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Section 127.
1(1)The provisions of the 1949 Act referred to in sub-paragraph (2) below shall continue to apply on and after the appointed day in relation to existing patents and applications (but not in relation to patents and applications for patents under this Act).
(2)The provisions are sections 1 to 10, 11(1) and (2), 12, 13, 15 to 17, 19 to 21, 22(1) to (3), 23 to 26, 28 to 33, 46 to 53, 55, 56, 59 to 67, 69, 76, 80, 87(2), 92(1), 96, 101, 102(1) and 103 to 107.
(3)Sub-paragraph (1) above shall have effect subject to the following provisions of this Schedule, paragraph 2(b) of Schedule 3 below and the provisions of Schedule 4 below.
2(1)In section 6 of the 1949 Act, at the end of the proviso to subsection (3) (post-dating of application) there shall be inserted “and—
(c)no application shall, on or after the appointed day, be post-dated under this subsection to a date which is that of the appointed day or which falls after it”,
and there shall be inserted at the end of subsection (4) " ; but no application shall on or after the appointed day be post-dated under this subsection to a date which is that of the appointed day or which falls after it ".
(2)At the end of subsection (5) of that section (ante-dating) there shall be inserted " ; but a fresh application or specification may not be filed on or after the appointed day in accordance with this subsection and those rules unless the comptroller agrees that he will direct that the application or specification shall be ante-dated to a date which falls before the appointed day ".
3(1)This paragraph and paragraph 4 below shall have effect with respect to the duration of existing patents after the appointed day, and in those paragraphs—
(a)" old existing patent" means an existing patent the date of which fell eleven years or more before the appointed day and also any patent of addition where the patent for the main invention is, or was at any time, an old existing patent by virtue of the foregoing provision ;
(b)" new existing patent" means any existing patent not falling within paragraph (a) above ; and
(c)any reference to the date of a patent shall, in relation to a patent of addition, be construed as a reference to the date of the patent for the main invention.
(2)Sections 23 to 25 of the 1949 Act (extension of patents on grounds of inadequate remuneration and war loss) shall not apply to a new existing patent.
(3)The period for which the term of an old existing patent may be extended under section 23 or 24 of that Act shall not exceed in the aggregate four years, except where an application, for an order under the relevant section has been made before the appointed day and has not been disposed of before that day.
4(1)The term of every new existing patent under section 22(3) of the 1949 Act shall be twenty instead of sixteen years from the date of the patent, but—
(a)the foregoing provision shall have effect subject to section 25(3) to (5) above ; and
(b)on and after the end of the sixteenth year from that date a patent shall not be renewed under section 25(3) to (5) above except by or with the consent of the proprietor of the patent.
(2)Where the term of a new existing patent is extended by this paragraph,—
(a)any licence in force under the patent from immediately before the appointed day until the end of the sixteenth year from the date of the patent shall, together with any contract relating to the licence, continue in force so long as the patent remains in force (unless determined otherwise than in accordance with this sub-paragraph), but, if it is an exclusive licence, it shall after the end of that year be treated as a non-exclusive licence ;
(b)notwithstanding the terms of the licence, the licensee shall not be required to make any payment to the proprietor for working the invention in question after the end of that year;
(c)every such patent shall after the end of that year be treated as endorsed under section 35 of the 1949 Act (licences of right).
(3)Where the term of a new existing patent is extended by this paragraph and any government department or any person authorised by a government department—
(a)has before the appointed day, used the invention in question for the services of the Crown ; and
(b)continues to so use it until the end of the sixteenth year from the date of the patent,
any such use of the invention by any government department or person so authorised, after the end of that year, may be made free of any payment to the proprietor of the patent.
(4)Without prejudice to any rule of law about the frustration of contracts, where any person suffers loss or is subjected to liability by reason of the extension of the term of a patent by this paragraph, the court may on the application of that person determine how and by whom the loss or liability is to be borne and make such order as it thinks fit to give effect to the determination.
(5)No order shall be made on an application under sub-paragraph (4) above which has the effect of imposing a liability on any person other than the applicant unless notification of the application is given to that person.
