Changes to UK Patent Law 1st January 2005

The UK changed its patent law on 1 January 2005 to bring UK law into line with the WIPO Patent Law Treaty (PLT) signed in Geneva in June 2000, and into line with the European Patent Convention as prospectively amended in 2000 (but not yet in force). These changes make the UK patent system much more “applicant friendly”, allowing rights to be safeguarded in situations where, previously, they would have been lost.

The changes discussed in this newsletter are not an exhaustive list but highlight the main substantive changes that are likely to be of the highest importance and interest, namely:

1. Priority

2. Filing

3. Extensions of time and reinstatement of applications

4. Restoration of lapsed patents

5. UK residents filing applications abroad

6. Second/further medical use claims

7. Threats

8. Infringement opinions from the Patent Office

9. Employee-inventor compensation

 

1. PRIORITY

(a) Restoration of priority - If the twelve-month Convention deadline is missed, the new law allows a late application claiming priority to be filed, providing that it is filed within 2 months of the Convention deadline, and provided that the Comptroller of Patents is satisfied that the applicant always intended to file the application within the 12 month period.

(b) Late claim to priority - The new law also allows late declarations of priority, i.e. declarations not made at the time of filing. If the application is filed within 12 months, but priority is not claimed, a late declaration of priority can be made, up to sixteen months from the earliest priority date.

(c) Translations of priority documents – An applicant will no longer be required to file a translation of priority documents in all cases. Translations will only be required if the content of the priority application becomes an issue.

 

2. FILING

(a) Rush filing - From 1 January 2005, the requirements for obtaining a date of filing for a new patent application will change. The date of filing an application for a patent shall be taken to be the earliest date on which documents filed at the Patent Office to initiate the application satisfy the following conditions -

(i) the documents indicate that a patent is sought; (ii) the documents identify the person applying for a patent or contain information sufficient to enable that person to be contacted by the Patent Office; and

(iii) the documents contain either: (a) something which is or appears to be a description of the invention for which a patent is sought; or (b) a reference, complying with the relevant requirements, to an earlier relevant application made by the applicant or a predecessor in title of his.

Note in particular that, if an application is not in English, this will not prevent the application from qualifying for a filing date. (Previously, filing in a foreign language was allowed at the discretion of the Comptroller, to be exercised in exceptional circumstances, and there remained doubt over whether such an application necessarily established a valid filing date.) The Patent Office will notify the applicant in these cases, and a translation or declaration must then be provided within two months.

(b) Missing drawings/text - Under the previous law, if drawings or subject matter present in the priority application were inadvertently missed out of the UK application on filing, they could not be added in without losing the filing date. Under the new law, if it can be shown that the whole of the missing part was contained in an earlier application from which priority was claimed on filing, the missing drawings and subject matter can be reinserted.

 

3. EXTENSIONS OF TIME AND REINSTATEMENT OF APPLICATIONS

(a) Extensions of time - Under the old law, granting of extensions of time for complying with the requirements of official letters (for example examination reports) was at the discretion of examiners, exercised to a limited extent. The new law provides that time periods set by official letter (as opposed to being prescribed by Rules) will be formally extendable once, by a period of two months as of right. This will apply to existing applications, as well as those filed after commencement of the law. Extension must be requested in writing within two months of the expiry of the period in question (i.e. extension can be requested retrospectively, in contrast with the position before the EPO).

(b) Reinstatement - The law now introduces provisions for reinstatement of applications that have been refused or treated as having been withdrawn because an applicant has failed to do something within a set time limit. These provisions apply to all applications, not just those filed after the new law comes into effect.

An application for reinstatement can be made any time up to the first to expire of:

-12 months from expiry of the time limit that the applicant failed to meet; or

- 2 months from the date of removal of the cause of non-compliance.

Note that the failure to comply with the time limit must have been unintentional, and reasons for why the failure occurred must be given.

 

4. RESTORATION OF LAPSED PATENTS

Until now, if a UK patent lapsed for failure to pay a renewal fee, restoration could be applied for within a period of 19 months from the date on which the fee was due. However, to obtain restoration, an applicant had to show that he took all due care in seeing that the fee was paid. Many applications for restoration have failed because the applicant was unable to provide the Patent Office with sufficient proof.

