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Patents Act 1977

Type Public General Act
Publication 1977-07-29
Last updated 2024-05-24
State In force
Department Statute Law Database
Source legislation.gov.uk
articles Not indexed
Reform history JSON API

[^key-e50c48c2e56be1861c024eeb4950361f]: S. 77(5A) inserted (1.10.2014) by Intellectual Property Act 2014 (c. 18), s. 24(1), Sch. para. 6; S.I. 2014/2330, art. 3, Sch. (with art. 8)

[^key-7fe26d7b3f76c21c0579066cf9e6b21a]: Words in Sch. 4A para. 1(2) inserted (1.10.2014) by Intellectual Property Act 2014 (c. 18), ss. 16(3), 24(1); S.I. 2014/2330, art. 3, Sch.

[^M_F_6f81ca85-fa86-44f6-e560-fecb2381df95]: Words in Sch. 4A para. 7(a) substituted (1.10.2014) by The Patents (Supplementary Protection Certificates) Regulations 2014 (S.I. 2014/2411), regs. 1(2), 2(3)(a)

[^key-24db9ec876b4b6e3c5121ed55c3c6c24]: Schs. A3, A4 inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(10) (with art. 3)

[^key-53448a692b9a9cd1e3ac6108deafc431]: S. 83A inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(6) (with art. 3)

[^key-70096ad9a85f303774abb4cd77896bd0]: Words in s. 130(1) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(9)(a) (with art. 3)

[^key-1ec90477f59d087aa208af37846d38c6]: Words in s. 130(1) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(9)(b) (with art. 3)

[^key-c742aa345f2b03d2cc3b8de93eae7d8c]: S. 130(6)(d) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(9)(c) (with art. 3)

[^key-8ae70cc76c2923732b98fab5dd6d74f9]: Words in s. 58(6) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(2) (with art. 3)

[^key-df2a0c7ef3de5e9ec3790f01cbefa681]: S. 60(6H) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(4) (with art. 3)

[^key-b2a0a9dc440ae0dae886fff260444965]: S. 60(5)(j)(k) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(3) (with art. 3)

[^key-860990f1e6f5dcc18930bc96f682f88a]: S. 77(10) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(c) (with art. 3)

[^key-2d15e5b3b45490f1c7abd798876cb80d]: Words in s. 77(5)(a) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(b)(i) (with art. 3)

[^key-2cfd194e29de8e7d1db67f4c4aebae13]: Words in s. 77(5)(a) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(b)(ii) (with art. 3)

[^key-466ed4de4b15e021ce274c323c8b742c]: Words in s. 77(5A) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(a) (with art. 3)

[^key-d0df6470984dda556f785f1f1ac23a99]: Words in s. 77(4) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(a) (with art. 3)

[^key-8c44a1ce67ebef46c92008fb104c60a1]: Words in s. 77(4A) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(5)(a) (with art. 3)

[^key-a8dfb96b23359c7c6779f1a662dc7e4a]: Words in s. 91(1)(a) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(7)(a) (with art. 3)

[^key-047214e808f5bb2f5f244e85d14ca574]: Words in s. 91(6) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(7)(b) (with art. 3)

[^key-6dba92d88bc105d08a3419a7994f0d1d]: Words in s. 92(1) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(8) (with art. 3)

[^key-c2e73ba3414bcbe2a180f8509c170a2e]: Words in s. 92(5) inserted (coming into force in accordance with art. 1(2)) by The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 (S.I. 2016/388), arts. 1(2), 2(8) (with art. 3)

[^M_F_076f7aef-3dba-40d4-c90b-5cd2a5219131]: S. 60(6D)-(6G) inserted (1.10.2014) by The Legislative Reform (Patents) Order 2014 (S.I. 2014/1997), arts. 1(2), 2

[^M_C_0ac61d74-f506-4e41-9b23-99d70f99a3ed]: S. 53(2) modified (20.6.2003) by The Enterprise Act 2002 (Protection of Legitimate Interests) Order 2003 (S.I. 2003/1592), art. 1(1), Sch. 4 para. 3(2) (as amended (1.4.2014) by S.I. 2014/891, arts. 1, 19(2) (with arts. 20-23))

[^M_F_7fc6c216-aa47-4d18-b87e-8ca7c3fdad37]: Words in s. 51 heading substituted (1.4.2014) by The Enterprise and Regulatory Reform Act 2013 (Competition) (Consequential, Transitional and Saving Provisions) Order 2014 (S.I. 2014/892), art. 1(1), Sch. 1 para. 33(5) (with art. 3)

[^key-0c1cd21b3431b8ad0614c223857a39c4]: Ss. 70-70F substituted for s. 70 (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(2), 8; S.I. 2017/771, reg. 2(1)(a) (with reg. 3)

[^key-fcd141455cb6b8ea8dbf104a85d3f6a3]: S. 71 crossheading inserted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(4), 8; S.I. 2017/771, reg. 2(1)(a) (with reg. 3)