5In section 26(3) of the 1949 Act (no patent of addition unless date of filing of complete specification was the same as or later than the date of filing of complete specification in respect of main invention) after " main invention" there shall be inserted " and was earlier than the date of the appointed day ".
6Notwithstanding anything in section 32(1)(j) of the 1949 Act (ground for revocation that patent was obtained on a false suggestion or representation), it shall not be a ground of revoking a patent under that subsection that the patent was obtained on a false suggestion or representation that a claim of the complete specification of the patent had a priority date earlier than the date of filing the application for the patent, but if it is shown—
(a)on a petition under that section or an application under section 33 of that Act; or
(b)by way of defence or on a counterclaim on an action for infringement;
that such a suggestion or representation was falsely made, the priority date of the claim shall be taken to be the date of filing the application for that patent.
7(1)In section 33 of the 1949 Act (revocation of patent by comptroller), in subsection (1) for the words preceding the proviso there shall be substituted—
“(1)Subject to the provisions of this Act, a patent may, on the application of any person interested, be revoked by the comptroller on any of the grounds set out in section 32(1) of this Act:”.
(2)At the end of the said section 33 there shall be added the following subsection:—
“(5)A decision of the comptroller or on appeal from the comptroller shall not estop any party to civil proceedings in which infringement of a patent is in issue from alleging that any claim of the specification is invalid on any of the grounds set out in section 32(1) of this Act, whether or not any of the issues involved were decided in that decision.”.
8In section 101(1) of the 1949 Act (interpretation) there shall be inserted in the appropriate place—
“" appointed day " means the day appointed under section 132 of the Patents Act 1977 for the coming into operation of Schedule 1 to that Act;”.
Section 127.
1(1)Without prejudice to those provisions of Schedule 4 below which apply (in certain circumstances) provisions of this Act in relation to existing patents and applications, the provisions of this Act referred to in sub-paragraph (2) below shall apply in relation to existing patents and applications on and after the appointed day subject to the following provisions of this Schedule and the provisions of Schedule 4 below.
(2)The provisions are sections 22, 23, 25(3) to (5), 28 to 36, 44 to 54, 86, 96, 98, 99, 101 to 105, 107 to 111, 113 to 116, 118(1) to (3), 119 to 124, 130 and 132(2), (3) and (4).
2In those provisions as they apply by virtue of this Schedule—
(a)a reference to this Act includes a reference to the 1949 Act;
(b)a reference to a specified provision of this Act other than one of those provisions shall be construed as a reference to the corresponding provision of the 1949 Act (any provision of that Act being treated as corresponding to a provision of this Act if it was enacted for purposes which are the same as or similar to that provision of this Act) ;
(c)a reference to rules includes a reference to rules under the 1949 Act;
(d)references to a patent under this Act and to an application for such a patent include respectively a reference to an existing patent and application ;
(e)references to the grant of a patent under this Act includes a reference to the sealing and grant of an existing patent;
(f)a reference to a patented product and to a patented invention include respectively a reference to a product and invention patented under an existing patent;
(g)references to a published application for a patent under this Act, and to publication of such an application, include respectively references to a complete specification which has been published under the 1949 Act and to publication of such a specification (and a reference to an application for a patent under this Act which has not been published shall be construed accordingly);
(h)a reference to the publication in the journal of a notice of the grant of a patent includes a reference to the date of an existing patent;
(i)a reference to the priority date of an invention includes a reference to the priority date of the relevant claim of the complete specification.
Section 127.
1Subject to the provisions of Schedule 4 below, the provisions of the 1949 Act referred to in paragraph 2 below (which have no counterpart in the new law of patents established by this Act in relation to future patents and applications) shall cease to have effect.
2The provisions are:—
(a)section 14 (opposition to grant of patent);
(b)section 32(3) (revocation for refusal to comply with Crown request to use invention);
(c)section 41 (inventions relating to food or medicine, etc.);
(d)section 42 (comptroller's power to revoke patent after expiry of two years from grant of compulsory licence);
(e)section 71 (extension of time for certain convention applications) ;
(f)section 72 (protection of inventions communicated under international agreements).
Section 127.
