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Newsletters and Bulletins / May 2005 / United Kingdom - Changes in Patent Law

United Kingdom - Changes in Patent Law

Much of the UK Patents Act 2004 came into effect in phases during 2005. The first phase, which transfers to the government some ability to make direct changes to the law rather than requiring an Act of Parliament and facilitates amendments to the Patents Rules, came into effect soon after the law was enacted in October. The second phase to came into effect on January 1, 2005. Further provisions came into effect on October 1, 2005. The remaining provisions relating 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 will probably not come into effect until the revised European Convention itself comes into effect.

Changes that did come into effect include the following (changes 1 - 12 on or before January 1, 2005, changes 13 to 15 were on October 1, 2005):

1) If a convention date has been missed, it is possible to make a valid claim to convention priority in an application filed more than one year after the priority-founding application, provided that the application is filed within two months of the normal convention year and that it is supported by evidence that failure to meet the normal deadline was unintentional. 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.

3) Translations of priority documents will be required only when this is relevant to the question of the application's novelty or inventive step.

4) The application fee can be paid up to 12 months after filing in the case of a non-convention application and the later of 12 months from priority and two months from filing for applications claiming priority.

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.”

6) Fees payable for missing parts, such as a claim fee, must be paid within the same period as the fees (It is made clear that an application will only be sent "to an Examiner" for a search if a preliminary examination ensures that the formalities have been complied with).

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. 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.

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.

9) For employee inventions, 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 for inventions made on or after January 1, 2005, 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.

10) 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, 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.”

11) 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. The new law provides 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 threat.

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

13) The due date for paying renewal fees will be shifted to the end of the month of the anniversary of the filing date.

14) 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.

15) 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.

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Date & time viewed: Friday, 16-May-2008 22:44:59 PDT