WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IP/N/I/GBR/P/l 
1 May 1996 
(96-1672) 
Original: Englishl 
anglais/ 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
United Kingdom 
The present document reproduces the Patents Act 19771, as notified by the United Kingdom 
under Article 63.2 of the Agreement (see document IP/N/l/GBRll). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
Royaume-Uni 
Le present document contient le texte de la Loi de 1977 sur les brevets 1, notifiee par le 
Royaume-Uni au titre de l'article 63:2 de l' Accord (voir le document IP/N/1/GBRlI). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL pARRAFO 2 DEL 
ARTICULO 63 DEL ACUERDO 
Reino Unido 
En el presente documento se reproduce la Ley de Patentes de 19771, notificada por el 
Reino Unido en virtud de 10 dispuesto en el parrafo 2 del articulo 63 del Acuerdo (vease el 
documento IP/N/I/GBRll). 
lIn English only/en anglais seulement/en ingles solamente. IP/N/lIGBRlP/1 
Page 2 
ELIZABETH 11 
Patents Act 1977 
1977 CHAPTER 37 c. 37 
An Act to establish a new la\v of patents applicable to 
future patents and applications for patents; to amend 
the law of patents applicable to existing patents and 
applications for patents; to give effect to certain inter­
national conventions on patents; and for connected 
purposes. [29th July 1977] 
BE IT ENACTED by the Queen's most Excellent Majesty, by and 
with the advice and consent of the Lords Spiritual and 
Temporal, and Commons, in this present Parliament 
assembled, and by the authority of the same, as follows:-
PART I 
NEW DOMESTIC LAW 
Patentability 
L-(l) A patent may be granted only for an invention in Patentable 
respect of which the following conditions are satisfied, that is to inventions. 
say-
(a) the invention is new; 
(b) it involves an inventive step; 
(c) it is capable of industrial application; 
(d) the grant of a patent for it is not excluded by subsections 
(2) and (3) below; 
and references in this Act to a patentable invention shall be 
construed accordingly. c.37 Patents Act 1977 IP IN I lIGBRJP /1 
Page 3 
PART I (2) It is hereby declared that the following (among other 
Novelty. things) are not inventions for the purposes of this Act. that is to 
say. anything which consists of-
(a) a discovery, scientific theory or mathematical method; 
(b) a literary, dramatic. musical or artistic work or any 
other aesthetic creation whatsoever; 
(c) a scheme. rule or method for performing a mental act, 
playing a game or doing business, or a program for a 
computer; . 
(cl) the presentation of information; 
but the foregoing provision shall prevent anything from being 
treated as an invention for the purposes of this Act only to the 
extent that a patent or application for a patent relates to that 
thing as such. 
(3) A patent shall not be granted-
(a) for an invention the publication or exploitation of 
which would be generally expected to encourage 
offensive, immoral or anti-social behaviour ; 
(b) for any variety of animal or plant or any essentially 
biological process for the production of animals or 
plants, not being a micro-biological process or the pro­
duct of such a process. 
(4) For the purposes of subsection (3) above behaviour shall 
not be regarded as offensive, immoral or anti-social only because 
it is prohibited by any law in force in the United Kingdom or 
any part of it. 
(5) The Secretary of State may by order vary the provisions of 
subsection (2) above for the purpose of maintaining them in 
conformity with developments in science and technology; and 
no such order shall be made unless a draft of the order has been 
laid before, and approved by resolution of. each House of 
Parliament. 
2.-0) An invention shall be taken to be new if it does not 
form part of the state of the art. 
(2) The state of the art in the case of an invention shall be 
taken to comprise an matter (whether a product, a process, 
infonnation about either. or anything else) which has at any 
time before the priority date of that invention been made avail­
able to the public (whether in the United Kingdom or elsewhere) 
by written or oral description, by use or in any other way. 
(3) The state of the art in the case of an invention to which 
an application for a patent or a patent relates shall be taken 
also to comprise matter contained in an application for another 
patent which was published on or after the priority date of IP/N/l/GBRlP/1 
Page 4 
Patents Act 1977 c.37 
that invention. if the following conditions are satisfied. that is 
to say-
(a) that matter was contained in the application for that 
other patent both as filed and as published: and 
(b) the priority date of that matter is earlier than that of 
the invention. 
(4) For the purposes of this section the disclosure of matter 
constituting an invention shall be disregarded in the case of a 
patent or an application for a patent if occurring later than the 
beginning of the period of six months immediately preceding 
the date of filing the application for the patent and either-
(a) the disclosure \vas due to. or made in consequence of, 
the matter having been obtained unlawfully or in 
breach of confidence by any person-
(i) from the inventor or from any other person 
to whom the matter was made available in con­
fidence by the inventor or who obtained it from the 
inventor because he or the inventor believed that 
he was entitled to obtain it ; or 
(ii) from any other person to whom the matter was 
made available in confidence by any person men­
tioned in sub-paragraph (i) above or in this sub­
paragraph or who obtained it from any person so 
mentioned because he or the person from whom he 
obtained it believed that he was entitled to obtain it; 
(b) the disclosure was made in breach of confidence by 
any person who obtained the matter in confidence from 
the inventor or from any other person to whom it was 
made available, or who obtained it. from the inventor; 
or 
(c) the disclosure was due to, or made in consequence of 
the inventor displaying the invention at an inter­
national exhibition and the applicant states, on filing 
the application, that the invention has been so dis­
played and also, within the prescribed period, files 
written evidence in support ()f the statement com­
plying with any prescribed <.;"nditions. 
(5) In this section references to the inventor include references 
to any proprietor of the invention for the time being. 
(6) In the case of an invention consisting of a substance or 
composition for use in a method of treatment of the human or 
animal body by surgery or therapy or of diagnosis practised on 
the human or animal body. the fact that the substance or com­
position forms part of the state of the art shall not prevent the 
invention from being taken to be new if the use of the substance PAAT J c.37 Patents Act 1977 IP IN I lIGBRJP 11 
Page 5 
PART I or composition in any such method does not form part of the 
state of the a,rt. 
Inventive 3. An invention shall be taken to involve an inventive step 
step, if it is not obvious to a person skilled in the art. having regard 
to any matter which forms part of the state of the art by virtue 
only of section 2(2) above (and disregarding section 2(3) above). 
Industrial 4.-(1) Subject to subsection (2) below, an invention shall 
application. be taken to be capable of industrial application if it can be 
made or used in any kind of industry, including agriculture. 
(2) An invention of a method of treatment of the human or 
animal body by surgery or therapy or of diagnosis practised on 
the human or animal body shall not be taken to be capable of 
industrial application. 
(3) Subsection (2) above shall not prevent a product consist­
ing of a substance or composition being treated as capable of 
industrial application merely because it is invented for use in 
any such method. 
Priority date. 5.-(1) For the purposes of this Act the priority date of an 
invention to which an application for a patent relates and also 
of any matter (whether or not the same as the invention) con­
tained in any such application is, except as provided by the 
following provisions of this Act, the date of filing the application. 
(2) If in or in connection with an application for a patent 
(the application in suit) a declaration is made, whether by the 
applicant or any predecessor in title of his. complyint! with 
the relevant requirements of rules and specifying one or more 
earlier relevant applications for the purposes of tills sel tion 
made by the applicant or a predecessor in title of his and each 
having a date of filing during the period of nvelve mom hs 
immediately preceding the date of filing the application in sui~. 
then-
(a) if an invention to which the application in suit relates 
is supported by matter disclosed in the earlier relevant 
application or applications, the priority date of that 
invention shall instead of being the date of filing the 
application in suit be the date of filing the relevant 
application in which that matter was disclosed or. if it 
was disclosed in more than one relevant application. the 
earliest of them; 
(b) the priority date of any matter contained in the appli­
cation in suit which was also disclosed in the earlier 
relevant application or applications shall be the date 
,of filing the relevant application in which that matter IP/N/lIGBRJP/l 
Page 6 
Patents Act 1977 c.37 
was disclosed or. if it was disclosed in more than one 
relevant application, the earliest of them. 
(3) Where an invention or other matter contained in the appli­
cation in suit was also disclosed in two earlier relevant applica­
tions filed by the same applicant as in the case of the applica­
tion in suit or a predecessor in title of his and the second of 
those relevant applications was specified in or in connection 
with the application in suit, the second of those relevant appli­
cations shall. so far as concerns that invention or matter, be 
disregarded unless--
(a) it \vas filed in or in respect of the same country as 
the first; and 
(b) not later than the date of filing the second. the first 
(whether or not so specified) was unconditionally 
withdra wn, or was abandoned or refused. witbout­
(i) having been made available to the public 
(whether in the United Kingdom or elsewhere); 
(iD leaving any rights outstanding; and 
(iii) baving served to establish a priority date in 
relation to another application, wherever made. 
(4) The foregoing provisions of this section shall apply for 
determining the priority date of an invention for whlch a patent 
has been granted as they apply for determining the priority date 
of an invention to which an application for that patent relates. 
(5) In this section "relevant application" means any of the 
following applications which has a date of filing, namely-
(a) an application for a patent under this Act; 
(b) an application in or for a convention country (specified 
under section 90 below) for protection in respect of an 
invention or an application which, in accordance with 
the law of a convention country or a treaty or inter­
national convention to which a cqnvention country is 
a party, is equivalent to such an application. PART I 
6.-(1) It is hereby declared for the avoidance of doubt that Disclosure of 
where an application (the application in suit) is made for a matter, etc., 
patent and a declaration is made in accordance with section bet~een 
5(2) above in or in connection with that application specifying f:t~rer and 
an earlier relevant application, the application in suit and any applications. 
patent granted in pursuance of it shall not be invalidated by 
reason only of relevant intervening acts. 
(2) In this section-
" relevant application" has the same meaning as in section 
5 above; and 
" relevant intervening acts" means acts done in relation to 
matter disclosed in an earlier relevant application PARr [ 
Right to 
apply for 
and obtain 
a patent. 
Determination 
before grant 
of questions 
about entitle­
ment to 
patents. etc. c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 7 
between the dates of the earlier relevant application 
and the dpplication in suit. as for example, filing 
another application for the invention for which the 
earlier relevant application was made, making infor­
mation available to the public about that invention or 
that matter or working that invention, but disregarding 
any application, or the disclosure to the public of 
matter contained in any application, which is itself to 
be disregarded for the purposes of section 5(3) above. 
Right to apply for and obtain a patent and 
be mentioned as inventor 
7.-(1) Any person may make an application for a patent 
either alone or jointly with another. 
(2) A patent for an invention may be granted­
(a) primarily to the inventor or joint inventors; 
(b) in preference to the foregoing. to any person or persons 
who, by virtue of any enactment or rule of law, or any 
foreign law or treaty or international convention, or 
by virtue of an enforceable term of any agreement 
entered into with the inventor before the making of 
the invention, was or were at the time of the making 
of the invention entitled to the whole of the property 
in it (other than equitable interests) in the United 
Kingdom; 
(c) in any event, to the successor or successors in title of any 
person or persons mentioned in paragraph (a) or (b) 
above or any person so mentioned and the successor 
or successors in title of another person so mentioned; 
and to no other person. 
