The Patents (Isle of Man) Order 2013

Made: 9th October 2013

Laid before Parliament: 16th October 2013

Coming into force: 11th November 2013

At the Court at Buckingham Palace, the 9th day of October 2013Present,The Queen’s Most Excellent Majesty in Council

Her Majesty, in exercise of the powers conferred upon Her by sections 124(3) and 132(2) of the Patents Act 1977[^f00001], is pleased, by and with the advice of Her Privy Council, to make the following Order:

Citation and commencement

1

This Order may be cited as the Patents (Isle of Man) Order 2013 and shall come into force on 11th November 2013.

Modification of the Patents Act 1977 in its application to the Isle of Man

2

The Patents Act 1977 shall, in its application to the Isle of Man, have effect subject to the modifications specified in the Schedule to this Order.

Revocation

3

The Patents Act 1977 (Isle of Man) Order 2003[^f00002] is revoked.

SCHEDULE — Modifications of the Patents Act 1977 in its application to the Isle of Man

1

References to the Crown shall be construed as including the Crown in right of the Government of the Isle of Man.

2

• (1) References to an Act of Parliament (including the Patents Act 1977) or to a provision of such an Act shall be construed as references to that Act or provision as it has effect in the Isle of Man.

• (2) References to an Act of Tynwald shall be construed as references to it as amended or replaced by or under any other such enactment.

3

References to a government department shall be construed as including references to a Department of the Government of the Isle of Man, and in relation to such a Department as if references to the Treasury were references to the Treasury of the Isle of Man.

4

For the purposes of any arbitration in pursuance of the Patents Act 1977, and of the application thereto of the Arbitration Act 1976 (an Act of Tynwald)[^f00003], the Act of 1977 shall be treated as an Act of Tynwald.

5

In section 1 (patentable inventions), for subsections (3) and (4) substitute—

(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality. (4) For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it.

6

In section 5 (priority date), after subsection (5) insert—

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

7

In sections 22(9)(b) (information prejudicial to national security) and 23(3)(b) (restrictions on applications abroad), for “indictment, to imprisonment” substitute “information, to custody”.

8

• (1) In section 32(9) (register of patents) omit “Subject to subsection (12) below,”.

• (2) In section 32(11) omit “, subject to subsection (12) below,”.

9

In section 40(6) (compensation of employees), in the definition of “relevant collective agreement”, for “Act 1974” substitute “(Consolidation) Act 1992”.

10

In section 41 (amount of compensation), at the end add the following subsection—

(12) In the Isle of Man an order made under section 40 above by the comptroller for the payment of any sums may be enforced as if it were a judgment or order of the court for the payment of money.

11

Omit sections 44 and 45.

12

In section 46(3)(c) (licences of right), for “European Economic Community” substitute “European Union”.

