On 23/05/2013,
you requested for the version in force on 23/05/2013
incorporating all amendments published on or before 23/05/2013.
The closest version currently available is that of 08/04/2013.
PART VII
PROVISIONS AS TO PATENTS AFTER 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 (including the prescribed information under sections 29 and 30) constituting or relating to the patent which in the Registrar’s opinion it is desirable to publish.
[UK Patents 1977, s. 24]
[30/2001]
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]
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 prescribed information relating to a corresponding application referred to in section 29(2)(c)(ii), that —
(i)
there was an unreasonable delay in the issue of the corresponding patent; and
(ii)
the patent office that granted the corresponding patent has extended the term of the corresponding patent 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 —
(a)
the interval between the date of filing of the application for the patent and the date of issue of the certificate of grant, excluding any period attributable to an act or omission of the applicant, exceeds 4 years; or
(b)
the interval between the date on which the applicant —
(i)
filed a request for a search and examination report in accordance with section 29(2)(b); or
(ii)
and the date of issue of the certificate of grant, excluding any period attributable to an act or omission of the applicant, exceeds 2 years.
[19/2004]
(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 an unreasonable delay under subsection (1)(a), the Registrar shall extend the term of the patent —
(a)
in a case to which subsection (2)(a) applies, by the period by which the interval referred to in subsection (2)(a) exceeds 4 years;
(b)
in a case to which subsection (2)(b) applies, by the period by which the interval referred to in subsection (2)(b) exceeds 2 years; or
(c)
in a case to which both paragraphs (a) and (b) of subsection (2) apply, by the period by which —
(i)
the interval referred to in subsection (2)(a) exceeds 4 years; or
(ii)
the interval referred to in subsection (2)(b) exceeds 2 years,
whichever is the longer period.
[19/2004]
(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 —
(a)
the marketing approval was obtained after the date of issue of the certificate of grant; and
(b)
the interval between the date the application for marketing approval was filed and the date marketing approval was obtained, excluding any period attributable to an act or omission of the applicant for marketing approval, exceeds 2 years.
[19/2004]
(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 —
(a)
a period equivalent to the interval between the date of issue of the certificate of grant and the date marketing approval was obtained;
(b)
the period by which the interval referred to in subsection (5)(b) exceeds 2 years; or
(c)
a period of 5 years,
whichever is the shortest period.
[19/2004]
(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 —
(a)
the date the application for marketing approval was filed;
(b)
the date marketing approval was obtained; and
(c)
for each period attributable to an act or omission of the applicant for marketing approval, the dates on which the period started and ended.
[19/2004]
(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]
(13) In subsection (2), “period attributable to an act or omission of the applicant” includes (without prejudice to the generality of the expression) any of the following periods which is applicable:
(a)
the period taken by the applicant to pay the filing fee under section 25(1)(b), calculated from the date of filing of the application for the patent to the date on which the filing fee is paid;
(b)
the period taken by the applicant to make observations under section 26(3)(b)(i) which satisfy the Registrar that the documents filed at the Registry to initiate the application satisfy all of the conditions in section 26(1)(a), (b) and (c)(i) or (ii), calculated from the date of the Registrar’s notification to the applicant under section 26(3)(a) to the date on which the applicant makes the observations;
(ba)
the period taken by the applicant to file the documents referred to in section 26(7)(a), (b) and (c), calculated from the date of filing of the application for a patent to the date on which the applicant files the documents;
(bb)
the period taken by the applicant to comply with section 26(9)(b), if the applicant, after filing at the Registry any missing part of the application, makes a request to the Registrar for section 26(8)(b) not to apply to the application, calculated from the date on which the applicant filed at the Registry the missing part of the application to the date on which the applicant complies with section 26(9)(b);
(c)
the period taken by the applicant to file one or more claims for the purposes of the application under section 26(12)(a), calculated from the date of filing of the application for the patent to the date on which the applicant files the claim or claims;
(d)
the period taken by the applicant to —
(i)
make observations under section 28(4)(a) which satisfy the Registrar that all the formal requirements have been complied with; or
(ii)
amend his application under section 28(4)(b) to comply with all the formal requirements,
calculated from the date of the Registrar’s notification under section 28(4) to the date on which the applicant makes the observations or the earliest date on which the application, as amended by the applicant, complies with all the formal requirements;
(da)
