Patents

Patents Acts 1977-2004

Jane Lambert

27 Aug 2005

The Patents Act 1977 was passed to implement the PTT ("Patent Co-operation Treaty"), EPC ("European Patent Convention") and CPC ("Community Patent Convention"). Although many provisions of the previous legislation survived, the Act made many important changes in UK patent law and practice. The overall purpose of these changes was to harmonize the laws of the UK with those of other EPC contracting states. Though the Act has been amended several times (most recently by the Patents Act 2004 to make account of changes to the EPC), harmonization remains its overall objective (see s.125 (3) and s.130 (7) Patents Act 1977 in particular).

Sources of Information

An unofficial consolidation of the 1977 Act appears on the Patent Office website. The Manual of Patent Practice is an excellent commentary on the Act. The text of the Patents Act 2004 appears on the OPSI (Office of Public Sector Information website). Since the Act will be implemented in stages, it is useful to refer to the Patents Act 2004 index page. That page links to commencement orders, guidance notes, the consultation website and the legislative history. The Act is implemented by the Patent Rules 2000 (as amended) and applied by the courts and Patent Office tribunals. The best online source of transcripts of decisions of the House of Lords, Court of Appeal, Chancery Division and Patents Court, Court of Session and Northern Ireland decisions is BAILII (British and Irish Legal Information Institute). Summaries of hearing officers' decisions since 2000 are on the Case Summaries page which link through to the decisions themselves. Cases since 1998 are indexed on the Patent Decisions page. This page links to BAILII and the European Patent Office ("EPO") for decisions of the EPO Boards of Appeal.

Structure of the Act

The amended Act consists of 3 Parts and 8 Schedules.

Part I sets out the new domestic law for the UK as follows:

	the conditions for the grant of a patent: (ss.1 to 8) patentability (s.1), novelty (s.2), inventive step (s.3) and utility (capacity for industrial application);
	rights to apply for a patent: who is entitled to apply for a patent (s.7), determination  of disputes (s.8, s.12 and s.82) and mentions of inventors (s.13);
	applications: how to make an application (s.14), filing (s.15), preliminary examinations (s.15A) and publications of applications (16);
	searches and examinations: Ss.17 to 21;
	grant: s.24;
	term: s.25;
	amendment: amendment (s.27) generally and amendment in infringement or revocation proceedings (s.75);
	surrender: s.29;
	property in patents: s.30;
	employees' inventions: rights to employees' inventions (s.39) and compensation (rewards) to employees for their inventions (s.40 to 43);
	licences of right: Ss.47 and 47;
	compulsory licences: S3.48 to 54;
	infringement proceedings: infringement (s.60), litigation (s.61) and rights conferred on publication of applications (s.69);
	threats actions: s.70;
	declarations of non-infringement: s.71;
	revocation and challenging validity: s.74.

Part II deals with the effect of European patents (s.77), PCT applications (s.89 to s.89B) and miscellaneous matters. Part III deals with litigation, administrative and miscellaneous matters. The most important of the latter relate to interpretation and of these the most important sections are s.125 and s.130. S.127 provides for the Patent Rules.

Construction of Claims

S.125 (1) provides that the scope of a monopoly granted by a patent is to be defined by its claims. S.125 (3) requires those claims to be construed in accordance with art 69 EPC in accordance with the Protocol on Interpretation.

Relationship with the Conventions

S.130 (7) recites the resolution of the EC member states to adjust their patent laws to bring them into conformity with the corresponding provisions of the EPC, CPC and PCT, and declares that Ss 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, 100 and 125, are framed so as to have, as nearly as practicable, the same effects in the UK as the corresponding provisions of those treaties.

The Schedules

The first four Schedules are transitional and relate to patents that are now expired. Sched. 6 deals with repeals and Scheds. A1 and A2 with biotechnological inventions.

 

Important