13

For section 48 substitute—

(48) (1) At any time after the expiration of three years, or of such other period as may be prescribed, from the date of the grant of the patent, any person may apply to the comptroller on one or more of the relevant grounds— (a) for a licence under the patent; (b) for an entry to be made in the register to the effect that licences under the patent are to be available as of right; or (c) where the applicant is a government department, for the grant to any person specified in the application of a licence under the patent. (2) Subject to sections 48A and 48B below, if he is satisfied that any of the relevant grounds are established, the comptroller may— (a) where the application is under subsection (1)(a) above, order the grant of a licence to the applicant on such terms as the comptroller thinks fit; (b) where the application is under subsection (1)(b) above, make such an entry as is there mentioned; (c) where the application is under subsection (1)(c) above, order the grant of a licence to the person specified in the application on such terms as the comptroller thinks fit. (3) An application may be made under this section in respect of a patent even though the applicant is already the holder of a licence under the patent; and no person shall be estopped or barred from alleging any of the matters specified in the relevant grounds by reason of any admission made by him, whether in such a licence or otherwise, or by reason of his having accepted a licence. (4) In this section “the relevant grounds” means— (a) in the case of an application made in respect of a patent whose proprietor is a WTO proprietor, the grounds set out in section 48A(1) below; (b) in any other case, the grounds set out in section 48B(1) below. (5) A proprietor is a WTO proprietor for the purposes of this section and sections 48A, 48B, 50 and 52 below if— (a) he is a national of, or is domiciled in, a country which is a member of the World Trade Organisation; or (b) he has a real and effective industrial or commercial establishment in such a country. (6) A rule prescribing any such other period under subsection (1) above shall not be made unless a draft of the rule has been laid before, and approved by a resolution of, each House of Parliament. (48A) (1) In the case of an application made under section 48 above in respect of a patent whose proprietor is a WTO proprietor, the relevant grounds are— (a) where the patented invention is a product, that a demand in the United Kingdom for that product is not being met on reasonable terms; (b) that by reason of the refusal of the proprietor of the patent concerned to grant a licence or licences on reasonable terms— (i) the exploitation in the United Kingdom of any other patented invention which involves an important technical advance of considerable economic significance in relation to the invention for which the patent concerned was granted is prevented or hindered, or (ii) the establishment or development of commercial or industrial activities in the United Kingdom is unfairly prejudiced; (c) that by reason of conditions imposed by the proprietor of the patent concerned on the grant of licences under the patent, or on the disposal or use of the patented product or on the use of the patented process, the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in the United Kingdom, is unfairly prejudiced. (2) No order or entry shall be made under section 48 above in respect of a patent whose proprietor is a WTO proprietor unless— (a) the applicant has made efforts to obtain a licence from the proprietor on reasonable commercial terms and conditions; and (b) his efforts have not been successful within a reasonable period. (3) No order or entry shall be so made if the patented invention is in the field of semi-conductor technology. (4) No order or entry shall be made under section 48 above in respect of a patent on the ground mentioned in subsection (1)(b)(i) above unless the comptroller is satisfied that the proprietor of the patent for the other invention is able and willing to grant the proprietor of the patent concerned and his licensees a licence under the patent for the other invention on reasonable terms. (5) A licence granted in pursuance of an order or entry so made shall not be assigned except to a person to whom the patent for the other invention is also assigned. (6) A licence granted in pursuance of an order or entry made under section 48 above in respect of a patent whose proprietor is a WTO proprietor— (a) shall not be exclusive; (b) shall not be assigned except to a person to whom there is also assigned the part of the enterprise that enjoys the use of the patented invention, or the part of the goodwill that belongs to that part; (c) shall be predominantly for the supply of the market in the United Kingdom; (d) shall include conditions entitling the proprietor of the patent concerned to remuneration adequate in the circumstances of the case, taking into account the economic value of the licence; and (e) shall be limited in scope and in duration to the purpose for which the licence was granted. (48B) (1) In the case of an application made under section 48 above in respect of a patent whose proprietor is not a WTO proprietor, the relevant grounds are— (a) where the patented invention is capable of being commercially worked in the United Kingdom, that it is not being so worked or is not being so worked to the fullest extent that is reasonably practicable; (b) where the patented invention is a product, that a demand for the product in the United Kingdom— (i) is not being met on reasonable terms, or (ii) is being met to a substantial extent by importation from a country which is not a member State; (c) where the patented invention is capable of being commercially worked in the United Kingdom, that it is being prevented or hindered from being so worked— (i) where the invention is a product, by the importation of the product from a country which is not a member State, (ii) where the invention is a process, by the importation from such a country of a product obtained directly by means of the process or to which the process has been applied; (d) that by reason of the refusal of the proprietor of the patent to grant a licence or licences on reasonable terms— (i) a market for the export of any patented product made in the United Kingdom is not being supplied, or (ii) the working or efficient working in the United Kingdom of any other patented invention which makes a substantial contribution to the art is prevented or hindered, or (iii) the establishment or development of commercial or industrial activities in the United Kingdom is unfairly prejudiced; (e) that by reason of conditions imposed by the proprietor of the patent on the grant of licences under the patent, or on the disposal or use of the patented product or on the use of the patented process, the manufacture, use or disposal of materials not protected by the patent, or the establishment or development of commercial or industrial activities in the United Kingdom is unfairly prejudiced. (2) Where— (a) an application is made on the ground that the patented invention is not being commercially worked in the United Kingdom or is not being so worked to the fullest extent that is reasonably practicable; and (b) it appears to the comptroller that the time which has elapsed since the publication in the journal of a notice of the grant of the patent has for any reason been insufficient to enable the invention to be so worked, he may by order adjourn the application for such period as will in his opinion give sufficient time for the invention to be so worked. (3) No order or entry shall be made under section 48 above in respect of a patent on the ground mentioned in subsection (1)(a) above if— (a) the patented invention is being commercially worked in a country which is a member State; and (b) demand in the United Kingdom is being met by importation from that country. (4) No entry shall be made in the register under section 48 above on the ground mentioned in subsection (1)(d)(i) above, and any licence granted under section 48 above on that ground shall contain such provisions as appear to the comptroller to be expedient for restricting the countries in which any product concerned may be disposed of or used by the licensee. (5) No order or entry shall be made under section 48 above in respect of a patent on the ground mentioned in subsection (1)(d)(ii) above unless the comptroller is satisfied that the proprietor of the patent for the other invention is able and willing to grant to the proprietor of the patent concerned and his licensees a licence under the patent for the other invention on reasonable terms.

14

• (1) In section 50(1) (applications under section 48), after “in respect of a patent” insert “whose proprietor is not a WTO proprietor”.

• (2) In section 50(2), for “such an application” substitute “any application under section 48 above”.