1In so far as any instrument made or other thing done under any provision of the 1949 Act which is repealed by virtue of this Act could have been made or done under a corresponding provision of this Act, it shall not be invalidated by the repeals made by virtue of this Act but shall have effect as if made or done under that corresponding provision.
2(1)Any question whether—
(a)an act done before the appointed day by a government department or a person authorised in writing by a government department amounts to the use of an invention for the services of the Crown ; or
(b)any payment falls to be made in respect of any such use (whether to a person entitled to apply for a patent for the invention, to the patentee or to an exclusive licensee) ;
shall be determined under sections 46 to 49 of that Act and those sections shall apply accordingly.
(2)Sections 55 to 59 above shall apply to an act so done on or after the appointed day in relation to an invention—
(a)for which an existing patent has been granted or an existing application for a patent has been made ; or
(b)which was communicated before that day to a government department or any person authorised in writing by a government department by the proprietor of the patent or any person from whom he derives title ;
and shall so apply subject to sub-paragraph (3) below, the modifications contained in paragraph 2 of Schedule 2 above and the further modification that sections 55(5)(b) and 58(10) above shall not apply in relation to an existing application.
(3)Where an act is commenced before the appointed day and continues to be done on or after that day, then, if it would not amount to the use of an invention for the services of the Crown under the 1949 Act, its continuance on or after that day shall not amount to such use under this Act.
3(1)Any question whether an act done before the appointed day infringes an existing patent or the privileges or rights arising under a complete specification which has been published shall be determined in accordance with the law relating to infringement in force immediately before that day and, in addition to those provisions of the 1949 Act which continue to apply by virtue of Schedule 1 above, section 70 of that Act shall apply accordingly.
(2)Sections 60 to 71 above shall apply to an act done on or after the appointed day which infringes an existing patent or the privileges or rights arising under a complete specification which has been published (whether before, on or after the appointed day) as they apply to infringements of a patent under this Act or the rights conferred by an application for such a patent, and shall so apply subject to sub-paragraph (3) below, the modifications contained in paragraph 2 of Schedule 2 above and the further modification that section 69(2) and (3) above shall not apply in relation to an existing application.
(3)Where an act is commenced before the appointed day and continues to be done on or after that day, then, if it would not, under the law in force immediately before that day, amount to an infringement of an existing patent or the privileges or rights arising under a complete specification, its continuance on or after that day shall not amount to the infringement of that patent or those privileges or rights.
4(1)Where notice of opposition to the grant of a patent has been given under section 14 of the 1949 Act before the appointed day, the following provisions shall apply:—
(a)if issue has been joined on the notice before the appointed day, the opposition, any appeal from the comptroller's decision on it and any further appeal shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court;
(b)in any other case, the notice shall be taken to have abated immediately before the appointed day.
(2)Sub-paragraph (1)(a) above shall have effect subject to paragraph 12(2) below.
5(1)Where directions given under section 18 of the 1949 Act in respect of an existing application (directions restricting publication of information about inventions) are in force immediately before the appointed day, they shall continue in force on and after that day and that section shall continue to apply accordingly.
(2)Where sub-paragraph (1) above does not apply in the case of an existing application section 18 of the 1949 Act shall not apply to the application but section 22 of this Act shall.
(3)Where the comptroller has before the appointed day served a notice under section 12 of the [1946 c. 80.] Atomic Energy Act 1946 (restrictions on publication of information about atomic energy etc.) in respect of an existing application that section shall continue to apply to the application on and after that day; but where no such notice has been so served that section shall not apply to the application on and after that day.
6(1)Where before the appointed day an application has been made under section 33 of the 1949 Act for the revocation of a patent (the original application), the following provisions shall apply:—
(a)if issue has been joined on the application before the appointed day, the application, any appeal from the comptroller's decision on it and any further appeal shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court;
(b)if issue has not been so joined, the original application shall be taken to be an application under section 33 of the 1949 Act for the revocation of the patent on whichever of the grounds referred to in section 32(1) of that Act corresponds (in the comptroller's opinion) to the ground on which the original application was made, or, if there is no ground which so corresponds, shall be taken to have abated immediately before the appointed day.
