Copyright, Designs and Patents Act 1988

• “Appeal Tribunal” means the Appeal Tribunal constituted and acting in accordance with section 28 of this Act as amended by the Administration of Justice Act 1969;

• “article” means any article of manufacture and includes any part of an article if that part is made and sold separately;

• “artistic work” has the same meaning as in Part I of the Copyright, Designs and Patents Act 1988;

• “assignee” includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person;

• “author”, in relation to a design, has the meaning given by section 2(3) and (4);

• ... ... ... ... ... ... ...

• “corresponding design”, in relation to an artistic work, means a design which if applied to an article would produce something which would be treated for the purposes of Part I of the Copyright, Designs and Patents Act 1988 as a copy of that work;

• “the court” shall be construed in accordance with section 27 of this Act;

• “design” has the meaning assigned to it by section 1(1) of this Act;

• “employee”, “employment” and “employer” refer to employment under a contract of service or of apprenticeship;

• ... ... ... ... ... ... ...

• “prescribed” means prescribed by rules made by the Secretary of State under this Act;

• “proprietor” has the meaning assigned to it by section two of this Act;

• “registered proprietor” means the person or persons for the time being entered in the register of designs as proprietor of the design;

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

• “set of articles” means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied.

• (2) Any reference in this Act to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set.

• (3) Any question arising under this Act whether a number of articles constitute a set of articles shall be determined by the registrar; and notwithstanding anything in this Act any determination of the registrar under this subsection shall be final.

• (4) For the purposes of subsection (1) of section 14 and of section 16 of this Act, the expression “personal representative”, in relation to a deceased person, includes the legal representative of the deceased appointed in any country outside the United Kingdom.

Application to Scotland.

45

In the application of this Act to Scotland—

Application to Northern Ireland.

46

In the application of this Act to Northern Ireland—

• (3) References to enactments include enactments comprised in Northern Ireland legislation:

• (3A) References to the Crown include the Crown in right of Her Majesty’s Government in Northern Ireland:

• (4) References to a government department shall be construed as including references to a Northern Ireland department, and in relation to a Northern Ireland department references to the Treasury shall be construed as references to the Department of Finance and Personnel.

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

Application to Isle of Man.

47

This Act extends 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 the Isle of Man.

Territorial waters and the continental shelf.

47A

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

• (2) This Act applies to things done in the United Kingdom sector of the continental shelf on a structure or vessel which is present there for purposes directly connected with theexploration of the sea bed or subsoil or the exploitation of their natural resources as it applies to things done in the United Kingdom.

• (3) The United Kingdom sector of the continental shelf means the areas designated by order under section 1(7) of the Continental Shelf Act 1964.

Repeals, savings, and transitional provisions.

48

• (1) ... ... ... ... ... ... ...

• (2) Subject to the provisions of this section, any Order in Council, rule, order, requirement, certificate, notice, decision, direction, authorisation, consent, application, request or thing made, issued, given or done under any enactment repealed by this Act shall, if in force at the commencement of this Act, and so far as it could have been made, issued, given or done under this Act, continue in force and have effect as if made, issued, given or done under the corresponding enactment of this Act.

• (3) Any register kept under the Patents and Designs Act 1907 shall be deemed to form part of the corresponding register under this Act.

• (4) Any design registered before the commencement of this Act shall be deemed to be registered under this Act in respect of articles of the class in which it is registered.

• (5) Where, in relation to any design, the time for giving notice to the registrar under section 59 of the Patents and Designs Act 1907 expired before the commencement of this Act and the notice was not given, subsection (2) of section 6 of this Act shall not apply in relation to that design or any registration of that design.

• (6) Any document referring to any enactment repealed by this Act shall be construed as referring to the corresponding enactment of this Act.

• (7) Nothing in the foregoing provisions of this section shall be taken as prejudicing the operation of section 38 of the Interpretation Act 1889 (which relates to the effect of repeals).

Short title and commencement.

49

• (1) This Act may be cited as the Registered Designs Act 1949.

• (2) This Act shall come into operation on the first day of January, nineteen hundred and fifty, immediately after the coming into operation of the Patents and Designs Act 1949.

FIRST SCHEDULE

Provisions as to the Use of Registered Designs for the Services of the Crown and as to the Rights of Third Parties in Respect of such Use

Use of registered designs for services of the Crown

1

• (1) Notwithstanding anything in this Act, any Government department, and any person authorised in writing by a Government department, may use any registered design for the services of the Crown in accordance with the following provisions of this paragraph.

• (2) If and so far as the design has before the date of registration thereof been duly recorded by or applied by or on behalf of a Government department otherwise than in consequence of the communication of the design directly or indirectly by the registered proprietor or any person from whom he derives title, any use of the design by virtue of this paragraph may be made free of any royalty or other payment to the registered proprietor.

• (3) If and so far as the design has not been so recorded or applied as aforesaid, any use of the design made by virtue of this paragraph at any time after the date of registration thereof, or in consequence of any such communication as aforesaid, shall be made upon such terms as may be agreed upon, either before or after the use, between the Government department and the registered proprietor with the approval of the Treasury, or as may in default of agreement be determined by the court on a reference under paragraph 3 of this Schedule.

• (4) The authority of a Government department in respect of a design may be given under this paragraph either before or after the design is registered and either before or after the acts in respect of which the authority is given are done, and may be given to any person whether or not he is authorised directly or indirectly by the registered proprietor to use the design.

• (5) Where any use of a design is made by or with the authority of a Government department under this paragraph, then, unless it appears to the department that it would be contrary to the public interest so to do, the department shall notify the registered proprietor as soon as practicable after the use is begun, and furnish him with such information as to the extent of the use as he may from time to time require.

• (6) For the purposes of this and the next following paragraph “the services of the Crown” shall be deemed to include—

• (a) the supply to the government of any country outside the United Kingdom, in pursuance of an agreement or arrangement between Her Majesty’s Government in the United Kingdom and the government of that country, of articles required—

• (i) for the defence of that country; or

• (ii) for the defence of any other country whose government is party to any agreement or arrangement with Her Majesty’s said Government in respect of defence matters;

• (b) the supply to the United Nations, or the government of any country belonging to that organisation, in pursuance of an agreement or arrangement between Her Majesty’s Government and that organisation or government, of articles required for any armed forces operating in pursuance of a resolution of that organisation or any organ of that organisation;

and the power of a Government department or a person authorised by a Government department under this paragraph to use a design shall include power to sell to any such government or to the said organisation any articles the supply of which is authorised by this sub-paragraph, and to sell to any person any articles made in the exercise of the powers conferred by this paragraph which are no longer required for the purpose for which they were made.

• (7) The purchaser of any articles sold in the exercise of powers conferred by this paragraph, and any person claiming through him, shall have power to deal with them in the same manner as if the rights in the registered design were held on behalf of His Majesty.

Rights of third parties in respect of Crown use

2

• (1) In relation to any use of a registered design, or a design in respect of which an application for registration is pending, made for the services of the Crown—

• (a) by a Government department or a person authorised by a Government department under the last foregoing paragraph; or

• (b) by the registered proprietor or applicant for registration to the order of a Government department,

the provisions of any licence, assignment or agreement made, whether before or after the commencement of this Act, between the registered proprietor or applicant for registration or any person who derives title from him or from whom he derives title and any person other than a Government department shall be of no effect so far as those provisions restrict or regulate the use of the design, or any model, document or information relating thereto, or provide for the making of payments in respect of any such use, or calculated by reference thereto; and the reproduction or publication of any model or document in connection with the said use shall not be deemed to be an infringement of any copyright or design right subsisting in the model or document.