(3) In this Act" inventor" in relation to an invention means 
the actual deviser of the invention and" joint inventor" shall be 
construed accordingly. 
(4) Except so far as the contrary is established, a person who 
makes an application for a patent shall be taken to be the person 
who is entitled under subsection (2) above to be granted a patent 
and two or more persons who make such an application jointly 
shall be taken to be the persons so entitled. 
8.-( 1) At any time before a patent has been granted for 
an invention (whether or not an application has been made 
for it)-
(a) any person may refer to the comptroller the question 
whether he is entitled to be granted (alone or with any 
other persons) a patent for that invention or has or 
would have any right in or under any patent so granted. 
or any application for such a patent; or IP/N/lIGBRlP/l 
Page 8 
Patents Act 1977 c.37 
(b) any of two or more co-proprietors of an application for 
a patent for that invention may so refer the question 
whether any right in or under the application should be 
transferred or granted to any other person; 
and the comptroller shall determine the question and may make 
such order as he thinks fit to give effect to the determination. 
(2) Where a person refers a question relating to an invention 
under subsection (l)(a) above to the comptroller after an applica­
tion for a patent for the invention has been filed and before a 
patent is granted in pursuance of the application, then, unless 
the application is refused or withdrawn before the reference is 
disposed of by the comptroller, the comptroller may, without 
prejudice to the generality of subsection (1) above and subject 
to subsection (6) below,-
(a) order that the application shall proceed in the Dame of 
that person, either solely or jointly with that of any 
other applicant, instead of in the name of the applicant 
or any specified applicant; 
(b) where the reference was made by two or more persons, 
order that the application shall proceed in all their 
names jointly; 
(c) refuse to grant a patent in pursuance of the application 
or order the application to be amended so as to exclude 
any of the matter in respect of which the question was 
referred ; 
(cl) make an order transferring or granting any licence 
or other right in or under the application and give 
directions to any person for carrying out the provisions 
of any such order. 
(3) Where a question is referred to the comptroller under 
subsection (l}(a) above and-
(a) the comptroller orders an application for a patent for 
the invention to which the question relates to be so 
amended; 
(b) any such application is refused under subsection 2(c) 
above before the comptroller has disposed of the refer­
ence (whether the reference was made before or after 
the publication of the application) ; or 
(c) any such application is refused under a,ny other provision 
of this Act or is withdrawn before the comptroller has 
disposed of the reference, but after the publication of 
the application; 
the comptroller may order that any person by whom the 
reference was made may within the prescribed period make a 
new application for a patent for the whole or part of any matter PART I PART I 
Determination 
after grant 
of questions 
referred 
before grant. c.37 Patents Act 1977 IP/N/1/GBRlP/l 
Page 9 
comprised in the earlier application or, as the case may be. for 
all or any of the matter excluded from the earlier application, 
subject in either case to section 76 below, and in either case 
that. if such a new application is made, it shall be treated as 
having been filed on the date of filing the earlier application. 
(4) Where a person refers a question under subsection (l)(b) 
above relating to an application, any order under subsection (1) 
above may contain directions to any person for transferring 
or granting any right in or under the application. 
(5) If any person to whom directions have been given under 
subsection (2)(d) or (4) above fails to do anything necessary for 
carrying out any such directions within 14 days after the date 
of the directions. the comptroller may. on application made to 
him by any person in whose favour or on whose reference the 
directions \vere given. authorise him to do that thing on behalf 
of the person to whom the directions were given. 
(6) Where on a reference under this section it is alleged that. 
by virtue of any transaction. instrument or event relating to an 
invention or an application for a patent. any person other than 
the inventor or the applicant for the patent has become entitled 
to be granted (whether alone or with any other persons) a patent 
for the invention or has or would have any right in or under any 
patent so granted or any application for any such patent. an order 
shall not be made under subsection (2)(a), (b) or (d) above on 
the reference unless notice of the reference is given to the 
applicant and any such person, except any of them who is a 
party to the reference. 
(7) If it appears to the comptroller on a reference of a question 
under this section that the question involves matters which would 
more properly be determined by the court, he may decline to 
deal with it and, without prejudice to the court's jurisdiction 
to determine any such question and make a declaration, or 
any declaratory jurisdiction of the court in Scotland, the court 
shall have jurisdiction to do so. 
(8) No directions shall be given under this section so as to 
affect the mutual rights or obligations of trustees or of the per­
sonal representatives of deceased persons, or their rights or 
obligations as such. 
9. If a question with respect to a patent or application is 
referred by any person to the comptroller under section 8 above, 
whether before or after the making of an application for (he 
patent, and is not determined before the time when the applica­
tion is first in order for a grant of a patent in pursuance of 
the application. that fact shall not prevent the grant of a patent. 
but on its grant that person shall be treated as having referred IP/N/1/GBRlP/I 
Page 10 
Patents Act 1977 c.37 
to the comptroller under section 37 below any question 
mentioned in that section which the comptroller thinks 
appropriate. PART I 
10. If any dispute arises between joint applicants for a patent Han~lin.g of 
whether or in what manner the application should be proceeded abP~h~attlOn . d b f Y Jom WIth. the comptroller may. on a request rna e y any 0 the applicants. 
parties. give such directions as he thinks fit for enabling the 
application to proceed in the name of one or more of the parties 
alone or for regUlating the manner in which it shall be proceeded 
with. or for both those purposes, according as the case nlay 
require. 
11.-(1) \Vhere an order is made or directions are given Effect of 
under section 8 or 10 above that an application for a patent tran~fer.of 
shall proceed in the name of one or some of the original appli- ap~hcatlson 10 
h th ., Id' h f u naer s. or . cants (w e er or not It IS a so to procee In t e name 0 some 
other person), any licences or other rights in or under the appli-
cation shall, subject to the provisions of the order and any 
directions under either of those sections, continue in force and 
be treated as granted by the persons in whose name the appli-
cation is to proceed. 
(2) \Vhere an order is made or directions are given under 
section 8 above that an application for a patent shall proceed in 
the name of one or more persons none of whom was an original 
applicant (on the ground that the original applicant or applicants 
was or \vere not entitled to be granted the patent), any licences 
or other rights in or under the application shall, subject to the 
provisions of the order and any directions under that section 
and subject to subsection (3) below, lapse on the registration 
of that person or those persons as the applicant or applicants 
or, v/here the application has not been published, on the making 
of the order. 
(3) If before reQistration of a reference under section 8 above 
resulting in the making of any order mentioned in subsection 
(2) above-
(a) the original applicant or any of the applicants, acting in 
good faith, worked the invention in question in the 
United Kingdom or made effective and serious pre­
parations to do so ; or 
(b) a licensee of the applicant, acting in good faith, worked 
the invention in the United Kingdom or made effective 
and serious preparations to do so; 
that or those original applicant or applicants or the licensee 
shall, on making a request within the prescribed period to the 
person in whose name the application is to proceed, be entitled PART I c.37 Patents Act 1977 IP/NI1/GBRlPI1 
Page 11 
to be granted a licence (but not an exclusive licence) to continue 
working or. as the case may be. to work the invention. 
(4) Any such licence shall be granted for a reasonable period 
and on reasonable tenns. 
(5) Where an order is made as mentioned in subsection (2) 
above. the person in whose name the application is to proceed 
or any person claiming that he is entitled to be granted any 
such licence may refer to the comptroller the question whether 
the latter is so entitled and whether any such period is or terms 
are reasonable. and the comptroller shall determine the question 
and may. if he considers it appropriate. order the grant of such 
a licence. 
Determination 12.-0) At any time before a patent is granted for an inven­
~~:testions tion in pursuance of an application made under the law of any 
't1 country other than the United Kingdom or under any treaty entl ement , . I ' h h h 1" to foreign or mtematlona convention (wet er or not t at app lcatlon 
and convention has been made)-
patents, etc. (a) any person may refer to the comptroller the question 
whether he is entitled to be granted (alone or with any 
other persons) any such patent for that invention or has 
or would have any right in or under any such patent or 
an application for such a patent; or 
(b) any of two or more co-proprietors of an application for 
such a patent for that invention n1ay so refer the 
question whether any right in or under the application 
should be transferred or granted to any other person; 
and the comptroller shall determine the question so far as he is 
able to and may make such order as he thinks fit to give effect to 
the determination. 
(2) If it appears to the comptroller on a reference of a question 
under this section that the question involves matters which would 
more properly be determined by the court, he may decline to deal 
with it and. without prejudice to the court's jurisdiction to 
determine any such question and make a declaration. or any 
declaratory jurisdiction of the court in Scotland. the court shall 
have jurisdiction to do so, 
(3) Subsection (1) above. in its application to a European 
patent and an application for any such patent, shall have effect 
subject to section 82 below, 
(4) Section 10 above. except so much of it as enables the 
comptroller to regulate the manner in which an application is to 
proceed. shall apply to disputes between joint applicants for any 
such patent as is mentioned in subsection (1) above as it applies 
to joint applicants for a. patent under this Act. IP/N/1/GBRlP/1 
Page 12 
Patents Act 1977 
(5) Section 11 above shall apply in relation to-c.37 
(a) any orders made under subsection (1) above and any 
directions given under section 10 above by virtue of 
subsection (4) above; and 
(b) any orders made and directions given by the relevant 
convention court with respect to a question correspond­
ing to any question which may be determined under 
subsection (1) above; 
as it applies to orders made and directions given apart from this 
section under section 8 or 10 above. 
(6) In the following cases, that is to say-
(a) where an application for a European patent (UK) is 
refused or withdrawn, or the designation of the United 
Kingdom in the application is withdrawn. after publica­
tion of the application but before a question relating to 
the right to the patent has been referred to the comp­
troller under subsection (1) above or before proceedings 
relating to that right have begun before the relevant 
convention court; 
(b) where an' application has been made for a European 
patent (UK) and on a reference under subsection (1) 
above or any such proceedings as are mentioned in 
paragraph (a) above the comptroller, the court or the 
relevant convention court determines by a final decision 
(whether before or after publication of the application) 
that a person other than the applicant has the right to 
the patent, but that person requests the European Patent 
Office that the application for the patent should be 
refused; or 
(c) where an international application for a patent (UK) is 
withdrawn, or the designation of the United Kingdom 
in the application is withdrawn, whether before or after 
the making of any reference under subsection (1) above 
but after publication of the application; 
the comptroller may order that any person (other than the appli­
cant) appearing to him to be entitled to be granted a patent 
under this Act may within the prescribed period make an appli­
cation for such a patent for the whole or part of any matter 
comprised in the earlier application (subject, however, to section 
76 below) and that if the application for a patent under this 
Act is filed, it shall be treated as having been filed on the date 
of filing the earlier application. 
