Patents Act 1977

• (3) Evidence of any instrument issued under the relevant convention by any such institution, including any judgment or order of the relevant convention court, or of any document in the custody of any such institution or reproducing in legible form any information in such custody otherwise than in legible form, or any entry in or extract from such a document, may be given in any legal proceedings by production of a copy certified as a true copy by an official of that institution; and any document purporting to be such a copy shall be received in evidence without proof of the official position or handwriting of the person signing the certificate.

• (4) Evidence of any such instrument may also be given in any legal proceedings—

• (a) by production of a copy purporting to be printed by the Queen’s Printer;

• (b) where the instrument is in the custody of a government department, by production of a copy certified on behalf of the department to be a true copy by an officer of the department generally or specially authorised to do so;

and any document purporting to be such a copy as is mentioned in paragraph (b) above of an instrument in the custody of a department shall be received in evidence without proof of the official position or handwriting of the person singing the certificate, or of his authority to do so, or of the document being in the custody of the department.

• (5) In any legal proceedings in Scotland evidence of any matter given in a manner authorised by this section shall be sufficient evidence of it.

• (6) In this section—

• “convention institution” means an institution established by or having functions under the relevant convention;

• “relevant convention court” does not include a court of the United Kingdom or of any other country which is a party to the relevant convention but does include the Unified Patent Court; and

• “legal proceedings”, in relation to the United Kingdom, includes proceedings before the comptroller.

Obtaining evidence for proceedings under the European Patent Convention

92

• (1) Sections 1 to 3 of the Evidence (Proceedings in Other Jurisdictions) Act 1975 (provisions enabling United Kingdom courts to assist in obtaining evidence for foreign courts) shall apply for the purpose of proceedings before a relevant convention court under the European Patent Convention or proceedings before the Unified Patent Court as they apply for the purpose of civil proceedings in a court exercising jurisdiction in a country outside the United Kingdom.

• (2) In the application of those sections by virtue of this section any reference to the High Court, the Court of Session or the High Court of Justice in Northern Ireland shall include a reference to the comptroller.

• (3) Rules under this Act may include provision—

• (a) as to the manner in which an application under section 1 of the said Act of 1975 is to be made to the comptroller for the purpose of proceedings before a relevant convention court under the European Patent Convention; and

• (b) subject to the provisions of that Act, as to the circumstances in which an order can be made under section 2 of that Act on any such application.

• (4) Rules of court and rules under this Act may provide for an officer of the European Patent Office to attend the hearing of an application under section 1 of that Act before the court or the comptroller, as the case may be, and examine the witnesses or request the court or comptroller to put specified questions to the witnesses.

• (5) Section 1(4) of the Perjury Act 1911 and Article 3(4) of the Perjury (Northern Ireland) Order 1979 (statements made for the purposes, among others, of judicial proceedings in a tribunal of a foreign state) shall apply in relation to proceedings before a relevant convention court under the European Patent Convention or proceedings before the Unified Patent Court as they apply to a judicial proceeding in a tribunal of a foreign state.

Enforcement of orders for costs

93

If the European Patent Office orders the payment of costs in any proceedings before it—

• (a) in England and Wales the costs shall, if the county court so orders, be recoverable under section 85 of the County Courts Act 1984 or otherwise as if they were payable under an order of that court;

• (b) in Scotland the order may be enforced in like manner as a recorded decree arbitralan extract registered decree arbitral bearing a warrant for execution issued by the sheriff court of any sheriffdom in Scotland.

• (c) in Northern Ireland the order may be enforced as if it were a money judgment.

Communication of information to the European Patent Office, etc.

94

It shall not be unlawful by virtue of any enactment to communicate the following information in pursuance of the European Patent Convention to the European Patent Office or the competent authority of any country which is party to the Convention, that is to say—

• (a) information in the files of the court which, in accordance with rules of court, the court authorises to be so communicated;

• (b) information in the files of the Patent Office which, in accordance with rules under this Act, the comptroller authorises to be so communicated.

Financial provisions

95

• (1) There shall be paid out of moneys provided by Parliament any sums required by any Minister of the Crown or government department to meet any financial obligation of the United Kingdom under the European Patent Convention, ... or the Patent Co-operation Treaty.

• (2) Any sums received by any Minister of the Crown or government department in pursuance of that convention or that treaty shall be paid into the Consolidated Fund.

Part III — Miscellaneous and General

Legal Proceedings

The Patents Court

96

• (1) There shall be constituted, as part of the Chancery Division of the High Court, a Patents Court to take such proceedings relating to patents and other matters as may be prescribed by rules of court.

• (2) The judges of the Patents Court shall be such of the puisne judges of the High Court as the Lord Chancellor may from time to time nominate.

• (3) The foregoing provisions of this section shall not be taken as prejudicing the provisions of the Supreme Court of Judicature (Consolidation) Act 1925 which enable the whole jurisdiction of the High Court to be exercised by any judge of that court.

• (4) Rules of court shall make provision for the appointment of scientific advisers to assist the Patents Court in proceedings under this Act and for regulating the functions of such advisers.

• (5) The remuneration of any such adviser shall be determined by the Lord Chancellor with the consent of the Minister for the Civil Service and shall be defrayed out of moneys provided by Parliament.

Appeals from the comptroller

97

• (1) Except as provided by subsection (4) below, an appeal shall lie to the Patents Court from any decision of the comptroller under this Act or rules except any of the following decisions, that is to say—

• (a) a decision falling within section 14(7) above;

• (b) a decision under section 16(2) above to omit matter from a specification;

• (c) a decision to give directions under subsection (1) or (2) of section 22 above;

• (d) a decision under rules which is excepted by rules from the right of appeal conferred by this section.

• (2) For the purpose of hearing appeals under this section the Patents Court may consist of one or more judges of that court in accordance with directions given by the Lord Chief Justice of England and Wales after consulting the Lord Chancellor ; and the Patents Court shall not be treated as a divisional court for the purposes of section 31(1)(f) of the Supreme Court of Judicature (Consolidation) Act 1925 (appeals from divisional courts).