15

In the side note to section 51 (powers exercisable in consequence of a report of the Competition Commission) and in sections 51(1) and 53(2) (compulsory licences), for “Monopolies and Mergers Commission” substitute “Competition Commission”.

16

For section 52 substitute—

(52) (1) The proprietor of the patent concerned or any other person wishing to oppose an application under sections 48 to 51 above may, in accordance with rules, give to the comptroller notice of opposition; and the comptroller shall consider any opposition in deciding whether to grant the application. (2) Where an order or entry has been made under section 48 above in respect of a patent whose proprietor is a WTO proprietor— (a) the proprietor or any other person may, in accordance with rules, apply to the comptroller to have the order revoked or the entry cancelled on the grounds that the circumstances which led to the making of the order or entry have ceased to exist and are unlikely to recur; (b) any person wishing to oppose an application under paragraph (a) above may, in accordance with rules, give to the comptroller notice of opposition; and (c) the comptroller shall consider any opposition in deciding whether to grant the application. (3) If it appears to the comptroller on an application under subsection (2)(a) above that the circumstances which led to the making of the order or entry have ceased to exist and are unlikely to recur, he may— (a) revoke the order or cancel the entry; and (b) terminate any licence granted to a person in pursuance of the order or entry subject to such terms and conditions as he thinks necessary for the protection of the legitimate interests of that person. (4) Where an appeal is brought— (a) from an order made by the comptroller in pursuance of an application under sections 48 to 51 above; (b) from a decision of his to make an entry in the register in pursuance of such an application; (c) from a revocation or cancellation made by him under subsection (3) above; or (d) from a refusal of his to make such an order, entry, revocation or cancellation, the Attorney General, the appropriate Law Officer within the meaning of section 4A of the Crown Suits (Scotland) Act 1857[^f00004], the Attorney General for Northern Ireland or the Attorney General for the Isle of Man or such other counsel as any of them may appoint, shall be entitled to appear and be heard. (5) Where an application under section 48 to 51 above or subsection (2) above is opposed, and either— (a) the parties consent, or (b) the proceedings require a prolonged examination of documents or any scientific or local investigation which cannot in the opinion of the comptroller conveniently be made before him, the comptroller may at any time order the whole proceedings, or any question or issue of fact arising in them, to be referred to an arbitrator or arbiter agreed on by the parties or, in default of agreement, appointed by the comptroller. (6) Where the whole proceedings are so referred, unless the parties otherwise agree before the award of the arbitrator or arbiter is made, and appeal shall lie from the award to the court. (7) Where a question or issue of fact is so referred, the arbitrator or arbiter shall report his findings to the comptroller.

17

In section 54(2) (where patented invention is being worked abroad), after “means a country other than a member State” insert “or a member of the World Trade Organisation”.

18

• (1) In section 58(6)(a) (references of disputes as to Crown use), after “Act,” insert “or, in the case of a European patent (UK), has been allowed under any of the provisions in the Agreement on a Unified Patent Court,”.

• (2) In section 58(12), after “Wales” insert “, the Isle of Man”.

19

• (1) In section 60(5) (meaning of infringement), after paragraph (f) insert—

(g) it consists of the use by a farmer of the product of his harvest for propagation or multiplication by him on his own holding, where there has been a sale of plant propagating material to the farmer by the proprietor of the patent or with his consent for agricultural use; (h) it consists of the use of an animal or animal reproductive material by a farmer for an agricultural purpose following a sale to the farmer, by the proprietor of the patent or with his consent, of breeding stock or other animal reproductive material which constitutes or contains the patented invention; (i) it consists of— (i) an act done in conducting a study, test or trial which is necessary for and is conducted with a view to the application of paragraphs 1 to 5 of article 13 of Directive 2001/82/EC or paragraphs 1 to 4 of article 10 of Directive 2001/83/EC, or (ii) any other act which is required for the purpose of the application of those paragraphs. (j) it consists of a use referred to in Article 27(c) of the Agreement on a Unified Patent Court; (k) subject to subsection (6H), it consists of an act or use referred to in Article 27(k) of the Agreement on a Unified Patent Court.

• (2) After section 60(6) insert—

(6A) Schedule A1 contains— (a) provisions restricting the circumstances in which subsection (5)(g) applies; and (b) provisions which apply where an act would constitute an infringement of a patent but for subsection (5)(g). (6B) For the purposes of subsection (5)(h), use for an agricultural purpose— (a) includes making an animal or animal reproductive material available for the purposes of pursuing the farmer’s agricultural activity; but (b) does not include sale within the framework, or for the purposes, of a commercial reproduction activity. (6C) In paragraphs (g) and (h) of subsection (5) “sale” includes any other form of commercialisation.

• (2A) After section 60(6G) insert—