(2)Sub-paragraph (1)(a) above shall have effect subject to paragraph 11(3) below.
7(1)This paragraph applies where an application has been made before the appointed day under section 42 of the 1949 Act for the revocation of a patent.
(2)Where the comptroller has made no order before that day for the revocation of the patent under that section, the application shall be taken to have abated immediately before that day.
(3)Where the comptroller has made such an order before that day, then, without prejudice to section 38 of the [1889 c. 63.] Interpretation Act 1889, section 42 shall continue to apply to the patent concerned on and after that day as if this Act had not been enacted.
8(1)Sections 35 to 41 and 43 to 45 of the 1949 Act shall continue to apply on and after the relevant day—
(a)to any endorsement or order made or licence granted under sections 35 to 41 which is in force immediately before that day; and
(b)to any application made before that day under sections 35 to 41.
(2)Any appeal from a decision or order of the comptroller instituted under sections 35 to 41 or 43 to 45 on or after the relevant day (and any further appeal) shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court.
(3)In this paragraph " the relevant day " means, in relation to section 41, the date of the passing of this Act and, in relation to sections 35 to 40 and 43 to 45, the appointed day.
9(1)Without prejudice to paragraph 1 above, an Order in Council declaring any country to be a convention country for all purposes of the 1949 Act or for the purposes of section 1(2) of that Act and in force immediately before the appointed day shall be treated as an Order in Council under section 90 above declaring that country to be a convention country for the purposes of section 5 above.
(2)Where an Order in Council declaring any country to be a convention country for all purposes of the 1949 Act or for the purposes of section 70 of that Act is in force immediately before the appointed day, a vessel registered in that country (whether before, on or after that day) shall be treated for the purposes of section 60 above, as it applies by virtue of paragraph 3(2) above to an existing patent or existing application, as a relevant ship and an aircraft so registered and a land vehicle owned by a person ordinarily resident in that country shall be so treated respectively as a relevant aircraft and a relevant vehicle.
10Where the court has given judgment on a petition under section 32(1)(j)of the 1949 Act before the appointed day, any appeal from the judgment (whether instituted before, on or after that day) shall be continued or instituted and be disposed of under the old law.
11(1)In this paragraph "the continuing 1949 Act provisions " means the provisions of the 1949 Act which continue to apply on and after the appointed day as mentioned in paragraph 1 of Schedule 1 above.
(2)This paragraph applies where—
(a)the comptroller gives a decision or direction (whether before or on or after the appointed day) under any of the continuing 1949 Act provisions, and
(b)an appeal lies under those provisions from the decision or direction;
but this paragraph applies subject to the foregoing provisions of this Schedule.
(3)Where such an appeal has been instituted before the Appeal Tribunal before the appointed day, and the hearing of the appeal has begun but has not been completed before that day, the appeal (and any further appeal) shall be continued and disposed of under the old law.
(4)Where such an appeal has been so instituted, but the hearing of it has not begun before the appointed day, it shall be transferred by virtue of this sub-paragraph to the Patents Court on that day and the appeal (and any further appeal) shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court.
(5)Any such appeal instituted on or after the appointed day shall lie to the Patents Court or, where the proceedings appealed against were held in Scotland, the Court of Session; and accordingly, the reference to the Appeal Tribunal in section 31(2) of the 1949 Act shall be taken to include a reference to the Patents Court or (as the case may be) the Court of Session.
(6)Section 97(3) of this Act shall apply to any decision of the Patents Court on an appeal instituted on or after the appointed day from a decision or direction of the comptroller under any of the continuing 1949 Act provisions as it applies to a decision of that Court referred to in that subsection, except that for references to the sections mentioned in paragraph (a) of that subsection there shall be substituted references to sections 33, 55 and 56 of the 1949 Act.
12(1)This paragraph applies where an appeal to the Appeal Tribunal has been instituted before the appointed day under any provision of the 1949 Act repealed by this Act.
(2)Where the hearing of such an appeal has begun but has not been completed before that day, the appeal (and any further appeal) shall be continued and disposed of under the old law.