[^key-91b3e3edcd7edaeb555793772d40662f]: Words in s. 74(1)(b) substituted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(5), 8; S.I. 2017/771, reg. 2(1)(a) (with reg. 3)

[^key-71267cf836ed377affe971e38887b903]: Words in s. 78(2) inserted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(6), 8; S.I. 2017/771, reg. 2(1)(a) (with reg. 3)

[^key-dc029bfa2218ae4553c11f9e8c38529a]: Words in s. 106(1A)(c) substituted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(7), 8; S.I. 2017/771, reg. 2(1)(a) (with reg. 3)

[^key-c645518a87769b455da6b2f7301e3785]: Words in Sch. A3 para. 2 inserted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(8), 8; S.I. 2017/771, reg. 2(2) (with reg. 3)

[^key-bad91802fc7ea59dedf2db15a34a9809]: Words in s. 70F inserted (1.10.2017) by Intellectual Property (Unjustified Threats) Act 2017 (c. 14), ss. 1(3), 8; S.I. 2017/771, reg. 2(2) (with reg. 3)

[^key-6a685a0eab0ed423e2569d9959b9624b]: Words in s. 41(3) inserted (1.4.2018) by Higher Education and Research Act 2017 (c. 29), s. 124(5), Sch. 12 para. 13(a); S.I. 2018/241, reg. 2(t)

[^key-974e4b59b2d6bcd17aaea802f73e47eb]: Words in s. 41(3) substituted (1.4.2018) by Higher Education and Research Act 2017 (c. 29), s. 124(5), Sch. 12 para. 13(b); S.I. 2018/241, reg. 2(t)

[^key-c233a0be2bfa1cd1c9c780e82cc67f56]: Words in s. 41(3) omitted (1.4.2018) by virtue of Higher Education and Research Act 2017 (c. 29), s. 124(5), Sch. 12 para. 13(c); S.I. 2018/241, reg. 2(t)

[^key-57eb5f5f7af28d0911643fb8f8c27cb5]: Act modified (Isle of Man) (11.11.2013) by The Patents (Isle of Man) Order 2013 (S.I. 2013/2602), art. 2, Sch. (as amended (1.6.2016) by The Patents (Isle of Man) (Amendment) Order 2016 (S.I. 2016/559), Sch. and as further amended (15.2.2017) by The Patents (Isle of Man) (Amendment) Order 2017 (S.I. 2017/162), arts. 1(2), 2, Sch. (with art. 3) and as further amended (31.12.2020) by The Patents (Isle of Man) (Amendment) (EU Exit) Order 2019 (S.I. 2019/1327), art. 2; 2020 c. 1, Sch. 5 para. 1(1))

[^key-ba39ce15d80b1da93c5c0a73c561ca90]: Words in s. 128A heading substituted (31.12.2020) by S.I. 2019/801, reg. 3(a) (as substituted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 27)

[^key-e74edcab3c4a8cf1d42aafc495ef3c76]: Words in s. 128A(1) substituted (31.12.2020) by S.I. 2019/801, reg. 3(b) (as substituted by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 27)

[^key-444b41d09c7cc8fa9925dcdf611ea778]: Words in s. 128A(2) substituted (31.12.2020) by The Patents (Amendment) (EU Exit) Regulations 2019 (S.I. 2019/801), regs. 1, 3(c)(i); 2020 c. 1, Sch. 5 para. 1(1)

[^key-0cb8883c148ab66c4c1cc792672ebcfe]: Words in s. 128A(2) substituted (31.12.2020) by The Patents (Amendment) (EU Exit) Regulations 2019 (S.I. 2019/801), regs. 1, 3(c)(ii); 2020 c. 1, Sch. 5 para. 1(1)

[^key-1a0e48f861058ba27ca4de4ccada8bd9]: Words in s. 128A(5) substituted (31.12.2020) by The Patents (Amendment) (EU Exit) Regulations 2019 (S.I. 2019/801), regs. 1, 3(d); 2020 c. 1, Sch. 5 para. 1(1)

[^key-afd8a2f3a875b0f4d4077c783693770d]: Words in Sch. A1 para. 1 omitted (31.12.2020) by virtue of The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 39(a)

[^key-37668c4089748e72897b8147d9368b78]: Words in Sch. A1 para. 3(3) substituted (31.12.2020) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 39(b)

[^key-2bcf2affbfdd7e1e3999bc279a68c169]: Words in Sch. A1 para. 4 substituted (31.12.2020) by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050), regs. 1(2), 39(c)

[^key-83f47b86a20a6f8c2119a12ca6bfce23]: Ss. 88A, 88B repealed (12.4.2021) by The Patents (European Patent with Unitary Effect and Unified Patent Court) (Repeal and Revocation) Regulations 2021 (S.I. 2021/355), reg. 1(2), Sch. para. 1

[^key-643298654d80faeae3c826ae313dc276]: S. 60(3A) inserted (31.12.2023 immediately before the end of 2023) by The Intellectual Property (Exhaustion of Rights) (Amendment) Regulations 2023 (S.I. 2023/1287), regs. 1(b), 3

124A
  • (1) The comptroller may give directions as to the form and manner in which documents to be delivered to the comptroller—
  • (a) in electronic form; or
  • (b) using electronic communications,

are to be delivered to him.

