Patents

PATENTS ACT 1977

1977 CHAPTER 37

The Patents Act 1977 (and amending legislation) is reproduced under the terms of Crown Copyright Policy Guidance issued by HMSO.

An Act to establish a new law of patents applicable to future patents and applications for patents; to amend the law of patents applicable to existing patents and applications for patents; to give effect to certain international conventions on patents; and for connected purposes. [29th July 1977]

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

PART I - NEW DOMESTIC LAW

PATENTABILITY

Manual of Patent Practice Chapter

Section 1: Patentable inventions

1.- (1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say -

(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3) below;

and references in this Act to a patentable invention shall be construed accordingly.

(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -

(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.

(4) For the purposes of subsection (3) above behaviour shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.

(5) The Secretary of State may by order vary the provisions of subsection (2) above for the purpose of maintaining them in conformity with developments in science and technology; and no such order shall be made unless a draft of the order has been laid before, and approved by resolution of, each House of Parliament.

Notes & References

Relevant EPC Article(s):52, 53
Relevant PCT Article(s): 33(1)
Relevant TRIPS Article(s): 27
EU Directive 98/44/EC on biotechnological inventions
Relevant Paris Convention Article(s): 4quater
Similar 1949 Act Section(s): 10 (1)(b), 101, 32 (1)(d)
Manual of Patent Practice Chapter

Section 2: Novelty

2.-(1) An invention shall be taken to be new if it does not form part of the state of the art.

(2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way.
(3) The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied, that is to say -

(a) that matter was contained in the application for that other patent both as filed and as published ; and
(b) the priority date of that matter is earlier than that of the invention.

(4) For the purposes of this section the disclosure of matter constituting an invention shall be disregarded in the case of a patent or an application for a patent if occurring later than the beginning of the period of six months immediately preceding the date of filing the application for the patent and either -

(a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person -

(i) from the inventor or who obtained it from the because he or the or from any other person to whom the matter was made available in confidence by the inventorinventorinventor believed that he was entitled to obtain it; or
(ii) from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it;

(b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor; or
(c) the disclosure was due to, or made in consequence of the inventor displaying the invention at an international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.

(5) In this section references to the inventor include references to any proprietor of the invention for the time being.

(6) In the case of an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body, the fact that the substance or composition forms part of the state of the art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not form part of the state of the art.

Notes & References

Relevant EPC Article(s): 54,55,139
Relevant CPC Article(s): 36 , 78
Relevant Rule(s): 5
Relevant PCT Article(s): 33(2), Rule 33
Similar 1949 Act Section(s): 14 (1)(b), 32(1)(e), 50 , 101
Manual of Patent Practice Chapter

Section 3: Inventive step

3.- An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).

Notes & References

Relevant EPC Article(s):56
Relevant PCT Article(s): 33(3)
Similar 1949 Act Section(s): 14 (1)(e), 32(1)(f)
Manual of Patent Practice Chapter

Section 4: Industrial application

4.- (1) Subject to subsection (2) below, an invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry, including agriculture.

(2) An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application.

(3) Subsection (2) above shall not prevent a product consisting of a substance or composition being treated as capable of industrial application merely because it is invented for use in any such method.

Notes & References

Relevant EPC Article(s): 57
Relevant PCT Article(s): 33(4)
Relevant TRIPS Article(s): 27.3
Similar 1949 Act Section(s): 32 (1)(g), 10(1)(a)
Manual of Patent Practice Chapter

Section 5: Priority date

5.- (1) For the purposes of this Act the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in any such application is, except as provided by the following provisions of this Act, the date of filing the application.

(2) If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his and the application in suit has a date of filing during the period allowed under subsection (2A)(a) or (b) below, then -

(a) if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of being the date of filing the application in suit be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them;
(b) the priority date of any matter contained in the application in suit which was also disclosed in the earlier relevant application or applications shall be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them.

(2A) The periods are -

of the earlier specified (a) the period of twelve months immediately following the date of filingrelevant application, or if there is more than one, of the earliest of them; and
(b) where the comptroller has given permission under subsection (2B) below for a late declaration to be made under subsection (2) above, the period commencing immediately after the end of the period allowed under paragraph (a) above and ending at the end of the prescribed period.

(2B) The applicant may make a request to the comptroller for permission to make a late declaration under subsection (2) above.

(2C) The comptroller shall grant a request made under subsection (2B) above if, and only if -

(a) the request complies with the relevant requirements of rules; and
(b) the comptroller is satisfied that the applicant's failure to file the application in suit within the period allowed under subsection (2A)(a) above was unintentional.

(3) Where an invention or other matter contained in the application in suit was also disclosed in two earlier relevant applications filed by the same applicant as in the case of the application in suit or a predecessor in title of his and the second of those relevant applications was specified in or in connection with the application in suit, the second of those relevant applications shall, so far as concerns that invention or matter, be disregarded unless -

(a) it was filed in or in respect of the same country as the first; and
(b) not later than the date of filing the second, the first (whether or not so specified) was unconditionally withdrawn, or was abandoned or refused, without -

(i) having been made available to the public (whether in the United Kingdom or elsewhere);
(ii) leaving any rights outstanding; and
(iii) having served to establish a priority date in relation to another application, wherever made.

(4) The foregoing provisions of this section shall apply for determining the priority date of an invention for which a patent has been granted as they apply for determining the priority date of an invention to which an application for that patent relates.

(5) In this section "relevant application" means any of the following applications which has a date of filing, namely -

(a) an application for a patent under this Act;
(b) an application in or for a convention country (specified under section 90 below) for protection in respect of an invention or an application which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to such an application.

(6) References in subsection (5) above to a convention country include references to a country, other than the United Kingdom, which is a member of the World Trade Organisation.

Notes & References

Relevant EPC Article(s): 87, 89
Relevant Rule(s): 6
Relevant Paris Convention Article(s): 4
Similar 1949 Act Section(s): 5, 49
Manual of Patent Practice Chapter
See SI 2004/3335 for a list of 'convention countries'

Section 6: Disclosure of matter, etc, between earlier and later applications

6.- (1) It is hereby declared for the avoidance of doubt that where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 5(2) above in or in connection with that application specifying an earlier relevant application, the application in suit and any patent granted in pursuance of it shall not be invalidated by reason only of relevant intervening acts.

(2) In this section -

"relevant application" has the same meaning as in section 5 above; and

"relevant intervening acts" means acts done in relation to matter disclosed in an earlier relevant application between the dates of the earlier relevant application and the application in suit, as for example, filing another application for the invention for which the earlier relevant application was made, making information available to the public about that invention or that matter or working that invention, but disregarding any application, or the disclosure to the public of matter contained in any application, which is itself to be disregarded for the purposes ofsection 5(3) above.