(7) In this section-
(a) references to a patent and an application for a patent 
include respectively references to protection in respect PART I c. 37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 13 
PART I of an invention and an application which, in accordance 
with the law of any country other than the United 
Kingdom or any treaty or international convention, is 
equivalent to an application for a patent or for such 
protection ; and 
(b) a decision shall be taken to be final for the purposes of 
this section when the time for appealing from it has 
expired without an appeal being brought or, where an 
appeal is brought, when it is finally disposed of. 
r..lention of 13.-( 1) The inventor or joint inventors of an invention shall 
inventor. have a right to be mentioned as such in any patent granted for 
the invention and shall also have a right to be so mentioned if 
possible in any published application for a patent for the inven­
tion and, if not so mentioned, a right to be so mentioned in 
accordance with rules in a prescribed document. 
Makmg of 
application. (2) Unless he has already given the Patent Office the informa· 
tion hereinafter mentioned, an applicant for a patent shall within 
the prescribed period file \vith the Patent Office a statement-
(a) identifying the person or persons whom he believes to 
be the inventor or inventors; and 
(b) where the applicant is not the sole inventor or the 
applicants are not the joint inventors, indicating the 
derivation of his or their right to be granted the 
patent; 
and, if he fails to do so, the application shall be taken to be 
withdrawn. 
(3) Where a person has been mentioned as sole or joint inven­
tor in pursuance of this section, any other person who alleges 
that the former ought not to have been so mentioned may at any 
time apply to the comptroller for a certificate to that effect, and 
the comptroller may issue such a certificate; and if he does so, he 
shall accordingly rectify any undistributed copies of the patent 
and of any documents prescribed for the purposes of subsection 
(1) above. 
Applications 
14.-(1) Every application for a patent-
(a) shall be made in the prescribed form and shall be filed 
at the Patent Office in the prescribed manner; and 
(b) shall be accompanied by the fee prescribed for the pur­
poses of this subsection (hereafter in this Act referred 
to as the filing fee). 
(2) Every application for a patent shall contain­
(a) a request for the grant of a patent; IP/N/lIGBRlP/1 
Page 14 
Patents Act 1977 c.37 
(b) a specification containing a description of the invention, 
a claim or claims and any drawing referred to in the 
description or any claim; and 
(c) an abstract; 
but the foregoing provision shall not prevent an application being 
initiated by documents complying with section 15(1) below. 
(3) The specification of an application shall disclose the inven­
tion in a manner which is clear enough and complete enough 
for the invention to be performed by a person skilled in the art. 
(4) Without prejudice to subsection (3) above, rules may pre­
scribe the circumstances in which the specification of an applica­
tion which requires for its performance the use of a micro­
organism is to be treated for the purposes of this Act as comply­
ing with that subsection. 
(5) The claim or claims shall-
(a) define the matter for which the applicant seeks protec-
tion; 
(b) be clear and concise; 
(c) be supported by the description; and 
(d) relate to one invention or to a group of inventions which 
are so linked as to form a single inventive concept. 
(6) Without prejudice to the generality of subsection (5)(d) 
above. rules may provide for treating two or more inventions 
as being so linked as to form a single inventive concept for the 
purposes of this Act. 
(7) The purpose of the abstract is to give technical infonnation 
and on publication it shall not form part of the state of the art 
by virtue of section 2(3) above, and the comptroller may deter­
mine whether the abstract adequately fulfils its purpose and. if 
it does not. may reframe it so that it does. 
(8) Rules may require a person who has made an application 
for a patent for an invention which requires for its performance 
the use of a micro-organism not to impose or maintain in the 
prescribed circumstances any restrictions on the availability to the 
public of samples of the micro-organism and the uses to which 
they may be put. SUbject. however, to any prescribed exceptions. 
and rules may provide that in the event of a contravention of 
any provision included in the rules by virtue of this sub· 
section the specification shall be treated for the purposes of this 
Act as not disclosing the invention in a manner required by 
subsection (3) above. 
(9) An application for a patent may be withdrawn at any 
time before the patent is granted and any withdrawal of such an 
application may not be revoked. PART I c.37 Patents Act 1977 IP/NIlIGBRlPI1 
Page 15 
PAltT I 15.-(1) The date of filing an application for a patent shall, 
Date or filing subject to the following provisions of this Act. be taken to be 
application. the earliest date on which the following conditions are satisfied 
in relation to the application, that is to say-
(a) the documents filed at the Patent Office contain an 
indication that a patent is sought in pursuance of the 
application; 
(b) those documents identify the applicant or applicants 
for the patent: 
(c) those documents contain a description of the invention 
for which a patent is sought (whether or not the descrip­
tion complies with the other provisions of this Act and 
with any relevant rules) ; and 
(cl) the applicant paY9 the filing fee. 
(2) If any drawing referred to in any such application is filed 
later than the date which by virtue of subsection (1) above is to 
be treated as the date of filing the application. but before the 
beginning of the preliminary examination of the application 
under section 17 below, the comptroller shall give the applicant 
an opportunity of requesting within the prescribed period that 
the date on which the drawing is filed shall be treated for the 
purposes of this Act as the date of filing the application. and-
(a) if the applicant makes any such request, the date of 
filing the drawing shall be so treated; but 
(b) otherwise any reference to the drawing in the applica­
tion shall be treated as omitted. 
(3) If on the preliminary examination of an application under 
section 17 below it is found that any drawing referred to in the 
application has not been filed. then-
(a) if the drawing is subsequently filed within the prescribed 
period, the date on which it is filed shall be treated 
for the purposes of this Act as the date of filing the 
application; but 
(b) otherwise any reference to the drawing in the applica­
tion shall be treated as omitted. 
(4) Where, after an application for a patent has been filed 
and before the patent is granted, a new application is filed by 
the original applicant or his successor in title in accordance with 
rules in respect of any part of the matter contained in the 
earlier application and the conditions mentioned in subsection 
(1) above are satisfied in relation to the new application (without 
the new application contravening section 76 below) the new 
application shall be treated as having. as its date of filing, the 
date of filing the earlier application. IP/N/lIGBRlP/1 
Page 16 
Patents Act 1977 c.37 
(5) An application which has a date of filing by virtue of 
the foregoing provisions of this section shall be taken to be 
withdrawn at the end of the relevant prescribed period, unless 
before that end the applicant-
(a) files at the Patent Office one or more claims for the 
purposes of the application and also the abstract; and 
(b) makes a request for a preliminary ex a mina tion and 
search under the following provisions of this Act and 
pays the search fee. PAIlT I 
16.-(1) Subject to section 22 below, where an application Pub~cat.i0n of 
has a date of filing. then, as soon as possible after the end of applIcatIon. 
the prescribed perioo, the comptroller shall, unless the applica-
tion is withdrawn or refused before preparations for its publica-
tion have been completed by the Patent Office, publish it as 
filed (including not only the original claims but also any amend-
ments of those claims and new claims subsisting immediately 
before the completion of those preparations) and he may, if so 
requested by the applicant, publish it as aforesaid during that 
period, and in either event shall advertise the fact and date of its 
publication in the journal. 
(2) The comptroller may omit from the specification of a 
published application for a patent any matter-
(a) which in his opinion disparages any person in a way 
likely to damage him, or 
(b) the publication or exploitation of which wou1d in his 
opinion be generally expected to encourage offensive, 
immoral or anti-social behaviour. 
Examination and search 
17.-0) Where an application for a patent has a date of filing Preliminary 
and is not withdrawn, and before the end of the prescribed examination period- and search. 
(a) a request is made by the applicant to the Patent Office in 
the prescribed form for a preliminary examination and a 
search; and 
(b) the prescribed fee is paid for the examination and 
search (the search fee) ; 
the comptroller shall refer the application to an examiner for 
a preliminary examination and search, except that he shall not 
refer the application for a search until it includes one or more 
claims. 
(2) On a preliminary examination of an application the 
examiner shall determine whether the application complies with 
those requirements of this Act and the rules which are designated PART I c.37 Patents Act 1977 IP/NIlIGBRlPI 1 
Page 17 
by the rules as formal requirements for the purposes of this Act 
and shall report his determination to the comptroller. 
(3) If it is reported to the comptroller under subsection (2) 
above that not all the formal requirements are complied with~ 
he shall give the applicant an opportunity to make observations 
on the report and to amend the application within a specified 
period (subject to section 15(5) above) so as to comply with those 
requirements (subject. however. to section 76 below). nnd if the 
applicant fails to do so the con1ptroller may refuse the applica­
tion. 
(4) Subject to subsections (5) and (6) below. on a search 
requested under this section. the examiner shall nlake such 
investigation as in his opinion is reasonably practicable and 
necessary for him to identify the documents which he thinks will 
be needed to decide. on a substantive examination under section 
18 below. whether the invention for which a patent is sought 
is new and involves an inventive step. 
(5) On any such search the examiner shall determine whether 
or not the search would serve any useful purpose on the applica­
tion as for the time being constituted and-
(a) if he determines that it would serve such a purpose in 
relation to the whole or part of the application, he shall 
proceed to conduct the search so far as it would serve 
such a purpose and shall report on the results of the 
search to the comptroller; and 
{b) if be determines that the search would not serve such a. 
purpose in relation to the whole or part of the applica­
tion. be shall report accordingly to the comptroller; 
and in either event the applicant shall be infonned of the 
examiner's report. 
(6) If it appears to the examiner. either before or on conduct­
ing a search under this section. that an application relates to two 
or more inventions, but that they are not so linked as to form a 
single inventive concept, he shall initially only conduct a search 
in relation to the first invention specified in the claims of the 
application. but may proceed to conduct a search in relation 
to another invention so specified if the applicant pays the search 
fee in respect of the application so far as it relates to that other 
invention. 
(7) After a search has been requested under this section for 
an application the comptroller may at any time refer the applica­
tion to an examiner for a supplementary search. and subsection 
(4) above shall apply in relation to a supplementary search as 
it applies in relation to any other search under this section. IP/N/lIGBRlP/1 
Page 18 
Patents Act 1977 c.37 
18.-0) Where the conditions imposed by section 170) above PART I 
for the comptroller to refer an application to an examiner for a Substantive 
preliminary examination and search are satisfied and at the time examination 
of the request under that subsection or within the prescribed and grant or period- refusal of 
patent. 
(a) a request is made by the applicant to the Patent Office 
in the prescribed form for a substantive examination; 
and 
(b) the prescribed fee is paid for the examination; 
the comptroller shall refer the application to an examiner for a 
substantive examination; and if no such request is made or the 
prescribed fee is not paid within that period, the application 
shall be treated as having been withdrawn at the end of that 
period. 
(2) On a substantive examination of an application the 
examiner shall investigate, to such extent as he considers neces­
sary in view of any examination and search carried out under 
section 17 above, whether the application complies with the 
requirements of this Act and the rules and shall determine that 
question and report his determination to the comptroller. 
