Patents (Amendment) Act 2006

1 Definitions.

1.— In this Act—

“ Principal Act ” means the Patents Act 1992;

“ 1996 Act ” means the Trade Marks Act 1996.

2 Interpretation (section 2 of Principal Act).

2.— Section 2 of the Principal Act is amended in subsection (1)—

(a) by inserting the following after the definition of “the Act of 1964”:

“ ‘ Agreement establishing the World Trade Organisation’ means the Agreement establishing the World Trade Organisation done at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement which is for the time being in force in the State;”,

(b) by inserting the following after the definition of “assignee”:

“ ‘ Board of Appeal’ means a Board of Appeal referred to in Article 21 of the European Patent Convention;”,

(c) in paragraph (i) of the definition of “designate”, by inserting “, and includes a reference to a country being treated as designated in pursuance of the European Patent Convention or the Treaty” after “invention”,

(d) by inserting the following after the definition of “divisional application”:

“ ‘Enlarged Board of Appeal’ means the Enlarged Board of Appeal referred to in Article 22 of the European Patent Convention;”,

(e) in the definition of “ European Patent Convention ”, by inserting “, as amended for the time being” after “1973”,

(f) by inserting the following after the definition of “the Journal”:

“ ‘ member of the World Trade Organisation’ means a party to the Agreement establishing the World Trade Organisation;”,

and

(g) by inserting the following after the definition of “the Treaty”:

“ ‘TRIPs Agreement ’ means the Agreement on Trade-Related Aspects of Intellectual Property Rights annexed to the Agreement establishing the World Trade Organisation;”.

3 Patentable inventions (section 9 of Principal Act).

3.— Section 9 of the Principal Act is amended—

(a) in subsection (1), by inserting “, in all fields of technology,” after “An invention”, and

(b) by deleting subsections (4) and (5).

4 Exceptions to patentability (section 10 of Principal Act).

4.— Section 10 of the Principal Act is amended—

(a) in paragraph (a), by substituting “commercial exploitation” for “publication or exploitation”,

(b) in paragraph (b), by substituting “thereof;” for “thereof.”,

(c) by inserting the following after paragraph (b):

“(c) a method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body.”,

(d) by renumbering the existing provision as subsection (1) of that section, and

(e) by inserting the following:

“(2) Subsection (1)(c) shall not apply to products, in particular substances or compositions, for use in any such method.”.

5 Novelty (section 11 of Principal Act).

5.— Section 11 of the Principal Act is amended by substituting the following for subsection (4):

“(4) The provisions of subsections (2) and (3) shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in section 10(1)(c) provided that its use for any such method is not comprised in the state of the art.

(5) The provisions of subsections (2) and (3) shall also not exclude the patentability of any substance or composition referred to in subsection (4) for any specific use in any method referred to in section 10(1)(c), provided that such use is not comprised in the state of the art.”.

6 Date of filing application (section 23 of Principal Act).

6.— Section 23 of the Principal Act is amended by substituting the following for that section:

“Date of filing application.

23.— (1) The date of filing of a patent application shall be taken to be the earliest date on which the applicant paid the filing fee and filed documents which contain—

(a) an indication that a patent is sought,

(b) information identifying the applicant or information sufficient to enable that person to be contacted by the Office, and

(c) (i) a description of the invention for which a patent is sought even where the description does not comply with other requirements of this Act or with any requirements that may be prescribed, or

(ii) a reference, complying with any relevant requirements that may be prescribed, to a previously filed application made by the applicant or the applicant’s predecessor in title.

(2) It is immaterial for the purposes of subsection (1)(c)(i) whether the description of the invention concerned is in, or is accompanied by a translation into, a language accepted by the Office in accordance with any requirements that may be prescribed.

(3) If the Minister prescribes a later date for payment of the filing fee under section 18(3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in subsection (1) are filed.

(4) Where documents filed at the Office do not satisfy all of the conditions specified in subsection (1), the Controller shall as soon as practicable after the filing of those documents notify the applicant of the further documents required to be filed in order for the application to have a date of filing.