Notes & References

Relevant Paris Convention Article(s): 4B
Similar 1949 Act Section(s): 52
Manual of Patent Practice Chapter

RIGHT TO APPLY FOR AND OBTAIN A PATENT AND BE MENTIONED AS INVENTOR

Manual of Patent Practice Chapter

Section 7: Right to apply for and obtain a patent

7.- (1) Any person may make an application for a patent either alone or jointly with another.

(2) A patent for an invention may be granted -

(a) primarily to the inventor or joint inventors;
(b) In preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

and to no other person.

(3) In this Act "inventor" in relation to an invention means the actual deviser of the invention and "joint inventor " shall be construed accordingly.

(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.

Notes & References

Relevant EPC Article(s): 60,138
Relevant PCT Article(s): 9
Similar 1949 Act Section(s): 1
Manual of Patent Practice Chapter

Section 8: Determination before grant of questions about entitlement to patents etc

8.- (1) At any time before a patent has been granted for an invention (whether or not an application has been made for it) -

(a) any person may refer to the Comptroller the question whether he is entitled to be granted (alone or with any other persons) a patent for that invention or has or would have any right in or under any patent so granted or any application for such a patent; or
(b) any of two or more co-proprietors of an application for a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person;

and the Comptroller shall determine the question and may make such order as he thinks fit to give effect to the determination.

(2) Where a person refers a question relating to an invention under subsection (1)(a) above to the Comptroller after an application for a patent for the invention has been filed and before a patent is granted in pursuance of the application, then, unless the application is refused or withdrawn before the reference is disposed of by the Comptroller, the Comptroller may, without prejudice to the generality of subsection (1) above and subject to subsection (6) below -

(a) order that the application shall proceed in the name of that person, either solely or jointly with that of any other applicant, instead of in the name of the applicant or any specified applicant;
(b) where the reference was made by two or more persons, order that the application shall proceed in all their names jointly;
(c) refuse to grant a patent in pursuance of the application or order the application to be amended so as to exclude any of the matter in respect of which the question was referred;
(d) make an order transferring or granting any licence or other right in or under the application and give directions to any person for carrying out the provisions of any such order.

(3) Where a question is referred to the Comptroller under subsection (1)(a) above and -

(a) the Comptroller orders an application for a patent for the invention to which the question relates to be so amended;
(b) any such application is refused under subsection 2(c) above before the Comptroller has disposed of the reference (whether the reference was made before or after the publication of the application); or
(c) any such application is refused under any other provision of this Act or is withdrawn before the Comptroller has disposed of the reference (whether the application is refused or withdrawn before or after its publication);

the Comptroller may order that any person by whom the reference was made may within the prescribed period make a new application for a patent for the whole or part of any matter comprised in the earlier application or, as the case may be, for all or any of the matter excluded from the earlier application, subject in either case to section 76 below, and in either case that, if such a new application is made, it shall be treated as having been filed on the date of filing the earlier application.

(4) Where a person refers a question under subsection (1)(b) above relating to an application, any order under subsection (1) above may contain directions to any person for transferring or granting any right in or under the application.

(5) If any person to whom directions have been given under subsection (2)(d) or (4) above fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the Comptroller may, on application made to him by any person in whose favour or on whose reference the directions were given, authorise him to do that thing on behalf of the person to whom the directions were given.

(6) Where on a reference under this section it is alleged that, by virtue of any transaction, instrument or event relating to an invention or an application for a patent, any person other than the inventor or the applicant for the patent has become entitled to be granted (whether alone or with any other persons) a patent for the invention or has or would have any right in or under any patent so granted or any application for any such patent, an order shall not be made under subsection (2)(a), (b) or (d) above on the reference unless notice of the reference is given to the applicant and any such person, except any of them who is a party to the reference.

(7) If it appears to the Comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the Court, he may decline to deal with it and, without prejudice to the Court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the Court in Scotland, the Court shall have jurisdiction to do so.

(8) No directions shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of deceased persons, or their rights or obligations as such.

Notes & References

Relevant EPC Article(s): 61
Relevant Rule(s): 7, 8, 9, 10, 11
Similar 1949 Act Section(s): 56
Tribunal Practice Notice TPN 1/2000 on Patent Office Practice
Civil Procedural Rules Part 63.11
Court of Session Rules Chapter 55, 55.9
Manual of Patent Practice Chapter

Section 9: Determination after grant of questions referred before grant

9.- If a question with respect to a patent or application is referred by any person to the Comptroller under section 8 above, whether before or after the making of an application for the patent, and is not determined before the time when the application is first in order for a grant of a patent in pursuance of the application, that fact shall not prevent the grant of a patent, but on its grant that person shall be treated as having referred to the Comptroller under section 37 below any question mentioned in that section which the Comptroller thinks appropriate.

Notes & Reference

Manual of Patent Practice Chapter

Section 10: Handling of application by joint applicants

10.- If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the Comptroller may, on a request made by any of the parties, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it shall be proceeded with, or for both those purposes, according as the case may require.

Notes & References

Relevant Rule(s): 12
Similar 1949 Act Section(s): 17(5)
Manual of Patent Practice Chapter

Section 11: Effect of transfer of application under s.8 or 10

11.- (1) Where an order is made or directions are given under section 8 or 10 above that an application for a patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under either of those sections, continue in force and be treated as granted by the persons in whose name the application is to proceed.

(2) Where an order is made or directions are given under section 8 above that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant (on the ground that the original applicant or applicants was or were not entitled to be granted the patent), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under that section and subject to subsection (3) below, lapse on the registration of that person or those persons as the applicant or applicants or, where the application has not been published, on the making of the order.

(3) If before registration of a reference under section 8 above resulting in the making of any order mentioned in subsection (2) above -

(a) the original applicant or any of the applicants, acting in good faith, worked the invention in question in the United Kingdom or made effective and serious preparations to do so; or
(b) a licensee of the applicant, acting in good faith, worked the invention in the United Kingdom or made effective and serious preparations to do so;

that or those original applicant or applicants or the licensee shall, on making a request within the prescribed period to the person in whose name the application is to proceed, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention.

(3A) If, before registration of a reference under section 8 above resulting in the making of an order under subsection (3) of that section, the condition in subsection (3)(a) or (b) above is met, the original applicant or any of the applicants or the licensee shall, on making a request within the prescribed period to the new applicant, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention so far as it is the subject of the new application.

(4) A licence under subsection (3) or (3A) above shall be granted for a reasonable period and on reasonable terms.