(3)Where the hearing of such an appeal has not begun before that day, it shall be transferred by virtue of this sub-paragraph to the Patents Court on that day and the appeal (and any further appeal) shall be prosecuted under the old law, but as if references in the 1949 Act and rules made under it to the Appeal Tribunal were references to the Patents Court.
13Section 87(1) of the 1949 Act shall continue to apply on and after the appointed day to any decision of the Appeal Tribunal given before that day, and any appeal by virtue of this paragraph (and any further appeal) shall be prosecuted under the old law.
14The power to make rules under section 123 of this Act shall include power to make rules for any purpose mentioned in section 94 of the 1949 Act.
15Section 97(2) of this Act applies to—
(a)any appeal to the Patents Court by virtue of paragraph 4(1)(a), 6(1)(a), 8(2) or 11(5) above, and
(b)any appeal which is transferred to that Court by virtue of paragraph 11(4) or 12(3) above,
as it applies to an appeal under that section ; and section 97 of this Act shall apply for the purposes of any such appeal instead of section 85 of the 1949 Act.
16In this Schedule " the old law" means the 1949 Act, any rules made under it and any relevant rule of law as it was or they were immediately before the appointed day.
17For the purposes of this Schedule—
(a)issue is joined on a notice of opposition to the grant of a patent under section 14 of the 1949 Act when the applicant for the patent files a counter-statement fully setting out the grounds on which the opposition is contested ;
(b)issue is joined on an application for the revocation of a patent under section 33 of that Act when the patentee files a counter-statement fully setting out the grounds on which the application is contested.
18(1)Nothing in the repeals made by this Act in sections 23 and 24 of the 1949 Act shall have effect as respects any such application as is mentioned in paragraph 3(3) of Schedule 1 above.
(2)Nothing in the repeal by this Act of the [1957 c. 13.] Patents Act 1957 shall have effect as respects existing applications.
(3)Section 69 of the 1949 Act (which is not repealed by this Act) and section 70 of that Act (which continues to have effect for certain purposes by virtue of paragraph 3 above) shall apply as if section 68 of that Act has not been repealed by this Act and as if paragraph 9 above had not been enacted.
Section 132.
1In section 3 of the Crown Proceedings Act 1947, for subsection (2) there shall be substituted:—
“(2)Nothing in the preceding subsection or in any other provision of this Act shall affect the rights of any Government department under Schedule 1 to the Registered Designs Act 1949 or section 55 of the Patents Act 1977, or the rights of the Secretary of State under section 22 of the said Act of 1977.”
2In section 32(1) of the Registered Designs Act 1949—
(a)in paragraph (a), for " the Patents Act 1949 " there shall be substituted " the Patents Act 1977 "; and
(b)in paragraph (c), after " 1949 " there shall be inserted " or section 114 of the Patents Act 1977 ".
3In sections 42 and 44(1) of the Registered Designs Act 1949, for " the Patents Act 1949 " there shall be substituted, in each case, " the Patents Act 1977 ".
4In subsection (4) of section 4 of the Defence Contracts Act 1958, for the words from " Patents Act 1949 " to the end there shall be substituted " Patents Act 1977 ".
5(1)In subsections (2) and (3) of section 10 of the Administration of Justice Act 1970 for "either" there shall be substituted, in each case, " the ".
(2)In subsection (4) of the said section 10, for " (as so amended)" there shall be substituted " (as amended by section 24 of the Administration of Justice Act 1969) ".
(3)For subsection (5) of the said section 10, there shall be substituted:—
“(5)In subsection (8) of the said section 28 (which confers power on the Tribunal to make rules about procedure etc.), there shall be inserted at end of the subsection the words " including right of audience”.
6In section 5(2) of the Atomic Energy Authority (Weapons Group) Act 1973—
(a)after the first " Patents Act 1949 " there shall be inserted " , the Patents Act 1977 " ; and
(b)after the second " Patents Act 1949 " there shall be inserted " section 55(4) of the Patents Act 1977 ".
7(1)In paragraph 10 of Schedule 4 to the Fair Trading Act 1973 for "Patents Act 1949" there shall be substituted " Patents Act 1977 ".