the period taken by the applicant to comply with section 28(9)(b), if the applicant, after filing any drawing or part of the description of the invention which is missing from the application, makes a request to the Registrar for section 28(8)(b) not to apply to the application, calculated from the date of the Registrar’s notification under section 28(7) to the date on which the applicant complies with section 28(9)(b);
(e)
the period taken by the applicant to —
(i)
file a request and pay the prescribed fee for a search report under section 29(2)(a); or
(ii)
file a request and pay the prescribed fee for a search and examination report under section 29(2)(b),
calculated from the date of the Registrar’s notification under section 29(1) to the date on which the applicant files the request and pays the fee;
(f)
the period taken by the applicant to file the documents referred to in section 29(2)(c)(i), (d)(i) or (e)(i) and pay the prescribed fee for an examination report, calculated from the date of the Registrar’s notification under section 29(1) to the date on which the applicant files the documents and pays the fee;
(g)
the period taken by the applicant to file the documents referred to in section 29(2)(c)(ii) or (d)(ii), calculated from the date of the Registrar’s notification under section 29(1) to the date on which the applicant files the documents;
(h)
the period taken by the applicant to file a notice under section 29(2)(e)(ii), calculated from the date of the Registrar’s notification under section 29(1) to the date on which the applicant files the notice;
(i)
the period taken by the applicant to file a request for an examination report under section 29(4), calculated from the date of the Registrar’s notification under section 29(3)(b) to the date on which the applicant files the request;
(j)
the period taken by the applicant to file the prescribed documents under section 30(2)(c) and pay the prescribed fee under section 30(2)(d) for the grant of the patent, calculated from —
(i)
in a case to which section 30(2)(b)(i), (iii) or (v) applies, the date of the Registrar’s notification under section 29(5);
(ii)
in a case to which section 30(2)(b)(ii) applies, the date of the Registrar’s notification under section 29(6);
(iii)
in a case to which section 30(2)(b)(iv) applies, the date on which the applicant files the documents referred to therein; or
(iv)
in a case to which section 30(2)(b)(vi) applies, the date on which the applicant files the notice under section 29(2)(e)(ii),
to the date on which the prescribed documents under section 30(2)(c) are filed and the prescribed fee under section 30(2)(d) is paid;
(k)
the period taken by the applicant to rectify any failure to satisfy any condition under section 30(3), calculated from the date of the Registrar’s notification under section 30(6)(a) to the date on which every condition in section 30(3) is satisfied;
(l)
the period taken by the applicant to respond to a written opinion under section 31(2)(a), calculated from the date of the Registrar’s notification under section 31(1) to the date on which the applicant responds to the written opinion;
(m)
the period taken by the applicant to amend the specification of his application under section 31(2)(b), calculated from the date of the written opinion given under section 31(1) to the date on which the applicant amends the specification of his application;
(n)
where the application is an international application for a patent (Singapore) that has entered the national phase in Singapore under section 86(3), the period taken by the applicant to cause the application to enter the national phase in Singapore, calculated from the date of the filing of the application in accordance with the Patent Co-operation Treaty to the date on which the national phase of the application begins under section 86(3);
(o)
the period taken by the applicant to rectify any failure to comply with any requirement under this Act or the rules, such period —
(i)
to be calculated from the date by which the applicant is required to comply with the requirement to the date on which the applicant rectifies the failure to comply with the requirement; and
(ii)
to include any period taken by the Registrar or the Registry to detect or to notify the applicant of the applicant’s failure to comply with the requirement;
(p)
the period taken by the applicant to respond to any request by the Registrar for any document, information or evidence, calculated from the date of the Registrar’s notification to the applicant of the request to the date on which the applicant responds to the request;
(q)
any extension or alteration of any period to do any thing that is granted by the Registrar or the court at the request or on the application of the applicant.
[19/2004]
(14) In subsections (5) and (7), “period attributable to an act or omission of the applicant for marketing approval” includes (without prejudice to the generality of the expression) —
(a)
the period taken by the applicant for marketing approval to correct deficiencies in his application for marketing approval, calculated from the date of the relevant authority’s notification to the applicant for marketing approval of the deficiencies to the date on which the applicant for marketing approval corrects the deficiencies;
(b)
the period taken by the applicant for marketing approval to respond to any request by the relevant authority for clarification or information, calculated from the date of the relevant authority’s request to the date on which the relevant authority receives the response of the applicant for marketing approval; and
(c)
any extension of any period to do any thing that is granted by the relevant authority at the request or on the application of the applicant for marketing approval.