• (3) An appeal shall not lie to the Court of Appeal from a decision of the Patents Court on appeal from a decision of the comptroller under this Act or rules—

• (a) except where the comptroller’s decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or

• (b) except where the ground of appeal is that the decision of the Patents Court is wrong in law;

but an appeal shall only lie to the Court of Appeal under this section if leave to appeal is given by the Patents Court or the Court of Appeal.

• (4) The Lord Chief Justice may nominate a judicial office holder (as defined in section 109(4) of the Constitutional Reform Act 2005) to exercise his functions under subsection (2).

• (4) An appeal shall lie to the Court of Session from any decision of the comptroller in proceedings which under rules are held in Scotland, except any decision mentioned in paragraphs (a) to (d) of subsection (1) above.

• (5) An appeal shall not lie to the Inner House of the Court of Session from a decision of an Outer House judge on appeal from a decision of the comptroller under this Act or rules—

• (a) except where the comptroller’s decision was given under section 8, 12, 18, 20, 27, 37, 40, 61, 72, 73 or 75 above; or

• (b) except where the ground of appeal is that the decision of the Outer House judge is wrong in law.

Proceedings in Scotland

98

• (1) In Scotland proceedings relating primarily to patents (other than proceedings before the comptroller) shall be competent in the Court of Session only, and any jurisdiction of the sheriff court relating to patents is hereby abolished except in relation to questions which are incidental to the issue in proceedings which are otherwise competent there.

• (2) The remuneration of any assessor appointed to assist the court in proceedings under this Act in the Court of Session shall be determined by the Lord President of the Court of Session with the consent of the Treasury and shall be defrayed out of moneys provided by Parliament.

General powers of the court

99

The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Act or any treaty or international convention to which the United Kingdom is a party, make any order or exercise any other power which the comptroller could have made or exercised for the purpose of determining that question.

Burden of proof in certain cases

100

• (1) If the invention for which a patent is granted is a process for obtaining a new product, the same product produced by a person other than the proprietor of the patent or a licensee of his shall, unless the contrary is proved, be taken in any proceedings to have been obtained by that process.

• (2) In considering whether a party has discharged the burden imposed upon him by this section, the court shall not require him to disclose any manufacturing or commercial secrets if it appears to the court that it would be unreasonable to do so.

Exercise of comptroller's discretionary powers

101

Without prejudice to any rule of law, the comptroller shall give any party to a proceeding before him an opportunity of being heard before exercising adversely to that party any discretion vested in the comptroller by this Act or rules.

Right of audience in patent proceedings

102

• (1) A party to proceedings before the comptroller under this Act, or under any treaty or international convention to which the United Kingdom is a party, may appear before the comptroller in person or be represented by any person whom he desires to represent him.

• (2) No offence is committed under the enactments relating to the preparation of documents by persons not legally qualified by reason only of the preparation by any person of a document, other than a deed, for use in such proceedings.

• (2A) For the purposes of subsection (2), as it has effect in relation to England and Wales, “the enactment relating to the preparation of documents by persons not qualified” means section 14 of the Legal Services Act 2007 (offence to carry on a reserved legal activity if not entitled) as it applies in relation to an activity which amounts to the carrying on of reserved instrument activities within the meaning of that Act.

• (3) Subsection (1) has effect subject to rules made under section 281 of the Copyright, Designs and Patents Act 1988 (power of comptroller to refuse to recognise certain agents).

• (4) In its application to proceedings in relation to applications for, or otherwise in connection with, European patents, this section has effect subject to any restrictions imposed by or under the European Patent Convention.

• (5) Nothing in this section is to be taken to limit any entitlement to prepare deeds conferred on a registered patent attorney by virtue of the Legal Services Act 2007.

Extension of privilege for communications with solicitors relating to patent proceedings

103

• (1) It is hereby declared that the rule of law which confers privilege from disclosure in legal proceedings in respect of communications made with a solicitor or a person acting on his behalf, or in relation to information obtained or supplied for submission to a solicitor or a person acting on his behalf, for the purpose of any pending or contemplated proceedings before a court in the United Kingdom extends to such communications so made for the purpose of any pending or contemplated—

• (a) proceedings before the comptroller under this Act or any of the relevant conventions, or

• (b) proceedings before the relevant convention court under any of those conventions.

• (2) In this section—

• “legal proceedings” includes proceedings before the comptroller;

• the references to legal proceedings and pending or contemplated proceedings include references to applications for a patent or a European patent and to international applications for a patent; and

• “the relevant conventions” means the European Patent Convention, ... and the Patent Co-operation Treaty.

• (3) This section shall not extend to Scotland.

Privilege for communications with patent agents relating to patent proceedings

104

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Extension of privilege in Scotland for communications relating to patent proceedings

105

• (1) It is hereby declared that in Scotland the rules of law which confer privilege from disclosure in legal proceedings in respect of communications, reports or other documents (by whomsoever made) made for the purpose of any pending or contemplated proceedings in a court in the United Kingdom extend to communications, reports or other documents made for the purpose of patent proceedings.

• (2) In this section—

• “patent proceedings” means proceedings under this Act or any of the relevant conventions, before the court, the comptroller or the relevant convention court, whether contested or uncontested and including an application for a patent; and

• “the relevant conventions” means the European Patent Convention, ... and the Patent Co-operation Treaty.

Costs and expenses in proceedings before the Court under s. 40

106

• (1) In proceedings to which this section applies, the court, in determining whether to award costs or expenses to any party and what costs or expenses to award, shall have regard to all the relevant circumstances, including the financial position of the parties.

• (1A) This section applies to proceedings before the court (including proceedings on an appeal to the court) which are—

• (a) proceedings under section 40;

• (b) proceedings for infringement;

• (c) proceedings in respect of an actionable threat under section 70A ; or

• (d) proceedings on an application for a declaration or declarator under section 71.

• (2) If in any such proceedings the Patents Court directs that any costs of one party shall be paid by another party, the court may settle the amount of the costs by fixing a lump sum or may direct that the costs shall be taxed on a scale specified by the court, being a scale of costs prescribed by rules of court .

Costs and expenses in proceedings before the comptroller

107

• (1) The comptroller may, in proceedings before him under this Act, by order award to any party such costs or, in Scotland, such expenses as he may consider reasonable and direct how and by what parties they are to be paid.