  • (2) A direction under subsection (1) may provide that in order for a document to be delivered in compliance with the direction it shall be accompanied by one or more additional documents specified in the direction.
  • (3) Subject to subsections (14) and (15), if a document to which a direction under subsection (1) or (2) applies is delivered to the comptroller in a form or manner which does not comply with the direction the comptroller may treat the document as not having been delivered.
  • (4) Subsection (5) applies in relation to a case where—
  • (a) a document is delivered using electronic communications, and
  • (b) there is a requirement for a fee to accompany the document.
  • (5) The comptroller may give directions specifying—
  • (a) how the fee shall be paid; and
  • (b) when the fee shall be deemed to have been paid.
  • (6) The comptroller may give directions specifying that a person who delivers a document to the comptroller in electronic form or using electronic communications cannot treat the document as having been delivered unless its delivery has been acknowledged.
  • (7) The comptroller may give directions specifying how a time of delivery is to be accorded to a document delivered to him in electronic form or using electronic communications.
  • (8) A direction under this section may be given—
  • (a) generally;
  • (b) in relation to a description of cases specified in the direction;
  • (c) in relation to a particular person or persons.
  • (9) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
  • (10) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
  • (11) A direction under this section may be varied or revoked by a subsequent direction under this section.
  • (12) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
  • (13) The delivery using electronic communications to any person by the comptroller of any document is deemed to be effected, unless the comptroller has otherwise specified, by transmitting an electronic communication containing the document to an address provided or made available to the comptroller by that person as an address of his for the receipt of electronic communications; and unless the contrary is proved such delivery is deemed to be effected immediately upon the transmission of the communication.
  • (14) A requirement of this Act that something must be done in the prescribed manner is satisfied in the case of something that is done—
  • (a) using a document in electronic form, or
  • (b) using electronic communications,

only if the directions under this section that apply to the manner in which it is done are complied with.

  • (15) In the case of an application made as mentioned in subsection (14)(a) or (b) above, a reference in this Act to the application not having been made in compliance with rules or requirements of this Act includes a reference to its not having been made in compliance with any applicable directions under this section.
  • (16) This section applies—
  • (a) to delivery at, in, with or to the Patent Office as it applies to delivery to the comptroller; and
  • (b) to delivery by the Patent Office as it applies to delivery by the comptroller.

Determination after grant of questions referred before grant.

Determination of questions about entitlement to foreign and convention patents, etc.

International and national phases of application.

Restrictions on applications abroad by United Kingdom residents.

Right to employees’ inventions.

Appeals from the comptroller.

Compensation for loss of profit.

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.

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.
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.

  • (4A) The right conferred by subsection (4) does not become exercisable until the end of the period during which a request may be made under this Act, or under the rules, for an extension of the period referred to in section 20A(1).
  • (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).
  • (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.

Proceedings for infringement of patent.

Amendments of applications and patents not to include added matter.

Operation of s. 78 in relation to certain European patent applications.

Adaptation of provisions in relation to international application.

The Patents Court.

Proceedings in Scotland.

Comptroller’s annual report.

117A
  • (1) Where—
  • (a) the comptroller is requested to correct an error or mistake in a withdrawal of an application for a patent; and
  • (b) an application has been resuscitated in accordance with that request,

the effect of that resuscitation is as follows.

  • (2) Anything done under or in relation to the application during the period between the application being withdrawn and its resuscitation shall be treated as valid.
  • (3) If the comptroller has published notice of the request as mentioned in section 117(3) above, anything done during that period which would have constituted an infringement of the rights conferred by publication of the application if the application had not been withdrawn shall be treated as an infringement of those rights if it was a continuation or repetition of an earlier act infringing those rights.
  • (4) If the comptroller has published notice of the request as mentioned in section 117(3) above and, after the withdrawal of the application and before publication of the notice, 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 withdrawal 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 resuscitation 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.
  • (7) 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 above.

117B
  • (1) Subsection (2) below applies in relation to a period if it is specified by the comptroller in connection with an application for a patent, or a patent.
  • (2) Subject to subsections (4) and (5) below, the comptroller shall extend a period to which this subsection applies if—
  • (a) the applicant or the proprietor of the patent requests him to do so; and
  • (b) the request complies with the relevant requirements of rules.
  • (3) An extension of a period under subsection (2) above expires—
  • (a) at the end of the period prescribed for the purposes of this subsection, or
  • (b) if sooner, at the end of the period prescribed for the purposes of section 20 above.
  • (4) If a period has already been extended under subsection (2) above—
  • (a) that subsection does not apply in relation to it again;
  • (b) the comptroller may further extend the period subject to such conditions as he thinks fit.
  • (5) Subsection (2) above does not apply to a period specified in relation to proceedings before the comptroller.