(5) Where documents filed at the Office satisfy all the conditions specified in subsection (1), the Controller 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 made under this Act to be complied with, if the application is not to be treated as having been withdrawn.

(6) If any drawing or a part of a description referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing or that part of the description was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and—

(a) if the applicant makes any such request, the date of filing the drawing or that part of the description shall be so treated,

(b) if the request is not made, any reference to the drawing or that part of the description in the application shall be deemed to be deleted.

(7) If any drawing or part of a description referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing or that part of the description within the prescribed period, and—

(a) if the drawing or part of the description is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application,

(b) if the drawing or part of the description is not so filed, any reference to the drawing or part of the description in the application shall be deemed to be deleted.

(8) Where the applicant, subsequent to the date of filing under subsection (1), files a missing part of the description or a missing drawing, subsection (6)(a) or (7)(a) shall not apply where—

(a) on or before the date which is the date of filing the application under subsection (1) a declaration is made under section 26(1) in, or in connection with, the application, and

(b) the applicant makes a request for subsection (6)(a) or (7)(a), as the case may be, not to apply and that request complies with the prescribed requirements and is made within the prescribed period.

(9) An application which has a date of filing under this section or is deemed to have a date of filing accorded to it by virtue of section 24 or 81 shall be treated as withdrawn where any of the following applies:

(a) the filing fee has not been paid within the prescribed period;

(b) one or more claims or the abstract has not been filed within the relevant prescribed period;

(c) where a reference to a previously filed application has been filed as referred to in subsection (1)(c)(ii), the applicant fails to file at the Office—

(i) a description of the invention for which a patent is sought, before the end of the prescribed period,

(ii) a copy of the application referred to, complying with the relevant prescribed requirements, before the end of the prescribed period.

(10) This section applies to patent applications filed on or after the coming into operation of this section.”.

7 Priority right (section 25 of Principal Act).

7.— Section 25 of the Principal Act is amended—

(a) in subsection (1), by the insertion after “the Paris Convention for the Protection of Industrial Property” of “or to the Agreement establishing the World Trade Organisation”,

(b) in subsection (5), by the insertion after “the Paris Convention for the Protection of Industrial Property” of “or which is not a party to the Agreement establishing the World Trade Organisation”, and

(c) after subsection (5), by the insertion of the following:

“(6) In this section a ‘state party to the Agreement establishing the World Trade Organisation’ means a member of the World Trade Organisation and, for the purposes of subsection (5), every country or territory shall be taken to be a state in the case of which an order may be made under that subsection.”.

8 Withdrawal of application (section 33 of Principal Act).

8.— Section 33 of the Principal Act is amended by inserting the following after subsection (1):

“(1A) Subsection (1) does not affect the power of the Controller under section 110 to correct an error or mistake in the withdrawal of an application.”.

9 Reinstatement of applications.

9.— Part II of the Principal Act is amended by inserting the following sections after section 35 but in Chapter IV of that Part:

“Reinstatement of applications.

35A.— (1) This section shall not apply to a patent application which has lapsed by reason of the failure to pay any renewal fee and section 35(3) shall continue to apply to any such application.

(2) Where an application for a patent is refused or is treated as having been withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of this Act or rules made thereunder within a period which is prescribed or specified by the Controller, subject to subsection (3), the Controller shall reinstate the application only if—

(a) the applicant requests the Controller to do so,

(b) the request complies with the prescribed requirements, and

(c) the Controller is satisfied that the said failure to comply occurred despite reasonable care having been taken to so comply.

(3) The Controller shall not reinstate the application if the period referred to in subsection (2) is prescribed or specified by the Controller—

(a) in relation to any proceedings before the Controller pursuant to Part VIII,

(b) for the purposes of section 25(1), or

(c) for the purposes of a request under this section or section 118A.

(4) Where the application for a patent was made by 2 or more persons jointly, a request under subsection (2) may, with the leave of the Controller, be made by one or more of them without joining the others.

(5) Where the application has been published under section 28 and it appears to the Controller that reasonable care was taken to comply with the requirement within the prescribed period or, as the case may be, the period specified by the Controller, the Controller shall publish notice of a request under subsection (2) in the Journal and within the prescribed period any person may give notice to the Controller of opposition thereto.