• (2) In England and Wales any costs awarded under this section shall, if the county court so orders, be recoverable under section 85 of the County Courts Act 1984 or otherwise as if they were payable under an order of that court.

• (3) In Scotland any order under this section for the payment of expenses may be enforced in like manner as a recorded decree arbitralan extract registered decree arbitral bearing a warrant for execution issued by the sheriff court of any sheriffdom in Scotland.

• (4) The comptroller may make an order for security for costs or expenses against any party to proceedings before him under this Act if—

• (a) the prescribed conditions are met, and

• (b) he is satisfied that it is just to make the order, having regard to all the circumstances of the case;

and in default of the required security being given the comptroller may treat the reference, application or notice in question as abandoned.

• (5) In Northern Ireland any order under this section for the payment of costs may be enforced as if it were a money judgment.

Licences granted by order of comptroller

108

Any order for the grant of a licence under section 11, 38, 48 or 49 above shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.

Offences

Falsification of register, etc.

109

If a person makes or causes to be made a false entry in any register kept under this Act, or a writing falsely purporting to be a copy or reproduction of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be liable—

• (a) on summary conviction, to a fine not exceeding £1,000,

• (b) on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both.

Unauthorised claim of patent rights

110

• (1) If a person falsely represents that anything disposed of by him for value is a patented product he shall, subject to the following provisions of this section, be liable on summary conviction to a fine not exceeding level 3 on the standard scale

• (2) For the purposes of subsection (1) above a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the word “patent” or “patented” or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.

• (3) Subsection (1) above does not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has expired or been revoked and before the end of a period which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made (or does not continue to be made).

• (4) In proceedings for an offence under this section it shall be a defence for the accused to prove that he used due diligence to prevent the commission of the offence.

Unauthorised claim that patent has been applied for

111

• (1) If a person represents that a patent has been applied for in respect of any article disposed of for value by him and—

• (a) no such application has been made, or

• (b) any such application has been refused or withdrawn,

he shall, subject to the following provisions of this section, be liable on summary conviction to a fine not exceeding level 3 on the standard scale

• (2) Subsection (1)(b) above does not apply where the representation is made (or continues to be made) before the expiry of a period which commences with the refusal or withdrawal and which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made (or does not continue to be made).

• (3) For the purposes of subsection (1) above a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applied to it the words “patent applied for” or “patent pending”, or anything expressing or implying that a patent has been applied for in respect of the article, shall be taken to represent that a patent has been applied for in respect of it.

• (4) In any proceedings for an offence under this section it shall be a defence for the accused to prove that he used due diligence to prevent the commission of such an offence.

Misuse of title " Patent Office "

112

If any person uses on his place of business, or on any document issued by him, or otherwise, the words “Patent Office” or any other words suggesting that his place of business is, or is officially connected with, the Patent Office, he shall be liable on summary conviction to a fine not exceeding level 4 on the standard scale

Offences by corporations

113

• (1) Where an offence under this Act which has been committed by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to any neglect on the part of, a director, manager, secretary or other similar officer of the body corporate, or any person who was purporting to act in any such capacity, he, as well as the body corporate, shall be guilty of that offence and shall be liable to be proceeded against and punished accordingly.

• (2) Where the affairs of a body corporate are managed by its members, subsection (1) above shall apply in relation to the acts and defaults of a member in connection with his functions of management as if he were a director of the body corporate.

Patent agents

Restrictions on practice as patent agent

114

Power of comptroller to refuse to deal with certain agents

115

Immunity of department

Immunity of department as regards official acts

116

Neither the Secretary of State nor any officer of his—

• (a) shall be taken to warrant the validity of any patent granted under this Act or any treaty or international convention to which the United Kingdom is a party; or

• (b) shall incur any liability by reason of or in connection with any examination or investigation required or authorised by this Act or any such treaty or convention, or any report or other proceedings consequent on any such examination or investigation.

Administrative provisions

Correction of errors in patents and applications

117

• (1) The comptroller may, subject to any provision of rules, correct any error of translation or transcription, clerical error or mistake in any specification of a patent or application for a patent or any document filed in connection with a patent or such an application.

• (2) Where the comptroller is requested to correct such an error or mistake, any person may in accordance with rules give the comptroller notice of opposition to the request and the comptroller shall determine the matter.

• (3) Where the comptroller is requested to correct an error or mistake in a withdrawal of an application for a patent, and—

• (a) the application was published under section 16 above; and

• (b) details of the withdrawal were published by the comptroller;

the comptroller shall publish notice of such a request in the prescribed manner.

• (4) Where the comptroller publishes a notice under subsection (3) above, the comptroller may only correct an error or mistake under subsection (1) above by order.

Information about patent applications and patents, and inspection of documents

118

• (1) After publication of an application for a patent in accordance with section 16 above the comptroller shall on a request being made to him in the prescribed manner and on payment of the prescribed fee (if any) give the person making the request such information, and permit him to inspect such documents, relating to the application or to any patent granted in pursuance of the application as may be specified in the request, subject, however, to any prescribed restrictions.

• (2) Subject to the following provisions of this section, until an application for a patent is so published documents or information constituting or relating to the application shall not, without the consent of the applicant, be published or communicated to any person by the comptroller.

• (3) Subsection (2) above shall not prevent the comptroller from—

• (a) sending the European Patent Office information which it is his duty to send that office in accordance with any provision of the European Patent Convention;

• (aa) sending any patent office outside the United Kingdom such information about unpublished applications for patents as that office requests; or

• (b) publishing or communicating to others any prescribed bibliographic information about an unpublished application for a patent;

nor shall that subsection prevent the Secretary of State from inspecting or authorising the inspection of an application for a patent or any connected documents under section 22(6) above.

• (3A) Information may not be sent to a patent office in reliance on subsection (3)(aa) otherwise than in accordance with the working arrangements that the comptroller has made for that purpose with that office.

• (3B) Those arrangements must include provision for ensuring that the confidentiality of information of the kind referred to in subsection (3)(aa) sent by the comptroller to the patent office in question is protected.

• (3C) The reference in subsection (3)(aa) to a patent office is to an organisation which carries out, in relation to patents, functions of the kind carried out at the Patent Office.