Crown’s right to sell forfeited articles.

Application of Act to Crown.

Northern Ireland.

Opinions by Patent Office

74A
  • (1) The proprietor of a patent or any other person may request the comptroller to issue an opinion on a prescribed matter in relation to the patent.
  • (2) Subsection (1) above applies even if the patent has expired or has been surrendered.
  • (3) The comptroller shall issue an opinion if requested to do so under subsection (1) above, but shall not do so—
  • (a) in such circumstances as may be prescribed, or
  • (b) if for any reason he considers it inappropriate in all the circumstances to do so.
  • (4) An opinion under this section shall not be binding for any purposes.
  • (5) An opinion under this section shall be prepared by an examiner.
  • (6) In relation to a decision of the comptroller whether to issue an opinion under this section—
  • (a) for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
  • (b) no appeal shall lie at the instance of any other person.
74B
  • (1) Rules may make provision for a review before the comptroller, on an application by the proprietor or an exclusive licensee of the patent in question, of an opinion under section 74A above.
  • (2) The rules may, in particular—
  • (a) prescribe the circumstances in which, and the period within which, an application may be made;
  • (b) provide that, in prescribed circumstances, proceedings for a review may not be brought or continued where other proceedings have been brought;
  • (c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
  • (d) provide for there to be a right of appeal against a decision made on a review only in prescribed cases.
4A
  • (1) A patent shall not be granted for the invention of—
  • (a) a method of treatment of the human or animal body by surgery or therapy, or
  • (b) a method of diagnosis practised on the human or animal body.
  • (2) Subsection (1) above does not apply to an invention consisting of a substance or composition for use in any such method.
  • (3) In the case of an invention consisting of a substance or composition for use in any such method, 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.
  • (4) In the case of an invention consisting of a substance or composition for a specific use in any such method, 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 that specific use does not form part of the state of the art.
128A
  • (1) In this Act a “compulsory pharmaceutical licence” means a compulsory licence granted under Regulation (EC) No 816/2006 of the European Parliament and of the Council of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems (referred to in this Act as “the Compulsory Licensing Regulation”).
  • (2) In the application to compulsory pharmaceutical licences of the provisions of this Act listed in subsection (3)—
  • (a) references to a licence under a patent,
  • (b) references to a right under a patent, and
  • (c) references to a proprietary interest under a patent,

include a compulsory pharmaceutical licence.

  • (3) The provisions referred to in subsection (2) are—
  • sections 32 and 33 (registration of patents etc);
  • section 37 (determination of right to patent after grant);
  • section 38 (effect of transfer etc of patent under section 37), apart from subsection (2) and subsections (3) to (5) so far as relating to subsection (2);
  • section 41 (amount of compensation);
  • section 46(2) (notice of application for entry that licences are available as of right);
  • section 57(1) and (2) (rights of third parties in respect of Crown use).
  • (4) In the following provisions references to this Act include the Compulsory Licensing Regulation—
  • sections 97 to 99B, 101 to 103, 105 and 107 (legal proceedings);
  • section 119 (service by post);
  • section 120 (hours of business and excluded days);
  • section 121 (comptroller’s annual report);
  • section 123 (rules);
  • section 124A (use of electronic communications);
  • section 130(8) (disapplication of Part 1 of Arbitration Act 1996).
  • (5) In section 108 (licences granted by order of comptroller) the reference to a licence under section 11, 38, 48 or 49 includes a compulsory pharmaceutical licence.
  • (6) References in this Act to the Compulsory Licensing Regulation are to that Regulation as amended from time to time.
128B
  • (1) Schedule 4A contains provision about the application of this Act in relation to supplementary protection certificates and other provision about such certificates.
  • (2) In this Act a “supplementary protection certificate” means a certificate issued under—
  • (a) Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6th May 2009 concerning the supplementary protection certificate for medicinal products, or
  • (b) Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products.

Northern Ireland.