(5) Where an order is made as mentioned in subsection (2) or (3A) above, the person in whose name the application is to proceed or, as the case may be, who makes the new application or any person claiming that he is entitled to be granted any such licence may refer to the Comptroller the question whether the latter is so entitled and whether any such period is or terms are reasonable, and the Comptroller shall determine the question and may, if he considers it appropriate, order the grant of such licence.

Notes & References

Relevant Rule(s): 13
Manual of Patent Practice Chapter

Section 12: Determination of questions about entitlement to foreign and convention patents, etc

12.- (1) At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made -

(a) any person may refer to the Comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
(b) any of two or more co-proprietors of an application for such a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person;

and the Comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination.

(2) If it appears to the Comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the Court, he may decline to deal with it and, without prejudice to the Court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the Court in Scotland, the Court shall have jurisdiction to do so.

(3) Subsection (1) above, in its application to a European patent and an application for any such patent, shall have effect subject to section 82 below.

(4) Section 10 above, except so much of it as enables the Comptroller to regulate the manner in which an application is to proceed, shall apply to disputes between joint applicants for any such patent as is mentioned in subsection (1) above as it applies to joint applicants for a patent under this Act.

(5) Section 11 above shall apply in relation to -

(a) any orders made under subsection (1) above and any directions given under section 10 above by virtue of subsection (4) above; and
(b) any orders made and directions given by the relevant convention Court with respect to a question corresponding to any question which may be determined under subsection (1) above; as it applies to orders made and directions given apart from this section under section 8 or 10 above.

(6) In the following cases, that is to say -

(a) where an application for a European Patent (UK) is refused or withdrawn, or the designation of the United Kingdom in the application is withdrawn whether before or after publication of the application but before a question relating to the right to the patent has been referred to the Comptroller under subsection (1) above or before proceedings relating to that right have begun before the relevant convention Court;
(b) where an application has been made for a European patent (UK) and on a reference under subsection (1) above or any such proceedings as are mentioned in paragraph (a) above the Comptroller, the Court or the relevant convention Court determines by a final decision (whether before or after publication of the application) that a person other than the applicant has the right to the patent, but that person requests the European Patent Office that the application for the patent should be refused; or
(c) where an international application for a patent (UK) is withdrawn, or the designation of the United Kingdom in the application is withdrawn, whether before or after the making of any reference under subsection (1) above or the publication of the application;

the Comptroller may order that any person (other than the applicant) appearing to him to be entitled to be granted a patent under this Act may within the prescribed period make an application for such a patent for the whole or part of any matter comprised in the earlier application (subject, however, to section 76 below) and that if the application for a patent under this Act is filed, it shall be treated as having been filed on the date of filing the earlier application.

(7) In this section -

(a) references to a patent and an application for a patent include respectively references to protection in respect of an invention and an application which, in accordance with the law of any country other than the United Kingdom or any treaty or international convention, is equivalent to an application for a patent or for such protection; and
(b) a decision shall be taken to be final for the purposes of this section when the time for appealing from it has expired without an appeal being brought or, where an appeal is brought, when it is finally disposed of.

Notes & References

Relevant EPC Article(s): Protocol On Recognition , 61
Relevant Rule(s): 7,8 ,9,10 ,11,12,13
Similar 1949 Act Section(s): 56
Tribunal Practice Notice TPN 1/2000 on Patent Office Practice
Civil Procedural Rules Part 63.11
Court of Session Rules Chapter 55, 55.9
Manual of Patent Practice Chapter

Section 13: Mention of Inventor

13.- (1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.

(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement -

(a) identifying the person or persons whom he believes to be the inventor or inventors; and
(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent; and, if he fails to do so, the application shall be taken to be withdrawn.

(3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the Comptroller for a certificate to that effect, and the Comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above.

Notes & References

Relevant EPC Article(s): 62, 81
Relevant Rule(s): 14,15
Relevant PCT Article(s): 4(1), 4(4)
Relevant Paris Convention Article(s): 4ter
Similar 1949 Act Section(s): 16
Manual of Patent Practice Chapter

APPLICATIONS

Manual of Patent Practice Chapter

Section 14: Making of application

14.- (1) Every application for a patent -

(a) shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner;
(b) NO LONGER HAS EFFECT, REGULATORY REFORM (PATENTS) ORDER 2004

(1A) Where an application for a patent is made, the fee prescribed for the purposes of this subsection ("the application fee") shall be paid not later than the end of the period prescribed for the purposes of section 15(10)(c) below.

(2) Every application for a patent shall contain -

(a) a request for the grant of a patent;
(b) a specification containing a description of the invention, a claim or claims and any drawing referred to in the description or any claim; and
(c) an abstract; but the foregoing provision shall not prevent an application being initiated by documents complying with section 15 (1) below.

(3) The specification of an application shall disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

(4) Repealed -see Section 125A

(5) The claim or claims shall -

(a) define the matter for which the applicant seeks protection;
(b) be clear and concise;
(c) be supported by the description; and
(d) relate to one invention or to a group of inventions which are so linked as to form a single inventive concept.

(6) Without prejudice to the generality of subsection (5)(d) above, rules may provide for treating two or more inventions as being so linked as to form a single inventive concept for the purposes of this Act.

(7) The purpose of the abstract is to give technical information and on publication it shall not form part of the state of the art by virtue of section 2(3) above, and the Comptroller may determine whether the abstract adequately fulfils its purpose and, if it does not, may reframe it so that it does.

(8) Repealed -see Section 125A

(9) An application for a patent may be withdrawn at any time before the patent is granted and any withdrawal of such an application may not be revoked.

(10) Subsection (9) above does not affect the power of the comptroller under section 117(1) below to correct an error or mistake in a withdrawal of an application for a patent.

Notes & References

Relevant EPC Article(s): 75,78,82,83,84,85
Relevant Rule(s): 16,18,19,20 ,22
Relevant PCT Article(s): 3,4,5,6,7,10
Relevant Paris Convention Article(s): 4G
Relevant TRIPS Article(s): 29.1
Similar 1949 Act Section(s): 2, 4
Manual of Patent Practice Chapter

Section 15: Date of filing application

15.- (1) Subject to the following provisions of this Act, the date of filing an application for a patent shall be taken to be the earliest date on which documents filed at the Patent Office to initiate the application satisfy the following conditions -

(a) the documents indicate that a patent is sought;
(b) the documents identify the person applying for a patent or contain information sufficient to enable that person to be contacted by the Patent Office; and
(c) the documents contain either -

(i) something which is or appears to be a description of the invention for which a patent is sought; or
(ii) a reference, complying with the relevant requirements of rules, to an earlier relevant application made by the applicant or a predecessor in title of his.