• (2) Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the use of the design is in force under the registered design then—

• (a) in relation to any use of the design which, but for the provisions of this and the last foregoing paragraph, would constitute an infringement of the rights of the licensee, sub-paragraph (3) of the last foregoing paragraph shall have effect as if for the reference to the registered proprietor there were substituted a reference to the licensee; and

• (b) in relation to any use of the design by the licensee by virtue of an authority given under the last foregoing paragraph, that paragraph shall have effect as if the said sub-paragraph (3) were omitted.

• (3) Subject to the provisions of the last foregoing sub-paragraph, where the registered design or the right to apply for or obtain registration of the design has been assigned to the registered proprietor in consideration of royalties or other benefits determined by reference to the use of the design, then—

• (a) in relation to any use of the design by virtue of paragraph 1 of this Schedule, sub-paragraph (3) of that paragraph shall have effect as if the reference to the registered proprietor included a reference to the assignor, and any sum payable by virtue of that sub-paragraph shall be divided between the registered proprietor and the assignor in such proportion as may be agreed upon between them or as may in default of agreement be determined by the court on a reference under the next following paragraph; and

• (b) in relation to any use of the design made for the services of the Crown by the registered proprietor to the order of a Government department, sub-paragraph (3) of paragraph 1 of this Schedule shall have effect as if that use were made by virtue of an authority given under that paragraph.

• (4) Where, under sub-paragraph (3) of paragraph 1 of this Schedule, payments are required to be made by a Government department to a registered proprietor in respect of any use of a design, any person being the holder of an exclusive licence under the registered design (not being such a licence as is mentioned in sub-paragraph (2) of this paragraph) authorising him to make that use of the design shall be entitled to recover from the registered proprietor such part (if any) of those payments as may be agreed upon between that person and the registered proprietor, or as may in default of agreement be determined by the court under the next following paragraph to be just having regard to any expenditure incurred by that person—

• (a) in developing the said design; or

• (b) in making payments to the registered proprietor, other than royalties or other payments determined by reference to the use of the design, in consideration of the licence;

and if, at any time before the amount of any such payment has been agreed upon between the Government department and the registered proprietor, that person gives notice in writing of his interest to the department, any agreement as to the amount of that payment shall be of no effect unless it is made with his consent.

• (5) In this paragraph “exclusive licence” means a licence from a registered proprietor which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the registered proprietor), any right in respect of the registered design.

Compensation for loss of profit

2A

• (1) Where Crown use is made of a registered design, the government department concerned shall pay—

• (a) to the registered proprietor, or

• (b) if there is an exclusive licence in force in respect of the design, to the exclusive licensee,

compensation for any loss resulting from his not being awarded a contract to supply the articles to which the design is applied.

• (2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract.

• (3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing capacity was under-used.

• (4) No compensation is payable in respect of any failure to secure contracts for the supply of articles to which the design is applied otherwise than for the services of the Crown.

• (5) The amount payable under this paragraph shall, if not agreed between the registered proprietor or licensee and the government department concerned with the approval of the Treasury, be determined by the court on a reference under paragraph 3; and it is in addition to any amount payable under paragraph 1 or 2 of this schedule.

• (6) In this paragraph—

• “Crown use”, in relation to a design, means the doing of anything by virtue of paragraph 1 which would otherwise be an infringement of the right in the design; and

• “the government department concerned”, in relation to such use, means the government department by whom or on whose authority the act was done.

Reference of disputes as to Crown use

3

• (1) Any dispute as to—

• (a) the exercise by a Government department, or a person authorised by a Government department, of the powers conferred by paragraph 1 of this Schedule,

• (b) terms for the use of a design for the services of the Crown under that paragraph,

• (c) the right of any person to receive any part of a payment made under paragraph 1(3), or

• (d) the right of any person to receive a payment under paragraph 2A,

may be referred to the court by either party to the dispute.

• (2) In any proceedings under this paragraph to which a Government department are a party, the department may—

• (a) if the registered proprietor is a party to the proceedings, apply for cancellation of the registration of the design upon any ground upon which the registration of a design may be cancelled on an application to the court under section twenty of this Act;

• (b) in any case, put in issue the validity of the registration of the design without applying for its cancellation.

• (3) If in such proceedings as aforesaid any question arises whether a design has been recorded or applied as mentioned in paragraph 1 of this Schedule, and the disclosure of any document recording the design, or of any evidence of the application thereof, would in the opinion of the department be prejudicial to the public interest, the disclosure may be made confidentially to counsel for the other party or to an independent expert mutually agreed upon.

• (4) In determining under this paragraph any dispute between a Government department and any person as to terms for the use of a design for the services of the Crown, the court shall have regard to any benefit or compensation which that person or any person from whom he derives title may have received, or may be entitled to receive, directly or indirectly from any Government department in respect of the design in question.

• (5) In any proceedings under this paragraph the court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to a special or official referee or an arbitrator on such terms as the court may direct; and references to the court in the foregoing provisions of this paragraph shall be construed accordingly.

Special provisions as to Crown use during emergency

4

• (1) During any period of emergency within the meaning of this paragraph, the powers exercisable in relation to a design by a Government department, or a person authorised by a Government department under paragraph 1 of this Schedule shall include power to use the design for any purpose which appears to the department necessary or expedient—

• (a) for the efficient prosecution of any war in which His Majesty may be engaged;

• (b) for the maintenance of supplies and services essential to the life of the community;

• (c) for securing a sufficiency of supplies and services essential to the well-being of the community;

• (d) for promoting the productivity of industry, commerce and agriculture;

• (e) for fostering and directing exports and reducing imports, or imports of any classes, from all or any countries and for redressing the balance of trade;

• (f) generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community; or

• (g) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any part of His Majesty’s dominions or any foreign countries that are in grave distress as the result of war;

and any reference in this Schedule to the services of the Crown shall be construed as including a reference to the purposes aforesaid.

• (2) In this paragraph the expression “period of emergency” means a period beginning on such date as may be declared by Order in Council to be the commencement, and ending on such date as may be so declared to be the termination, of a period of emergency for the purposes of this paragraph.

• (3) No Order in Council under this paragraph shall be submitted to Her Majesty unless a draft of it has been laid before and approved by a resolution of each House of Parliament.

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

SCHEDULE 5

Withdrawal of application before publication of specification

1

In section 13(2) of the Patents Act 1949 (duty of comptroller to advertise acceptance of and publish complete specification) after the word “and”, in the first place where it occurs, insert “, unless the application is withdrawn,”.

Correction of clerical errors

2

• (1) In section 15 of the Patents Act 1977 (filing of application), after subsection (3) insert—

(3A) Nothing in subsection (2) or (3) above shall be construed as affecting the power of the comptroller under section 117(1) below to correct errors or mistakes with respect to the filing of drawings.

.

• (2) The above amendment applies only in relation to applications filed after the commencement of this paragraph.

Supplementary searches

3

• (1) Section 17 of the Patents Act 1977 (preliminary examination and search) is amended as follows.

• (2) In subsection (7) (supplementary searches) for “subsection (4) above” substitute “subsections (4) and (5) above” and for “it applies” substitute “they apply”.

• (3) After that subsection add—

(8) A reference for a supplementary search in consequence of— (a) an amendment of the application made by the applicant under section 18(3) or 19(1) below, or (b) a correction of the application, or of a document filed in connection with the application, under section 117 below, shall be made only on payment of the prescribed fee, unless the comptroller directs otherwise.

