UK – New Patents Act

The UK Patents Act 2004 (hereafter 2004 Act) was granted Royal Assent on July 22. It will come into effect in phases. The first phase, which coordinates with a new Regulatory Reform (Patents) Order (hereinafter RRO) which transfers to the government some ability to make direct changes to the law rather than requiring an Act of Parliament, facilitates amendments to the Patents Rules and is already in effect and the revised Rules take effect on January 1, 2005 (hereafter PR 2004). The second phase is expected to come into effect early in 2005 and will make changes in the law relating to (1) employee inventions, (2) the need for foreign filing licenses before filing inventions made by UK residents outside the Unite Kingdom, (3) the making of threats to bring an infringement action and (4) the criteria to be used in making awards of costs and expenses in infringement actions. The third phase relates to amendments to bring UK national law into conformity
with the revisions to the European Patent Convention that were adopted in 2000 but have not yet come into effect. It is expected that these changes will not be made until the revised European Convention comes into effect.

Phase I

The revisions to the Rules effected in the first phase are in part adopted to bring UK law into conformity with the Patent Law Treaty signed
in Geneva in 2000. They include the following:

1. If a convention date has been missed, the possibility is provided of being able to make a valid claim to convention priority in an application filed more than one year after the priority-founding application if the application is filed within two months of the normal convention year and is supported by evidence that failure to meet the normal deadline was unintentional. (RRO Section 3)
2. The ability to make a claim to convention priority up to sixteen months from the earliest priority date as long as there has been no early publication of the application. (PR 2004 Rule 3 revising old Rule 6)
3. Translations of priority documents will be required only when this is relevant to the question of the application’s novelty or inventive step. (New Rule 6C added by PR2004)
4. The application fee can be paid up to 12 months after filing in the case of anon-convention application and the later of 12 months from priority and two months from filing for applications claiming priority (RRO Section 4 and PR 2004 Rule 8)
5. The requirements to secure a filing date are liberalized, for example claims will not be needed merely “something which is or appears to be a description of the invention for which a patent is sought or a reference to an earlier relevant application of the applicant or a predecessor in title. (RRO Section 5) Missing parts, such as a claim, must be paid within the same period as the fees (PR 2004 Rule 8. It is made clear that an application will only be sent (“to an examiner”) for a search if a preliminary examination ensures that the
6. formalities have been complied with. (RRO Sections 5 and 6)
7. Provision is made for reinstatement of lapsed applications and the law relating to restoration of lapsed patents is amended so that in both cases restoration will be possible if the lapse was unintentional. (RRO Sections 8 and 9). For restoration of a lapsed application, an application for reinstatement must be filed within one year of the lapse date and no more than two months after removal of the cause of the failure have replaced the old more liberal periods. (PR 2004 Rule 10). saving provisions protect those who have started operations while an
   application was in a state of lapse similar to those relating to lapsed patents. RRO Section 11).
8. It is provided that in order to be valid a mortgage or assignment of a patent needs to be signed only by the mortgagor or assignor. (RRO Section 10).

Phase II

1. Employee Inventions (2004 Act Section 10)

Under the old law, inventor employees were entitled to compensation if the benefit derived by the employee from an invention of outstanding benefit on which a patent is owned by his/her employer is inadequate in relation to the benefit derived by the employer “from the patent”. There have been few cases where this has been found to be the case. Under the new law the possibility of compensation will be judged by the relative benefits derived by the employer and employee from “the invention” It is, however, still required that the invention is patented for this provision to apply. One possible result of the change is that a world-wide benefit needs to be considered not just the benefits deriving from the UK patent. However, this is not clear. The change applies only with respect to inventions for which a patent application is filed after the new provision comes into effect.

2. Foreign Filing (2004 Act Section 7)

Under the old law before a patent application could be filed outside the UK on an invention where a UK resident was an inventor, one either had to file a UK application first and wait six weeks or obtain a foreign filing license from the Patent Office. Under the new law Under the new law, these provisions apply only if “the application contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or the application contains information the publication of which might be prejudicial to the safety of the public.

3. Threats (2004 Act Section 12)

Under the old law it was actionable to threaten another with a suit for patent infringement. The patentee’s only defense was to show that the person threatened infringed a patent that was not invalid in a relevant respect. It was felt that this provision inhibited patent owners from entering into negotiations with possible  infringers for fear of exposure to a threats action. Problems also arose in being unable to approach retailers for their sources of supply for fear that such enquiries would expose the inquirer to a threats action. Under the new law, it is provided that if the person threatened is acting within a patent claim, even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect. Furthermore, the old provision that mere notification of the existence of a patent is not a threat, is now replaced by a provision that a person shall not be liable for a threats action if he merely:

(a) provides factual information about the patent, 

(b) makes enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed , or (c) makes an assertion about the patent for the purpose of any enquiries so made. Finally a new defense is created that protects the patent owner if he has used his best endeavors to find out information relating to possible infringers without success and advises the person threatened of these efforts either before or at the time of making the treat.

4. Need to Consider the Financial Position of the Parties in Awarding Costs. (2004 Act Section 14)

Under the old law the court had to look at the financial position of the parties in making an ward of costs only in cases relating to employee compensation. Under the new law this is extended to all cases involving potent infringement.

Phase III

The remaining changes that were enacted by the 2004 Act but for which no indication has yet been given of a date on which they will come into effect are as follows:

1. Amendment of the law relating to patentability of methods of treatment or diagnosis to permit substance for use claims as opposed to Swiss form claims.
   (2004 Act Section 1, c.f. EPC 2000 Revision Art 19 providing for new Article 54(5)
2. Amendment to the law relating to post grant amendment of British Patents to “have regard to any relevant principles applicable under the European patent
   Convention”. (2004 Act Section 2, c.f. EPC 2000 Revision Art Art 62 amending Article 123)
3. Provision is made for the grant of relief for a partially invalid patent is provided if an amendment is made to cure the invalidity before the EPO
   (under the old law only amendments in the UK would suffice). (2004 Act Section 3). Similarly a satisfactory amendment made in the EPO will now suffice
   to prevent revocation of a patent that was previously invalid. (2004 Act Section 4)
4. The due date for paying renewal fees will be shifted to the end of the month of the anniversary of the filing date (2004 Act Section 8)
5. The rights of co-owners are extended where there is no agreement to the contrary to require their consent not only to the licensing of the patent but also
   to any amendment or revocation of a patent. (2004 Act Section 9)
6. Provision is made for patentees and third parties to request validity opinions from the Patent Office. A review procedure for such opinions is also to be
   set up. (2004 Act Section 13).