(6) If notice of opposition is duly given under this section, the Controller shall notify the applicant and determine the question.

(7) Where an application is reinstated under this section the applicant shall comply with the requirement referred to in subsection (2) within the further period specified by the Controller in making the order to reinstate the application, which further period shall not be less than 2 months.

(8) Where the applicant fails to comply with subsection (7) the application shall be treated as having been withdrawn on the expiration of the period referred to in that subsection.

Effect of reinstatement.

35B.— (1) Where an application is reinstated under section 35A—

(a) anything done under or in relation to the application during the period between termination and reinstatement shall be treated as valid,

(b) in a case where the application has been published under section 28 before its termination, anything done during the period referred to in paragraph (a), 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 if it was a continuation or repetition of an earlier act infringing those rights,

(c) in a case where the application has been published under section 28 before its termination and, after the termination and before publication of a notice of request for its reinstatement, a person—

(i) 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

(ii) made, in good faith, effective and serious preparations to do such an act,

the person shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the reinstatement of the application and the grant of the patent.

(2) Paragraph (c) of subsection (1) does not extend to granting a licence to any person to do an act referred to in that paragraph.

(3) If the act referred to in paragraph (c) of subsection (1) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by the said paragraph (c) may—

(a) authorise that act to be done by any partner of that person for the time being in that business, and

(b) assign the right, or transmit that right 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 preparations had been made to do it.

(4) Where a product is disposed of by any person to another person in exercise of a right conferred by paragraph (c) of subsection (1) or by subsection (3), that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the applicant.

(5) In this section ‘ termination’ , in relation to an application, means—

(a) the refusal of the application, or

(b) the application is treated as having been withdrawn.”.

10 Restoration of lapsed patents (section 37 of Principal Act).

10.— The Principal Act is amended in section 37—

(a) by substituting the following for subsection (7):

“(7) An order under this section for the restoration of a patent may be made subject to such conditions as the Controller thinks fit, including, in particular, a condition requiring the entry in the register of any matter in respect of which the provisions of this Act as to entries in the register is not complied with and if any condition to which an order under this section is subject is not complied with by the proprietor of the patent, the Controller may revoke the order and give such directions consequential on the revocation as he thinks fit.”,

and

(b) by inserting the following after subsection (7):

“(8) An order under this section for the restoration of a patent shall have the following effect:

(a) anything done under or in relation to the patent during the period beginning on the date on which the patent lapsed and ending on the date of an order under this section shall be treated as valid;

(b) anything done during the period referred to in paragraph (a) which would have constituted an infringement if the patent had not lapsed shall be treated as an infringement—

(i) if it was done at a time when it was possible for the patent to be renewed during the period of extension specified for the purpose of section 36(3), or

(ii) if it was a continuation or repetition of an earlier infringing act;

(c) where, after the expiration of the period of extension specified for the purpose of section 36(3) and before the date of publication of the application for restoration of the patent in the Journal under subsection (4), a person—

(i) began in good faith to do an act which would constitute an infringement of the patent if it had not lapsed, or

(ii) made in good faith effective and serious preparations to do such an act,

the person shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the restoration of the patent.

(9) Paragraph (c) of subsection (8) does not extend to granting a licence to any person to do an act referred to in that paragraph.

(10) If the act referred to in paragraph (c) of subsection (8) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by the said paragraph (c) may—

(a) authorise that act to be done by any partner of that person for the time being in that business, and

(b) assign the right, or transmit that right 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 preparations had been made to do it.

(11) Where a product is disposed of by any person to another person in exercise of a right conferred by paragraph (c) of subsection (8) or by subsection (10), that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.”.

11 Amendment after grant (section 38 of Principal Act).

11.— Section 38 of the Principal Act is amended by inserting the following after subsection (6):

“(7) In considering whether or not to allow an amendment proposed under this section the Court or the Controller shall have regard to any relevant principles applicable under the European Patent Convention.”.

12 Limitation of effect of patent (section 42 of Principal Act).

12.— Section 42 of the Principal Act is amended—