.

4

In section 18 of the Patents Act 1977 (substantive examination and grant or refusal of patent), after subsection (1) insert—

(1A) If the examiner forms the view that a supplementary search under section 17 above is required for which a fee is payable, he shall inform the comptroller, who may decide that the substantive examination should not proceed until the fee is paid; and if he so decides, then unless within such period as he may allow— (a) the fee is paid, or (b) the application is amended so as to render the supplementary search unnecessary, he may refuse the application.

.

5

In section 130(1) of the Patents Act 1977 (interpretation), in the definition of “search fee”, for “section 17 above” substitute “section 17(1) above”.

Application for restoration of lapsed patent

6

• (1) Section 28 of the Patents Act 1977 (restoration of lapsed patents) is amended as follows.

• (2) For subsection (1) (application for restoration within period of one year) substitute—

(1) Where a patent has ceased to have effect by reason of a failure to pay any renewal fee, an application for the restoration of the patent may be made to the comptroller within the prescribed period. (1A) Rules prescribing that period may contain such transitional provisions and savings as appear to the Secretary of State to be necessary or expedient.

.

• (3) After subsection (2) insert—

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

.

• (4) In subsection (3), omit paragraph (b) (requirement that failure to renew is due to circumstances beyond proprietor’s control) and the word “and” preceding it.

This amendment does not apply to a patent which has ceased to have effect in accordance with section 25(3) of the Patents Act 1977 (failure to renew within prescribed period) and in respect of which the period referred to in subsection (4) of that section (six months’ period of grace for renewal) has expired before commencement.

• (5) Omit subsections (5) to (9) (effect of order for restoration).

7

After that section insert—

(28A) (1) The effect of an order for the restoration of a patent is as follows. (2) Anything done under or in relation to the patent during the period between expiry and restoration shall be treated as valid. (3) Anything done during that period which would have constituted an infringement if the patent had not expired shall be treated as an infringement— (a) if done at a time when it was possible for the patent to be renewed under section 25(4), or (b) if it was a continuation or repetition of an earlier infringing act. (4) If after it was no longer possible for the patent to be so renewed, and before publication of notice of the application for restoration, a person— (a) began in good faith to do an act which would have constituted an infringement of the patent if it had not expired, or (b) made in good faith effective and serious preparations to do such an act, he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the patent; but this right does not extend to granting a licence to another person to do the act. (5) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (4) may— (a) authorise the doing of that act by any partners of his for the time being in that business, and (b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made. (6) Where a product is disposed of to another in exercise of the rights conferred by subsection (4) or (5), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent. (7) The above provisions apply in relation to the use of a patent for the services of the Crown as they apply in relation to infringement of the patent.

.

8

In consequence of the above amendments—

• (a) in section 60(6)(b) of the Patents Act 1977, for “section 28(6)” substitute “section 28A(4) or (5)”; and

• (b) in sections 77(5), 78(6) and 80(4) of that Act, for the words from “section 28(6)” to the end substitute “section 28A(4) and (5) above, and subsections (6) and (7) of that section shall apply accordingly.”.

Determination of right to patent after grant

9

• (1) Section 37 of the Patents Act 1977 (determination of right to patent after grant) is amended as follows.

• (2) For subsection (1) substitute—

(1) After a patent has been granted for an invention any person having or claiming a proprietary interest in or under the patent may refer to the comptroller the question— (a) who is or are the true proprietor or proprietors of the patent, (b) whether the patent should have been granted to the person or persons to whom it was granted, or (c) whether any right in or under the patent should be transferred or granted to any other person or persons; and the comptroller shall determine the question and make such order as he thinks fit to give effect to the determination.

.

• (3) Substitute “this section”—

• (a) in subsections (4) and (7) for “subsection (1)(a) above”, and

• (b) in subsection (8) for “subsection (1) above”.

10

In section 74(6) (meaning of “entitlement proceedings”), for “section 37(1)(a) above” substitute “section 37(1) above”.

Employees’ inventions

11

• (1) In section 39 of the Patents Act 1977 (right to employees’ inventions), after subsection (2) add—

(3) Where by virtue of this section an invention belongs, as between him and his employer, to an employee, nothing done— (a) by or on behalf of the employee or any person claiming under him for the purposes of pursuing an application for a patent, or (b) by any person for the purpose of performing or working the invention, shall be taken to infringe any copyright or design right to which, as between him and his employer, his employer is entitled in any model or document relating to the invention.

.

• (2) In section 43 of the Patents Act 1977 (supplementary provisions with respect to employees’ inventions), in subsection (4) (references to patents to include other forms of protection, whether in UK or elsewhere) for “in sections 40 to 42” substitute “in sections 39 to 42.”.

Undertaking to take licence in infringement proceedings

12

• (1) Section 46 of the Patents Act 1977 (licences of right) is amended as follows.

• (2) In subsection (3)(c) (undertaking to take licence in infringement proceedings) after the words “(otherwise than by the importation of any article” insert “from a country which is not a member State of the European Economic Community”.

• (3) After subsection (3) insert—

(3A) An undertaking under subsection (3)(c) above may be given at any time before final order in the proceedings, without any admission of liability.

.

Power of comptroller on grant of compulsory licence

13

In section 49 of the Patents Act 1977 (supplementary provisions with respect to compulsory licences), omit subsection (3) (power to order that licence has effect to revoke existing licences and deprive proprietor of power to work invention or grant licences).

Powers exercisable in consequence of report of Monopolies and Mergers Commission

14

For section 51 of the Patents Act 1977 (licences of right: application by Crown in consequence of report of Monopolies and Mergers Commission) substitute—

(51) (1) Where a report of the Monopolies and Mergers Commission has been laid before Parliament containing conclusions to the effect— (a) on a monopoly reference, that a monopoly situation exists and facts found by the Commission operate or may be expected to operate against the public interest, (b) on a merger reference, that a merger situation qualifying for investigation has been created and the creation of the situation, or particular elements in or consequences of it specified in the report, operate or may be expected to operate against the public interest, (c) on a competition reference, that a person was engaged in an anti-competitive practice which operated or may be expected to operate against the public interest, or (d) on a reference under section 11 of the Competition Act 1980 (reference of public bodies and certain other persons), that a person is pursuing a course of conduct which operates against the public interest, the appropriate Minister or Ministers may apply to the comptroller to take action under this section. (2) Before making an application the appropriate Minister or Ministers shall publish, in such manner as he or they think appropriate, a notice describing the nature of the proposed application and shall consider any representations which may be made within 30 days of such publication by persons whose interests appear to him or them to be affected. (3) If on an application under this section it appears to the comptroller that the matters specified in the Commission’s report as being those which in the Commission’s opinion operate, or operated or may be expected to operate, against the public interest include— (a) conditions in licences granted under a patent by its proprietor restricting the use of the invention by the licensee or the right of the proprietor to grant other licences, or (b) a refusal by the proprietor of a patent to grant licences on reasonable terms he may by order cancel or modify any such condition or may, instead or in addition, make an entry in the register to the effect that licences under the patent are to be available as of right. (4) In this section “the appropriate Minister or Ministers” means the Minister or Ministers to whom the report of the Commission was made.

.

Compulsory licensing: reliance on statements in competition report

15

In section 53(2) of the Patents Act 1977 (compulsory licensing: reliance on statements in reports of Monopolies and Mergers Commission)—

• (a) for “application made in relation to a patent under sections 48 to 51 above” substitute “application made under section 48 above in respect of a patent”; and

• (b) after “Part VIII of the Fair Trading Act 1973” insert “or section 17 of the Competition Act 1980”.