SCHEDULE 4A

1
  • (1) In the application to supplementary protection certificates of the provisions of this Act listed in sub-paragraph (2)—
  • (a) references to a patent are to a supplementary protection certificate;
  • (b) references to an application or the applicant for a patent are to an application or the applicant—
  • (i) for a supplementary protection certificate, or
  • (ii) for an extension of the duration of a supplementary protection certificate;
  • (c) references to the proprietor of a patent are to the holder of a supplementary protection certificate;
  • (d) references to the specification of a patent are to the text of a supplementary protection certificate;
  • (e) references to a patented product or an invention (including a patented invention) are to a product for which a supplementary protection certificate has effect;
  • (f) references to a patent having expired or having been revoked are to a supplementary protection certificate having lapsed or having been declared invalid;
  • (g) references to proceedings for the revocation of a patent are to proceedings—
  • (i) for a decision that a supplementary protection certificate has lapsed, or
  • (ii) for a declaration that a supplementary protection certificate is invalid;
  • (h) references to the issue of the validity of a patent include the issue of whether a supplementary protection certificate has lapsed or is invalid.
  • (2) The provisions referred to in sub-paragraph (1) are—
  • section 14(1), (9) and (10) (making of application);
  • section 19(1) (general power to amend application before grant);
  • sections 20A and 20B (reinstatement of applications);
  • section 21 (observations by third party on patentability);
  • section 27 (general power to amend specification after grant);
  • section 29 (surrender of patents);
  • sections 30 to 36, 37(1) to (3) and (5) to (9) and 38 (property in patents and applications, and registration);
  • sections 39 to 59 (employees’ inventions, licences of right and compulsory licences and use of patented inventions for services of the Crown);
  • sections 60 to 71 (infringement);
  • section 74(1) and (7) (proceedings in which validity of patent may be put in issue);
  • sections 74A and 74B (opinions by the Patent Office);
  • section 75 (amendment of patent in infringement or revocation proceedings);
  • sections 103 and 105 (privilege for communications relating to patent proceedings);
  • section 108 (licences granted by order of comptroller);
  • sections 110 and 111 (unauthorised claim of patent rights or that patent has been applied for);
  • section 116 (immunity of department as regards official acts);
  • sections 117 to 118 (administrative provisions);
  • section 123 (rules);
  • section 130 (interpretation).
2
  • (1) In the case of the provisions of this Act listed in sub-paragraph (2), paragraph 1 applies in relation to an application for a supplementary protection certificate only if the basic patent expires before the certificate is granted.
  • (2) The provisions referred to in sub-paragraph (1) are—
  • section 20B(3) to (6A) (effect of reinstatement under section 20A);
  • section 55(5) and (7) (use of patented inventions for services of the Crown);
  • section 58(10) (disputes as to Crown use);
  • section 69 (infringement of rights conferred by publication of application);
  • section 117A(3) to (7) (effect of resuscitating a withdrawn application under section 117).
3
  • (1) In the provisions of this Act listed in sub-paragraph (2)—
  • (a) references to this Act include the Medicinal Products Regulation and the Plant Protection Products Regulation, and
  • (b) references to a provision of this Act include any equivalent provision of the Medicinal Products Regulation and the Plant Protection Products Regulation.
  • (2) The provisions referred to in sub-paragraph (1) are—
  • sections 20A and 20B (reinstatement of applications);
  • section 21 (observations by third party on patentability);
  • section 69 (infringement of rights conferred by publication of application);
  • section 74(1) and (7) (proceedings in which validity of patent may be put in issue);
  • sections 97 to 99B, 101 to 103, 105 and 107 (legal proceedings);
  • section 116 (immunity of department as regards official acts);
  • sections 117 and 118 to 121 (administrative provisions);
  • section 122 (Crown’s right to sell forfeited articles);
  • section 123 (rules);
  • section 124A (use of electronic communications);
  • section 130 (interpretation).
4
  • (1) In the application of section 21(1) (observations by third party on patentability) to supplementary protection certificates, the reference to the question whether the invention is a patentable invention is to the question whether the product is one for which a supplementary protection certificate may have effect.
  • (2) In the application of section 69(2) (conditions for infringement of rights conferred by publication of application) to supplementary protection certificates, the condition in paragraph (b) is that the act would, if the certificate had been granted on the date of the publication of the application, have infringed not only the certificate as granted but also the certificate for which the application was made.
5

A supplementary protection certificate does not take effect unless—

  • (a) the prescribed fee is paid before the end of the prescribed period, or
  • (b) the prescribed fee and any prescribed additional fee are paid before the end of the period of six months beginning immediately after the prescribed period.
6
  • (1) Expressions used in this Act that are defined in the Medicinal Products Regulation or the Plant Protection Products Regulation have the same meaning as in that Regulation.
  • (2) References in this Act to, or to a provision of, the Medicinal Products Regulation or the Plant Protection Products Regulation are to that Regulation or that provision as amended from time to time.
7

In this Act—

  • (a) “the Medicinal Products Regulation” means Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6th May 2009 concerning the supplementary protection certificate for medicinal products, and
  • (b) “the Plant Protection Products Regulation” means Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products.
118A

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

International and national phases of application.

Appeals from the comptroller.

Comptroller’s annual report.