• (4) Where a person is notified that an application for a patent has been made, but not published in accordance with section 16 above, and that the applicant will, if the patent is granted, bring proceedings against that person in the event of his doing an act specified in the notification after the application is so published, that person may make a request under subsection (1) above, notwithstanding that the application has not been published, and that subsection shall apply accordingly.

• (5) Where an application for a patent is filed, but not published, and a new application is filed in respect of any part of the subject-matter of the earlier application (either in accordance with rules or in pursuance of an order under section 8 above) and is published, any person may make a request under subsection (1) above relating to the earlier application and on payment of the prescribed fee the comptroller shall give him such information and permit him to inspect such documents as could have been given or inspected if the earlier application had been published.

Service by post

119

Any notice required or authorised to be given by this Act or rules, and any application or other document so authorised or required to be made or filed, may be given, made or filed by post.

Hours of business and excluded days

120

• (1) The comptroller may give directions specifying the hour at which the Patent Office shall be taken to be closed on any day for purposes of the transaction by the public of business under this Act or of any class of such business, and the directions may specify days as excluded days for any such purposes.

• (2) Any business done under this Act on any day after the hour so specified in relation to business of that class, or on a day which is an excluded day in relation to business of that class, shall be taken to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day that time shall be extended to the next following day not being an excluded day.

• (3) Directions under this section shall be published in the prescribed manner.

Comptroller's annual report

121

Before 1st December in every financial year the comptroller shall cause to be laid before both Houses of Parliament a report with respect to the execution of this Act and the discharge of his functions under the European Patent Convention, ... and the Patent Co-operation Treaty, and every such report shall include an account of all fees, salaries and allowances, and other money received and paid by him under this Act, that convention and that treaty during the previous financial year .

Supplemental

Crown's right to sell forfeited articles

122

Nothing in this Act affects the right of the Crown or any person deriving title directly or indirectly from the Crown to dispose of or use articles forfeited under the laws relating to customs or excise.

Rules

123

• (1) The Secretary of State may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to patents and applications for patents (including European patents, applications for European patents and international applications for patents) and for regulating all matters placed by this Act under the direction or control of the comptroller; and in this Act, except so far as the context otherwise requires, “prescribed” means prescribed by rules and “rules” means rules made under this section.

• (2) Without prejudice to the generality of subsection (1) above, rules may make provision—

• (a) prescribing the form and contents of applications for patents and other documents which may be filed at the Patent Office and requiring copies to be furnished of any such documents;

• (b) regulating the procedure to be followed in connection with any proceeding or other matter before the comptroller or the Patent Office and authorising the rectification of irregularities of procedure;

• (c) requiring fees to be paid in connection with any such proceeding or matter or in connection with the provision of any service by the Patent Office and providing for the remission of fees in the prescribed circumstances;

• (d) regulating the mode of giving evidence in any such proceeding and empowering the comptroller to compel the attendance of witnesses and the discovery of and production of documents;

• (e) requiring the comptroller to advertise any proposed amendments of patents and any other prescribed matters, including any prescribed steps in any such proceeding;

• (f) requiring the comptroller to hold proceedings in Scotland in such circumstances as may be specified in the rules where there is more than one party to proceedings under section 8, 12, 37, 40(1) or (2), 41(8), 61(3), 71 or 72 above;

• (g) providing for the appointment of advisers to assist the comptroller in any proceeding before him;

• (h) prescribing time limits for doing anything required to be done in connection with any such proceeding by this Act or the rules and providing for the alteration of any period of time specified in this Act or the rules;

• (i) giving effect to an inventor’s rights to be mentioned conferred by section 13, and providing for an inventor’s waiver of any such right to be subject to acceptance by the comptroller;

• (j) without prejudice to any other provision of this Act, requiring and regulating the translation of documents in connection with an application for a patent or a European patent or an international application for a patent and the filing and authentication of any such translations;

• (k) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (l) providing for the publication and sale of documents in the Patent Office and of information about such documents.

• (2A) The comptroller may set out in directions any forms the use of which is required by rules; and any such directions shall be published in the prescribed manner.

• (3) Rules may make different provision for different cases.

• (3A) It is hereby declared that rules—

• (a) authorising the rectification of irregularities of procedure, or

• (b) providing for the alteration of any period of time,

may authorise the comptroller to extend or further extend any period notwithstanding that the period has already expired.

• (4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (5) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (6) Rules shall provide for the publication by the comptroller of a journal (in this Act referred to as “the journal”) containing particulars of applications for and grants of patents, and of other proceedings under this Act.

• (7) Rules shall require or authorise the comptroller to make arrangements for the publication of reports of cases relating to patents, trade marks registered designs or design right decided by him and of cases relating to patents (whether under this Act or otherwise) trade marks, registered designs , copyright and design right decided by any court or body (whether in the United Kingdom or elsewhere).

Rules, regulations and orders; supplementary

124

• (1) Any power conferred on the Secretary of State by this Act to make rules, regulations or orders shall be exercisable by statutory instrument.

• (2) Any Order in Council and any statutory instrument containing an order, rules or regulations under this Act, other than an order or rule required to be laid before Parliament in draft or an order under section 132(5) below, shall be subject to annulment in pursuance of a resolution of either House of Parliament.

• (3) Any Order in Council or order under any provision of this Act may be varied or revoked by a subsequent order.

Extent of invention

125

• (1) For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.

• (2) It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 5 above.

• (3) The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article.

Stamp duty

126

Existing patents and applications

127

• (1) No application for a patent may be made under the 1949 Act on or after the appointed day.

• (2) Schedule 1 to this Act shall have effect for securing that certain provisions of the 1949 Act shall continue to apply on and after the appointed day to—

• (a) a patent granted before that day;

• (b) an application for a patent which is filed before that day, and which is accompanied by a complete specification or in respect of which a complete specification is filed before that day;

• (c) a patent granted in pursuance of such an application.

• (3) Schedule 2 to this Act shall have effect for securing that (subject to the provisions of that Schedule) certain provisions of this Act shall apply on and after the appointed day to any patent and application to which subsection (2) above relates, but, except as provided by the following provisions of this Act, this Act shall not apply to any such patent or application.