Crown use: compensation for loss of profit

16

• (1) In the Patents Act 1977, after section 57 insert—

(57A) (1) Where use is made of an invention for the services of the Crown, the government department concerned shall pay— (a) to the proprietor of the patent, or (b) if there is an exclusive licence in force in respect of the patent, to the exclusive licensee, compensation for any loss resulting from his not being awarded a contract to supply the patented product or, as the case may be, to perform the patented process or supply a thing made by means of the patented process. (2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing or other capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract. (3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing or other capacity was under-used. (4) No compensation is payable in respect of any failure to secure contracts to supply the patented product or, as the case may be, to perform the patented process or supply a thing made by means of the patented process, otherwise than for the services of the Crown. (5) The amount payable shall, if not agreed between the proprietor or licensee and the government department concerned with the approval of the Treasury, be determined by the court on a reference under section 58, and is in addition to any amount payable under section 55 or 57. (6) In this section “the government department concerned”, in relation to any use of an invention for the services of the Crown, means the government department by whom or on whose authority the use was made. (7) In the application of this section to Northern Ireland, the reference in subsection (5) above to the Treasury shall, where the government department concerned is a department of the Government of Northern Ireland, be construed as a reference to the Department of Finance and Personnel.

.

• (2) In section 58 of the Patents Act 1977 (reference of disputes as to Crown use), for subsection (1) substitute—

(1) Any dispute as to— (a) the exercise by a government department, or a person authorised by a government department, of the powers conferred by section 55 above, (b) terms for the use of an invention for the services of the Crown under that section, (c) the right of any person to receive any part of a payment made in pursuance of subsection (4) of that section, or (d) the right of any person to receive a payment under section 57A, may be referred to the court by either party to the dispute after a patent has been granted for the invention.

;

• (3) In section 58(11) of the Patents Act 1977 (exclusion of right to compensation for Crown use if relevant transaction, instrument or event not registered), after “section 57(3) above)” insert “, or to any compensation under section 57A above,”.

• (4) The above amendments apply in relation to any use of an invention for the services of the Crown after the commencement of this section, even if the terms for such use were settled before commencement.

Right to continue use begun before priority date

17

For section 64 of the Patents Act 1977 (right to continue use begun before priority date) substitute—

(64) (1) Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention— (a) does in good faith an act which would constitute an infringement of the patent if it were in force, or (b) makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act. (2) 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 (1) 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. (3) Where a product is disposed of to another in exercise of the rights conferred by subsection (1) or (2), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.

.

Revocation on grounds of grant to wrong person

18

In section 72(1) of the Patents Act 1977 (grounds for revocation of patent), for paragraph (b) substitute—

(b) that the patent was granted to a person who was not entitled to be granted that patent;

.

Revocation where two patents granted for same invention

19

In section 73 of the Patents Act 1977 (revocation on initiative of comptroller), for subsections (2) and (3) (revocation of patent where European patent (UK) granted in respect of same invention) substitute—

(2) If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date, and that the applications for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent. (3) The comptroller shall not take action under subsection (2) above before— (a) the end of the period for filing an opposition to the European patent (UK) under the European Patent Convention, or (b) if later, the date on which opposition proceedings are finally disposed of; and he shall not then take any action if the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention. (4) The comptroller shall not take action under subsection (2) above if the European patent (UK) has been surrendered under section 29(1) above before the date on which by virtue of section 25(1) above the patent under this Act is to be treated as having been granted or, if proceedings for the surrender of the European patent (UK) have been begun before that date, until those proceedings are finally disposed of; and he shall not then take any action if the decision is to accept the surrender of the European patent.

.

Applications and amendments not to include additional matter

20

For section 76 of the Patents Act 1977 (amendments of applications and patents not to include added matter) substitute—

(76) (1) An application for a patent which— (a) is made in respect of matter disclosed in an earlier application, or in the specification of a patent which has been granted, and (b) discloses additional matter, that is, matter extending beyond that disclosed in the earlier application, as filed, or the application for the patent, as filed, may be filed under section 8(3), 12 or 37(4) above, or as mentioned in section 15(4) above, but shall not be allowed to proceed unless it is amended so as to exclude the additional matter. (2) No amendment of an application for a patent shall be allowed under section 17(3), 18(3) or 19(1) if it results in the application disclosing matter extending beyond that disclosed in the application as filed. (3) No amendment of the specification of a patent shall be allowed under section 27(1), 73 or 75 if it— (a) results in the specification disclosing additional matter, or (b) extends the protection conferred by the patent.

.

Effect of European patent (UK)

21

• (1) Section 77 of the Patents Act 1977 (effect of European patent (UK)) is amended as follows.

• (2) For subsection (3) (effect of finding of partial validity on pending proceedings) substitute—

(3) Where in the case of a European patent (UK)— (a) proceedings for infringement, or proceedings under section 58 above, have been commenced before the court or the comptroller and have not been finally disposed of, and (b) it is established in proceedings before the European Patent Office that the patent is only partially valid, the provisions of section 63 or, as the case may be, of subsections (7) to (9) of section 58 apply as they apply to proceedings in which the validity of a patent is put in issue and in which it is found that the patent is only partially valid.

.

• (3) For subsection (4) (effect of amendment or revocation under European Patent Convention) substitute—

(4) Where a European patent (UK) is amended in accordance with the European Patent Convention, the amendment shall have effect for the purposes of Parts I and III of this Act as if the specification of the patent had been amended under this Act; but subject to subsection (6)(b) below. (4A) Where a European patent (UK) is revoked in accordance with the European Patent Convention, the patent shall be treated for the purposes of Parts I and III of this Act as having been revoked under this Act.

.

• (4) In subsection (6) (filing of English translation), in paragraph (b) (amendments) for “a translation of the amendment into English” substitute “a translation into English of the specification as amended”.

• (5) In subsection (7) (effect of failure to file translation) for the words from “a translation” to “above” substitute “such a translation is not filed”.

The state of the art: material contained in patent applications

22

In section 78 of the Patents Act 1977 (effect of filing an application for a European patent (UK)), for subsection (5) (effect of withdrawal of application, &c.) substitute—

(5) Subsections (1) to (3) above shall cease to apply to an application for a European patent (UK), except as mentioned in subsection (5A) below, if— (a) the application is refused or withdrawn or deemed to be withdrawn, or (b) the designation of the United Kingdom in the application is withdrawn or deemed to be withdrawn, but shall apply again if the rights of the applicant are re-established under the European Patent Convention, as from their re-establishment. (5A) The occurrence of any of the events mentioned in subsection (5)(a) or (b) shall not affect the continued operation of section 2(3) above in relation to matter contained in an application for a European patent (UK) which by virtue of that provision has become part of the state of the art as regards other inventions.

.

Jurisdiction in certain proceedings

23

Section 88 of the Patents Act 1977 (jurisdiction in legal proceedings in connection with Community Patent Convention) is repealed.

Effect of filing international application for patent

24

• (1) Section 89 of the Patents Act 1977 (effect of filing international application for patent) is amended as follows.

• (2) After subsection (3) insert—

(3A) If the relevant conditions are satisfied with respect to an application which is amended in accordance with the Treaty and the relevant conditions are not satisfied with respect to any amendment, that amendment shall be disregarded.

.

