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The Patents Act 2004 (Commencement No. 2 and Consequential, etc. and Transitional Provisions) Order 2004

S.I. 2004/3205 · Made 29 November 2004

Original text. legislation.gov.uk does not revise statutory instruments, so later amendments are not shown here. Changes made to it are listed under each provision when known.

PATENTS

Made 29th November 2004

Laid before Parliament 7th December 2004

Coming into force 1st January 2005

The Secretary of State, in exercise of the powers conferred upon her by section 17 of the Patents Act 2004f1, and after consultation with the Council on Tribunals pursuant to section 8(1) of the Tribunals and Inquiries Act 1992f2, makes the following Order:

Annotations to the whole text

Footnotes

f1

2004 c. 16.

f2

1992 c. 53.

Contents

  1. 1Citation, commencement and interpretation of this Order
  2. 2Commencement of the 2004 Act
  3. 3Consequential, incidental and supplementary provisions
  4. 4Consequential, incidental and supplementary provisions
  5. 5Consequential, incidental and supplementary provisions
  6. 6Consequential, incidental and supplementary provisions
  7. 7Consequential, incidental and supplementary provisions
  8. 8Consequential, incidental and supplementary provisions
  9. 9Transitional provisions
  10. Signature
  11. Explanatory note

1Citation, commencement and interpretation of this Order

(1)

This Order may be cited as the Patents Act 2004 (Commencement No. 2 and Consequential, etc. and Transitional Provisions) Order 2004, and shall come into force on 1st January 2005.

(2)

In this Order—

  • “the 1977 Act” means the Patents Act 1977f1;

  • “the 2004 Act” means the Patents Act 2004;

  • “the appointed day” means the day appointed by article 2;

  • “the Rules” means the Patents Rules 1995f2.

2Commencement of the 2004 Act

1st January 2005 is the day appointed for the coming into force of the following provisions of the 2004 Act—

(a)

section 5 (for the purposes of the provisions mentioned in sub-paragraphs (i) and (j) below);

(b)

section 6;

(c)

section 7;

(d)

sections 10 to 12;

(e)

section 14;

(f)

section 16(1) (for the purposes of the provisions mentioned in sub-paragraph (k) below);

(g)

section 16(2) (for the purposes of the entries in Schedule 3 relating to provisions brought into force by this article and to the amendment of section 106 of the 1977 Act);

(h)

section 16(3);

(i)

paragraphs 1, 6, 7 and 8, and paragraph 9(1), (2)(a) and (3), of Schedule 1;

(j)

paragraph 9(2)(b) of Schedule 1 (for the purposes of the Patent Co-operation Treaty);

(k)

paragraphs 1, 5, 8, 10 to 14, 16, 17, 19, 20 to 22, 25, 27 and 28 of Schedule 2.

3Consequential, incidental and supplementary provisions

The Rules are amended as follows.

4Consequential, incidental and supplementary provisions

For rule 9 there is substituted—

“Orders under section 8 or 12

9.
(1)

Where an order is made under section 8 or 12—

(a)

that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant; or

(b)

that a new application for a patent may be made,

the comptroller shall give notice of the making of the order to the original applicant or applicants, and to any of their licensees of whom he is aware.

(2)

A person who makes a request under section 11(3) or (3A) must do so before the end of the relevant period.

(3)

The relevant period is—

(a)

where the request is made by an original applicant, the period of two months starting on the date the notice is sent to him;

(b)

where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.

(4)

In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).”.

5Consequential, incidental and supplementary provisions

For rule 13 there is substituted—

“Reference to the comptroller under section 11(5)

13.
(1)

A reference under section 11(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully—

(a)

the question referred;

(b)

the facts upon which the person making the reference relies; and

(c)

the period or terms of the licence which he is prepared to accept or grant.

(2)

The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to—

(a)

every person in whose name the application is to proceed or, as the case may be, who makes the new application; and

(b)

every person claiming to be entitled to be granted a licence,

and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.

(3)

The comptroller shall send a copy of the counter-statement to the person who made the reference.

(4)

The comptroller may give such directions as he thinks fit with regard to the subsequent procedure.

(5)

In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).”.

6Consequential, incidental and supplementary provisions

For rule 57 there is substituted—

“Orders under section 37

57.
(1)

Where an order is made under section 37—

(a)

that a patent shall be transferred to one or more persons none of whom was an old proprietor; or

(b)

that a person other than an old proprietor may make a new application for a patent,

the comptroller shall give notice of the making of the order to the old proprietor or proprietors, and to any of their licensees of whom he is aware; and a person who makes a request under section 38(3) must do so before the end of the relevant period.

(2)

The relevant period is—

(a)

where the request is made by an old proprietor, the period of two months starting on the date the notice is sent to him;

(b)

where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.”.

7Consequential, incidental and supplementary provisions

For rule 58 there is substituted—

“Reference to the comptroller under section 38(5)

58.
(1)

A reference under section 38(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully—

(a)

the question referred;

(b)

the facts upon which the person making the reference relies; and

(c)

the period or terms of the licence which he is prepared to accept or grant.