Unified Patent Court

88A

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

88B

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

8
  • (1) A reference (express or implied) in this Act to the Medicinal Products Regulation, or a provision of it, is to be read as being or (subject to context) including a reference to the old Regulation, or the corresponding provision of the old Regulation, in relation to times, circumstances or purposes in relation to which the old Regulation, or that provision, had effect.
  • (2) Other than in relation to times, circumstances or purposes referred to in subparagraph (1), anything done, or having effect as if done, under (or for the purposes of or in reliance on) the old Regulation or a provision of the old Regulation and in force or effective immediately before 1st October 2014 (the day on which the Patents (Supplementary Protection Certificates) Regulations 2014 came into force) has effect on or after that date for the purposes of this Act as if done under (or for the purpose of or in reliance on) the Medicinal Products Regulation or the corresponding provision of it.
  • (3) In this paragraph “the old Regulation” means Council Regulation (EEC) No 1768/92 of 18th June 1992 concerning the creation of a supplementary protection certificate for medicinal products.
83A
  • (1) Schedule A3 contains provision about the application of this Act in relation to the European patent with unitary effect.
  • (2) Schedule A4 contains provision about the jurisdiction of the Unified Patent Court in relation to the European patent (UK) and the European patent with unitary effect.

SCHEDULE A3

Meaning of “relevant statutory provisions”

1

In this Schedule “relevant statutory provisions” means—

  • (a) the provisions of this Act which, by virtue of paragraph 2, apply in relation to the European patent with unitary effect, and
  • (b) the other provisions of this Act which, by virtue of the Unitary Patent Regulation, are to be treated as applying in relation to the European patent with unitary effect (see, in particular, Article 7 of that Regulation).

Provisions applied by this Schedule to the European patent with unitary effect

2

The following provisions of this Act apply in relation to a European patent with unitary effect, subject to paragraphs 3 and 4—

section 48 (compulsory licences: general);

section 48A (compulsory licences: WTO proprietors);

section 48B (compulsory licences: other cases);

section 49 (provisions about licences under section 48);

section 50 (exercise of powers on applications under section 48);

section 50A (powers exercisable following merger and market investigations);

section 51 (powers exercisable in consequence of report of Competition and Markets Authority);

section 52 (opposition, appeal and arbitration);

section 53 (compulsory licences; supplementary provisions);

section 54 (special provisions where patented invention is being worked abroad);

section 55 (use of patented inventions for services of the Crown);

section 56 (interpretation, etc., of provisions about Crown use);

section 57 (rights of third parties in respect of Crown use);

section 57A (compensation for loss of profit);

section 58(1) to (6) and (9A) to (13) (references of disputes as to Crown use);

section 59 (special provisions as to Crown use during emergency);

section 60 (meaning of infringement);

section 64 (right to continue use begun before priority date);

sections 70 to 70F (unjustified threats);

section 73(2) to (4) (Comptroller’s power to revoke patents on his own initiative);

section 74A (opinions on matters prescribed in the rules);

section 74B (reviews of opinions under section 74A);

section 76A (biotechnological inventions);

section 77(4) to (5A) (effect of European patent (UK));

section 80(1) (authentic text of European patents and patent applications);

sections 97 to 100 (legal proceedings) so far as they relate to proceedings which do not fall within the exclusive jurisdiction of the Unified Patent Court as set out in paragraph 1 of Schedule A4;

section 101 (exercise of comptroller’s discretionary powers);

section 102 (right of audience, &c in proceedings before comptroller);

sections 103 (extension of privilege for communications with solicitors relating to patent proceedings) and 105 (extension of privilege in Scotland for communications relating to patent proceedings) so far as they relate to proceedings before the comptroller;

section 107 (costs and expenses in proceedings before the comptroller);

section 108 (licences granted by order of comptroller);

section 110 (unauthorised claim of patent rights);

section 116 (immunity of department as regards official acts);

section 118 (information about patent applications and patents, and inspection of documents);

section 123 (rules);

section 124 (rules, regulations and orders; supplementary);

section 125 (extent of invention);

section 128A (EU compulsory licences);

section 128B (supplementary protection certificates).

Manner of application of relevant statutory provisions

3

The relevant statutory provisions apply in relation to a European patent with unitary effect in the same way as they apply in relation to a European patent (UK).

Modifications of relevant statutory provisions

4
  • (1) In their application in relation to the European patent with unitary effect, the relevant statutory provisions which are referred to in this paragraph have effect subject to the modifications set out in this paragraph.
  • (2) In section 7(2)(b), the reference to the United Kingdom is a reference to any of the Participating Member States.
  • (3) In sections 30(7) and 31(7), references to proceedings by virtue of section 61 or 69 are references to equivalent proceedings in the Unified Patent Court.
  • (4) In sections 33(1)(a), 33(4), 37(2), 37(7), 38(2) and 38(3), the reference to registration is a reference to registration in the Register for unitary patent protection.
  • (5) In sections 48(1)(b), 48B(4), 50A(4), 51(3), 53(3), and 53(4), the reference to the register is a reference to the Register for unitary patent protection.
  • (6) In sections 48(2)(b), 50A(4), 51(3), 53(3), 53(4) and 53(5), the reference to making an entry is a reference to directing the making of an entry.
  • (7) In sections 48B(2)(b) and 50(2)(a), the reference to the journal is a reference to the European Patent Bulletin.
  • (8) In section 55(5)(b), the reference to the Patent Office is a reference to the European Patent Office.
  • (9) In section 59(2), the reference to section 69 includes a reference to Article 67 of the European Patent Convention.
  • (10) In section 60—
  • (a) in subsections (1), (2), and (5)(d), (e) and (f), the references to the United Kingdom are references to the territory of a Contracting Member State in which the European patent with unitary effect has effect;
  • (b) in subsection (7)—
  • (i) in the definition of “relevant ship” and “relevant aircraft, hovercraft or vehicle”, the reference to the United Kingdom is a reference to a Contracting Member State in which the European patent with unitary effect has effect; and
  • (ii) in the definition of “exempted aircraft”, the reference to an aircraft to which section 89 of the Civil Aviation Act 1982 applies is a reference to an aircraft other than an aircraft of a Contracting Member State in which the European patent with unitary effect has effect.