• (3) After subsection (4) insert—

(4A) In subsection (4)(a) “a copy of the application” includes a copy of the application published in accordance with the Treaty in a language other than that in which it was filed.

.

• (4) For subsection (10) (exclusion of certain applications subject to European Patent Convention) substitute—

(10) The foregoing provisions of this section do not apply to an application which falls to be treated as an international application for a patent (UK) by reason only of its containing an indication that the applicant wishes to obtain a European patent (UK); but without prejudice to the application of those provisions to an application which also separately designates the United Kingdom.

.

• (5) The amendments in this paragraph shall be deemed always to have had effect.

• (6) This paragraph shall be repealed by the order bringing the following paragraph into force.

25

For section 89 of the Patents Act 1977 (effect of filing international application for patent) substitute—

(89) (1) An international application for a patent (UK) for which a date of filing has been accorded under the Patent Co-operation Treaty shall, subject to— - section 89A (international and national phases of application), and - section 89B (adaptation of provisions in relation to international application), be treated for the purposes of Parts I and III of this Act as an application for a patent under this Act. (2) If the application, or the designation of the United Kingdom in it, is withdrawn or (except as mentioned in subsection (3)) deemed to be withdrawn under the Treaty, it shall be treated as withdrawn under this Act. (3) An application shall not be treated as withdrawn under this Act if it, or the designation of the United Kingdom in it, is deemed to be withdrawn under the Treaty— (a) because of an error or omission in an institution having functions under the Treaty, or (b) because, owing to circumstances outside the applicant’s control, a copy of the application was not received by the International Bureau before the end of the time limited for that purpose under the Treaty, or in such other circumstances as may be prescribed. (4) For the purposes of the above provisions an application shall not be treated as an international application for a patent (UK) by reason only of its containing an indication that the applicant wishes to obtain a European patent (UK), but an application shall be so treated if it also separately designates the United Kingdom. (5) If an international application for a patent which designates the United Kingdom is refused a filing date under the Treaty and the comptroller determines that the refusal was caused by an error or omission in an institution having functions under the Treaty, he may direct that the application shall be treated as an application under this Act, having such date of filing as he may direct. (89A) (1) The provisions of the Patent Co-operation Treaty relating to publication, search, examination and amendment, and not those of this Act, apply to an international application for a patent (UK) during the international phase of the application. (2) The international phase of the application means the period from the filing of the application in accordance with the Treaty until the national phase of the application begins. (3) The national phase of the application begins— (a) when the prescribed period expires, provided any necessary translation of the application into English has been filed at the Patent Office and the prescribed fee has been paid by the applicant; or (b) on the applicant expressly requesting the comptroller to proceed earlier with the national phase of the application, filing at the Patent Office— (i) a copy of the application, if none has yet been sent to the Patent Office in accordance with the Treaty, and (ii) any necessary translation of the application into English, and paying the prescribed fee. For this purpose a “copy of the application” includes a copy published in accordance with the Treaty in a language other than that in which it was originally filed. (4) If the prescribed period expires without the conditions mentioned in subsection (3)(a) being satisfied, the application shall be taken to be withdrawn. (5) Where during the international phase the application is amended in accordance with the Treaty, the amendment shall be treated as made under this Act if— (a) when the prescribed period expires, any necessary translation of the amendment into English has been filed at the Patent Office, or (b) where the applicant expressly requests the comptroller to proceed earlier with the national phase of the application, there is then filed at the Patent Office— (i) a copy of the amendment, if none has yet been sent to the Patent Office in accordance with the Treaty, and (ii) any necessary translation of the amendment into English; otherwise the amendment shall be disregarded. (6) The comptroller shall on payment of the prescribed fee publish any translation filed at the Patent Office under subsection (3) or (5) above. (89B) (1) Where an international application for a patent (UK) is accorded a filing date under the Patent Co-operation Treaty— (a) that date, or if the application is re-dated under the Treaty to a later date that later date, shall be treated as the date of filing the application under this Act, (b) any declaration of priority made under the Treaty shall be treated as made under section 5(2) above, and where in accordance with the Treaty any extra days are allowed, the period of 12 months specified in section 5(2) shall be treated as altered accordingly, and (c) any statement of the name of the inventor under the Treaty shall be treated as a statement filed under section 13(2) above. (2) If the application, not having been published under this Act, is published in accordance with the Treaty it shall be treated, for purposes other than those mentioned in subsection (3), as published under section 16 above when the conditions mentioned in section 89A(3)(a) are complied with. (3) For the purposes of section 55 (use of invention for service of the Crown) and section 69 (infringement of rights conferred by publication) the application, not having been published under this Act, shall be treated as published under section 16 above— (a) if it is published in accordance with the Treaty in English, on its being so published; and (b) if it is so published in a language other than English— (i) on the publication of a translation of the application in accordance with section 89A(6) above, or (ii) on the service by the applicant of a translation into English of the specification of the application on the government department concerned or, as the case may be, on the person committing the infringing act. The reference in paragraph (b)(ii) to the service of a translation on a government department or other person is to its being sent by post or delivered to that department or person. (4) During the international phase of the application, section 8 above does not apply (determination of questions of entitlement in relation to application under this Act) and section 12 above (determination of entitlement in relation to foreign and convention patents) applies notwithstanding the application; but after the end of the international phase, section 8 applies and section 12 does not. (5) When the national phase begins the comptroller shall refer the application for so much of the examination and search under section 17 and 18 above as he considers appropriate in view of any examination or search carried out under the Treaty.

.

Proceedings before the court or the comptroller

26

In the Patents Act 1977, after section 99 (general powers of the court) insert—

(99A) (1) Rules of court shall make provision empowering the Patents Court in any proceedings before it under this Act, on or without the application of any party, to order the Patent Office to inquire into and report on any question of fact or opinion. (2) Where the court makes such an order on the application of a party, the fee payable to the Patent Office shall be at such rate as may be determined in accordance with rules of court and shall be costs of the proceedings unless otherwise ordered by the court. (3) Where the court makes such an order of its own motion, the fee payable to the Patent Office shall be at such rate as may be determined by the Lord Chancellor with the approval of the Treasury and shall be paid out of money provided by Parliament. (99B) (1) In any proceedings before the Court of Session under this Act the court may, either of its own volition or on the application of any party, order the Patent Office to inquire into and report on any question of fact or opinion. (2) Where the court makes an order under subsection (1) above of its own volition the fee payable to the Patent Office shall be at such rate as may 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. (3) Where the court makes an order under subsection (1) above on the application of a party, the fee payable to the Patent Office shall be at such rate as may be provided for in rules of court and shall be treated as expenses in the cause.

.

27

For section 102 of the Patents Act 1977 (right of audience in patent proceedings) substitute—

(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. (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. (102A) (1) A solicitor of the Supreme Court may appear and be heard on behalf of any party to an appeal under this Act from the comptroller to the Patents Court. (2) A registered patent agent or a member of the Bar not in actual practice may do, in or in connection with proceedings on an appeal under this Act from the comptroller to the Patents Court, anything which a solicitor of the Supreme Court might do, other than prepare a deed. (3) The Lord Chancellor may by regulations— (a) provide that the right conferred by subsection (2) shall be subject to such conditions and restrictions as appear to the Lord Chancellor to be necessary or expedient, and (b) apply to persons exercising that right such statutory provisions, rules of court and other rules of law and practice applying to solicitors as may be specified in the regulations; and different provision may be made for different descriptions of proceedings. (4) Regulations under this section shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament. (5) This section is without prejudice to the right of counsel to appear before the High Court.