• (4) An application for a patent which is made before the appointed day, but which does not comply with subsection (2)(b) above, shall be taken to have been abandoned immediately before that day, but, notwithstanding anything in section 5(3) above, the application may nevertheless serve to establish a priority date in relation to a later application for a patent under this Act if the date of filing the abandoned application falls within the period of fifteen months immediately preceding the filing of the later application.

• (5) Schedule 3 to this Act shall have effect for repealing certain provisions of the 1949 Act.

• (6) The transitional provisions and savings in Schedule 4 to this Act shall have effect.

• (7) In Schedules 1 to 4 to this Act “existing patent” means a patent mentioned in subsection (2)(a) and (c) above, “existing application” means an application mentioned in subsection (2)(b) above, and expressions used in the 1949 Act and those Schedules have the same meanings in those Schedules as in that Act.

Priorities between patents and applications under 1949 Act and this Act

128

• (1) The following provisions of this section shall have effect for the purpose of resolving questions of priority arising between patents and applications for patents under the 1949 Act and patents and applications for patents under this Act.

• (2) A complete specification under the 1949 Act shall be treated for the purposes of sections 2(3) and 5(2) above—

• (a) if published under that Act, as a published application for a patent under this Act;

• (b) if it has a date of filing under that Act, as an application for a patent under this Act which has a date of filing under this Act;

and in the said section 2(3), as it applies by virtue of this subsection in relation to any such specification, the words “both as filed and” shall be omitted.

• (3) In section 8(1), (2) and (4) of the 1949 Act (search for anticipation by prior claim) the references to any claim of a complete specification, other than the applicant’s, published and filed as mentioned in section 8(1) shall include references to any claim contained in an application made and published under this Act or in the specification of a patent granted under this Act, being a claim in respect of an invention having a priority date earlier than the date of filing the complete specification under the 1949 Act.

• (4) In section 32(1)(a) of the 1949 Act (which specifies, as one of the grounds of revoking a patent, that the invention was claimed in a valid claim of earlier priority date contained in the complete specification of another patent), the reference to such a claim shall include a reference to a claim contained in the specification of a patent granted under this Act (a new claim) which satisfies the following conditions:—

• (a) the new claim must be in respect of an invention having an earlier priority date than that of the relevant claim of the complete specification of the patent sought to be revoked; and

• (b) the patent containing the new claim must be wholly valid or be valid in those respects which have a bearing on that relevant claim.

• (5) For the purposes of this section and the provisions of the 1949 Act mentioned in this section the date of filing an application for a patent under that Act and the priority date of a claim of a complete specification under that Act shall be determined in accordance with the provisions of that Act, and the priority date of an invention which is the subject of a patent or application for a patent under this Act shall be determined in accordance with the provisions of this Act.

Application of Act to Crown

129

—This Act does not affect Her Majesty in her private capacity but, subject to that, it binds the Crown.

Interpretation

130

• (1) In this Act, except so far as the context otherwise requires—

• “Agreement on a Unified Patent Court” means the Agreement on a Unified Patent Court signed at Brussels on 19th February 2013;

• “application fee” means the fee prescribed for the purposes of section 14(1A) above;

• “application for a European patent (UK)” and (subject to subsection (4A) below) “international application for a patent (UK)” each mean an application of the relevant description which, on its date of filing, designates the United Kingdom;

• “appointed day”, in any provision of this Act, means the day appointed under section 132 below for the coming into operation of that provision;

• “biological material” means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system;

• “biotechnological invention” means an invention which concerns a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used;

• ...

• “comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;

• “Convention on International Exhibitions” means the Convention relating to International Exhibitions signed in Paris on 22nd November 1928, as amended or supplemented by any protocol to that convention which is for the time being in force;

• “court” means as respects England and Wales, the High Court; as respects Scotland, the Court of Session;as respects Northern Ireland, the High Court in Northern Ireland; or the Unified Patent Court, as respects the jurisdiction which it has by virtue of Schedule A4;

• “date of filing” means—in relation to an application for a patent made under this Act, the date which is the date of filing that application by virtue of section 15 above; andin relation to any other application, the date which, under the law of the country where the application was made or in accordance with the terms of a treaty or convention to which that country is a party, is to be treated as the date of filing that application or is equivalent to the date of filing an application in that country (whatever the outcome of the application);

• “designate” in relation to an application or a patent, means designate the country or countries (in pursuance of the European Patent Convention or the Patent Co-operation Treaty) in which protection is sought for the invention which is the subject of the application or patent and includes a reference to a country being treated as designated in pursuance of the convention or treaty;

• “electronic communication” has the same meaning as in the Electronic Communications Act 2000;

• “employee” means a person who works or (where the employment has ceased) worked under a contract of employment or in employment under or for the purposes of a government department or a person who serves (or served) in the naval, military or air forces of the Crown;

• “employer”, in relation to an employee, means the person by whom the employee is or was employed;

• “European Patent Convention” means the Convention on the Grant of European Patents, “European patent” means a patent granted under that convention, “European patent (UK)” means a European patent designating the United Kingdom, “European Patent Bulletin” means the bulletin of that name published under that convention, and “European Patent Office” means the office of that name established by that convention;

• “European patent with unitary effect” has the same meaning as in Article 2 of the Unitary Patent Regulation;

• “exclusive licence” means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and “exclusive licensee” and “non-exclusive licence” shall be construed accordingly;

• ...