(2) It is immaterial for the purposes of subsection (1)(c)(i) above -

(a) whether the thing is in, or is accompanied by a translation into, a language accepted by the Patent Office in accordance with rules;
(b) whether the thing otherwise complies with the other provisions of this Act and with any relevant rules.

(3) Where documents filed at the Patent Office to initiate an application for a patent satisfy one or more of the conditions specified in subsection (1) above, but do not satisfy all those conditions, the comptroller shall as soon as practicable after the filing of those documents notify the applicant of what else must be filed in order for the application to have a date of filing .

(4) Where documents filed at the Patent Office to initiate an application for a patent satisfy all the conditions specified in subsection (1) above, the comptroller shall as soon as practicable after the filing of the last of those documents notify the applicant of -

(a) the date of filing the application, and
(b) the requirements that must be complied with, and the periods within which they are required by this Act or rules to be complied with, if the application is not to be treated as having been withdrawn.

(5) Subsection (6) below applies where -

(a) an application has a date of filing by virtue of subsection (1) above;
(b) within the prescribed period the applicant files at the Patent Office -

(i) a drawing, or
(ii) part of the description of the invention for which a patent is sought, and

(c) that drawing or that part of the description was missing from the application at the date of filing.

(6) Unless the applicant withdraws the drawing or the part of the description filed under subsection (5)(b) above ("the missing part") before the end of the prescribed period -

(a) the missing part shall be treated as included in the application; and
(b) the date of filing the application shall be the date on which the missing part is filed at the Patent Office.

(7) Subsection (6)(b) above does not apply if -

(a) on or before the date which is the date of filing the application by virtue of subsection (1) above a declaration is made under section 5(2) above in or in connection with the application;
(b) the applicant makes a request for subsection (6)(b) above not to apply; and
(c) the request complies with the relevant requirements of rules and is made within the prescribed period.

(8) Subsections (6) and (7) above do not affect the power of the comptroller under section 117(1) below to correct an error or mistake.

(9) Where, after an application for a patent has been filed and before the patent is granted -

(a) a new application is filed by the original applicant or his successor in title in accordance with rules in respect of any part of the matter contained in the earlier application, and
(b) the conditions mentioned in subsection (1) above are satisfied in relation to the new application (without the new application contravening section 76 below),

the new application shall be treated as having, as its date of filing, the date of filing the earlier application.

(10) Where an application has a date of filing by virtue of this section, the application shall be treated as having been withdrawn if any of the following applies -

(a) the applicant fails to file at the Patent Office, before the end of the prescribed period, one or more claims and the abstract;
(b) where a reference to an earlier relevant application has been filed as mentioned in subsection (1)(c)(ii) above -

(i) the applicant fails to file at the Patent Office, before the end of the prescribed period, a description of the invention for which the patent is sought;
(ii) the applicant fails to file at the Patent Office, before the end of the prescribed period, a copy of the application referred to, complying with the relevant requirements of rules;

(c) the applicant fails to pay the application fee before the end of the prescribed period;
(d) the applicant fails, before the end of the prescribed period, to make a request for a search under section 17 below and pay the search fee.

(11) In this section "relevant application" has the meaning given by section 5(5) above.

Notes & References

Relevant EPC Article(s): 80,91
Relevant Rule(s): 23,24,25,26
Relevant PCT Article(s): 3, 11,14
Relevant Paris Convention Article(s): 4A , 4G
Manual of Patent Practice Chapter

Section 15A: Preliminary examination

15A.- (1) The comptroller shall refer an application for a patent to an examiner for a preliminary examination if -

(a) the application has a date of filing ;
(b) the application has not been withdrawn or treated as withdrawn; and
(c) the application fee has been paid.

(2) On a preliminary examination of an application the examiner shall -

(a) determine whether the application complies with those requirements of this Act and the rules which are designated by the rules as formal requirements for the purposes of this Act; and
(b) determine whether any requirements under section 13 (2) or 15(10) above remain to be complied with.

(3) The examiner shall report to the comptroller his determinations under subsection (2) above.

(4) If on the preliminary examination of an application it is found that -

(a) any drawing referred to in the application, or
(b) part of the description of the invention for which the patent is sought,

is missing from the application, then the examiner shall include this finding in his report under subsection (3) above .

(5) Subsections (6) to (8) below apply if a report is made to the comptroller under subsection (3) above that not all the formal requirements have been complied with.

(6) The comptroller shall specify a period during which the applicant shall have the opportunity -

(a) to make observations on the report, and
(b) to amend the application so as to comply with those requirements (subject to section 76 below).

(7) The comptroller may refuse the application if the applicant fails to amend the application as mentioned in subsection (6)(b) above before the end of the period specified by the comptroller under that subsection.

(8) Subsection (7) above does not apply if -

(a) the applicant makes observations as mentioned in subsection (6)(a) above before the end of the period specified by the comptroller under that subsection, and
(b) as a result of the observations, the comptroller is satisfied that the formal requirements have been complied with.

(9) If a report is made to the comptroller under subsection (3) above -

(a) that any requirement of section 13 (2) or 15(10) above has not been complied with; or
(b) that a drawing or part of the description of the invention has been found to be missing,

then the comptroller shall notify the applicant accordingly.

Section 16: Publication of application

16.- (1) Subject to section 22 below and to any prescribed restrictions, where an application has a date of filing, then, as soon as possible after the end of the prescribed period, the Comptroller shall, unless the application is withdrawn or refused before preparations for its publication have been completed by the Patent Office, publish it as filed (including not only the original claims but also any amendments of those claims and new claims subsisting immediately before the completion of those preparations) and he may, if so requested by the applicant, publish it as aforesaid during that period, and in either event shall advertise the fact and date of its publication in the journal.

(2) The Comptroller may omit from the specification of a published application for a patent any matter -

(a) which in his opinion disparages any person in a way likely to damage him, or
(b) the publication or exploitation of which would in his opinion be generally expected to encourage offensive, immoral or anti-social behaviour.

Notes & References

Relevant EPC Article(s): 93
Relevant Rule(s): 27
Relevant PCT Article(s): 21,29
Manual of Patent Practice Chapter

EXAMINATION AND SEARCH

Manual of Patent Practice Chapter

Section 17: Search

17.- (1) The comptroller shall refer an application for a patent to an examiner for a search if, and only if -

(a) the comptroller has referred the application to an examiner for a preliminary examination under section 15A(1) above;
(b) the application has not been withdrawn or treated as withdrawn;
(c) before the end of the prescribed period -

(i) the applicant makes a request to the Patent Office in the prescribed form for a search; and
(ii) the fee prescribed for the search ("the search fee") is paid;

(d) the application includes -

(i) a description of the invention for which a patent is sought; and
(ii) one or more claims; and

(e) the description and each of the claims comply with the requirements of rules as to language.