(3) If the examiner reports that allY of those requirements 
are not complied with, the comptroller shall give the applicant 
an opportunity within a specified period to make observations 
on the report and to amend the application so as to comply with 
those requirements (subject, however, to section 76 below), and 
if the applicant fails to satisfy the comptroller that those require­
ments are complied with, or to amend the application so as to 
comply with them, the comptroller may refuse the application. 
(4) If the examiner reports that the application, whether as 
originally filed or as amended in pursuance of section 17 above, 
this section or section 19 below, complies with those require­
ments at any time before the end of the prescribed period, the 
comptroller shall notify the applicant of that fact and, subject 
to subsection (5) and sections 19 and 22 below and on payment 
within the prescribed period of any fee prescribed for the grant, 
grant him a patent. 
(5) Where two or more applications for a patent for the same 
invention having the same priority date are filed by the same 
applicant or his successor in title, the comptroller may on that 
ground refuse to grant a patent in pursuance of more than 
one of the applications. 
19.-(1) At any time before a patent is granted in pursuance General 
of an application the applicant may, in accordance with the power to 
prescribed conditions and subject to section 76 below. amend ame,!d . 
the application of his own volition. apphcatlOn before grant. PART I 
Failure of 
application. 
Observations 
by third party 
on 
patentability. c.37 Patents Act 1977 IP/N/1/GBRlP/1 
Page 19 
(2) The comptroller may, without an application being made 
to him for the purpose, amend the specification and abstract 
contained in an application for a patent so as to acknowledge a 
registered trade mark. 
20.-0) If it is not determined that an application for a patent 
complies before the end of the prescribed period with all the 
requirements of this Act and the rules, the application shall be 
treated as having been refused by the comptroller at the end of 
that period. and section 97 below shall apply accordingly. 
(2) If at the end of that period. an appeal to the court is 
pending in respect of the application or the time within which 
such an appeal could be brought has not expired. that period-
(a) where such an appeal is pending, or is brought within 
the said time or before the expiration of any exten­
sion of that time granted (in the case of a first exten­
sion) on an application made within that time or (in 
the case of a subsequent extension) on an application 
made before the expiration of the last previous exten­
sion, shall be extended until such date as the court 
may determine; 
(b) where no such appeal is pending or is so brought. shall 
continue until the end of the said time or, if any exten­
sion of that time is so granted, until the expiration of 
the extension or last extension so granted. 
21.-(1) Where an application for a patent has been published 
but a patent has not been granted to the applicant, any other 
person may make observations in writing to the comptroller on 
the question whether the invention is a patentable invention. 
stating reasons for the observations. and the comptroller shall 
consider the observations in accordance with rules. 
(2) It is hereby declared that a person does not become a 
party to any proceedings under this Act before the comptroller 
by reason only that he makes observations under this section. 
Security and safety 
Inf?r~a~ion 22.-(1) Where an application for a patent is filed in the 
~r~J~~~clai to Patent Office (whether under this Act or any treaty or inter­
r:afm orosafety national convention to which the Unfted Kingdom ~s a party 
of public. and whether before or after the appoInted day) and It appears 
to the comptroller that the application contains information of 
a description notified to him by the Secretary of State as being 
information the publication of which might be prejudicial to 
the defence of the realm, the comptroller may give directions 
prohibiting or restricting the publication of that inIormation 
or its communication to any specified person or description of 
persons. IP/NIl/GBRlPI 1 
Page 20 
Patents Act 1977 c.37 
(2) If it appears to the comptroller that any application so filed 
contains information the publication of whlch might be prejudi­
cial to the safety of the public. he may give directions prohibiting 
or restricting the publication of that information or its com­
munication to any specified person or description of persons 
until the end of a period not exceeding three months from the 
end of the period prescribed for the purposes of section 16 
above. 
(3) While directions are in force under this section with respect 
to an a pplica tion-
(a) if the application is made under this Act, it may pro­
ceed to the stage where it is in order for the grant of 
a patent, but it shaH not be published and that infor­
mation shall not be so communicated and no patent 
shall be granted in pursuance of the application; 
(b) if it is an application for a European patent, it shall 
not be sent to the European Patent Office; and 
(c) if it is an international application for a patent, a copy 
of it shall not be sent to the International Bureau or 
any international searching authority appointed under 
the Patent Co-operation Treaty. 
(4) Subsection (3)(b) above shall not prevent the comptroller 
from sending the European Patent Office any infonnation \vhich 
it is his duty to send that office under the European Patent 
Convention. 
(5) Where the comptroller gives directions under this section 
with respect to any application, he shall give notice of the appli­
cation and of the directions to the Secretary of State. and the 
following provisions shall then have effect:-
(a) the Secretary of State shall, on receipt of the notice, 
consider whether the publication of the application 
or the publication or communication of the informa­
tion in question would be prejudicial to the defence 
of the realm or the safety of the public; 
(b) if the Secretary of State determines under paragraph (a) 
above that the publication of the application or the 
publication or communication of that information 
would be prejudicial to the safety of the public, 
he shall notify the comptroller who shall continue his 
directions under subsection (2) above until they are 
revoked under paragraph (e) below; 
(c) if the Secretary of State determines under paragraph (a) 
above that the publication of the application or the 
publication or communication of that information 
would be prejudicial to the defence of the realm 
or the safety of the public. he shall (unless a notice PART I PART I c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 21 
under paragraph (d) below has previously been given 
by the Secretary of State to the comptroller) reconsider 
that question during the period of nine months from 
the date of filing the application and at least once in 
every subsequent period of twelve months; 
(d) if on consideration of an application at any time it 
appears to the Secretary of State that the publication 
of the application or the publication or comnlunication 
of the information contained in it would not, or would 
no longer, be prejudicial to the defence of the realm 
or the safety of the pUblic, he shall give notice to the 
comptroller to that effect; and 
(e) on receipt of such a notice the comptroller shall revoke 
the directions and may, subject to such conditions (if 
any) as he thinks fit. extend the time for doing any­
thing required or authorised to be done by or under 
this Act in connection with the application. whether 
or not that time has previously expired. 
(6) The Secretary of State may do the following for the pur­
pose of enabling him to decide the question referred to in sub­
section (5)(e) above-
(a) where the application contains infonnation relating to 
the production or use of atomic energy or research into 
matters connected with such production or use, he 
may at any time do one or both of the following, that 
is to say, inspe.ct and authorise the United Kingdom 
Atomic Energy Authority to inspect the application 
and any documents sent to the comptroller in con­
nection with it ; and 
(b) in any other case, he may at any time after (or, with the 
applicant's consent, before) the end of the period pre­
scribed for the purposes of section 16 above inspect 
the application and any such documents ; 
and where that Authority are authorised under paragraph (a) 
above they shall as soon as practicable report on their inspection 
to the Secretary of State. 
(7) Where directions have been given under this section in 
respect of an application for a patent for an invention and, 
before the directions are revoked, that prescribed period expires. 
and the application is brought in order for the grant of a patent, 
then-
(a) if while the directions are in force the invention is 
worked by (or with the written authorisation of or to 
the order of) a government department. the provisions 
of sections 55 to 59 below shall apply as if-
(j) the working were use made by section 55 ; IP/N/lIGBRlP/l 
Page 22 
Patents Act 1977 c.37 
(ii) the application had been published at the end 
of that period; and 
(iii) a patent had been granted for the invention at 
the time the application is brought in order for the 
grant of a patent (taking the tenns of the patent to 
be those of the application as it stood at the time 
it was so brought in order) ; and 
(b) if it appears to the Secretary of State that the applicant 
for the patent has suffered hardship by reason of the 
continuance in force of the directions, the Secretary 
of State may. with the consent of the Treasury. make 
such payment (if any) by way of compensation to the 
applicant as appears to the Secretary of State and the 
Treasury to be reasonable having regard to the 
inventive merit and utility of the invention, the purpose 
for which it is designed and any other relevant 
circumstances. 
(8) Where a patent is granted in pursuance of an application 
in respect of which directions have been given under this section, 
no renewal fees shall be payable in respect of any period during 
which those directions were in force. 
(9) A person who fails to comply with any direction under 
this section shall be liable-
(a) on summary conviction, to a fine not exceeding £1,000 ; 
or 
(b) on conviction on indictment, to imprisonment for a 
tenn not exceeding two years or a fine, or both. PART I 
23.-( 1) Subject to the following provisions of this section, Restrict~on~ 
no person resident in the United Kingdom shall, without written on applicatIOns 
authority granted by the comptroller, file or cause to be filed tl'~~~g by 
outside the United Kingdom an application for a patent for Kingdom 
an invention unless- residents. 
(a) an application for a patent for the same invention has 
been filed in the Patent Office (whether before, on or 
after the appointed day) not less than six weeks before 
the application outside the United Kingdom; and 
(b) either no directions have been given under section 
22 above in relation to the application in the United 
Kingdom or all such directions have been revoked. 
(2) Subsection 0) above does not apply to an application for 
a patent for an invention for which an application Jor a patent 
has first been filed (whether before or after the appointed day) 
in a country outside the United Kingdom by a person resident 
outside the United Kingdom. PART I 
Publication 
and certificate 
of grant. 
Term of 
patent. c.37 Patents Act 1977 IP/NIlIGBRlPI 1 
Page 23 
(3) A person who files or causes to be filed an application for 
the grant of a patent in contravention of this section shall be 
liable-
(a) on summary conviction, to a fine not exceeding £ 1,000 ; 
or 
(b) on conviction on indictment, to imprisonment for a term 
not exceeding two years or a fine, or both. 
(4) In this section-
(a) any reference to an application for a patent includes 
a reference to an application for other protection for 
an invention; 
(b) any reference to either kind of application is a refer­
ence to an application under thIs Act, under the law 
of any COWltry other than the United Kingdom or 
under any treaty or international convention to \vhicb 
the United Kingdom is a party. 
Provisions as to patents after grant 
24.-(1) As soon as practicable after a patent has been granted 
under this Act the comptroller shall publish in the journal a notice 
that it has been granted. 
(2) The comptroller shalt as soon as practicable after he 
publishes a notice under subsection (1) above, send the proprietor 
of the patent a certificate in the prescribed form that the patent 
has been granted to the proprietor. 
(3) The comptroller shall. at the same time as he publishes a 
notice under subsection (1) above in relation to a patent 
publish the specification of the patent, the names of the pro­
prietor and (if different) the inventor and any other matters con­
stituting or relating to the patent which in the comptroller's 
opinion it is desirable to publish. 
25.-(1) A patent granted under this Act shall be treat~d for 
the purposes of the following provisions of this Act as having 
been granted, and shall take effect. on the date on which notice 
of its grant is published in the journal and. subject to sub­
section (3) below. shall continue in force until the end of the 
period of 20 years beginning with the date of filing the applica­
tion for the patent or with such other date as may be prescribed. 
