Long Title

Part I PRELIMINARY

Part II ADMINISTRATION

Part III PATENTABILITY

Part IV RIGHT TO APPLY FOR AND OBTAIN PATENT

Part V APPLICATIONS FOR PATENTS

Part VI PROCEDURE FOR GRANT OF PATENT

Part VII PROVISIONS AS TO PATENTS AFTER GRANT

Part VIII PROPERTY IN PATENTS AND APPLICATIONS FOR PATENTS AND REGISTRATION

Part IX EMPLOYEES’ INVENTIONS

Part X CONTRACTS AS TO PATENTED PRODUCTS

Part XI LICENCES OF RIGHT AND COMPULSORY LICENCES

Part XII USE OF PATENTED INVENTIONS FOR SERVICES OF GOVERNMENT

Part XIII INFRINGEMENT OF PATENTS

Part XIV REVOCATION OF PATENTS AND VALIDITY PROCEEDINGS

Part XV AMENDMENTS OF PATENTS AND APPLICATIONS

Part XVI INTERNATIONAL APPLICATIONS FOR PATENTS

Part XVII LEGAL PROCEEDINGS

Part XVIII OFFENCES

Part XIX PATENT AGENTS AND FOREIGN PATENT AGENTS

Part XX MISCELLANEOUS AND GENERAL

THE SCHEDULE Substances Which Are Not Pharmaceutical Products

Legislative Source Key

Legislative History

Comparative Table

Comparative Table

PART VII
PROVISIONS AS TO PATENTS AFTER GRANT
Publication and certificate of grant
35.
—(1)  As soon as practicable after a patent has been granted under this Act, the Registrar shall —
(a)
send to the proprietor of the patent a certificate in the prescribed form that the patent has been granted to the proprietor; and
(b)
publish in the journal a notice that the patent has been granted.
[30/2001]
(2)  The Registrar shall, at the same time as he publishes a notice under subsection (1)(b) in relation to a patent, publish the specification of the patent, the names of the proprietor and (if different) the inventor and any other matters constituting or relating to the patent which in the Registrar’s opinion it is desirable to publish.
[UK Patents 1977, s. 24]
[30/2001]
Term of patent
36.
—(1)  A patent granted under this Act shall be treated for the purposes of this Act as having been granted, and shall take effect, on the date of issue of the certificate of grant and, subject to subsection (2) and section 36A, shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent or with such other date as may be prescribed.
[19/2004]
(2)  A patent shall cease to have effect at the end of the prescribed period for the payment of any renewal fee if it is not paid within that period.
(3)  If during the period of 6 months immediately following the end of the prescribed period the renewal fee and any prescribed additional fee are paid, the patent shall be treated for the purposes of this Act as if it had never expired, and accordingly —
(a)
anything done under or in relation to it during that further period shall be valid;
(b)
an act which would constitute an infringement of it if it had not expired shall constitute such an infringement; and
(c)
an act which would constitute the use of the patented invention in accordance with section 56 if the patent had not expired shall constitute that use.
[19/2004]
(4)  Rules shall include provision requiring the Registrar to notify the registered proprietor of a patent that a renewal fee has not been received from him in the Registry before the end of the prescribed period and before the framing of the notification.
[UK Patents 1977, s. 25]
[30/2001]
Extension of term of patent
36A.
—(1)  The proprietor of a patent may apply to the Registrar to extend the term of the patent on any of the following grounds:
(a)
that there was an unreasonable delay by the Registrar in granting the patent;
(b)
where the patent was granted on the basis of any prescribed documents referred to in section 29(1)(d) relating to one corresponding application or related national phase application, that —
(i)
there was an unreasonable delay in the issue of the corresponding patent or related national phase patent (as the case may be); and
(ii)
the patent office that granted the corresponding patent or related national phase patent (as the case may be) has extended the term of the corresponding patent or related national phase patent (as the case may be) on the basis of such delay;
(c)
where the subject of the patent includes any substance which is an active ingredient of any pharmaceutical product, that —
(i)
there was an unreasonable curtailment of the opportunity to exploit the patent caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient; and
(ii)
the term of the patent has not previously been extended on this ground.
[19/2004]
(2)  A delay by the Registrar in granting a patent shall not be treated as an unreasonable delay under subsection (1)(a) unless such requirements as may be prescribed are satisfied.
(3)  Where the proprietor of a patent has made an application under subsection (1)(a) and has satisfied the Registrar that there was in fact a particular type of unreasonable delay by the Registrar in granting the patent, the Registrar shall extend the term of the patent by such period as may be prescribed for that type of unreasonable delay.
(4)  Where the proprietor of a patent has made an application under subsection (1)(b) and has satisfied the Registrar of the matters referred to in sub-paragraphs (i) and (ii) of subsection (1)(b), the Registrar may, if the Registrar thinks fit, extend the term of the patent by such period, not exceeding 5 years, as the Registrar may determine.
[19/2004]
(5)  A curtailment of the opportunity to exploit a patent, the subject of which includes a substance which is an active ingredient of any pharmaceutical product, caused by the process of obtaining marketing approval for a pharmaceutical product, being the first pharmaceutical product to obtain marketing approval which uses the substance as an active ingredient, shall not be treated as an unreasonable curtailment under subsection (1)(c) unless such requirements as may be prescribed are satisfied.
(6)  Subject to subsections (7), (8) and (9), where the proprietor of a patent has made an application under subsection (1)(c) and has satisfied the Registrar that there was in fact an unreasonable curtailment of the opportunity to exploit the patent under subsection (1)(c), the Registrar shall extend the term of the patent by such period as may be prescribed.