Interpretation

5

In this Schedule—

  • (a) “Contracting Member State” has the same meaning as in Article 2(c) of the Agreement on a Unified Patent Court; and
  • (b) the following expressions have the same meanings as in Article 2 of the Unitary Patent Regulation—

Participating Member State;

Register for unitary patent protection.

SCHEDULE A4

Jurisdiction

1

The Unified Patent Court has exclusive jurisdiction in respect of an Article 32(1) action which relates to—

  • (a) a European patent with unitary effect, or
  • (b) a supplementary protection certificate for which the basic patent is a European patent with unitary effect,
  • (c) subject to paragraph 2—
  • (i) a European patent (UK), or
  • (ii) a supplementary protection certificate for which the basic patent is a European patent (UK).

Transitional provisions

2
  • (1) The transitional provisions in Article 83 apply in relation to an action referred to in Article 83(1).
  • (2) An opt out referred to in Article 83(3) may be exercised in accordance with that provision and any relevant Rules of Procedure.
  • (3) Such opt out may be withdrawn in accordance with Article 83(4) and any relevant Rules of Procedure.
  • (4) For the purposes of this paragraph, a reference to Article 83 is a reference to Article 83 of the Agreement on a Unified Patent Court.

Modifications of law applicable where UPC has jurisdiction

3
  • (1) In the case of an Article 32(1) action relating to—
  • (a) a European patent with unitary effect, or
  • (b) a European patent (UK),

the provisions of this Act listed in sub-paragraph (2) do not apply in relation to the action where the Unified Patent Court has jurisdiction in accordance with paragraph 1.

  • (2) The provisions referred to in sub-paragraph (1) are—

section 58(7) to (9) (references of disputes as to Crown use);

section 61 (proceedings for infringement of patent);

section 62 (restrictions on recovery of damages for infringement);

section 63 (relief for infringement of partially valid patent);

section 65 (certificate of contested validity of patent);

section 66 (proceedings for infringement by a co-owner);

section 67 (proceedings for infringement by exclusive licensee);

section 68 (effect of non-registration on infringement proceedings);

section 69 (infringement of rights conferred by publication of application);

section 71 (declaration or declarator as to non-infringement);

section 72 (power to revoke patents on application);

section 73(1) to (1C) (comptroller’s power to revoke patents on his own initiative);

section 74 (proceedings in which validity of patent may be put in issue);

section 75 (amendment of patent in infringement or revocation proceedings);

section 77(3) (effect of European patent (UK)).

  • (3) In the case of an Article 32(1) action relating to a supplementary protection certificate for which the basic patent is—
  • (a) a European patent with unitary effect, or
  • (b) a European patent (UK),

the provisions of this Act listed in sub-paragraph (4) do not apply in relation to the action where the Unified Patent Court has jurisdiction in accordance with paragraph 1.

  • (4) The provisions referred to in sub-paragraph (3) are—

section 58(7) to (9) (references of disputes as to Crown use);

section 61 (proceedings for infringement of patent);

section 62 (restrictions on recovery of damages for infringement);

section 63 (relief for infringement of partially valid patent);

section 65 (certificate of contested validity of patent);

section 66 (proceedings for infringement by a co-owner);

section 67 (proceedings for infringement by exclusive licensee);

section 68 (effect of non-registration on infringement proceedings);

section 69 (infringement of rights conferred by publication of application);

section 71 (declaration or declarator as to non-infringement);

section 74 (proceedings in which validity of patent may be put in issue);

section 75 (amendment of a patent in infringement or revocation proceedings).

Enforcement

4
  • (1) For the purposes of enforcement of a decision or order of the Unified Patent Court—
  • (a) the decision or order has the same force and effect,
  • (b) proceedings for or with respect to enforcement of the decision or order may be taken, and
  • (c) the enforcing court, or in a relevant Northern Ireland case the Enforcement of Judgments Office, has the same powers in relation to the enforcement of the decision or order,

as if the decision or order had originally been made by the enforcing court.