(2) NO LONGER HAS EFFECT, REGULATORY REFORM (PATENTS) ORDER 2004

(3) NO LONGER HAS EFFECT, REGULATORY REFORM (PATENTS) ORDER 2004

(4) Subject to subsections (5) and (6) below, on a search requested under this section, the examiner shall make such investigation as in his opinion is reasonably practicable and necessary for him to identify the documents which he thinks will be needed to decide, on a substantive examination under section 18 below, whether the invention for which a patent is sought is new and involves an inventive step.

(5) On any such search the examiner shall determine whether or not the search would serve any useful purpose on the application as for the time being constituted and -

(a) if he determines that it would serve such a purpose in relation to the whole or part of the application, he shall proceed to conduct the search so far as it would serve such a purpose and shall report on the results of the search to theComptroller; and
(b) if he determines that the search would not serve such a purpose in relation to the whole or part of the application, he shall report accordingly to the Comptroller; and in either event the applicant shall be informed of the examiner's report.

(6) If it appears to the examiner, either before or on conducting a search under this section, that an application relates to two or more inventions, but that they are not so linked as to form a single inventive concept, he shall initially only conduct a search in relation to the first invention specified in the claims of the application, but may proceed to conduct a search in relation to another invention so specified if the applicant pays the search fee in respect of the application so far as it relates to that other invention.

(7) After a search has been requested under this section for an application the Comptroller may at any time refer the application to an examiner for a supplementary search, and subsections (4) and (5) above shall apply in relation to a supplementary search as they apply in relation to any other search under this section.

(8) A reference for a supplementary search in consequence of -

(a) an amendment of the application made by the applicant undersection 18(3) or 19(1) below, or
(b) a correction of the application, or of a document filed in connection with the application, under section 117 below, shall be made only on payment of the prescribed fee, unless the Comptroller directs otherwise.

Notes & References

Relevant EPC Article(s): 90, 91,92
Relevant TRIPS Article(s): 62, 41
Relevant Rule(s): 28,29,31,32
Relevant PCT Article(s): 14, 15
Similar 1949 Act Section(s): 6, 7
Manual of Patent Practice Chapter

Section 18: Substantive examination and grant or refusal of patent

18.- (1) Where the conditions imposed by section 17(1) above for the Comptroller to refer an application to an examiner for a search are satisfied and at the time of the request under that subsection or within the prescribed period -

(a) a request is made by the applicant to the Patent Office in the prescribed form for a substantive examination; and
(b) the prescribed fee is paid for the examination; the Comptroller shall refer the application to an examiner for a substantive examination; and if no such request is made or the prescribed fee is not paid within that period, the application shall be treated as having been withdrawn at the end of that period.

(1A) If the examiner forms the view that a supplementary search under section 17 above is required for which a fee is payable, he shall inform the Comptroller, who may decide that the substantive examination should not proceed until the fee is paid; and if he so decides, then unless within such period as he may allow -

(a) the fee is paid, or
(b) the application is amended so as to render the supplementary search unnecessary, he may refuse the application.

(2) On a substantive examination of an application the examiner shall investigate, to such extent as he considers necessary in view of any examination carried out under section 15A above and search carried out under section 17 above, whether the application complies with the requirements of this Act and the rules and shall determine that question and report his determination to the Comptroller .

(3) If the examiner reports that any of those requirements are not complied with, the Comptroller shall give the applicant an opportunity within a specified period to make observations on the report and to amend the application so as to comply with those requirements (subject, however, to section 76 below), and if the applicant fails to satisfy the Comptroller that those requirements are complied with, or to amend the application so as to comply with them, the Comptroller may refuse the application.

(4) If the examiner reports that the application, whether as originally filed or as amended in pursuance of section 15A above, this section or section 19 below, complies with those requirements at any time before the end of the prescribed period, theComptroller shall notify the applicant of that fact and, subject to subsection (5) and sections 19 and 22 below and on payment within the prescribed period of any fee prescribed for the grant, grant him a patent.

(5) Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the Comptroller may on that ground refuse to grant a patent in pursuance of more than one of the applications.

Notes & References

Relevant EPC Article(s): 94,96,97
Relevant TRIPS Article(s): 62, 41
Relevant Rule(s): 33,34
Similar 1949 Act Section(s): 6, 7, 10
Manual of Patent Practice Chapter

Section 19: General power to amend application before grant

19.- (1) At any time before a patent is granted in pursuance of an application the applicant may, in accordance with the prescribed conditions and subject to section 76 below, amend the application of his own volition.

(2) The Comptroller may, without an application being made to him for the purpose, amend the specification and abstract contained in an application for a patent so as to acknowledge a registered trade mark..

Notes & References

Relevant EPC Article(s): 123
Relevant Rule(s): 35,36 , Sched 2 4
Manual of Patent Practice Chapter

Section 20: Failure of application

20.- (1) If it is not determined that an application for a patent complies before the end of the prescribed period with all the requirements of this Act and the rules, the application shall be treated as having been refused by the Comptroller at the end of that period, and section 97 below shall apply accordingly.

(2) If at the end of that period an appeal to the Court is pending in respect of the application or the time within which such an appeal could be brought has not expired, that period -

(a) where such an appeal is pending, or is brought within the said time or before the expiration of any extension of that time granted (in the case of a first extension) on an application made within that time or (in the case of a subsequent extension) on an application made before the expiration of the last previous extension, shall be extended until such date as the Court may determine;

(b) where no such appeal is pending or is so brought, shall continue until the end of the same time or, if any extension of that time is so granted, until the expiration of the extension or last extension so granted.

Notes & References

Similar 1949 Act Section(s): 12
Manual of Patent Practice Chapter

Section 20A: Reinstatement of applications

20A.- (1) Subsection (2) below applies where an application for a patent is refused, or is treated as having been refused or withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of this Act or rules within a period which is -

(a) set out in this Act or rules, or
(b) specified by the comptroller.

(2) Subject to subsection (3) below, the comptroller shall reinstate the application if, and only if -

(a) the applicant requests him to do so;
(b) the request complies with the relevant requirements of rules; and
(c) he is satisfied that the failure to comply referred to in subsection (1) above was unintentional.

(3) The comptroller shall not reinstate the application if -

(a) an extension remains available under this Act or rules for the period referred to in subsection (1) above; or
(b) the period referred to in subsection (1) above is set out or specified -

(i) in relation to any proceedings before the comptroller;
(ii) for the purposes of section 5(2A)(b) above; or
(iii) for the purposes of a request under this section or section 117B below.