[19/2004]
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]
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]
38A.
—(1) Subject to subsection (2), any person may request for a search and examination report in respect of any claim or claims in the specification of a patent on any of the following grounds:
(a)
where the patent was granted on the basis of any examination report or search and examination report referred to in section 29, any international preliminary report on patentability referred to in section 30(2)(b)(vi) or any international preliminary examination report, that —
(i)
at least one claim in the application for the patent at the time the prescribed documents for the grant of the patent were filed and the prescribed fee for the grant of the patent was paid was not related to any claim in the application at the time the report was issued —
(A)
which has been examined; and
(B)
which is referred to in the report; or
(ii)
the Examiner of the application did not consider all the relevant prior art before preparing the report;
(b)
where the patent was granted on the basis of any prescribed information relating to a corresponding application or corresponding international application referred to in section 29, that —
(i)
at the time the prescribed documents for the grant of the patent were filed and the prescribed fee for the grant of the patent was paid, at least one claim in the application for the patent did not relate to any claim —
(A)
which is set out in the prescribed information relating to the corresponding application or corresponding international application, as the case may be; and
(B)
which has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility); or
(ii)
the Examiner of the corresponding application or corresponding international application, as the case may be, did not consider all the relevant prior art before preparing his report on the examination of the corresponding application or corresponding international application, as the case may be.
[19/2004]
(2) The Registrar shall not grant a request under subsection (1) unless —
(a)
the request is filed in the prescribed manner;
(b)
the prescribed fee for the search and examination report has been paid; and
(c)
(3) Subject to subsection (4), any person who files a request under subsection (1) may, at the time he files the request, also file —
(a)
any observation which he wishes to make in relation to the patent; and
(b)
any document which he considers to be relevant for the purposes of the examination.
(4) Where any document referred to in subsection (3)(b) is not in English, the person who files the request under subsection (1) shall also file an English translation of the document.
[19/2004]
(5) The Registrar shall not grant a request under subsection (1) if he is of the view that the request is frivolous, vexatious or an abuse of the process.
[19/2004]
(6) No request under subsection (1) shall be filed or granted where there are pending before the court or the Registrar proceedings in which the validity of the patent may be put in issue.
[19/2004]
(7) Where the Registrar grants a request under subsection (1), the Registrar shall cause the claim or claims to be subjected to —
(a)
a search by an Examiner to discover the relevant prior art contained in —
(i)
such documentation as may be prescribed; and
(ii)
any additional documentation that the Examiner is aware of and considers to be relevant; and
(b)
an examination by an Examiner to determine —
(i)
(ii)
whether the specification of the patent discloses any additional matter referred to in section 84(1); and
(iii)
whether the specification of the patent discloses any matter extending beyond that disclosed in the application for the patent as filed,
taking into consideration all the relevant prior art, if any, that the Examiner is aware of or that has been discovered in the search.
[19/2004]
(8) If it appears to the Examiner during the examination of the specification of the patent that —
(a)
(b)
the specification of the patent discloses —
(i)
any additional matter referred to in section 84(1); or
(ii)
any matter extending beyond that disclosed in the application for the patent as filed,
the Examiner shall give the proprietor of the patent a written opinion to that effect, and the proprietor of the patent shall, before the examination report is issued, have the right to respond in the prescribed manner to the written opinion within the prescribed period.
[19/2004]
(9) Upon receiving the search and examination report prepared by the Examiner, the Registrar shall —
(a)
send a copy of the report to the proprietor of the patent; and
(b)
where the request under subsection (1) is not filed by the proprietor of the patent, send a copy each of —
(i)
the report;
(ii)
any written opinion given by the Examiner; and
(iii)
any response given in the prescribed manner by the proprietor of the patent to any such written opinion,
to the person who filed the request.
[19/2004]
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 proprietor of the patent took reasonable care to see that any renewal fee was paid within the prescribed period or that that fee and any prescribed additional fee were paid within the 6 months immediately following the end of that period, 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]
40.
—(1) The proprietor of a patent may at any time by notice given to the Registrar offer to surrender his patent.
(2) A person may give notice to the Registrar of his opposition to the surrender of a patent under this section, and if he does so the Registrar shall notify the proprietor of the patent and determine the question.
(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]