• “formal requirements” means those requirements designated as such by rules made for the purposes of section 15A above;

• “international application for a patent” means an application made under the Patent Co-operation Treaty;

• “International Bureau” means the secretariat of the World Intellectual Property Organization established by a convention signed at Stockholm on 14th July 1967;

• “international exhibition” means an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions or falling within the terms of any subsequent treaty or convention replacing that convention;

• “inventor” has the meaning assigned to it by section 7 above;

• “journal” has the meaning assigned to it by section 123(6) above;

• “mortgage”, when used as a noun, includes a charge for securing money or money’s worth and, when used as a verb, shall be construed accordingly;

• “1949 Act” means the Patents Act 1949;

• “patent” means a patent under this Act;

• . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ;

• “Patent Co-operation Treaty” means the treaty of that name signed at Washington on 19th June 1970;

• “patented invention” means an invention for which a patent is granted and “patented process” shall be construed accordingly;

• “patented product” means a product which is a patented invention or, in relation to a patented process, a product obtained directly by means of the process or to which the process has been applied;

• “prescribed” and “rules” have the meanings assigned to them by section 123 above;

• “priority date” means the date determined as such under section 5 above;

• “published” means made available to the public (whether in the United Kingdom or elsewhere) and a document shall be taken to be published under any provision of this Act if it can be inspected as of right at any place in the United Kingdom by members of the public, whether on payment of a fee or not; and “republished” shall be construed accordingly;

• “register” and cognate expressions have the meanings assigned to them by section 32 above;

• “relevant convention court”, in relation to any proceedings under the European Patent Convention, ... or the Patent Co-operation Treaty, means that court or other body which under that convention or treaty has jurisdiction over those proceedings, including (where it has such jurisdiction) any department of the European Patent Office;

• “right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;

• “search fee” means the fee prescribed for the purposes of section 17(1) above;

• “services of the Crown” and “use for the services of the Crown” have the meanings assigned to them by section 56(2) above, including, as respects any period of emergency within the meaning of section 59 above, the meanings assigned to them by the said section 59.

• “Unified Patent Court” means the court established under the Agreement on a Unified Patent Court;

• “Unitary Patent Regulation” means Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection.

• (2) Rules may provide for stating in the journal that an exhibition falls within the definition of international exhibition in subsection (1) above and any such statement shall be conclusive evidence that the exhibition falls within that definition.

• (3) For the purposes of this Act matter shall be taken to have been disclosed in any relevant application within the meaning of section 5 above or in the specification of a patent if it was either claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or specification.

• (4) References in this Act to an application for a patent, as filed, are references to such an application in the state it was on the date of filing.

• (4A) An international application for a patent is not, by reason of being treated by virtue of the European Patent Convention as an application for a European patent (UK), to be treated also as an international application for a patent (UK).

• (5) References in this Act to an application for a patent being published are references to its being published under section 16 above.

• (5A) References in this Act to the amendment of a patent or its specification (whether under this Act or by the European Patent Office) include, in particular, limitation of the claims (as interpreted by the description and any drawings referred to in the description or claims).

• (6) References in this Act to any of the following conventions, that is to say—

• (a) The European Patent Convention;

• (b) The Community Patent Convention;

• (c) The Patent Co-operation Treaty;

• (d) The Agreement on a Unified Patent Court;

are references to that convention or any other international convention or agreement replacing it, as amended or supplemented by any convention or international agreement (including in either case any protocol or annex), or in accordance with the terms of any such convention or agreement, and include references to any instrument made under any such convention or agreement.

• (7) Whereas by a resolution made on the signature of the Community Patent Convention the governments of the member states of the European Economic Community resolved to adjust their laws relating to patents so as (among other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty, it is hereby declared that the following provisions of this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, . . . 100 and 125, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply.

• (8) Nothing in any of sections 1 to 15 of and schedule 1 to the Arbitration (Scotland) Act 2010 or Part I of the Arbitration Act 1996 shall not apply applies to any proceedings before the comptroller under this Act.

• (9) Except so far as the context otherwise requires, any reference in this Act to any enactment shall be construed as a reference to that enactment as amended or extended by or under any other enactment, including this Act.

Northern Ireland

131

In the application of this Act to Northern Ireland—

• (a) “enactment” includes an enactment of the Parliament of Northern Ireland and a Measure of the Northern Ireland Assembly;

• (b) any reference to a government department includes a reference to a Department of the Government of Northern Ireland;

• (c) any reference to the Crown includes a reference to the Crown in right of Her Majesty’s Government in Northern Ireland;

• (d) any reference to the Companies Act 1985 includes a reference to the corresponding enactments in force in Northern Ireland; and

• (e) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (f) any reference to a claimant includes a reference to a plaintiff.

Short title, extent, commencement, consequential amendments and repeals

132

• (1) This Act may be cited as the Patents Act 1977.

• (2) This Act shall extend to the Isle of Man, subject to any modifications contained in an Order made by Her Majesty in Council, and accordingly, subject to any such order, references in this Act to the United Kingdom shall be construed as including references to the Isle of Man.

• (3) For the purposes of this Act the territorial waters of the United Kingdom shall be treated as part of the United Kingdom.

• (4) This Act applies to acts done in an area designated by order under section 1(7) of the Continental Shelf Act 1964, or specified by Order under section 10(8) of the Petroleum Act 1998 in connection with any activity falling within section 23(2) of that Act, as it applies to acts done in the United Kingdom.

• (5) This Act (except sections 77(6), (7) and (9), 78(7) and (8), this subsection and the repeal of section 41 of the 1949 Act) shall come into operation on such day as may be appointed by the Secretary of State by order, and different days may be appointed under this subsection for different purposes.

• (6) The consequential amendments in Schedule 5 shall have effect.

• (7) Subject to the provisions of Schedule 4 to this Act, the enactments specified in Schedule 6 to this Act (which include certain enactments which were spent before the passing of this Act) are hereby repealed to the extent specified in column 3 of that Schedule.

SCHEDULE 1

1

• (1) The provisions of the 1949 Act referred to in sub-paragraph (2) below shall continue to apply on and after the appointed day in relation to existing patents and applications (but not in relation to patents and applications for patents under this Act).

• (2) The provisions are sections 1 to 10, 11(1) and (2), 12, 13, 15 to 17, 19 to 21, 22(1) to (3), 23 to 26, 28 to 33, 46 to 53, 55, 56, 59 to 67, 69, 76, 80, 87(2), 92(1), 96, 101, 102(1) and 103 to 107.

• (3) Sub-paragraph (1) above shall have effect subject to the following provisions of this Schedule, paragraph 2(b) of Schedule 3 below and the provisions of Schedule 4 below.

2

• (1) In section 6 of the 1949 Act, at the end of the proviso to subsection (3) (post-dating of application) there shall be inserted

and— (c) no application shall, on or after the appointed day, be postdated under this subsection to a date which is that of the appointed day or which falls after it ”

• (2) At the end of subsection (5) of that section (ante-dating) there shall be inserted “ ; but a fresh application or specification may not be filed on or after the appointed day in accordance with this subsection and those rules unless the comptroller agrees that he will direct that the application or specification shall be ante-dated to a date which falls before the appointed day”.