(4) Where the application was made by two or more persons jointly, a request under subsection (2) above may, with the leave of the comptroller, be made by one or more of those persons without joining the others.

(5) If the application has been published under section 16 above, then the comptroller shall publish notice of a request under subsection (2) above in the prescribed manner.

(6) The reinstatement of an application under this section shall be by order.

(7) If an application is reinstated under this section the applicant shall comply with the requirement referred to in subsection (1) above within the further period specified by the comptroller in the order reinstating the application.

(8) The further period specified under subsection (7) above shall not be less than two months.

(9) If the applicant fails to comply with subsection (7) above the application shall be treated as having been withdrawn on the expiry of the period specified under that subsection.

Section 20B: Effect of reinstatement under section 20A

20B.- (1) The effect of reinstatement under section 20A of an application for a patent is as follows.

(2) Anything done under or in relation to the application during the period between termination and reinstatement shall be treated as valid.

(3) If the application has been published under section 16 above before its termination anything done during that period which would have constituted an infringement of the rights conferred by publication of the application if the termination had not occurred shall be treated as an infringement of those rights -

(a) if done at a time when it was possible for the period referred to in section 20A(1) above to be extended, or
(b) if it was a continuation or repetition of an earlier act infringing those rights.

(4) If the application has been published under section 16 above before its termination and, after the termination and before publication of notice of the request for its reinstatement, a person -

(a) began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application if the termination had not taken place, or
(b) made in good faith effective and serious preparations to do such an act,

he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the reinstatement of the application and the grant of the patent; but this right does not extend to granting a licence to another person to do the act.

(5) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (4) above may -

(a) authorise the doing of that act by any partners of his for the time being in that business, and
(b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

(6) Where a product is disposed of to another in exercise of a right conferred by subsection (4) or (5) above, that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the applicant.

(6A) The above provisions apply in relation to the use of a patented invention for the services of the Crown as they apply in relation to infringement of the rights conferred by publication of the application for a patent (or, as the case may be, infringement of the patent)

"Patented invention" has the same meaning as in section 55 below.

(7) In this section "termination", in relation to an application, means -

(a) the refusal of the application, or
(b) the application being treated as having been refused or withdrawn.

Section 21: Observations by third party on patentability

21.- (1) Where an application for a patent has been published but a patent has not been granted to the applicant, any other person may make observations in writing to the Comptroller on the question whether the invention is a patentable invention, stating reasons for the observations, and the Comptroller shall consider the observations in accordance with rules.

(2) It is hereby declared that a person does not become a party to any proceedings under this Act before the Comptroller by reason only that he makes observations under this section.

Notes & References

Relevant EPC Article(s): 115
Relevant Rule(s): 37
Manual of Patent Practice Chapter

SECURITY AND SAFETY

Manual of Patent Practice Chapter

Section 22: Information prejudicial to national security or safety of public

22.- (1) Where an application for a patent is filed in the Patent Office (whether under this Act or any treaty or international convention to which the United Kingdom is a party and whether before or after the appointed day) and it appears to the Comptroller that the application contains information of a description notified to him by the Secretary of State as being information the publication of which might be prejudicial to national security, the Comptroller may give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons.

(2) If it appears to the Comptroller that any application so filed contains information the publication of which might be prejudicial to the safety of the public, he may give directions prohibiting or restricting the publication of that information or its communication to any specified person or description of persons until the end of a period not exceeding three months from the end of the period prescribed for the purposes of section 16 above.

(3) While directions are in force under this section with respect to an application -

(a) if the application is made under this Act, it may proceed to the stage where it is in order for the grant of a patent, but it shall not be published and that information shall not be so communicated and no patent shall be granted in pursuance of the application;
(b) if it is an application for a European patent, it shall not be sent to the European Patent Office; and
(c) if it is an international application for a patent, a copy of it shall not be sent to the International Bureau or any international searching authority appointed under the Patent Co-operation Treaty.

(4) Subsection (3)(b) above shall not prevent the Comptroller from sending the European Patent Office any information which it is his duty to send that office under the European Patent Convention.

(5) Where the Comptroller gives directions under this section with respect to any application, he shall give notice of the application and of the directions to the Secretary of State, and the following provisions shall then have effect -

(a) the Secretary of State shall, on receipt of the notice, consider whether the publication of the application or the publication or communication of the information in question would be prejudicial to national security or the safety of the public;
(b) if the Secretary of State determines under paragraph (a) above that the publication of the application or the publication or communication of that information would be prejudicial to the safety of the public, he shall notify the Comptroller who shall continue his directions under subsection (2) above until they are revoked under paragraph (e) below;
(c) if the Secretary of State determines under paragraph (a) above that the publication of the application or the publication or communication of that information would be prejudicial to the national security or the safety of the public, he shall (unless a notice under paragraph (d) below has previously been given by the Secretary of State to the Comptroller) reconsider that question during the period of nine months from the date of filing the application and at least once in every subsequent period of twelve months;
(d) if on consideration of an application at any time it appears to the Secretary of State that the publication of the application or the publication or communication of the information contained in it would not, or would no longer, be prejudicial to national security or the safety of the public, he shall give notice to the Comptroller to that effect; and
(e) on receipt of such a notice the Comptroller shall revoke the directions and may, subject to such conditions (if any) as he thinks fit, extend the time for doing anything required or authorised to be done by or under this Act in connection with the application, whether or not that time has previously expired.

(6) The Secretary of State may do the following for the purpose of enabling him to decide the question referred to in subsection (5)(c) above -

(a) where the application contains information relating to the production or use of atomic energy or research into matters connected with such production or use, he may at any time do one or both of the following, that is to say,

(i) inspect the application and any documents sent to the comptroller in connection with it;
(ii) authorise a government body with responsibility for the production of atomic energy or for research into matters connected with its production or use, or a person appointed by such a government body, to inspect the application and any documents sent to the comptroller in connection with it; and

(b) in any other case, he may at any time after (or, with the applicant's consent, before) the end of the period prescribed for the purposes of section 16 above inspect the application and any such documents; and where 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.

(7) Where directions have been given under this section in respect of an application for a patent for an invention and, before the directions are revoked, that prescribed period expires and the application is brought in order for the grant of a patent, then -

(a) if while the directions are in force the invention is worked by (or with the written authorisation of or to the order of) a government department, the provisions of sections 55 to 59 below shall apply as if -

(i) the working were use made by section 55 ;
(ii) the application had been published at the end of that period; and
(iii) a patent had been granted for the invention at the time the application is brought in order for the grant of a patent (taking the terms of the patent to be those of the application as it stood at the time it was so brought in order); and

(b) if it appears to the Secretary of State that the applicant for the patent has suffered hardship by reason of the continuance in force of the directions, the Secretary of State may, with the consent of the Treasury, make such payment (if any) by way of compensation to the applicant as appears to the Secretary of State and the Treasury to be reasonable having regard to the inventive merit and utility of the invention, the purpose for which it is designed and any other relevant circumstances.