(2)After the said paragraph 10 there shall be inserted:—
“10AThe services of persons carrying on for gain in the United Kingdom the business of acting as agents or other representatives of other persons for the purpose of applying for or obtaining European patents or for the purpose of conducting proceedings in connection with such patents before the European Patent Office or the comptroller and whose names appear on the European list (within the meaning of section 84(7) of the Patents Act 1977) in their capacity as such persons.”
8(1)In paragraph 10 of Schedule 1 to the Restrictive Trade Practices Act 1976, for " the Patents Act 1949 " there shall be substituted " the Patents Act 1977 ".
(2)After the said paragraph 10 there shall be inserted:—
“10AThe services of persons carrying on for gain in the United Kingdom the business of acting as agents or other representatives of other persons for the purpose of applying for or obtaining European patents or for the purpose of conducting proceedings in connection with such patents before the European Patent Office or the comptroller and whose names appear on the European list (within the meaning of section 84(7) of the Patents Act 1977), in their capacity as such persons.”
Section 132.
Chapter | Short Title | Extent of Repeal |
---|---|---|
7 Edw. 7. c. 29. | The Patents and Designs Act 1907. | Section 47(2). |
9 & 10 Geo. 6. c. 80. | The Atomic Energy Act 1946. | In section 12, subsections (1) to (7). |
12, 13 & 14 Geo. 6. c. 87. | The Patents Act 1949. | Section 11(3). |
Section 14. | ||
Section 16(6). | ||
Section 18. | ||
Section 22(4) and (5). | ||
In section 23(1), the words from "(not exceeding" to "ten years)". | ||
In section 24, in subsection (1), the words " (not exceeding ten years) " and, in subsection (7), the words from " but " to the end. | ||
Section 27. | ||
In section 32, subsection (3). | ||
In section 33(3), the proviso. | ||
Sections 34 to 45. | ||
Sections 54, 57 and 58. | ||
Section 68. | ||
Sections 70 to 75. | ||
Sections 77 to 79. | ||
Sections 81 to 86. | ||
Section 87(1) and (3). | ||
Sections 88 to 91. | ||
Sections 93 to 95. | ||
Sections 97 to 100. | ||
Section 102(2). | ||
Schedule 1. | ||
Schedule 3, except paragraphs 1 and 26. | ||
5 & 6 Eliz. 2. c. 13. | The Patents Act 1957. | The whole Act, except in relation to existing applications. |
9 & 10 Eliz. 2. c. 25. | The Patents and Designs (Renewals, Extensions and Fees) Act 1961. | In section 1(1), the words from " subsection (5) " to " and in ". |
Section 2. | ||
10 & 11 Eliz. 2. c. 30. | The Northern Ireland Act 1962. | In Schedule 1, the entry relating to section 84 of the Patents Act 1949. |
1967 c. 80. | The Criminal Justice Act 1967. | In Schedule 3, in Parts I and IV, the entries relating to the Patents Act 1949. |
1968. c. 64. | The Civil Evidence Act 1968. | Section 15. |
1969 c. 58. | The Administration of Justice Act 1969. | In section 24, in subsection (1), the words " 85 of the Patents Act 1949 and section " and " each of ", in subsections (2), (3) and (4) the words " of each of those sections " and in subsection (4) the words from "as subsection (11)" to "and" and the words "in the case of the said section 28 ". |
1970 c. 31. | The Administration of Justice Act 1970. | In section 10, in subsection (1), the words " Patents Appeal Tribunal or the " and in subsection (4), the words from " the Patents Appeal" to " and ". |
1971 c. 23. | The Courts Act 1971. | Section 46. |
1971 c. 36 (N.I.) | The Civil Evidence Act (Northern Ireland) 1971. | Section 11. |
1973 c. 41. | The Fair Trading Act 1973. | Section 126. |
In Schedule 3, in paragraph 16(2), the words from " of section 40" to "Commission)", where first occurring. | ||
In Schedule 12, the entry relating to the Patents Act 1949. | ||
1974 c. 47 | The Solicitors Act 1974. | In Schedule 3, paragraph 3. |
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