(2) A rule prescribing any such other date under this section 
shall not be made unless a draft of the rule has been laid 
before. and approved by resolution of. each House of Parliament. 
(3) A patent shall cease to have effect at the end of the 
period prescribed for the payment of any renewal fee if it is 
not paid within that period. 
(4) If during the period of six months immediately following 
the end of the prescribed period the renewal fee and any IP/N/1/GBRlP/l 
Page 24 
Patents Act 1977 c.37 
prescribed additional fee are paid, the patent shall be treated for 
the purposes of this Act as if it had never expired, and 
accordingly-
(a) anything done under or in relation to it during that 
further period shall be valid; 
(b) an act which would constitute an infringement of it if it 
bad not expired shall constitute such an infringement; 
and 
(c) an act which would constitute the use of the patented 
invention for the services of the Crown if the patent 
had not expired shall constitute that use. 
(5) Rules shall include provision requiring the comptroller 
to notify the registered proprietor of a patent that a renewal 
fee has not been received from him in the Patent Office before 
the end of the prescribed period and before the framing of the 
notification. PART I 
26. No person may in any proceeding object to a patent or to Pat,ent not to 
an amendment of a specification of a patent on the ground that Fe lrp~~ed 
the claims contained in the specification of the patent, as they u~~t:c 0 
stand or, as the case may be, as proposed to be amended, relate- . 
(a) to more than one invention, or 
(b) to a group of inventions which are not so linked as to 
form a single inventive concept. 
27.-( 1) Subject to the following provisions of this section General power 
and to section 76 below, the comptroller may, on an appli-to aI?fien~ . d b h . f 11 h 'fi' specl catIon catIOn ma e y t e propnetor 0 a patent, a ow t e speCl catIOn after grant 
of the patent to be amended subject to such conditions, if any, . 
as he thinks fit. 
(2) No such amendment shall be allowed under this section 
where there are pending before the court or the comptroller 
proceedings in which the validity of the patent may be put in 
issue. 
(3) An amendment of a specification of a patent under this 
section shall have effect and be deemed always to have had effect 
from the grant of the patent. 
(4) The comptroller may, without an application being made 
to him for the purpose, amend the specification of a patent so 
as to acknowledge a registered trade-mark. 
(5) A person may give notice to the comptroller of his 
opposition to an application under this section by the proprietor 
of a patent, and if he does so the comptroller shall notify the 
proprietor and consider the opposition in deciding whether to 
grant the application. c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 25 
PART I 28.-(1) Where a patent has ceased to have effect by reason of 
Restoration of a failure to pay any renewal fee within the prescribed period, 
lapsed patents. an application for the restoration of the patent may be made 
to the comptroller under this section within one year from the 
date on which the patent ceased to have effect. 
(2) An application under this section may be made by the 
person who was the proprietor of the patent or by any other 
person who would have been entitled to the patent if it had not 
ceased to have effect; and where the patent was held by two or 
more persons jointly, the application may. with the leave of the 
comptroller. be made by one or more of them without joining 
the others. 
(3) If the comptroller is satisfied that-
(a) the proprietor of the patent took reasonable care to see 
that any renewal fee was paid within the prescribed 
period or that that fee and any prescribed additional 
fee were paid within the six months immediately follow­
ing the end of that period, and 
(b) those fees \vere not so paid because of circumstances 
beyond his control, 
the comptroller shall by order restore the patent on payment of 
any unpaid renewal fee and any prescribed additional fee. 
(4) An order under this section may be made subject to such 
conditions as the comptroller thinks fit (including a condition 
requiring compliance with any provisions of the rules relating 
to registration which have not been complied with). and if the 
proprietor of the patent does not comply with any condition 
of such an order the comptroller may revoke the order and give 
such directions consequential on the revocation as he thinks fit. 
(5) \Vhere an order is made under this section and, between 
the end of the period of six months beginning with the date 
when the patent concerned ceased to have effect and the date of 
the application under this section,-
(a) a person continued to do or did again an act which 
would have constituted an infringement of the patent 
if it had not expired and which he first did before the 
end of that period. that act shall constitute such an 
infringement; or 
(b) a person began in good faith to do an act which would 
constitute an infringement of the patent if it had been 
in force or made in good faith effective and serious 
preparations to do such an act, he shall. after the order 
comes into force, have the rights conferred by sub­
section (6) below. IP/NIlIGBRlPI 1 
Page 26 
Patents Act 1977 
(6) Any such person shall have the right-c.37 
(a) to continue to do or, as the case may be, to do that act 
himself ; and 
(b) if it was done Of preparations had been made to do it 
in the course of a business. to assign the right to do it 
or to transmit that right on his death Of. in the case of 
a body corporate on its dissolution. to any person who 
acquires that part of the business in the course of 
which the act was done Of preparations had been made 
to do it, Of to authorise it to be done by any partners 
of his for the time being in that business ; 
and the doing of that act by virtue of this subsection shall not 
amount to an infringement of the patent concerned. 
(7) The rights mentioned in subsection (6) above shall not 
include the right to grant a licence to any person to do an act 
so mentioned. 
(8) \\'here a patented product is disposed of by any person 
to another in exercise of a right conferred by subsection (6) 
above, that other and any other person claiming through him 
shall be entitled to deal with the product in the same way as if 
it had been disposed of by a sole registered proprietor. 
(9) Subsections (5) to (7) above shall apply in relation to 
an act which would constitute the use of a patented invention 
for the services of the Crown if the patent had been in force as 
they apply in relation to an act which would constitute an 
infringement of the patent if it had been in force. and subsection 
(8) above shall apply accordingly to the disposal of a patented 
product in the exercise of a right conferred by subsection (6) 
above as applied by the foregoing provision. PART I 
29.-(1) The proprietor of a patent may at any time by notice Surrender of 
given to the comptroller offer to surrender his patent. patents. 
(2) A person may give notice to the comptroller of his opposi­
tion to the surrender of a patent under this section, and if he 
does so the comptroller shall notify the proprietor of the patent 
and determine the question. 
(3) If the comptroller is satisfied that the patent may properly 
be surrendered, he may accept the offer and. as from the date 
when notice of his acceptance is published in the journal. the 
patent shall cease to have effect, but no action for infringement 
shall lie in respect of any act done before that date and no right to 
compensation shall accrue for any use of the patented invention 
before that date for the services of the CrowD. c.37 Patents Act 1977 IP/N/lIGBRJP/l 
Page 27 
PART I Property in patents and applications, and registration 
Naturet~r, and 30.-(1) Any patent or application for a patent is personal 
transac Ions ( . h b· th· . .) d in patents and property WIt out elng a mg In actiOn, an any patent or any 
applications such application and rights in or under it may be transferred, 
for patents. created or granted in accordance with subsections (2) to (7) 
below. 
(2) Subject to section 36(3) below, any patent or any such 
application. or any right in it. may be assigned or mortgaged. 
(3) Any patent or any such application or right shall vest by 
operation of law in the same way as any other personal property 
and may be vested by an assent of personal representatives. 
(4) Subject to section 36(3) below, a licence may be granted 
under any patent or any such application for working the inven­
tion which is the subject of the patent or the application; and-
(a) to the extent that the licence so provides, a sub-licence 
may be granted under any such licence and any such 
licence or sub-licence may be assigned or mortgaged; 
and 
(b) any such licence or sub-licence shall vest by operation 
of law in the same way as any other personal property 
and may be vested by an assent of personal 
representatives. 
(5) Subsections (2) to (4) above shall have effect subject to the 
following provisions of this Act. 
(6) Any of the following transactions. that is to say-
(a) any assignment or mortgage of a patent or any such 
application, or any right in a patent or any such 
application; 
(b) any assent relating to any patent or any such applica-
tion or right; 
shall be void unless it is in writing and is signed by or on behalf 
of the parties to the transaction (or, in the case of an assent 
or other transaction by a personal representative. by or on 
behalf of the personal representative) or in the case of a body 
corporate is so signed or is under the seal of that body. 
(7) An assignment of a patent or any such application or a 
share in it, and an exclusive licence granted under any patent 
or any such application, may confer on the assignee or licensee 
the right of the assignor or licensor to bring proceedings by 
virtue of section 61 or 69 below for a previous infringement or 
to bring proceedings under section 58 below for a previous act. IP IN I 11GB RIP 11 
Page 28 
Patents Act 1977 c.37 
31.-0) Section 30 above shall not extend to Scotland, but PARr I 
instead the following provisions of this section shall apply there. Nature of, 
) 1· . f d'gh . and (2 Any patent or app lcahon or a patent, an any n t In transactions 
or under any patent or any such application, is incorporeal in, patents 
moveable property, and the provisions of the following sub-and. . 
sections and of section 36(3) below shall apply to any grant of ~pphCattlOtn~ . .. d ... I' h lor pa en S 10 lIcences. assIgnahons an seCUrIttes In re atlOn to suc property. Scotland. 
(3) Any patent or any such application, or any right in it. may 
be assigned and security may be granted over a patt!nt or any 
such application or right. 
(4) A licence may be granted, under any patent or any 
application for a patent, for working the invention which is the 
subject of the patent or the application. 
(5) To the extent that any licence granted under subsection (41 
above so provides, a sub-licence may be granted under any :iuch 
licence and any such licence or sub-licence may be assigned 
and security may be granted over it. 
(6) Any assignation or grant of security under this section 
may be carried out only by writing probative or holograph 
of the parties to the transaction. 
(7) An assignation of a patent or application for a patent or a 
share in it, and an exclusive licence granted under any patent or 
any such application, may confer on the assignee or licensee the 
right of the assignor or licensor to bring proceedings by virtue 
of section 61 or 69 below for a previous infringement or to bring 
proceedings under section 58 below for a previous act. 
32.-( 1) There shall continue to be a register kept at the Register of 
Patent Office and known as the register of patents which shall patents, etc. 
comply with rules made by virtue of this section and shall be 
kept in accordance with such rules; and in this Act, except so 
far as the context otherwise requires-
" register", as a noun. means the register of patents; 
" register", as a verb, means, in relation to any thing, to 
register or register particulars, or enter notice, of that 
thing in the register and, in relation to a person. means 
to enter his name in the register; 
and cognate expressions shall be construed accordingly. 
(2) Without prejudice to any other provision of this Act or 
rules. rules may make provision with respect to the following 
matters, including provision imposing requirements as to any of 
those matters, that is to say-
(a) the registration of patents and of published applications 
for patents; 
B C. 37 Patents Act 1977 IP/N/1/GBRlP/l 
Page 29 
PART I (b) the registration of transactions, instruments or events 
Effect of 
registration. 
etc., on rights 
in patents. affecting rights in or under patents and applications; 
(c) the furnishing to the comptroller of any prescribed 
documents or description of documents in connection 
with any matter which is required to be registered; 
(d) the correction of errors in the register and in any docu­
ments filed at the Patent Office in connection with 
registration; 
(e) making the register or entries or reproductions of entries 
in it available for inspection by the public; 
(f) supplying certified copies of any such entries or reproduc­
tions to persons requiring them; and 
(g) the publication and advertisement of anything done 
under this Act or rules in reIa tion to the register. 