3

• (1) This paragraph and paragraph 4 below shall have effect with respect to the duration of existing patents after the appointed day, and in those paragraphs—

• (a) “old existing patent” means an existing patent the date of which fell eleven years or more before the appointed day and also any patent of addition where the patent for the main invention is, or was at any time, an old existing patent by virtue of the foregoing provision;

• (b) “new existing patent” means any existing patent not falling within paragraph (a) above; and

• (c) any reference to the date of a patent shall, in relation to a patent of addition, be construed as a reference to the date of the patent for the main invention.

• (2) Sections 23 to 25 of the 1949 Act (extension of patents on grounds of inadequate remuneration and war loss) shall not apply to a new existing patent.

• (3) The period for which the term of an old existing patent may be extended under section 23 or 24 of that Act shall not exceed in the aggregate four years, except where an application for an order under the relevant section has been made before the appointed day and has not been disposed of before that day.

4

• (1) The term of every new existing patent under section 22(3) of the 1949 Act shall be twenty instead of sixteen years from the date of the patent, but—

• (a) the foregoing provision shall have effect subject to section 25(3) to (5) above; and

• (b) on and after the end of the sixteenth year from that date a patent shall not be renewed under section 25(3) to (5) above except by or with the consent of the proprietor of the patent.

• (2) Where the term of a new existing patent is extended by this paragraph,—

• (a) any licence in force under the patent from immediately before the appointed day until the end of the sixteenth year from the date of the patent shall, together with any contract relating to the licence, continue in force so long as the patent remains in force (unless determined otherwise than in accordance with this sub-paragraph), but, if it is an exclusive licence, it shall after the end of that year be treated as a non-exclusive licence;

• (b) notwithstanding the terms of the licence, the licensee shall not be required to make any payment to the proprietor for working the invention in question after the end of that year;

• (c) every such patent shall after the end of that year be treated as endorsed under section 35 of the 1949 Act (licences of right) , but subject to paragraph 4A below.

• (3) Where the term of a new existing patent is extended by this paragraph and any government department or any person authorised by a government department—

• (a) has before the appointed day, used the invention in question for the services of the Crown; and

• (b) continues to so use it until the end of the sixteenth year from the date of the patent,

any such use of the invention by any government department or person so authorised, after the end of that year, may be made free of any payment to the proprietor of the patent.

• (4) Without prejudice to any rule of law about the frustration of contracts, where any person suffers loss or is subjected to liability by reason of the extension of the term of a patent by this paragraph, the court may on the application of that person determine how and by whom the loss or liability is to be borne and make such order as it thinks fit to give effect to the determination.

5

In section 26(3) of the 1949 Act (no patent of addition unless date of filing of complete specification was the same as or later than the date of filing of complete specification in respect of main invention) after “main invention” there shall be inserted “and was earlier than the date of the appointed day”.

6

Notwithstanding anything in section 32(1)(j) of the 1949 Act (ground for revocation that patent was obtained on a false suggestion or representation), it shall not be a ground of revoking a patent under that subsection that the patent was obtained on a false suggestion or representation that a claim of the complete specification of the patent had a priority date earlier than the date of filing the application for the patent, but if it is shown—

• (a) on a petition under that section or an application under section 33 of that Act; or

• (b) by way of defence or on a counterclaim on an action for infringement;

that such a suggestion or representation was falsely made, the priority date of the claim shall be taken to be the date of filing the application for that patent.

7

• (1) In section 33 of the 1949 Act (revocation of patent by comptroller), in subsection (1) for the words preceding the proviso there shall be substituted—

(1) Subject to the provisions of this Act, a patent may, on the application of any person interested, be revoked by the comptroller on any of the grounds set out in section 32(1) of this Act:

• (2) At the end of the said section 33 there shall be added the following subsection:—

(5) A decision of the comptroller or on appeal from the comptroller shall not estop any party to civil proceedings in which infringement of a patent is in issue from alleging that any claim of the specification is invalid on any of the grounds set out in section 32(1) of this Act, whether or not any of the issues involved were decided in that decision.

8

In section 101(1) of the 1949 Act (interpretation) there shall be inserted in the appropriate place—

“appointed day”means the day appointed under section 132 of the Patents Act 1977 for the coming into operation of Schedule 1 to that Act;

SCHEDULE 2

1

• (1) Without prejudice to those provisions of Schedule 4 below which apply (in certain circumstances) provisions of this Act in relation to existing patents and applications, the provisions of this Act referred to in sub-paragraph (2) below shall apply in relation to existing patents and applications on and after the appointed day subject to the following provisions of this Schedule and the provisions of Schedule 4 below.

• (2) The provisions are sections 22, 23, 25(3) to (5), 28 to 36, 44 to 54, 86, 96, 98, 99, 101 to 105, 107 to 111, 113 to 116, 118(1) to (3), 119 to 124, 130 and 132(2), (3) and (4).

2

In those provisions as they apply by virtue of this Schedule—

• (a) a reference to this Act includes a reference to the 1949 Act;

• (b) a reference to a specified provision of this Act other than one of those provisions shall be construed as a reference to the corresponding provision of the 1949 Act (any provision of that Act being treated as corresponding to a provision of this Act if it was enacted for purposes which are the same as or similar to that provision of this Act);

• (c) a reference to rules includes a reference to rules under the 1949 Act;

• (d) references to a patent under this Act and to an application for such a patent include respectively a reference to an existing patent and application;

• (e) references to the grant of a patent under this Act includes a reference to the sealing and grant of an existing patent;

• (f) a reference to a patented product and to a patented invention include respectively a reference to a product and invention patented under an existing patent;

• (g) references to a published application for a patent under this Act, and to publication of such an application, include respectively references to a complete specification which has been published under the 1949 Act and to publication of such a specification (and a reference to an application for a patent under this Act which has not been published shall be construed accordingly);

• (h) a reference to the publication in the journal of a notice of the grant of a patent includes a reference to the date of an existing patent;

• (i) a reference to the priority date of an invention includes a reference to the priority date of the relevant claim of the complete specification.