  • (2) The enforcing court, or in a relevant Northern Ireland case the Enforcement of Judgments Office, may enforce a mediation settlement in the same manner as a judgment or order of the enforcing court.
  • (3) In this paragraph—
  • “enforcing court” means—as respects England and Wales, the High Court,as respects Scotland, the Court of Session, andas respects Northern Ireland, the High Court in Northern Ireland;
  • “mediation settlement” means a settlement reached through mediation using the facilities of the patent mediation and arbitration centre established under Article 35 of the Agreement on a Unified Patent Court;
  • “relevant Northern Ireland case” means a case where—the decision or order of the Unified Patent Court would, if it had been given by the High Court in Northern Ireland, orthe mediation settlement would, if enforced in the same manner as a judgment or order of the High Court in Northern Ireland,be enforced by the Enforcement of Judgments Office under the Judgments Enforcement (Northern Ireland) Order 1981.

Interpretation

5

In this Schedule—

  • (a) “Article 32(1) action” means an action listed in Article 32(1) of the Agreement on a Unified Patent Court;
  • (b) “basic patent” has the same meaning as in Article 1(c) of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6th May 2009 concerning the supplementary protection certificate for medicinal products; and
  • (c) “Rules of Procedure” has the same meaning as in the Agreement on a Unified Patent Court.
70A
  • (1) Subject to subsections (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat.
  • (2) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of—
  • (a) where the invention is a product, making a product for disposal or importing a product for disposal, or
  • (b) where the invention is a process, using a process.
  • (3) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in subsection (2)(a) or (b).
  • (4) A threat of infringement proceedings is not actionable if the threat—
  • (a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to a product or process, and
  • (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.
  • (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication.
  • (6) In sections 70C and 70D “an actionable threat” means a threat of infringement proceedings that is actionable in accordance with this section.
70B
  • (1) For the purposes of section 70A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if—
  • (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose;
  • (b) all of the information that relates to the threat is information that—
  • (i) is necessary for that purpose (see subsection (5)(a) to (c) for some examples of necessary information), and
  • (ii) the person making the communication reasonably believes is true.
  • (2) Each of the following is a “permitted purpose”—
  • (a) giving notice that a patent exists;
  • (b) discovering whether, or by whom, a patent has been infringed by an act mentioned in section 70A(2)(a) or (b);
  • (c) giving notice that a person has a right in or under a patent, where another person's awareness of the right is relevant to any proceedings that may be brought in respect of the patent.
  • (3) The court may, having regard to the nature of the purposes listed in subsection (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so.
  • (4) But the following may not be treated as a “permitted purpose”—
  • (a) requesting a person to cease doing, for commercial purposes, anything in relation to a product or process,
  • (b) requesting a person to deliver up or destroy a product, or
  • (c) requesting a person to give an undertaking relating to a product or process.
  • (5) If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see subsection (1)(b)(i))—
  • (a) a statement that a patent exists and is in force or that an application for a patent has been made;
  • (b) details of the patent, or of a right in or under the patent, which—
  • (i) are accurate in all material respects, and
  • (ii) are not misleading in any material respect; and
  • (c) information enabling the identification of the products or processes in respect of which it is alleged that acts infringing the patent have been carried out.
70C
  • (1) Proceedings in respect of an actionable threat may be brought against the person who made the threat for—
  • (a) a declaration that the threat is unjustified;
  • (b) an injunction against the continuance of the threat;
  • (c) damages in respect of any loss sustained by the aggrieved person by reason of the threat.
  • (2) In the application of subsection (1) to Scotland—
  • (a) “declaration” means “declarator”, and
  • (b) “injunction” means “interdict”.
  • (3) It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the patent.
  • (4) It is a defence for the person who made the threat to show—
  • (a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in section 70A(2)(a) or (b) in relation to the product or the use of a process which is the subject of the threat, and
  • (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken.
70D
  • (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in subsection (3) are met.
  • (2) In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat—
  • (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and
  • (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means).
  • (3) The conditions are that—
  • (a) in making the communication the professional adviser is acting on the instructions of another person, and
  • (b) when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting.
  • (4) This section does not affect any liability of the person on whose instructions the professional adviser is acting.
  • (5) It is for a person asserting that subsection (1) applies to prove (if required) that at the material time—
  • (a) the person concerned was acting as a professional adviser, and
  • (b) the conditions in subsection (3) were met.
70E
  • (1) In sections 70 and 70B references to a patent include references to an application for a patent that has been published under section 16.
  • (2) Where the threat of infringement proceedings is made after an application has been published (but before grant) the reference in section 70C(3) to “the patent” is to be treated as a reference to the patent as granted in pursuance of that application.
70F

In section 70(1)(b) the reference to proceedings for infringement of a patent includes a reference to proceedings for an order under section 61(1)(b) (order to deliver up or destroy patented products etc.) and proceedings in the Unified Patent Court for an order for delivery up made in accordance with articles 32(1)(c) and 62(3) of the Agreement on a Unified Patent Court.

Declaration or declarator as to non-infringement

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