(3) Notwithstanding anything in subsection (2)(b) above, no 
notice of any trust, whether express, implied or constructive, shall 
be entered in the register and the comptroller shall not be 
affected by any such notice. 
33.-(1) Any person who claims to have acquired the property 
in a patent or application for a patent by virtue of any trans­
action, instrument or event to which this section applies shall 
be entitled as against any other person who claims to have 
acquired that property by virtue of an earlier transaction, instru­
ment or event to which this section applies if, at the time of the 
later transaction, instrument or event-
(a) the earlier transaction, instrument or event was not 
registered, or 
(b) in the case of any application which has not been pub­
lished, notice of the earlier transaction, instrument or 
event had not been given to the comptroller, and 
(c) in any case, the person claiming under the later trans­
action, instrument or event, did not know of the earlier 
transaction, instrument or event. 
(2) Subsection (1) above shall apply equally to the case where 
any person claims to have acquired any right in or under a 
patent or application for a patent, by virtue of a transaction, 
instrument or event to which this section applies, and that right 
is incompatible with any such right acquir~d by virtue of an 
earlier transaction, instrument or event to which this section 
applies. IP/NI1/GBRJPI 1 
Page 30 
Patellts Act 1977 c.37 
(3) This section applies to the following transactions, instru­
ments and events:-PART I 
(a) the assignment or assignation of a patent or application 
for a patent. or a right in it; 
(b) the mortgage of a patent or application or the granting 
of security over it ; 
(c) the grant, assignment or assignation of a licence or 
sub-licence, or mortgage of a licence or sub-licence, 
under a patent or application; 
(d) the death of the proprietor or one of the proprietors of 
any such patent or application or any person baving 
a right in or under a patent or application and 
the vesting by an assent of personal representatives 
of a patent, application or any such right; and 
(e) any order or directions of a court or other competent 
authority-
(i) transferring a patent or application or any right 
in or under it to any person; or 
(ii) that an application should proceed in the llame 
of any person; 
and in either case the event by virtue of which the court 
or authority had power to make any such order or give 
any such directions. 
(4) \Vhere an application for the registration of a transaction. 
instrument or event has been made, but the transaction, instru­
ment or event has not been registered, then, for the purposes of 
subsection (l)(a) above, registration of the application shall be 
treated as registration of the transaction, instrument or event. 
34.-0) The court may, on the application of any person Rectification 
aggrieved, order the register to be rectified by the making. or of register. 
the variation or deletion, of any entry in it. 
(2) In proceedings under this section the court may determine 
any question which it may be necessary or expedient to decide 
in connection with the rectification of the register. 
(3) Rules of court may provide for the notification of any 
application under this section to the comptroller and for his 
appearance on the application and for giving effect to any 
order of the court on the application. 
35.-( 1) The register shall be prima facie evidence of anything Evidence of 
required or authorised by this Act or rules to be registered and register, 
in Scotland shall be admissible and sufficient evidence of any documents, 
such thing. etc. 
(2) A certificate purporting to be signed by the comptroller 
and certifying that any entry which he is authorised by this 
B2 PART 1 c.37 Pah'Jlrs ... kr 1977 IP/N/lIGBRlP/1 
Page 31 
Act or rules to make has or has r:ct been made, or that any 
other thing which he is so authorised to do has or h3S not 
been done: shall be prima facie evider.ce .• and in Scotland shall 
be admissible and sufficient e\idence. of the matters so certified. 
G) Each of the following, that is to say-
'cl a copy ef any entry in the register or of any document 
kept in the Patent Office, any specification of a patent 
or any application for 2 patent which has been pue­
lished ; 
(b) a document reproducing in legible form an entry made in 
the register otherwise than in legible fornl ; or 
IC) an extract from tbe register or of any document mer..-
tioned in paragraph (a) or (b) above; 
PU:'porting to be certified by the c0r.iptroller and to be sealed 
with the seal of the Patent Office shall be admitted in evidence 
'.\'ithout further proof and without production of the original. arid 
jn Scotland such evidence shall be sufficient evidence. 
36.-( 1) \Vhere a patent is granted to two or more perscns, Cc-('w:: ers!-li r' e[ patent:; ~n,: each of them shall, subject to any agreement to the contrary, be 
arr!icG.t;('.~s entitied to an equal undivided share in the patent. 
fe: fc.te:J:S. 
i21 \Vhere two or more persons are proprietors of a patent, 
then, subject to the provisions of this section and subject to any 
::-f1eement to the contrary-
(at each of them shall be entitled. by himself or his ager:ts, 
to do in respect of the invention concerned. for his 
o\\n benefit and without the consent of or the need 
to account to the other or others. any act which wou1d 
apart from this subsection a:!d section 55 belov,:, 
amount to an !nfringement of the patent concerned: 
and 
\b} any such act shall not amount to an infringement of 
the patent concerned. 
(3) Subject to the provisions of sections 8 and 12 above and 
section 37 below and to any agreenwnt for the time being in force. 
where two or more persons are proprietors of a patent one of 
them shall not without the consent of the other or others 
grant a licence under the patent or assign or mortgage a share 
In the patent or in Scotland ca use or pennit security to be 
granted over it. 
(4) Subject to the provisions of those sections, where two or 
more persons are proprietors of a patent. anyone else may 
supply one of those persons with the means, relating to an 
essential element of the invention, for putting the invention 
jnto effect, and the supply of those means by virtue of this 
subsection shaH not amount to an infringement of the patent. IP/NIlIGBRlPI 1 
Page 32 
Patents Act 1977 c.37 
(5) Where a patented product is disposed of by any of two or 
more proprietors to any person, that person and any other 
person claiming throcgh him shall be entitled to deal with the 
product in the same way as if it bad been disposed ef by a sole 
registered proprietor. 
(6) Nothing in subsection (1) or (2) above shall affect the 
mutual rights .... or obligations of trustees or of the personal repre­
sentatives of a deceased person, or their rights or obligations as 
such. 
(7) The foregoing provisions of this section shall have effect 
in relation to an application for a patent \vhich is filed as they 
have effect in relation to a patent and-
(a) references to a patent and a patent being granted shall 
accordingly include references respectively to any such 
application and to the application being filed; and 
(b) the reference in subsection (5) above to a patented 
product shall be construed accordingly. PART I 
37.-(l) After a patent has been granted for an invention- Det~rmiDatjon 
(a) any person may refer to the comptroller the question of nght [to 
h h b . h . f b patent a ter W et er e IS t e true proprIetor 0 t e patent .or grant. 
whether the patent should have been granted to hIm 
(in either case alone or jointly with any other persons) 
or whether the patent or any right in or under it should 
be transferred to him (alone or jointly with any other 
persons) ; and 
(b) any of two or more persons registered as joint propri­
etors of the patent may refer to the comptroller the 
question whether any right in or under the patent 
should be transferred or granted to any other person; 
and the comptroller shall determine the question and make 
such order as he thinks fit to give effect to the determination. 
(2) \Vithout prejudice to the generality of subsection (1) 
above, an order under that subsection may contain provision-
(a) directing that the person by whom the reference is made 
under that subsection shall be included (\vhether or not 
to the exclusion of any other person) among the persons 
registered as proprietors of the patent; 
(b) directing the registration of a transaction. instrument or 
event by virtue of which that person has acquired any 
right in or under the patent; 
(c) granting any licence or other right in or under the patent; 
(cl) directing the proprietor of the patent or any person 
baving any right in or under the patent to do anything 
specified in the order as necessary to carry out the other 
provisions of the order. 
B3 PART I c.37 Patents Act 1977 IP/N/1/GBRlP/l 
Page 33 
(3) If any person to whom directions have been given under 
subsection (2)(d) above fails to do anything necessary for carrying 
out any such directions within 14 days after the date of the order 
containing the directions, the comptroller may, on application 
made to him by any person in whose favour or on whose refer­
ence the order containing the directions was made, authorise him 
to do that thing on behalf of the person to whom the directions 
were given. 
(4) Where the comptroller finds on a reference under sub­
section (l)(a) above that the patent was granted to a person not 
entitled to be granted that patent (whether alone or with other 
persons) and on an application made under section 72 below 
makes an order on that ground for the conditional or uncondi­
tional revocation of the patent, the comptroller may order that 
the person by whom the application was made or his successor in 
title may. subject to section 76 below. make a new application 
for a patent-
(a) in the case of unconditional revocation. for the \-vhole of 
the matter comprised in the specification of that patent; 
and 
(b) in the case of conditional revocation. for the matter 
which in the opinion of the comptroller should be 
excluded from that specification by amendment under 
section 75 below; 
and where such a new application is made. it shall be treated as 
having been filed on the date of filing the application for the 
patent to which the reference relates. 
(5) On any such reference no order shall be made under this 
section transferring the patent to which the reference relates on 
the ground that the patent was granted to a person not so entitled, 
and no order shall be made under subsection (4) above on that 
ground. if the reference was made after the end of the period of 
two years beginning with the date of the grant. unless it is shown 
that any person registered as a proprietor of the patent knew at 
the time of the grant or, as the case may be. of the transfer of 
the patent to him that he was not entitled to the patent. 
(6) An order under this section shall not be so made as to 
affect the mutual rights or obligations of trustees or of the 
personal representatives of a deceased person. or their rights or 
obligations as such. 
(7) Where a question is referred to the comptroller under 
subsection (l)(a) above an order shall not be made by virtue of 
subsection (2) or under subsection (4) above on the reference 
unless notice of the reference is given to all persons registered as IP/NI 1 IGBRlPI 1 
Page 34 
Patents Act 1977 c.37 
proprietor of the patent or as having a right in or under the 
patent, except those who are parties to the reference. 
(8) If it appears to the comptroller on a reference under sub­
section (1) above that the question referred to him would more 
properly be determined by the court. he may decline to deal 
with it and, without prejudice to the court's jurisdiction to 
determine any such question and make a declaration, or any 
declaratory jurisdiction of the court in Scotland, the court shall 
have jurisdiction to do so. 
(9) The court shall not in the exercise of any such declaratory 
jurisdiction detennine a question whether a patent was granted 
to a person not entitled to be granted the patent if the proceed­
ings in which the jurisdiction is invoked were commenced after 
the end of the period of two years beginning with the date of 
the grant of the patent. unless it is shown that any person 
registered as a proprietor of the patent knew at the time of the 
grant or. as the case may be. of the transfer of the patent to him 
that he was not entitled to the patent. PART J 
38.-(1) Where an order is made under section 37 above that Effect of 
a patent shall be transferred from any person or persons (the old transfer 
proprietor or proprietors) to one or more persons (whether or not of ~atent37 
including an old proprietor), then. except in a case falling within un er s. . 
subsection (2) below. any licences or other rights granted or 
created by the old proprietor or proprietors shall. subject to 
section 33 above and to the provisions of the order. continue in 
force and be treated as granted by the person or persons to 
whom the patent is ordered to be transferred (the new proprietor 
or proprietors). 