(7)  The Registrar shall not extend the term of the patent under subsection (6) unless the applicant has procured and submitted to the Registrar a certificate from the relevant authority stating such matters as may be prescribed.
(8)  In determining the period by which to extend the term of the patent under subsection (6), the Registrar shall rely on, and shall not be concerned to inquire into the truth of, the statements contained in the certificate from the relevant authority under subsection (7).
[19/2004]
(9)  Where the term of a patent has been extended under subsection (6), the protection conferred by the patent during the term of the extension shall apply only to the substance referred to in subsection (1)(c).
[19/2004]
(10)  Every application to extend the term of a patent shall be —
(a)
made by the proprietor of the patent in the prescribed form within the prescribed period;
(b)
filed in the prescribed manner; and
(c)
accompanied by the prescribed fee and any prescribed documents,
and the Registrar may reject any application that fails to comply with any requirement under this subsection.
[19/2004]
(11)  As soon as practicable after the Registrar has extended the term of a patent, he shall —
(a)
send to the proprietor of the patent a certificate of extension of patent term in the prescribed form specifying —
(i)
the period of the extension; and
(ii)
any limitation on the protection conferred by the patent during the term of the extension; and
(b)
publish in the journal a notice of the extension.
[19/2004]
(12)  The proprietor of a patent who has made an application under subsection (1) may withdraw the application by informing the Registrar in writing of the withdrawal of the application, and any such withdrawal shall not be revocable.
[19/2004]
Patent not to be impugned for lack of unity
37.  No person may in any proceeding object to a patent or to an amendment of a specification of a patent on the ground that the claims contained in the specification of the patent, as they stand or, as the case may be, as proposed to be amended, relate —
(a)
to more than one invention; or
(b)
to a group of inventions which are not so linked as to form a single inventive concept.
[UK Patents 1977, s. 26]
General power to amend specification after grant
38.
—(1)  Subject to this section and section 84, the Registrar may, on an application made by the proprietor of a patent, allow the specification of the patent to be amended subject to such conditions, if any, as he thinks fit.
(2)  No such amendment shall be allowed under this section where there are pending before the court or the Registrar proceedings in which the validity of the patent may be put in issue.
(3)  An amendment of a specification of a patent under this section shall have effect and be deemed always to have had effect from the grant of the patent.
(4)  A person may give notice to the Registrar of his opposition to an application under this section by the proprietor of a patent, and if he does so the Registrar shall notify the proprietor and consider the opposition in deciding whether to grant the application.
[UK Patents 1977, s. 27]
Restoration of lapsed patents
39.
—(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 Registrar within the prescribed period.
(2)  An application under this section may be made by the person who was the proprietor of the patent or by any other person who would have been entitled to the patent if it had not ceased to have effect.
(3)  Where the patent was held by 2 or more persons jointly, the application may, with the leave of the Registrar, be made by one or more of them without joining the others.
(4)  Notice of the application shall be published by the Registrar in the prescribed manner.
(5)  If the Registrar is satisfied that the failure of the proprietor of the patent to pay any renewal fee within the prescribed period, or to pay that fee and any prescribed additional fee within the 6 months immediately following the end of that period, was unintentional, the Registrar shall by order restore the patent on payment of any unpaid renewal fee and any prescribed additional fee.
(6)  An order under this section may be made subject to such conditions as the Registrar thinks fit (including a condition requiring compliance with any provision of the rules relating to registration which have not been complied with), and if the proprietor of the patent does not comply with any such condition of the order, the Registrar may revoke the order and give such directions consequential on the revocation as he thinks fit.
(7)  The effect of an order for the restoration of a patent shall be as provided in subsections (8) to (13).
(8)  Anything done under or in relation to the patent during the period between expiry and restoration shall be treated as valid.
(9)  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 36(3);
(b)
if it was a continuation or repetition of an earlier infringing act.
(10)  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.
(11)  The right referred to in subsection (10) does not extend to granting a licence to another person to do the act.
(12)  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 (10) may —
(a)
authorise the doing of that act by any partner 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.
(13)  Where a product is disposed of to another in exercise of the rights conferred by subsection (10) or (12), 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.
(14)  Subsections (8) to (13) shall apply in relation to the use of a patent in accordance with section 56 as they apply in relation to infringement of the patent.
[UK Patents 1977, ss. 28 and 28A]
[19/2004]
Surrender of patents
40.
—(1)  The proprietor of a patent may at any time by notice given to the Registrar offer to surrender his patent.
(3)  If the Registrar is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the date when notice of his acceptance is published in the journal, the patent shall cease to have effect, but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date in accordance with section 56.
[UK Patents 1977, s. 29]
[19/2004]