(8) Where a patent is granted in pursuance of an application in respect of which directions have been given under this section, no renewal fees shall be payable in respect of any period during which those directions were in force.

(9) A person who fails to comply with any direction under this section shall be liable -

(a) on summary conviction, to a fine not exceeding £1,000; or
(b) on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both.

Notes & References

Relevant EPC Article(s): 75,77
Relevant CPC Article(s): 36(2), 78
Relevant PCT Article(s): 27(8)
Similar 1949 Act Section(s): 18
Manual of Patent Practice Chapter

Section 23: Restrictions on applications abroad by United Kingdom residents

23.- (1) Subject to the following provisions of this section, no person resident in the United Kingdom shall, without written authority granted by the Comptroller, file or cause to be filed outside the United Kingdom an application for a patent for an invention if subsection (1A) below applies to that application, unless -

(a) an application for a patent for the same invention has been filed in the Patent Office (whether before, on or after the appointed day) not less than six weeks before the application outside the United Kingdom; and
(b) either no directions have been given under section 22 above in relation to the application in the United Kingdom or all such directions have been revoked.

(1A) This subsection applies to an application if-

(a) the application contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or
(b) the application contains information the publication of which might be prejudicial to the safety of the public.

(2) Subsection (1) above does not apply to an application for a patent for an invention for which an application for a patent has first been filed (whether before or after the appointed day) in a country outside the United Kingdom by a person resident outside the United Kingdom.

(3) A person who files or causes to be filed an application for the grant of a patent in contravention of this section shall be liable -

(a) on summary conviction, to a fine not exceeding £1,000; or
(b) on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both.

(3A) A person is liable under subsection (3) above only if-

(a) he knows that filing the application, or causing it to be filed, would contravene this section; or
(b) he is reckless as to whether filing the application, or causing it to be filed, would contravene this section.

(4) In this section -

(a) any reference to an application for a patent includes a reference to an application for other protection for an invention;
(b) any reference to either kind of application is a reference to an application under this Act, under the law of any country other than the United Kingdom or under any treaty or international convention to which the United Kingdom is a party.

Notes & References

Foreign Filing may still be possible under the Inter-NATO Agreement (Cmnd. 1595) and its implementing Regulations (Cmnd. 2167)
Relevant EPC Article(s): 75,77
Similar 1949 Act Section(s): 18
Relevant PCT Article(s): 27(8)
Manual of Patent Practice Chapter

PROVISIONS AS TO PATENTS AFTER GRANT

Manual of Patent Practice Chapter

Section 24: Publication and certificate of grant

24.- (1) As soon as practicable after a patent has been granted under this Act the Comptroller shall publish in the journal a notice that it has been granted.

(2) The Comptroller shall, as soon as practicable after he publishes a notice under subsection (1) above, send the proprietor of the patent a certificate in the prescribed form that the patent has been granted to the proprietor.

(3) The Comptroller shall, at the same time as he publishes a notice under subsection (1) above in relation to a patent publish the specification of the patent, the names of the proprietor and (if different) the inventor and any other matters constituting or relating to the patent which in the Comptroller's opinion it is desirable to publish.

(4) Subsection (3) above shall not require the Comptroller to identify as inventor a person who has waived his right to be mentioned as inventor in any patent granted for the invention.

Notes & References

Relevant EPC Article(s):97,98
Relevant Rule(s): 38
Similar 1949 Act Section(s): 13, 19
Manual of Patent Practice Chapter

Section 25: Term of patent

25.- (1)A patent granted under this Act shall be treated for the purposes of the following provisions of this Act as having been granted, and shall take effect, on the date on which notice of its grant is published in the journal and, subject to subsection (3) below, shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent or with such other date as may be prescribed.

(2) A rule prescribing any such other date under this section shall not be made unless a draft of the rule has been laid before, and approved by resolution of, each House of Parliament.

(3) Where any renewal fee in respect of a patent is not paid by the end of the period prescribed for payment (the "prescribed period") the patent shall cease to have effect at the end of such day, in the final month of that period, as may be prescribed.

(4) If during the period ending with the sixth month after the month in which the prescribed period ends the renewal fee and any prescribed additional fee are paid, the patent shall be treated for the purposes of this Act as if it had never expired, and accordingly -

(a) anything done under or in relation to it during that further period shall be valid;
(b) an act which would constitute an infringement of it if it had not expired shall constitute such an infringement; and
(c) an act which would constitute the use of the patented invention for the services of the Crown if the patent had not expired shall constitute that use.

(5) Rules shall include provision requiring the Comptroller to notify the register ed proprietor of a patent that a renewal fee has not been received from him in the Patent Office before the end of the prescribed period and before the framing of the notification.

Notes & References

Relevant EPC Article(s): 63, 86
Relevant CPC Article(s): 48, 50
Relevant TRIPS Article(s): 33
Relevant Rule(s): 39, 42 , Sched 2 2 , SPC Rules
Relevant Paris Convention Article(s): 4bis(5), 5bis(1)
Similar 1949 Act Section(s): 22
Manual of Patent Practice Chapter

Section 26: Patent not to be impugned for lack of unity

26.- No person may in any proceeding object to a patent or to an amendment of a specification of a patent on the ground that the claims contained in the specification of the patent, as they stand or, as the case may be, as proposed to be amended, relate -

(a) to more than one invention, or
(b) to a group of inventions which are not so linked as to form a single inventive concept.

Notes & References

Similar 1949 Act Section(s): 21(4)
Manual of Patent Practice Chapter

Section 27: General power to amend specification after grant

27.- (1)Subject to the following provisions of this section and to section 76 below, the Comptroller may, on an application made by the proprietor of a patent, allow the specification of the patent to be amended subject to such conditions, if any, as he thinks fit.

(2) No such amendment shall be allowed under this section where there are pending before the Court or the Comptroller proceedings in which the validity of the patent may be put in issue.

(3) An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent.

(4) The Comptroller may, without an application being made to him for the purpose, amend the specification of a patent so as to acknowledge a registered trade-mark.

(5) A person may give notice to the Comptroller of his opposition to an application under this section by the proprietor of a patent, and if he does so the Comptroller shall notify the proprietor and consider the opposition in deciding whether to grant the application.

Notes & References

Relevant EPC Article(s): 139
Relevant CPC Article(s): 51, 52
Relevant Rule(s): 40 , Sched 2 4
Similar 1949 Act Section(s): 29
Manual of Patent Practice Chapter

Section 28: Restoration of lapsed patents

28. - (1) Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the Comptroller within the prescribed period.