.

Provision of information

28

In section 118 of the Patents Act 1977 (information about patent applications, &c.), in subsection (3) (restriction on disclosure before publication of application: exceptions) for “section 22(6)(a) above” substitute “section 22(6) above”.

Power to extend time limits

29

In section 123 of the Patents Act 1977 (rules), after subsection (3) insert—

(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.

.

Availability of samples of micro-organisms

30

In the Patents Act 1977 after section 125 insert—

(125A) (1) Provision may be made by rules prescribing the circumstances in which the specification of an application for a patent, or of a patent, for an invention which requires for its performance the use of a micro-organism is to be treated as disclosing the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art. (2) The rules may in particular require the applicant or patentee— (a) to take such steps as may be prescribed for the purposes of making available to the public samples of the micro-organism, and (b) not to impose or maintain restrictions on the uses to which such samples may be put, except as may be prescribed. (3) The rules may provide that, in such cases as may be prescribed, samples need only be made available to such persons or descriptions of persons as may be prescribed; and the rules may identify a description of persons by reference to whether the comptroller has given his certificate as to any matter. (4) An application for revocation of the patent under section 72(1)(c) above may be made if any of the requirements of the rules cease to be complied with.

.

SCHEDULE 5A

PART 1 — Copyright exceptions

section 29 (research and private study)

section 29A (copies for text and data analysis for non-commercial research)

section 31A (disabled persons: copies of works for personal use)”

section 31B (making and supply of accessible copies by authorised bodies)

section 31BA (making and supply of intermediate copies by authorised bodies)

section 32 (illustration for instruction)

section 35 (recording by educational establishments of broadcasts)

section 36 (copying and use of extracts of works by educational establishments)

...

...

...

section 41 (copying by librarians: supply of single copies to other libraries)

...

section 42 (copying by librarians etc : replacement copies of works)

section 42A (copying by librarians: single copies of published works)

...

section 43 (copying by librarians or archivists: single copies of unpublished works)

section 44 (copy of work required to be made as condition of export)

section 45 (Parliamentary and judicial proceedings)

section 46 (Royal Commissions and statutory inquiries)

section 47 (material open to public inspection or on official register)

section 48 (material communicated to the Crown in the course of public business)

section 49 (public records)

section 50 (acts done under statutory authority)

section 61 (recordings of folksongs)

section 68 (incidental recording for purposes of broadcast)

section 69 (recording for purposes of supervision and control of broadcasts)

section 70 (recording for purposes o

f time-shifting)

section 71 (photographs of broadcasts)

...

section 75 (recording of broadcast for archival purposes)

PART 2 — Rights in performances exceptions

paragraph 1C of Schedule 2 (research and private study)paragraph 1D of Schedule 2 (copies for text and data analysis for non-commercial research)paragraph 3A of Schedule 2 (disabled persons: copies of recordings for personal use)paragraph 3B of Schedule 2 (making and supply of accessible copies by authorised bodies)paragraph 3C of Schedule 2 (making and supply of intermediate copies by authorised bodies)paragraph 4 of Schedule 2 (illustration for instruction) paragraph 6 of Schedule 2 (recording by educational establishments of broadcasts) paragraph 6ZA of Schedule 2 (copying and use of extracts of recordings by educational establishments)paragraph 6D of Schedule 2 (copying by librarians: supply of single copies to other libraries)paragraph 6E of Schedule 2 (copying by librarians etc: replacement copies of recordings)paragraph 6F of Schedule 2 (copying by librarians: single copies of published recordings)paragraph 6G of Schedule 2 (copying by librarians or archivists: single copies of unpublished recordings)paragraph 7 of Schedule 2 (copy of work required to be made as condition of export)paragraph 8 of Schedule 2 (Parliamentary and judicial proceedings) paragraph 9 of Schedule 2 (Royal Commissions and statutory inquiries) paragraph 10 of Schedule 2 (public records) paragraph 11 of Schedule 2 (acts done under statutory authority) paragraph 14 of Schedule 2 (recordings of folksongs) paragraph 16 of Schedule 2 (incidental recording for purposes of broadcast) paragraph 17 of Schedule 2 (recordings for purposes of supervision and control of broadcasts)paragraph 17A of Schedule 2 (recording for the purposes of time-shifting) paragraph 17B of Schedule 2 (photographs of broadcasts) ... paragraph 21 of Schedule 2 (recording of broadcast for archival purposes)]

PART 3 — Database right exceptions

regulation 20 of and Schedule 1 to the Copyright and Rights in Databases Regulations 1997 ( S.I. 1997/3032)

SCHEDULE 6

Interpretation

1

• (1) In this Schedule—

• “GOSH Children's Charity” means Great Ormond Street Hospital Children's Charity (company registration number 9338724);

• “the Hospital” means Great Ormond Street Hospital for Children,

• ...

• “the work” means the play “Peter Pan” by Sir James Matthew Barrie.

• (2) Expressions used in this Schedule which are defined for the purposes of Part I of this Act (copyright) have the same meaning as in that Part.

Entitlement to royalty

2

• (1) GOSH Children's Charity is entitled, subject to the following provisions of this Schedule, to a royalty in respect of any public performance, commercial publication or communication to the public of the whole or any substantial part of the work or an adaptation of it.

• (2) Where GOSH Children's Charity is or would be entitled to a royalty, another form of remuneration may be agreed.

Exceptions

3

No royalty is payable in respect of—

• (a) anything which immediately before copyright in the work expired on 31st December 1987 could lawfully have been done without the licence, or further licence, of the copyright owner at that time; or

• (b) anything which if copyright still subsisted in the work could, by virtue of any provision of Chapter III of Part I of this Act (acts permitted notwithstanding copyright), be done without infringing copyright.

Saving

4

No royalty is payable in respect of anything done in pursuance of arrangements made before the passing of this Act.

Procedure for determining amount payable

5

• (1) In default of agreement application may be made to the Copyright Tribunal which shall consider the matter and make such order regarding the royalty or other remuneration to be paid as it may determine to be reasonable in the circumstances.

• (2) Application may subsequently be made to the Tribunal to vary its order, and the Tribunal shall consider the matter and make such order confirming or varying the original order as it may determine to be reasonable in the circumstances.

• (3) An application for variation shall not, except with the special leave of the Tribunal, be made within twelve months from the date of the original order or of the order on a previous application for variation.

• (4) A variation order has effect from the date on which it is made or such later date as may be specified by the Tribunal.

• (5) The provisions of Chapter VIII of Part I (general provisions relating to the Copyright Tribunal) apply in relation to the Tribunal when exercising any jurisdiction under this paragraph.

Sums received to be held for the benefit of the Hospital

6

The sums received by GOSH Children's Charity by virtue of this Schedule, after deduction of any relevant expenses, are to be held by it for the purposes of the Hospital.

Right only for the benefit of the Hospital

7

• (1) The right of GOSH Children's Charity under this Schedule may not be assigned and shall cease if GOSH Children's Charity purports to assign or charge it.

• (2) The right ... shall cease if the Hospital ceases to have a separate identity or ceases to have purposes which include the care of sick children.

• (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

SCHEDULE 7

British Mercantile Marine Uniform Act 1919 (c.62)

1

For section 2 of the British Mercantile Marine Uniform Act 1919 (copyright in distinctive marks of uniform) substitute—

(2) The right of the Secretary of State in any design forming part of the British mercantile marine uniform which is registered under the Registered Designs Act 1949 is not limited to the period prescribed by section 8 of that Act but shall continue to subsist so long as the design remains on the register.

