British Telecommunications Act 1981

9 [F1 (1) In relation to any use of a patented invention or an invention in respect of which an application for a patent is pending, being a use made on or after the appointed day for purposes referable to functions of the Corporation— U.K.

(a) by the Corporation under any power conferred by, or by virtue of, the foregoing provisions of this Act, or by its using articles supplied to it by the patentees or applicant for the patent under an agreement to which this Schedule applies;

(b) by a person authorised by an authority continued in force by paragraph 3 or conferred by virtue of that paragraph or paragraph 4; or

(c) by the patentee or applicant for the patent, for the purpose of satisfying a liability under an agreement to which this Schedule applies,

the provisions of any licence, assignment or agreement made—

(i) before 1st October 1969, between the patentee or applicant for the patent or any person who derives title from him or from whom he derives title, and any person other than a government department;

(ii) on or after 1st October 1969, between the patentee or applicant for the patent or any person who derives title from him or from whom he derives title, and any person other than the Post Office; or

(iii) on or after the appointed day, between the patentee or applicant for the patent or any person who derives title from him or from whom he derives title, and any person other than the Corporation,

shall be of no effect so far as those provisions restrict or regulate the use of the invention, or any model, document or information relating thereto, or provide for the making of payments in respect of any such use, or calculated by reference thereto; and the reproduction or publication of any model or document in connection with the said use shall not be deemed to be an infringement of any copyright [F2 or design right] subsisting in the model or document.

(2) Where an exclusive licence granted otherwise than for royalties or other benefits determined by reference to the use of the invention is in force under the patent, then—

(a) in relation to any use of the invention which, but for the provisions of this paragraph and paragraph 3, would constitute an infringement of the rights of the licensee, paragraph 6 shall have effect as if for the reference in sub-paragraph (b) thereof to the patentee there were substituted a reference to the licensee; and

(b) in relation to any use of the invention by the licensee by virtue of an authority continued in force by, or conferred by virtue of, paragraph 3, paragraph 6 shall have effect as if sub-paragraph (b) were omitted.

(3) Subject to the provisions of sub-paragraph (2), where the patent, or the right to apply for or obtain the patent, has been assigned to the patentee in consideration of royalties or other benefits determined by reference to the use of the invention, then—

(a) in relation to any use of the invention by virtue of paragraph 3, paragraph 6 shall have effect as if, in sub-paragraph (b), the reference to the patentee included a reference to the assignor, and any sum payable by virtue of that paragraph or an agreement referred to in paragraph 4 shall—

(i) except where an agreement as to the proportions in which any sum payable in relation to the use of the invention should be divided was made before 1st October 1969 under section 47(3) of the M1 Patents Act 1949 or before the appointed day under paragraph 8(3) of Schedule 10 to the 1969 Act, or a determination as to those proportions was made by the court before that date under section 48 of the said Act of 1949 or before that day under paragraph 9 of the said Schedule, be divided between the patentee and the assignor in such proportions as may be agreed between them or as may, in default of such agreement, be determined by the court on a reference under paragraph 10;

(ii) in the said excepted case, be divided in such proportions as may be provided for by the said agreement or determination; and

(b) in relation to any use of the invention made after the beginning of the appointed day, being use referable to the functions of the Corporation and made by the patentee for the purpose mentioned in sub-paragraph (1)(c), paragraph 6(b) shall have effect as if that use were made by virtue of an authority continued in force by paragraph 3.

(4) Where, under paragraph 6 or such an agreement as is referred to in paragraph 4, payments are required to be made by the Corporation to a patentee in respect of any use of an invention, any person, being the holder of an exclusive licence under the patent (not being such a licence as is mentioned in sub-paragraph (2)) authorising him to make that use of the invention, shall—

(a) except where an agreement as to the recovery from the patentee of a part of the payments made under section 46(3) of the M2 Patents Act 1949 in respect of the use of the invention was made before 1st October 1969 under section 47(4) of that Act or before the appointed day under paragraph 8(4) of Schedule 10 to the 1969 Act, or a determination as to such recovery was made by the court before that date under section 48 of the said Act of 1949 or before that day under paragraph 9 of the said Schedule, be entitled to recover from the patentee such part (if any) of those payments as may be agreed upon between that person and the patentee or as may, in default of such agreement, be determined by the court on a reference under paragraph 10 to be just having regard to any expenditure incurred by that person—

(i) in developing the said invention, or

(ii) in making payments to the patentee, other than royalties or other payments determined by reference to the use of the invention, in consideration of the licence;

(b) in the said excepted case, be entitled to recover such part, if any, of the payments as may be provided for by the said agreement or determination;

and if that person, at any time before the amount of any such payment has been settled, gives to the Corporation notice in writing of his interest, any agreement as to the amount of that payment shall be of no effect unless it is made with his consent; and, for the purposes of this sub-paragraph, a notice given before 1st October 1969 to the department of the Postmaster General in pursuance of section 47(4) of the Patents Act 1949 or before the appointed day to the Post Office in pursuance of paragraph 8 of Schedule 10 to the 1969 Act shall have effect as if it had been given to the Corporation.

(5) Where any models, documents or information relating to an invention are used in connection with any such use of the invention as is described in sub-paragraph (1), paragraph 6 shall, whether or not it applies to the use of the invention, apply to the use of the models, documents or information as if for the reference therein to the patentee there were substituted a reference to the person entitled to the benefit of any provision of a licence, assignment or agreement which is rendered inoperative by sub-paragraph (1) in relation to that use.

(6) Nothing in this paragraph shall be construed as authorising the disclosure to the Corporation or any person of any model, document or information to the use of which this paragraph applies in contravention of any such licence, assignment or agreement as aforesaid.]

Textual Amendments

F1 Sch. 5 paras. 3-22 repealed (25.7.2003 for specified purposes) by Communications Act 2003 (c. 21), s. 411(2), Sch. 19(1) Note 1 (with Sch. 18); S.I. 2003/1900, arts. 1(2), 2(1), Sch. 1 (with art. 3) (as amended by S.I. 2003/3142, art. 1(3))

F2 Words inserted by Copyright, Designs and Patents Act 1988 (c. 48, SIF 67A), s. 303(1), Sch. 7 para. 27

Modifications etc. (not altering text)

C1 Sch. 5 paras. 3–22 modified by Telecommunications Act 1984 (c.12, SIF 96), s. 109, Sch. 6 paras. 1–14

Marginal Citations

M1 1949c. 87.

M2 1949 c. 87.