According to the new law, restoration will be granted if the applicant can simply prove that his failure to pay the fee was unintentional. It should therefore be easier for patent owners to obtain restoration under this new law. It should be noted that this new law will only apply to patents which cease after the law has come into force.

 

5. UK RESIDENTS FILING PATENT APPLICATIONS ABROAD

To date, a UK resident wanting to file a patent application abroad either had to seek written permission from the UK Patent Office, or had to file a British patent application and wait for six weeks before proceeding in the foreign patent office. Under the new law, permission to file abroad only needs to be obtained if the application relates to military technology, or contains information the publication of which may be prejudicial to national security or the safety of the public.

 

6. SECOND/FURTHER MEDICAL USE CLAIMS

Under the old law, second or further medical uses of substances had to be claimed in the “Swiss” form of claim, i.e. as “Use in the manufacture of a medicament…” type claims. From 1 January 2005, it will be possible to claim these simply as “Substance Y for use in treatment of disease X”.

 

7. THREATS

In certain circumstances it can be risky for a patent holder to engage in a dialogue with a suspected infringer of a patent, because such an approach may amount to a threat to sue, and Section 70 of the Patents Act 1977 gives the party being threatened a right to sue for groundless threats. This can impede the patent holder from finding out whether the patent is infringed and by whom. Section 70 has been amended to limit the circumstances in which a threats action can be brought against the patent holder and to limit some of the possible consequences where the patent holder acts in good faith, thereby protecting the patent holder from pre-emptive court action by the putative infringer or a middle-man.

 

8. OPINIONS AS TO VALIDITY OR INFRINGEMENT

Under Section 71 of the Patents Act 1977, it was possible to apply to the Comptroller for a declaration as to non-infringement of a patent. The new Act expands on these powers and enables a patent proprietor to obtain an opinion from the Comptroller as to whether their patent is valid and infringed. The opinion is non-binding (on any parties) and will provide an indication as to a whether a particular act constitutes an infringement of the patent and whether, and to what extent, the invention in question is not patentable because it lacks novelty or an inventive step. It should be noted that only the patent proprietor is a party to the proceedings. The alleged infringer may not appeal the decision. Furthermore, it is at the Comptroller’s discretion, in view of the particular circumstances of the case, whether an opinion will be provided.

 

9. EMPLOYEE-INVENTOR COMPENSATION

UK patents law provides that where an invention is made by an employee in the course of his duties, the invention may belong automatically to his employer in some circumstances. In order to recognise that some employees’ contributions to the fortunes of their employers are very great, the law also contained provision for an employee-inventor to claim compensation from his or her employer, where the patent has been of outstanding benefit to the employer.

Since the Patents Act 1977 came into force, there is no reported case of any successful claim to compensation under this provision. One reason is that it is difficult to show that it was the patent (as opposed to the invention) which was of outstanding benefit.

In order to try to make this provision more effective, the law will change so that the employee can show that the patent or the invention or both has been of outstanding benefit. Note that the new law will only apply to an invention for which a patent application is filed on or after the day that the change takes effect.

 

 

Comment

The first six changes listed above will facilitate easier short-notice or urgent filing of patent applications in the UK Patent Office or by UK residents abroad, will considerably improve the scope for fixing problems that may go wrong, and will generally modernize procedure in the UK Patent Office. The “rush filing” procedure is already common in Scandinavia, for example.

The ability to correct errors by importing drawings or text from the priority application is not permitted in a European patent application, as it is contrary to Article 123(2) EPC (Enlarged Board of Appeal Decision G3/89). The amended UK Patents Act is more forgiving, because the prohibition on adding new matter (Section 76) has been amended to apply only to amendment under certain sections of the Act (Section 15A - preliminary examination; Section 18 - substantive examination and Section 19 - amendment before grant). The prohibition does not apply to the new procedures, and Section 76 is not one of the sections that must be interpreted in line with the EPC (Section 130(7)).

The last change we list (employee-inventor compensation) may cause concern to some. However, this change is unlikely to prise open the floodgates for compensation claims. It will still not be easy for employees to claim compensation. For example the initial burden of proof still lies with the employee to show that the invention and/or the patent has been of outstanding benefit to the employer. Nevertheless, employers should ensure they have in place effective employee-inventor compensation/incentive schemes.