SCHEDULE 3

1

Subject to the provisions of Schedule 4 below, the provisions of the 1949 Act referred to in paragraph 2 below (which have no counterpart in the new law of patents established by this Act in relation to future patents and applications) shall cease to have effect.

2

The provisions are:—

• (a) section 14 (opposition to grant of patent) ;

• (b) section 32(3) (revocation for refusal to comply with Crown request to use invention) ;

• (c) section 41 (inventions relating to food or medicine, etc.) ;

• (d) section 42 (comptroller’s power to revoke patent after expiry of two years from grant of compulsory licence);

• (e) section 71 (extension of time for certain convention applications) ;

• (f) section 72 (protection of inventions communicated under international agreements).

SCHEDULE 4

General

1

In so far as any instrument made or other thing done under any provision of the 1949 Act which is repealed by virtue of this Act could have been made or done under a corresponding provision of this Act, it shall not be invalidated by the repeals made by virtue of this Act but shall have effect as if made or done under that corresponding provision.

Use of patented invention for services of the Crown

2

• (1) Any question whether—

• (a) an act done before the appointed day by a government department or a person authorised in writing by a government department amounts to the use of an invention for the services of the Crown; or

• (b) any payment falls to be made in respect of any such use (whether to a person entitled to apply for a patent for the invention, to the patentee or to an exclusive licensee);

shall be determined under sections 46 to 49 of that Act and those sections shall apply accordingly.

• (2) Sections 55 to 59 above shall apply to an act so done on or after the appointed day in relation to an invention—

• (a) for which an existing patent has been granted or an existing application for a patent has been made; or

• (b) which was communicated before that day to a government department or any person authorised in writing by a government department by the proprietor of the patent or any person from whom he derives title;

and shall so apply subject to sub-paragraph (3) below, the modifications contained in paragraph 2 of Schedule 2 above and the further modification that sections 55(5)(b) and 58(10) above shall not apply in relation to an existing application.

• (3) Where an act is commenced before the appointed day and continues to be done on or after that day, then, if it would not amount to the use of an invention for the services of the Crown under the 1949 Act, its continuance on or after that day shall not amount to such use under this Act.

Infringement

3

• (1) Any question whether an act done before the appointed day infringes an existing patent or the privileges or rights arising under a complete specification which has been published shall be determined in accordance with the law relating to infringement in force immediately before that day and, in addition to those provisions of the 1949 Act which continue to apply by virtue of Schedule 1 above, section 70 of that Act shall apply accordingly.

• (2) Sections 60 to 71 above shall apply to an act done on or after the appointed day which infringes an existing patent or the privileges or rights arising under a complete specification which has been published (whether before, on or after the appointed day) as they apply to infringements of a patent under this Act or the rights conferred by an application for such a patent, and shall so apply subject to sub-paragraph (3) below, the modifications contained in paragraph 2 of Schedule 2 above and the further modification that section 69(2) and (3) above shall not apply in relation to an existing application.

• (3) Where an act is commenced before the appointed day and continues to be done on or after that day, then, if it would not, under the law in force immediately before that day, amount to an infringement of an existing patent or the privileges or rights arising under a complete specification, its continuance on or after that day shall not amount to the infringement of that patent or those privileges or rights.

Notice of opposition

4

• (1) Where notice of opposition to the grant of a patent has been given under section 14 of the 1949 Act before the appointed day, the following provisions shall apply:—

• (a) if issue has been joined on the notice before the appointed day, the opposition, any appeal from the comptroller’s decision on it and any further appeal shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court;

• (b) in any other case, the notice shall be taken to have abated immediately before the appointed day.

• (2) Sub-paragraph (1)(a) above shall have effect subject to paragraph 12(2) below.

Secrecy

5

• (1) Where directions given under section 18 of the 1949 Act in respect of an existing application (directions restricting publication of information about inventions) are in force immediately before the appointed day, they shall continue in force on and after that day and that section shall continue to apply accordingly.

• (2) Where sub-paragraph (1) above does not apply in the case of an existing application section 18 of the 1949 Act shall not apply to the application but section 22 of this Act shall.

• (3) Where the comptroller has before the appointed day served a notice under section 12 of the Atomic Energy Act 1946 (restrictions on publication of information about atomic energy etc.) in respect of an existing application that section shall continue to apply to the application on and after that day; but where no such notice has been so served that section shall not apply to the application on and after that day.

Revocation

6

• (1) Where before the appointed day an application has been made under section 33 of the 1949 Act for the revocation of a patent (the original application), the following provisions shall apply:—

• (a) if issue has been joined on the application before the appointed day, the application, any appeal from the comptroller’s decision on it and any further appeal shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court;

• (b) if issue has not been so joined, the original application shall be taken to be an application under section 33 of the 1949 Act for the revocation of the patent on whichever of the grounds referred to in section 32(1) of that Act corresponds (in the comptroller’s opinion) to the ground on which the original application was made, or, if there is no ground which so corresponds, shall be taken to have abated immediately before the appointed day.

• (2) Sub-paragraph (1)(a) above shall have effect subject to paragraph 11(3) below.

7

• (1) This paragraph applies where an application has been made before the appointed day under section 42 of the 1949 Act for the revocation of a patent.

• (2) Where the comptroller has made no order before that day for the revocation of the patent under that section, the application shall be taken to have abated immediately before that day.

• (3) Where the comptroller has made such an order before that day, then, without prejudice to section 16(1) or section 17(2)(a) of the Interpretation Act 1978, section 42 shall continue to apply to the patent concerned on and after that day as if this Act had not been enacted.

Licences of right and compulsory licences

8

• (1) Sections 35 to 41 and 43 to 45 of the 1949 Act shall continue to apply on and after the relevant day—

• (a) to any endorsement or order made or licence granted under sections 35 to 41 which is in force immediately before that day; and

• (b) to any application made before that day under sections 35 to 41.

• (2) Any appeal from a decision or order of the comptroller instituted under sections 35 to 41 or 43 to 45 on or after the relevant day (and any further appeal) shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court.

• (3) In this paragraph “the relevant day” means, in relation to section 41, the date of the passing of this Act and, in relation to sections 35 to 40 and 43 to 45, the appointed day.

Convention countries

9