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UK Patents Act 2004

UK Patents Act 2004

06/01/05

The UK Patents Act 2004 effected a number of important changes to UK Patent law which came into force on 1 January 2005. These changes update certain aspects of the patents system and also effect changes which relate to patent enforcement and dispute resolution. Further changes have been made which will allow the implementation of, and come into force with, the EPC 2000. The following relates solely to those new provisions which came into force on 1 January 2005.

CHANGES WHICH UPDATE THE PATENTS SYSTEM

EMPLOYEE COMPENSATION

An employee having made an invention after 1 January 2005 and to which his/her employer is entitled can seek compensation and in making a compensation claim will now be able to refer to benefit that the employer has obtained from the invention in addition to any benefit that might have arisen from the patent. For inventions devised prior to that date the employee had to take the rather more complicated step of showing that benefit arose from the patent.

Under the new provisions however, the invention must be the subject of a patent.

In total, therefore, in pursuing a claim for compensation, an employee can refer to benefit derived from the patent which may include royalty payments from a licensee or profits due to others being blocked from entering the market, and /or to benefit from the invention which may include profits due to the invention being a successful technical solution in itself.

RESTRICTIONS ON FILING ABROAD

Prior to the changes made by the Patents Act 2004, specific steps had to be taken by an applicant before an application for an invention could be filed outside the UK.

Under the new provisions it is now only necessary to seek such permission from the UK Patent Office if the application relates to military technology, or contains information which might be prejudicial to national security or public safety.

The onus is on the applicant/agent to decide if the subject matter falls within either of the above categories, but the applicant/agent can contact the UK Patent Office to seek permission if in doubt.

It remains a criminal offence to file an application abroad where the subject matter of the application is such that permission should have been sought, and the applicant/agent knows this, or is reckless as to whether this is the case. However, an offence is not committed as a result of a mistake made in good faith.

ENTITLEMENT PROCEEDINGS REMEDIES

In proceedings concerning entitlement to a patent application, the patent application in question sometimes becomes withdrawn, or is refused before entitlement is finally determined. In such circumstances, a successful party seeking entitlement could file a replacement patent application which could be treated as if it was filed on the filing date of the original application but only if the original application was published before it was refused or withdrawn.

In such circumstances in entitlement proceedings under the new provisions however, the replacement application can be treated as if it was filed on the filing date of the original application regardless of whether the original application has been published or not.

CHANGES RELEVANT TO THE PCT

Those PCT applications where the applicant decides to enter the national phase early (i.e. before the Article 22 PCT or Article 39 PCT time limits) will be deemed to be published under the UK Patents Act 2004 upon entry into the national phase if the PCT application has been published before national phase entry. However, if the PCT application is published after national phase entry, the PCT application is deemed to be published under the UK Patents Act 2004 upon PCT publication.

A further change implements the provision whereby every state is designated automatically on filing a PCT application.

CHANGES WHICH RELATE TO PATENT ENFORCEMENT AND DISPUTE RESOLUTION

THREATS

Under the previous legislation, certain provisions sought to protect certain businesses (generally those involved in stocking and/or selling a product) from being threatened with legal proceedings for infringing a patent, when there is no basis for such a threat. Such provisions provided a remedy, in certain circumstances, for those who were affected by an unjustified threat of infringement.

The new provisions introduce three changes to the provisions relating to unjustified threats of infringement and seek to ease the potential "threats" burden faced by a patent proprietor.

First, a patent holder is no longer liable for making unjustified threats if he correctly assesses that infringing acts are taking place but the patent is subsequently shown to be invalid and he had no reason to suspect that the patent was invalid when approaching the infringer.

Secondly, a proprietor who has located a person manufacturing or importing the product (or using the process) under dispute, i.e. a primary infringer, will be able to raise with that person any alleged infringing act which relates to that product (or process) without the fear of facing a "threats" action. Such acts include acts of secondary infringement including stocking or selling the product.

Thirdly, the new provisions ensure that a patent proprietor will, when seeking to identify the primary infringer, now be able to discuss freely infringement issues with retailers or other alleged secondary infringers without fearing a "threats" action. However, the patent proprietor must first have used his "best endeavours" to locate the alleged primary infringer.

COSTS AND EXPENSES IN INFRINGEMENT PROCEEDINGS

The Patents Act 2004 now requires the court to give consideration to the financial position of the parties as one of the relevant circumstances when deciding on costs in all patent disputes where infringement is at issue and not just in employee compensation proceedings as had previously been the case.

ENFORCEMENT OF DAMAGES BY THE UK PATENT OFFICE COMPTROLLER

This provision enables any award of damages by the Comptroller in infringement proceedings to be recovered through the relatively quick and simple enforcement mechanism of the county court in England and Wales (and through equivalent mechanisms applying in Scotland and Northern Ireland). Therefore, it is no longer necessary for the party to whom damages are awarded to bring fresh proceedings to enforce the award.