringing the action in the High Court, may make an order allowing the costs or any part of the costs on the High Court scale or on such one of the county court scales as it may direct.

    (5) This section does not apply to proceedings brought by the Crown.

    (6) In this section "the prescribed amount" means such amount as may be prescribed by Her Majesty for the purposes of this section by Order in Council.

    (7) No recommendation shall be made to her Majesty to make an Order under this section unless a draft of the Order has been laid before and approved by a resolution of each House of Parliament.

    Notes & References

    Manual of Patent Practice Chapter

    Section 291: Proceedings in patents county court

    291.- (1) Where a county court is designated a patents county court, the Lord Chief Justice shall, after consulting the Lord Chancellor, nominate a person entitled to sit as a judge of that court as the patents judge.

    (2) County court rules shall make provision for securing that, so far as is practicable and appropriate -

    (a) proceedings within the special jurisdiction of a patents county court are dealt with by the patents judge, and
    (b) the judge, rather than a registrar or other officer of the court, deals with interlocutory matters in the proceedings.

    (3) County court rules shall make provision empowering a patents county court in proceedings within its special jurisdiction, on or without the application of any party -

    (a) to appoint scientific advisers or assessors to assist the court, or
    (b) to order the Patent Office to inquire into and report on any question of fact or opinion.

    (4) Where the court exercises either of those powers on the application of a party, the remuneration of fees payable to the Patent Office shall be at such rate as may be determined in accordance with county court rules and shall be costs of the proceedings unless otherwise ordered by the judge.

    (5) Where the court exercises either of those powers of its own motion, the remuneration or fees payable to the Patent Office shall be at such rate as may be determined by the Lord Chancellor with the approval of the Treasury and shall be paid out of money provided by Parliament.

    (6) The Lord Chief Justice may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under subsection (1).

    Notes & References

    Patent Court Practice Direction CPR 49E
    Patent Court Guide
    Manual of Patent Practice Chapter

    Section 292: Rights and duties of registered patent agents in relation to proceedings in patents county court

    292.- (1) Aregistered patent agent may do, in or in connection with proceedings in a patents county court which are within the special jurisdiction of that court, anything which a solicitor of the Supreme Court might do, other than prepare a deed.

    (2) The Lord Chancellor may by regulations provide that the right conferred by subsection (1) shall be subject to such conditions and restrictions as appear to the Lord Chancellor to be necessary or expedient; and different provision may be made for different descriptions of proceedings.

    (2A) The Lord Chancellor may make regulations under subsection (2) only with the concurrence of the Lord Chief Justice.

    (3) A patents county court has the same power to enforce an undertaking given by a registered patent agent acting in pursuance of this section as it has, by virtue of section 142 of the County Courts Act 1984, in relation to a solicitor.

    (4) Nothing in section 143 of the County Courts Act 1984 (prohibition on persons other than solicitors receiving remuneration) applies to a registered patent agent acting in pursuance of this section.

    (5) The provisions of county court rules prescribing scales of costs to be paid to solicitors apply in relation to registered patent agents acting in pursuance of this section.

    (6) Regulations under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.

    (7) The Lord Chief Justice may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under this section.

    Notes & References

    Manual of Patent Practice Chapter

    LICENCES OF RIGHT IN RESPECT OF CERTAIN PATENTS
    Manual of Patent Practice Chapter

    Section 293: Restriction of acts authorised by certain licences [now effectively spent]

    Notes & References

    Manual of Patent Practice Chapter

    Section 294: When application may be made for settlement of terms of licence [now effectively spent]

    Notes & References

    Manual of Patent Practice Chapter

    PATENTSMISCELLANEOUS AMENDMENTS

    Section 295: Patents: miscellaneous amendments

    295.- The Patents Act 1949 and thePatents Act 1977 are amended in accordance with Schedule 5.

    Notes & References

    Manual of Patent Practice Chapter

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