.

Chartered Associations (Protection of Names and Uniforms) Act 1926 (c.26)

2

In section 1(5) of the Chartered Associations (Protection of Names and Uniforms) Act 1926 for “the copyright in respect thereof” substitute “ the right in the registered design ” .

Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939 (c.107)

3

• (1) The Patents, Designs, Copyright and Trade Marks (Emergency) Act 1939 is amended as follows.

• (2) In section 1 (effect of licence where owner is enemy or enemy subject)—

• (a) in subsection (1) after “a copyright” and “the copyright” insert “ or design right ” ;

• (b) in subsection (2) after “the copyright” insert “ or design right ” and for “or copyright” substitute “ , copyright or design right ” .

• (3) In section 2 (power of comptroller to grant licences)—

• (a) in subsection (1) after “a copyright”, “the copyright” (twice) and “the said copyright” insert “ or design right ” and for “or copyright” (twice) substitute “ , copyright or design right ” ;

• (b) in subsections (2) and (3) for “, or copyright” substitute “ , copyright or design right ” ;

• (c) in subsection (4) and in subsection (5) (twice), after “the copyright” insert “ or design right ” ;

• (d) in subsection (8)(c) for “or work in which copyright subsists” substitute “ work in which copyright subsists or design in which design right subsists ” .

• (4) In section 5 (effect of war on international arrangements)—

• (a) in subsection (1) for “section twenty-nine of the Copyright Act 1911” substitute “ section 159 or 256 of the Copyright, Designs and Patents Act 1988 (countries enjoying reciprocal copyright or design right protection) ” ;

• (b) in subsection (2) after “copyright” (four times) insert “ or design right ” and for “the Copyright Act 1911” (twice) substitute “ Part I or III of the Copyright, Designs and Patents Act 1988 ” .

• (5) In section 10(1) (interpretation) omit the definition of “copyright”, and for the definitions of “design”, “invention”, “patent” and “patentee” substitute—

“ design ” has in reference to a registered design the same meaning as in the Registered Designs Act 1949, and in reference to design right the same meaning as in Part III of the Copyright, Designs and Patents Act 1988; “ invention ” and “ patent ” have the same meaning as in the Patents Act 1977.

.

Crown Proceedings Act 1947 (c.44)

4

• (1) In the Crown Proceedings Act 1947 for section 3 (provisions as to industrial property) substitute—

(3) (1) Civil proceedings lie against the Crown for an infringement committed by a servant or agent of the Crown, with the authority of the Crown, of— (a) a patent, (b) a registered trade mark or registered service mark, (c) the right in a registered design, (d) design right, or (e) copyright; but save as provided by this subsection no proceedings lie against the Crown by virtue of this Act in respect of an infringement of any of those rights. (2) Nothing in this section, or any other provision of this Act, shall be construed as affecting— (a) the rights of a government department under section 55 of the Patents Act 1977, Schedule 1 to the Registered Designs Act 1949 or section 240 of the Copyright, Designs and Patents Act 1988 (Crown use of patents and designs), or (b) the rights of the Secretary of State under section 22 of the Patents Act 1977 or section 5 of the Registered Designs Act 1949 (security of information prejudicial to defence or public safety).

.

• (2) In the application of sub-paragraph (1) to Northern Ireland—

• (a) the reference to the Crown Proceedings Act 1947 is to that Act as it applies to the Crown in right of Her Majesty’s Government in Northern Ireland, as well as to the Crown in right of Her Majesty’s Government in the United Kingdom, and

• (b) in the substituted section 3 as it applies in relation to the Crown in right of Her Majesty’s Government in Northern Ireland, subsection (2)(b) shall be omitted.

Patents Act 1949 (c.87)

5

In section 47 of the Patents Act 1949 (rights of third parties in respect of Crown use of patent), in the closing words of subsection (1) (which relate to the use of models or documents), after “copyright” insert “ or design right ” .

Public Libraries (Scotland) Act 1955 (c.27)

6

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

London County Council (General Powers) Act 1958 (c.xxi)

7

In section 36 of the London County Council (General Powers) Act 1958 (power as to libraries: provision and repair of things other than books) for subsection (5) substitute—

(5) Nothing in this section shall be construed as authorising an infringement of copyright.

.

Public Libraries and Museums Act 1964 (c.75)

8

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

Marine, &c., Broadcasting (Offences) Act 1967 (c.41)

9

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

Medicines Act 1968 (c.67)

10

• (1) Section 92 of the Medicines Act 1968 (scope of provisions restricting promotion of sales of medicinal products) is amended as follows.

• (2) In subsection (1) (meaning of “advertisement”) for the words from “or by the exhibition” to “service” substitute “ or by means of a photograph, film, sound recording, broadcast or cable programme, ” .

• (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (4) For subsection (6) substitute—

(6) In this section “film”, “sound recording”, “broadcast”, “cable programme”, “cable programme service”, and related expressions, have the same meaning as in Part I of the Copyright, Designs and Patents Act 1988 (copyright).

.

Post Office Act 1969 (c.48)

11

In Schedule 10 to the Post Office Act 1969 (special transitional provisions relating to use of patents and registered designs), in the closing words of paragraphs 8(1) and 18(1) (which relate to the use of models and documents), after “copyright” insert “ or design right ” .

Merchant Shipping Act 1970 (c.36)

12

In section 87 of the Merchant Shipping Act 1970 (merchant navy uniform), for subsection (4) substitute—

(4) Where any design forming part of the merchant navy uniform has been registered under the Registered Designs Act 1949 and the Secretary of State is the proprietor of the design, his right in the design is not limited to the period prescribed by section 8 of that Act but shall continue to subsist so long as the design remains registered.

.

Taxes Management Act 1970 (c.9)

13

In section 16 of the Taxes Management Act 1970 (returns to be made in respect of certain payments)—

• (a) in subsection (1)(c), and

• (b) in subsection (2)(b),

for “or public lending right” substitute “ , public lending right, right in a registered design or design right ” .

Tribunals and Inquiries Act 1971 (c.62)

14

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

Fair Trading Act 1973 (c.41)

15

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

House of Commons Disqualification Act 1975 (c.24)

16

In Part II of Schedule 1 to the House of Commons Disqualification Act 1975 (bodies of which all members are disqualified), at the appropriate place insert “ The Copyright Tribunal ” .

Northern Ireland Assembly Disqualification Act 1975 (c.25)

17

In Part II of Schedule 1 to the Northern Ireland Assembly Disqualification Act 1975 (bodies of which all members are disqualified), at the appropriate place insert “ The Copyright Tribunal ” .

Restrictive Trade Practices Act 1976 (c.34)

18

• (1) The Restrictive Trade Practices Act 1976 is amended as follows.

• (2) In Schedule 1 (excluded services) for paragraph 10 (services of patent agents) substitute—

(10) The services of registered patent agents (within the meaning of Part V of the Copyright, Designs and Patents Act 1988) in their capacity as such.