(2) Where an order is so made that a patent shall be trans­
ferred from the old proprietor or proprietors to one or more 
persons none of whom was an old proprietor (on the ground 
that the patent was granted to a person not entitled to be granted 
the patenO. any licences or other rights in or under the patent 
shall. subject to the provisions of the order and subsection (3) 
below. lapse on the registration of that person or those persons 
as the new proprietor or proprietors of the patent. 
(3) Where an order is so made that a patent shall be trans­
ferred as mentioned in subsection (2) above or that a person 
other than an old proprietor may make a new application for a 
patent and before the reference of the question under that section 
resulting in the making of any such order is registered. the old 
proprietor or proprietors or a licensee of the patent. acting in 
good faith. worked the invention in question in the United 
Kingdom or made effective and serious preparations to do so. 
B4 PART I 
Right to 
employees' 
inventions. 
OJrnpensation 
of employees 
for certain 
inventions. c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 35 
the old proprietor or proprietors or the licensee shall. on Il1aking 
a request to the new proprietor or proprietors within the pre­
scribed period, be entitled to be granted a licence (but not an 
exclusive licence) to continue working or, as the case may be, 
to work the invention, so far as it is the subject of the new 
application. 
(4) Any such licence shall be granted for a reasonable period 
and on reasonable terms. 
(5) The ne\v proprietor or proprietors of the patent or any 
person claiming that he is entitled to be granted any such licence 
may refer to the comptroller the question whether that person is 
so entitled and whether any such period is or terms are reason­
able, and the comptroller shall determine the question and may, 
if he considers it appropriate, order the grant of such a licence. 
Employees' inventions 
39.-( 1) Notwithstanding anything in any rule of la\v, an 
invention made by an employee shall. as between him and 
his employer, be taken to belong to his employer for the purposes 
of this Act and all other purposes if-
(a) it was made in the course of the normal duties of the 
employee or in the course of duties falling outside his 
normal duties, but specifically assigned to him, and the 
circumstances in either case were such that an inven­
tion might reasonably be expected to result from the 
carrying out of his duties; or 
(b) the invention was made in the course of the duties 
of the employee and, at the time of making the inven­
tion, because of the nature of his duties and the particu­
lar responsibilities arising fron1 the nature of his 
duties he had a special obligation to further the interests 
of the employer's undertaking. 
(2) Any other invention made by an employee shall. as be­
tween him and his employer, be taken for those purposes to 
belong to the employee. 
40.-(1) Where it appears to the court or the comptroller on 
an application made by an employee within the prescribed period 
that the employee has made an invention belonging to the 
employer for which a patent has been granted. that the patent 
is (havi1'lg regard among other things to the size and nature of 
the employer's undertaking) of outstanding benefit to the em­
ployer and that by reason of those facts it is just that the 
employee should be awarded compensation to be paid by the 
employer, the court or the comptroller may award him such 
compensation of an amount determined under section 41 below. IP/N/lIGBRlP/l 
Page 36 
Patellts Act 1977 c.37 
(2) Where it appears to the court or the comptroller on an 
application made by an employee within the prescribed period 
that-
(a) a patent has been granted for an invention made by and 
belonging to the employee ; 
(b) his rights in the invention, or in any patent or appli­
cation for a patent for the invention. have since the 
appointed day been assigned to the employer or an 
exclusive licence under the patent or application has 
since the appointed day been granted to the employer; 
(c) the benefit derived by the employee from the contract 
of assignment. assignation or grant or any ancillary 
contract (" the relevant contract") is inadequate in 
relation to the benefit derived by the employer from the 
patent; and 
(d) by reason of those facts it is just that the employee 
should be awarded compensation to be paid by the 
employer in addition to the benefit derived from the 
relevant contract; 
the court or the comptroller may award him such compensation 
of an amount determined under section 41 below. 
(3) Subsections (1) and (2) above shall not apply to the inven­
tion of an employee where a relevant collective agreement pro­
vides for the payment of compensation in respect of inventions 
of the same description as that invention to employees of the 
same description as that employee. 
(4) Subsection (2) above shall have effect notwithstanding any­
thing in the relevant contract or any agreement applicable to 
the invention (other than any such collective agreement). 
(5) If it appears to the comptroller on an application under 
this section that the application involves matters which would 
more properly be determined by the court. he may decline to 
deal with it. 
(6) In this section-
"the prescribed period". in relation to proceedings before 
the court. means the period prescribed by rules of court. 
and 
" relevant collective agreement" means a collective agree­
ment within the meaning of the Trade Union and PART I 
Labour Relations Act 1974. made by or on behalf of a 1974 c. 52. 
trade union to which the employee belongs. and by the 
employer or an employers' association to which the 
employer belongs which is in force at the time of the 
making of the invention. PART I c.37 Patellts Act 1977 IP/NIlIGBRlPI 1 
Page 37 
(7) References in this section to an invention belonging to an 
employer or employee are references to it so belonging as between 
the employer and the employee. 
Amount of 
compensation. 41.-( 1) An a ward of compensation to an employee under 
section 400) or (2) above in relation to a patent for an inven· 
tion shall be such as will secure for the employee a fair share 
(having regard to all the circumstances) of the benefit which 
the employer has derived. or may reasonably be expected to 
derive. from the patent or from the assignment. assignation or 
grant to a person connected with the employer of the property 
or any right in the invention or the property in, or any right in 
or under. an application for that patent. 
1965 c. 4. (2) For the purposes of subsection (1) above the alnount of 
any benefit derived or expected to be derived by an employer 
from the assignn1ent, assignation or grant of-
(a) the property in. or any right in or under. a patent for 
the invention or an application for such a patent ; or 
(b) the property or any right in the invention; 
to a person connected with him shall be taken to be the amount 
which could reasonably be expected to be so derived by the 
employer if that person had not been connected with him. 
(3) Where the Crown or a Research Council in its capacity 
. as employer assigns or grants the property in. or any right in or 
under, an invention, patent or application for a patent to a 
body having among its functions that of developing or exploiting 
inventions resulting from public research and does so for no 
consideration or only a nominal consideration. any benefit 
derived from the invention, patent or application by that body 
shall be treated for the purposes of the foregoing provisions of 
this section as so derived by the Crown or, as the case may be, 
Research Council. 
In this subsection" Research Council" means a body which 
is a Research Council for the purposes of the Science and Tech­
nology Act 1965. 
(4) In determining the fair share of the benefit to be secured 
for an employee in respect of a patent for an invention which 
has always belonged to an employer, the court or the comp­
troller shall, among other things, take the following matters into 
account, that is to say-
(a) the nature of the employee's duties, his remuneration 
and the other advantages he derives or has derived IP/N/l/GBRlP/1 
Page 38 
Patents Act 1977 c.37 
from his employment or has derived in relation to the PART I 
invention under this Act; 
(b) the effort and skill which the employee has devoted to 
making the invention; 
(c) the effort and skill which any other person has devoted 
to making the invention jointly with the employee 
concerned, and the advice and other assistance con­
tributed by any other employee who is 110t a joint 
inventor of the invention; and 
(d) the contribution made by the employer to the making, 
developing and working of the invention by the provi, 
sion of advice, facilities and other assistance, by the 
provision of opportunities and by his managerial and 
commercial skill and activities. 
(5) In determining the fair share of the benefit to be secured 
for an employee in respect of a patent for an invention which 
originally belonged to him, the court or the comptroller shall, 
among other things, take the following matters into account, 
that is to say-
(a) any conditions in a licence or licences granted under 
this Act or otherwise in respect of the invention or the 
patent; 
(b) the extent to which the invention was made jointly by 
the employee with any other person; and 
(c) the contribution made by the employer to the making, 
developing and working of the invention as mentioned 
in subsection (4)(d) above. 
(6) Any order for the payment of compensation under section 
40 above may be an order for the payment of a lump sum or for 
periodical payment, or both. 
(7) \Vithout prejudice to section 32 of the Interpretation 18SY c. 63. 
Act 1889 (which provides that a statutory power may in general 
be exercised from time to time), the refusal of the court or 
the comptroller to make any such order on an application 
made by an employee under section 40 above shall not prevent 
a further application being made under that section by him or 
any successor in ti tie of his. 
(8) Where the court or the comptroller has made any such 
order, the court or he may on the application of either the em­
ployer or the employee vary or discharge it or suspend any 
provision of the order and revive any provision so suspended, 
and section 40(5) above shall apply to the application as it 
applies to an application under that section. 
(9) In England and Wales any sums awarded by the comp­
troller under section 40 above shall, if a county court so orders, PART I, 
Enforceability 
of contracts 
relating to ' 
employees' 
inventions. 
Supple­
mentary. c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 39 
be recoverable by execution issued frolu the cOJjnty court or 
otherwise as if they were payable under an order of that court. 
(10) In Scotland an order made under section 40 a bove by the 
comptroller for the payment of any sums may be enforced in 
like manner as a recorded decree arbitral. 
(11) In Northern Ireland an order made under section 40 
above by the comptroller for the payment of any sums may be 
enforced as if it were a money judgment. 
42.-( 1) This section applies to any contract (whenever m~de) 
relating to inventions made by an employee, being a contract 
entered into by him-
(a) \vith the employer (alone or with another) ; or 
(b) \vith some other person at the request of the employer or 
in pursuance of the employee's contract of employment. 
(2) Any term in a contract to which this section applies which 
diminishes the employee's rights in inventions of any description 
made by him after the appointed day and the date of the con­
tract, or in or under patents for those inventions or applications 
for such patents, shall be unenforceable against him to the extent 
that it diminishes his rights in an invention of that description 
so made, or in or under a patent for such an invention or an 
application for any such patent. 
(3) Subsection (2) above shall not be construed as derogating 
from any duty of confidentiality o\ved to his employer by an 
employee by virtue of any rule of law or otherwise. 
(4) This section applies to any arrangement made with a Crown 
employee by or on behalf of the Crown as his employer as it 
applies to any contract made between an employee and an 
employer other than the Crown, and for the purposes of this 
section" Crown employee" means a person employed under or 
for the purposes of a government department or any officer or 
body exercising on behalf of the Crown functions conferred by 
any enactment. 
43.-(1) Sections 39 to 42 above shall not apply to an inven­
tion made before the appointed day. 
(2) Sections 39 to 42 above shall not apply to an invention 
made by an employee unless at the time he made the invention 
one of the following conditions was satisfied in his case. tha,t is 
to say-
(a) he was mainly employed in the United Kingdom; or 
(b) he was not mainly employed anywhere or his place of 
employment could not be determined. but his employer 
had a place of business in the United Kingdom to IP/N/l/GBRlP/l 
Page 40 
Pale!!!S .-lct 1977 1-C. _ J 
which the empluyee was attached, whether or not h·o! 