(2)

The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to—

(a)

the new proprietor or proprietors or, as the case may be, the new applicant; and

(b)

every person claiming to be entitled to be granted a licence,

and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.

(3)

The comptroller shall send a copy of the counter-statement to the person who made the reference.

(4)

The comptroller may give such directions as he thinks fit with regard to the subsequent procedure.”.

8Consequential, incidental and supplementary provisions

In rules 72 and 73, for “plaintiff” (wherever it occurs) there is substituted “claimant”.

9Transitional provisions

(1)

The following transitional provisions have effect notwithstanding the amendments to the 1977 Act made by the provisions brought into force by article 2, or the amendments to the Rules made by articles 4 and 5.

(2)

If before the appointed day a question is referred to the comptroller under section 8 or 12 of the 1977 Act, sections 8, 11 and 12 of that Act and rules 9 and 13 have effect in relation to that reference as if the amendments to those sections and rules had not been made.

(3)

Where proceedings are brought under section 70 of the 1977 Act in respect of an alleged threat made before the appointed day, that section has effect in relation to that alleged threat as if the amendments to that section had not been made.

(4)

Where proceedings are brought before the appointed day, section 75(1) of the 1977 Act has effect in relation to those proceedings as if the amendment to that subsection had not been made.

(5)

Where the national phase (as defined by section 89A(3) of the 1977 Act) of an international application for a patent (UK) begins before the appointed day, section 89B(2) of that Act has effect in relation to that application as if the amendment to that subsection had not been made.

Signature

Sainsbury of Turville,

Parliamentary Under-Secretary of State for Science and Innovation

Department of Trade and Industry

29th November 2004

Explanatory note

(This note is not part of the Order)

Article 2 of this Order brings into force, on 1st January 2005, a number of provisions of the Patents Act 2004, all but one of which make amendments to the Patents Act 1977 (“the 1977 Act”). The Order also makes a number of consequential, incidental or supplementary amendments to the Patents Rules 1995, and makes appropriate transitional provision.

Remedies in entitlement proceedings

Section 6 is brought into force, together with paragraphs 5 and 10 of Schedule 2.

Articles 4 to 7 make consequential amendments to rules 9 and 13, and also restate those rules (and the corresponding rules 57 and 58) in a clearer form.

Article 9(2) contains a transitional provision related to the amendments to sections 8, 11 and 12 of the 1977 Act and to rules 9 and 13. Thus as regards “pre-grant” entitlement questions, the changes will have effect only for questions referred to the comptroller on or after 1st January 2005. No transitional provision is necessary as regards the amendments to section 38 of the 1977 Act or rules 57 and 58, which concern “post-grant” entitlement, as these merely clarify the existing law.

Restrictions on applications abroad

Section 7 is brought into force, together with paragraph 8 of Schedule 2. No transitional provision is necessary.

Compensation of employees for certain inventions

Section 10 is brought into force, together with paragraph 11 of Schedule 2.

A transitional provision is already contained in section 10(8), with the result that the section will apply only to an invention the patent for which is applied for on or after 1st January 2005.

Enforcement of damages

Section 11 is brought into force. No transitional provision is necessary.

Threats of infringement proceedings

Section 12 is brought into force, together with paragraphs 14, 16, 17 and 28 of Schedule 2 (which make consequential terminological amendments).

Article 8 makes consequential terminological amendments to rules 72 and 73.

Article 9(3) contains a transitional provision relating to the amendments to section 70 of the 1977 Act made by section 12. Thus the changes will have effect only in relation to communications alleged to be threats which are made on or after 1st January 2005.

Costs and expenses in court proceedings

Section 14 is brought into force.

A transitional provision is already contained in section 14(4), with the result that the section will apply only to proceedings commenced on or after 1st January 2005.

Removal of references to the Community Patent Convention.

Paragraph 6 of Schedule 1, and paragraphs 12, 13, 20 to 22, 25(c), 25(d) and 27 of Schedule 2, are brought into force. No transitional provision is necessary.

Jurisdiction over post-grant amendment

Paragraph 19 of Schedule 2 is brought into force.

Article 9(4) contains a transitional provision relating to the amendment of section 75(1). Thus the amended section 75(1) will apply only to proceedings commenced on or after 1st January 2005.

Patent Co-operation Treaty

Paragraphs 7, 8, 9(2) and 9(3) of Schedule 1 are brought into force, but paragraph 9(2)(b) is brought into force only for the purposes of the Patent Co-operation Treaty. It is not brought into force for the purposes of the European Patent Convention.

Article 9(5) contains a transitional provision relating to the amendment of section 89B(2) of the 1977 Act made by paragraph 8 of Schedule 1. Thus the amended section 89B(2) will apply only to international applications which enter the UK national phase on or after 1st January 2005.

Comptroller’s annual report

Section 16(3) and paragraph 25(a) and (b) of Schedule 2 are brought into force. No transitional provision is necessary.