;

• (3) In Schedule 3 (excepted agreements), after paragraph 5A insert—

(5B) (1) This Act does not apply to— (a) a licence granted by the owner or a licensee of any design right, (b) an assignment of design right, or (c) an agreement for such a licence or assignment, if the licence, assignment or agreement is one under which no such restrictions as are described in section 6(1) above are accepted, or no such information provisions as are described in section 7(1) above are made, except in respect of articles made to the design; but subject to the following provisions. (2) Sub-paragraph (1) does not exclude a licence, assignment or agreement which is a design pooling agreement or is granted or made (directly or indirectly) in pursuance of a design pooling agreement. (3) In this paragraph a “ design pooling agreement ” means an agreement— (a) to which the parties are or include at least three persons(the “principal parties”) each of whom has an interest in one or more design rights, and (b) by which each principal party agrees, in respect of design right in which he has, or may during the currency of the agreement acquire, an interest to grant an interest (directly or indirectly) to one or more of the other principal parties, or to one or more of those parties and to other persons. (4) In this paragraph— - “ assignment ”, in Scotland, means assignation; and - “ interest ” means an interest as owner or licensee of design right. (5) This paragraph applies to an interest held by or granted to more than one person jointly as if they were one person. (6) References in this paragraph to the granting of an interest to a person indirectly are to its being granted to a third person for the purpose of enabling him to make a grant to the person in question.

.

Resale Prices Act 1976 (c. 53)

19

In section 10(4) of the Resale Prices Act 1976 (patented articles: articles to be treated in same way), in paragraph (a) after “protected” insert “ by design right or ” .

Patents Act 1977 (c. 37)

20

In section 57 of the Patents Act 1977 (rights of third parties in respect of Crown use of patent), in the closing words of subsection (1) (which relate to the use of models or documents), after “copyright” insert “ or design right ” .

21

In section 105 of the Patents Act 1977 (privilege in Scotland for communications relating to patent proceedings), omit “within the meaning of section 104 above”, make the existing text subsection (1) and after it insert—

(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, the Community Patent Convention and the Patent Co-operation Treaty.

.

22

In section 123(7) of the Patents Act 1977 (publication of case reports by the comptroller)—

• (a) for “and registered designs” substitute “ registered designs or design right ” ,

• (b) for “and copyright” substitute “ , copyright and design right ” .

23

In section 130(1) of the Patents Act 1977 (interpretation), in the definition of “court”, for paragraph (a) substitute—

(a) as respects England and Wales, the High Court or any patents county court having jurisdiction by virtue of an order under section 287 of the Copyright, Designs and Patents Act 1988;

.

Unfair Contract Terms Act 1977 (c. 50)

24

In paragraph 1 of Schedule 1 to the Unfair Contract Terms Act 1977 (scope of main provisions: excluded contracts), in paragraph (c) (contracts relating to grant or transfer of interest in intellectual property) after “copyright” insert “ or design right ” .

Judicature (Northern Ireland) Act 1978 (c. 23)

25

In section 94A of the Judicature (Northern Ireland) Act 1978 (withdrawal of privilege against self-incrimination in certain proceedings relating to intellectual property), in subsection (5) (meaning of “intellectual property”) after “copyright” insert “ or design right ” .

Capital Gains Tax Act 1979 (c. 14)

26

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

British Telecommunications Act 1981 (c. 38)

27

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

Senior Courts Act 1981 (c. 54)

28

• (1) The Senior Courts Act 1981 is amended as follows.

• (2) In section 72 (withdrawal of privilege against self-incrimination in certain proceedings relating to intellectual property), in subsection (5) (meaning of “intellectual property”) after “copyright” insert “ , design right ” .

• (3) In Schedule 1 (distribution of business in the High Court), in paragraph 1(i) (business assigned to the Chancery Division: causes and matters relating to certain intellectual property) for “or copyright” substitute “ , copyright or design right ” .

29

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

Companies Act 1985 (c. 6)

31

• (1) Part XII of the Companies Act 1985 (registration of charges) is amended as follows.

• (2) In section 396 (registration of charges in England and Wales: charges which must be registered), in subsection (1)(j) for the words from “on a patent” to the end substitute “ or on any intellectual property ” , and after subsection (3) insert—

(3A) The following are “ intellectual property ” for the purposes of this section— (a) any patent, trade mark, service mark, registered design, copyright or design right; (b) any licence under or in respect of any such right.

.

• (3) In section 410 (registration of charges in Scotland: charges which must be registered), in subsection (4)(c) (incorporeal moveable property) after subparagraph (vi) insert—

(vii) a registered design or a licence in respect of such a design, (viii) a design right or a licence under a design right,

.

Law Reform (Miscellaneous Provisions) (Scotland) Act 1985 (c. 73)

32

In section 15 of the Law Reform (Miscellaneous Provisions) (Scotland) Act 1985 (withdrawal of privilege against self-incrimination in certain proceedings relating to intellectual property), in subsection (5) (meaning of “intellectual property”) after “copyright” insert “ or design right ” .

Atomic Energy Authority Act 1986 (c. 3)

33

In section 8(2) of the Atomic Energy Authority Act 1986 (powers of Authority as to exploitation of research: meaning of “intellectual property”), after “copyrights” insert “ , design rights ” .

Education and Libraries (Northern Ireland) Order 1986 ( S.I. 1986/594 (N.I.3))

34

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

Companies (Northern Ireland) Order 1986 ( S.I. 1986/1032 (N.I.6))

35

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

Income and Corporation Taxes Act 1988 (c. 1)

36

• (1) The Income and Corporation Taxes Act 1988 is amended as follows.

• (2) In section 83 (fees and expenses deductible in computing profits and gains of trade) for “the extension of the period of copyright in a design” substitute “ an extension of the period for which the right in a registered design subsists ” .

• (3) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

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

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

• (6) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

• (7) In section 821 (payments made under deduction of tax before passing of Act imposing income tax for that year), in subsection (3) (payments subject to adjustment) after paragraph (a) insert—

(aa) any payment for or in respect of a right in a design to which section 537B applies; and

.

• (8) In Schedule 19 (apportionment of income of close companies), in paragraph 10(4) (cessation or liquidation: debts taken into account although creditor is participator or associate), in paragraph (c) (payments for use of certain property) for the words from “tangible property” to “extend)” substitute—

(i) tangible property, (ii) copyright in a literary, dramatic, musical or artistic work within the meaning of Part I of the Copyright, Designs and Patents Act 1988 (or any similar right under the law of a country to which that Part does not extend), or (iii) design right,

.

• (9) In Schedule 25 (taxation of UK-controlled foreign companies: exempt activities), in paragraph 9(1)(a) (investment business: holding of property) for “patents or copyrights” substitute “ or intellectual property ” and after that subparagraph insert—

(1A) In sub-paragraph (1)(a) above “ intellectual property ” means patents, registered designs, copyright and design right (or any similar rights under the law of a country outside the United Kingdom).

.

SCHEDULE 8

Editorial notes

[^c13754381]: Act amended by Broadcasting Act 1990 (c. 42, SIF 96), s. 176, Sch. 17 para. 7(1)

[^c13754391]: Pt. 1 extended (with modifications) by S.I. 1989/988, art. 2(3), 4, 5, Sch. 4 (with art. 6) (which S.I. was revoked by S.I. 1989/1293, Sch. 5)

[^c13754401]: Pt. 1 extended (with modifications) by S.I. 1989/1293, arts. 2(3), 3, 4, 5, Sch. 4 (with art. 6) (which S.I. was revoked by S.I.1993/942, art. 8, Sch. 5)

[^c13754411]: Pt. 1 extended (with modifications) by S.I. 1993/942, arts. 2(3), 4, 5, Sch. 4 (with art. 6) (as amended by S.I.1994/263, art. 2 and S.I. 1995/2987, art. 3) (which S.I. and amending S.Is. were revoked by S.I. 1999/1751, art. 8, Sch. 6)