(1A) Rules prescribing that period may contain such transitional provisions and savings as appear to the Secretary of State to be necessary or expedient.

(2) An application under this section may be made by the person who was the proprietor of the patent or by any other person who would have been entitled to the patent if it had not ceased to have effect; and where the patent was held by two or more persons jointly, the application may, with the leave of the Comptroller, be made by one or more of them without joining the others.

(2A) Notice of the application shall be published by the Comptroller in the prescribed manner.

(3) If the comptroller is satisfied that the failure of the proprietor of the patent -

(a) to pay the renewal fee within the prescribed period; or
(b) to pay that fee and any prescribed additional fee within the period ending with the sixth month after the month in which the prescribed period ended,

was unintentional, the comptroller shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.

(4) An order under this section may be made subject to such conditions as the Comptroller thinks fit (including a condition requiring compliance with any provisions of the rules relating to registration which have not been complied with), and if the proprietor of the patent does not comply with any condition of such an order the Comptroller may revoke the order and give such directions consequential on the revocation as he thinks fit.

Notes & References

Relevant EPC Article(s): 122
Relevant Rule(s): 41
Relevant Paris Convention Article(s): 5bis(2)
Similar 1949 Act Section(s): 27
Manual of Patent Practice Chapter

Section 28A: Effect of order for restoration of patent

28A.- (1) The effect of an order for the restoration of a patent is as follows.

(2) Anything done under or in relation to the patent during the period between expiry and restoration shall be treated as valid.

(3) Anything done during that period which would have constituted an infringement if the patent had not expired shall be treated as an infringement -

(a) if done at a time when it was possible for the patent to be renewed under section 25(4), or
(b) if it was a continuation or repetition of an earlier infringing act.

(4) If after it was no longer possible for the patent to be so renewed, and before publication of notice of the application for restoration, a person -

(a) began in good faith to do an act which would have constituted an infringement of the patent if it had not expired, or
(b) made in good faith effective and serious preparations to do such an act, he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the patent; but this right does not extend to granting a licence to another person to do the act.

(5) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (4) may -

(a) authorise the doing of that act by any partners of his for the time being in that business, and
(b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

(6) Where a product is disposed of to another in exercise of the rights conferred by subsection (4) or (5), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.

(7) The above provisions apply in relation to the use of a patent for the services of the Crown as they apply in relation to infringement of the patent.

 

Notes & References

Relevant EPC Article(s): 122
Similar 1949 Act Section(s): 27
Manual of Patent Practice Chapter

Section 29: Surrender of patents

29.- (1) The proprietor of a patent may at any time by notice given to the Comptroller offer to surrender his patent.

(2) A person may give notice to the Comptroller of his opposition to the surrender of a patent under this section, and if he does so the Comptroller shall notify the proprietor of the patent and determine the question.

(3) If the Comptroller is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the date when notice of his acceptance is published in the journal, the patent shall cease to have effect, but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date for the services of the Crown.

Notes & References

Relevant EPC Article(s): 99(3)
Relevant CPC Article(s): 49
Relevant Rule(s): 43
Similar 1949 Act Section(s): 34
Manual of Patent Practice Chapter

PROPERTY IN PATENTS AND APPLICATIONS, AND REGISTRATION

Manual of Patent Practice Chapter

Section 30: Nature of, and transactions in, patents and applications for patents

30.- (1) Any patent or application for a patent is personal property (without being a thing in action), and any patent or any such application and rights in or under it may be transferred, created or granted in accordance with subsections (2) to (7) below.

(2) Subject to section 36 (3) below, any patent or any such application, or any right in it, may be assigned or mortgaged.

(3) Any patent or any such application or right shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

(4) Subject to section 36 (3) below, a licence may be granted under any patent or any such application for working the invention which is the subject of the patent or the application; and -

(a) to the extent that the licence so provides, a sub-licence may be granted under any such licence and any such licence or sub-licence may be assigned or mortgaged; and
(b) any such licence or sub-licence shall vest by operation of law in the same way as any other personal property and may be vested by an assent of personal representatives.

(5) Subsections (2) to (4) above shall have effect subject to the following provisions of this Act.

(6) Any of the following transactions, that is to say -

(a) any assignment or mortgage of a patent or any such application, or any right in a patent or any such application;
(b) any assent relating to any patent or any such application or right; shall be void unless it is in writing and is signed by or on behalf of the assignor or mortgagor

(or, in the case of an assent or other transaction by a personal representative, by or on behalf of the personal representative).

(6A) If a transaction mentioned in subsection (6) above is by a body corporate, references in that subsection to such a transaction being signed by or on behalf of the assignor or mortgagor shall be taken to include references to its being under the seal of the body corporate.

(7) An assignment of a patent or any such application or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings by virtue of section 61 or 69 below for a previous infringement or to bring proceedings under section 58 below for a previous act.

Notes & References

Relevant EPC Article(s): 71,72, 73, 74
Relevant CPC Article(s): 37, 38,44
Relevant TRIPS Article(s): 28.2
Manual of Patent Practice Chapter

Section 31: Nature of, and transactions in, patents and applications for patents in Scotland

31.- (1)Section 30 above shall not extend to Scotland, but instead the following provisions of this section shall apply there.

(2) Any patent or application for a patent, and any right in or under any patent or any such application, is incorporeal moveable property, and the provisions of the following sub-sections and of section 36(3) below shall apply to any grant of licences, assignations and securities in relation to such property.

(3) Any patent or any such application, or any right in it, may be assigned and security may be granted over a patent or any such application or right.

(4) A licence may be granted, under any patent or any application for a patent, for working the invention which is the subject of the patent or the application.

(5) To the extent that any licence granted under subsection (4) above so provides, a sub-licence may be granted under any such licence and any such licence or sub-licence may be assigned and security may be granted over it.

(6) Any assignation or grant of security under this section may be carried out only by writing subscribed in accordance with the Requirements of Writing (Scotland) Act 1995.

(7) An assignation of a patent or application for a patent or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings by virtue of section 61 or 69 below for a previous infringement or to bring proceedings under section 58 below for a previous act.

Notes & References

Relevant EPC Article(s): 71,72, 73, 74
Relevant CPC Article(s): 37, 38,44
Relevant TRIPS Article(s): 28.2
Manual of Patent Practice Chapter

Section 32: Register of patents, etc

32.- (1) The Comptroller shall maintain the register of patents, which shall comply with rules made by virtue of this section and shall be kept in accordance with such rules.

(2) Without prejudice to any other provision of this Act or rule