\vas also attached dSl!where. 
(3) In sections 39 to 42 abov~ Jnd this section, except so far ;1:5 
the context otherwise requires, references to the making of an 
invention by an employee are references to his rnakir:g it alone 
or jointly with any other person, but do not include references 
to his merely contributing advice or other assistance in the 
making of an invention by another employee. 
(4) Any references in sections .to to 42 above to a patent and 
to a patent being granted are respectively references to a patent 
or other protection and to its being granted whether under the 
law of the United Kingdom or the law in force in any other 
country or under any treaty or international convention. 
(5) For the purposes of sections 40 and 41 above the benefit 
derived or expected to be derived by an employer from a patent 
shall, where he dies before any av,:ard is made under section 40 
above in respect of the patent, include any benefit derived or 
expected to be derived from the patent by his personal repre­
sentatives or by any person in whom it was vested by their 
assent. 
(6) Where an employee dies before an award is made under 
section 40 above in respect of a patented invention made by hin~, 
his personal representatives or their successors in title may 
exercise his right to make or proceed with an application for 
compensation under subsection (1) or (2) of that section. 
(7) In sections 40 and 41 above and this section '" benefit ., 
means benefit in money or money's worth. PARr I 
(8) Section 533 of the Income Rnd Corporation Taxes Act 19-:-'J ;:. lQ. 
1970 (definition of connected persons) shall apply for deter-
mining for the purposes of section 41 (2) above whether one 
person is connected with another as it applies for determining 
that question for the purposes of the Tax Acts. 
Contracts as to patented products, etc. 
44.-(1) Subject to the provisions of this section, anv con- A...,oidan~ of 
dition or !erm of a contract for the supply of a patented p~oduct c:~:~.i~:,,-, 
or of a lIcence to work a patented invention, or of a contract r",y·dtl~:" ... 
1 t· h 1 l' h ]1 b .. . con 1.100s. re a mg to any suc supp y or lcence, s a e VOId In so far 
it purports-
(a) in the case of a contract for supply, to require the 
person supplied to acquire from the supplier, or his 
nominee, or prohibit him from acquiring from any 
specified person, or from acquiring except from the 
supplier or his nominee, anything other than the 
patented product: PART I c.37 Patents Act 1977 IPINIl/GBRlPI 1 
Page 41 
(b> in the case of a licence to work a patented invention. 
to require the licensee to acquire from the licensor 
or his nominee, or prohibit him from acquiring from 
any specified person, or from acquiring except from 
the licensor or his nominee, anything other than the 
product which is the patented invention or (if it is a 
process) other than any product obtained directly by 
means of the process or to which the process has been 
applied ; 
(c) in either case, to prohibit the person supplied or licensee 
from using articles (whether patented products or not) 
which are not supplied by. or any patented process 
which does not belong to, the supplier or licensor. or 
his nominee, or to restrict the right of the person 
supplied or licensee to use any such articles or process. 
(2) Subsection (1) above applies to contracts and licences 
whether made or granted before or after the appointed day, but 
not to those made or granted before 1 st January 1950. 
(3) In proceedings against any person for infringement of a 
patent it shall be a defence to prove that at the time of the 
infringement there was in force a contract relating to the patent 
made by or with the consent of the plaintiff or pursuer or a 
licence under the patent granted by him or with his consent and 
containing in either case a condition or term void by virtue of 
this section. 
(4) A condition or term of a contract or licence shall not be 
void by virtue of this section if-
(a) at the time of the making of the contract or granting of 
the licence the supplier or licensor was willing to 
supply the product, or grant a licence to work the 
invention, as the case may be, to the person supplied 
or licensee, on reasonable terms specified in the con­
tract or licence and without any such condition or 
ternl as is mentioned in subsection (1) above; and 
(b) the person supplied or licensee is entitled under the 
contract or licence to relieve himself of his liability to 
observe the condition or term on giving to the other 
party three months' notice in writing and subject to 
payment to that other party of such compensation 
(being. in the case of a contract to supply, a lump sum 
or rent for the residue of the term of the contract and, 
in the case of a licence, a royalty for the residue of the 
term of the licence) as maybe determined by an 
arbitrator or arbiter appointed by the Secretary of 
State. 
(5) If in any proceeding it is alleged that any condition or 
term of a contract or licence is void by virtue of this section IP/NIlIGBRlPI 1 
Page 42 
Patents Act 1977 c.37 
it shall lie on the supplier or licensor to prove the matters set 
out in paragraph (a) of subsection (4) above. 
(6) A condition or term of a contract or licence shall not 
be void by virtue of this section by reason only that it prohibits 
any person from selling goods other than those supplied by 
a specific person or, in the case of a contract for the hiring of 
or licence to use a patented product, that it reserves to the 
bailor (or, in Scotland, hirer) or licensor. or his nominee. the 
right to supply such new parts of the patented product as may 
be required to put or keep it in repair. PART I 
45.-(}) Any contract for the supply of a patented product Derermin:ltioD 
or licence to work a patented invention, or contract relating to of pa.rts of 
any such supply or licence, may at any time after the patent certtam t 
11 h b h· h h d .. con rac s. or ate patents y w lC t e pro uct or InventIOn was pro-
tected at the time of the making of the contract or granting of 
the licence has or have ceased to be in force. and notwithstanding 
anything to the contrary in the contract or licence or in any otbe .... r 
contract, be determined, to the extent (and only to the extent) 
that the contract or licence relates to the product or invention, 
by either party on giving three months' notice in writing to the 
other party. 
(2) In subsection (1) above" patented product" and" patented 
invention" include respectively a proouct and an invention 
which is the subject of an application for a patent, and that 
subsection shall apply in relation to a patent by which any such 
product or invention was protected and which was granted after 
the time of the making of the contract or granting of the licence 
in question, on an application which had been filed before that 
time, as it applies to a patent in force at that time. 
(3) If, on an application under this subsection made by either 
party to a contract or licence falling within subsection (1) above. 
the court is satisfied that. in consequence of the patent or patents 
concerned ceasing to be in force. it would be unjust to require 
the applicant to continue to comply with all the terms and con­
ditions of the contract or licence. it may make such order 
varying those terms or conditions as, having regard to all the 
circumstances of the case, it thinks just as between the parties. 
(4) Without prejUdice to any other right of recovery, nothing 
in subsection (1) above shall be taken to entitle any person to 
recover property bailed under a hire-purchase agreement (within 
the meaning of the Consumer Credit Act 1974). 1974 c. 39. 
(5) The foregoing provisions of this section apply to contracts 
and licences whether made before or after the appointed day. PART I 
Patentee"s 
application fer 
entrv in 
register that 
licences are 
available as 
of right. c.37 Patents Act 1977 JP IN I lIGBRlP 11 
Page 43 
(6) The provisions of this section shall be without prejudice to 
any rule of law relating to the frustration of contracts and any 
right of determining a contract or licence exercisable apart from 
this section. 
Licences of right and compulsory licences 
46.-0) At any time after the grant of a patent its proprietor 
may apply to the comptroller for an entry to be made in the 
register to the effect that licences under the patent are to be 
available as of right. 
(2) Where such an application is made, the comptroller shall 
give notice of the application to any person registered as having 
a right in or under the patent and, if satisfied that the proprietor 
of the patent is not precluded by contract from granting licences 
under the patent, shall make that entry. 
(3) Where such an entry is made in respect of a patent-
(a) any person shall, at any time after the entry is made, be 
entitled as of right to a licence under the patent on such 
terms as may be settled by agreement or, in default 
of agreement, by the comptroller on the application of 
the proprietor of the patent or the person requiring the 
licence ; 
(b) the comptroller may, on the application of the holder of 
any licence granted under the patent before the entry 
was made, order the licence to be exchanged for a 
licence of right on terms so settled; 
(c) if in proceedings for infringement of the patent (other­
wise than by the importation of any article) the 
defendant or defender undertakes to take a licence on 
such terms, no injunction or interdict shall be granted 
against him and the amount (if any) recoverable 
against him by way of damages shall not exceed 
double the amount which would have been payable 
by him as licensee if such a licence on those terms 
had been granted before the earliest infringement; 
(d) the renewal fee payable in respect of the patent after 
the date of the entry shall be half the fee which would 
be payable if the entry had not been made. 
(4) The licensee under a licence of right may (unless. in the 
case of a licence the terms of which are settled by agreement, the 
licence otherwise expressly provides) request the proprietor of the 
patent to take proceedings to prevent any infringement of the 
patent; and if the proprietor refuses or neglects to do so within 
two months after being so requested, the licensee may institute 
proceedings for the infringement in his own name as if he were 
proprietor, making the proprietor a defendant or defender. IP/NIlIGBRlPI 1 
Page 44 
Patents Act 1977 c. 37 
(5) A proprietor so added as defendant or defender shall not 
be liable for any costs or expenses unless he enters an appear­
ance and takes part in the proceedings. PART I 
47.-0) At any time after an entry has been made under Cancellation 
section 46 above in respect of a patent. the proprietor of the of ~ntry d 
patent may apply to the comptroller for cancellation of the entry. ~~6~ un er 
(2) Where such an application is made and the balance paid 
of all renewal fees which would have been payable if the entry 
had not been made, the comptroller may cancel the entry, if 
satisfied that there is no existing licence under the patent or that 
all licensees under the patent consent to the application. 
(3) Within the prescribed period after an entry has been made 
under section 46 above in respect of a patent, any person who 
claims that the proprietor of the patent is, and was at the time 
of the entry, precluded by a contract in which the claimant is 
interested from granting licences under the patent may apply to 
the comptroller for cancellation of the entry. 
(4) Where the comptroller is satisfied, on an application under 
subsection (3) above, that the proprietor of the patent is and was 
so precluded, he shall cancel the entry; and the proprietor shall 
then be liable to pay, within a period specified by the comp­
troller, a sum equal to the balance of all renewal fees which 
would have been payable if the entry had not been made, and 
the patent shall cease to have effect at the expiration of that 
period if that sum is not so paid. 
(5) Where an entry is cancelled under this section. the rights 
and liabilities of the proprietor of the patent shall afterwards be 
the same as if the entry had not been made. 
(6) Where an application has been made under this section, 
then-
(a) in the case of an application under subsection (1) above, 
any person, and 
(b) in the case of an application under subsection (3) above. 
the proprietor of the patent, 
may within the prescribed period give notice to the comptroller 
of opposition to the cancellation; and the comptroller shall, in 
considering the application, determine whether the opposition 
is justified. 
48.-0) At any time after the expiration of three years, or of Compulsory 
such other period as may be prescribed. from the date of the licences. 
grant of a patent, any person may apply to the comptroller on 
one or more of the grounds specified in subsection (3) below-
(a) for a 1icence under the patent, c. 37 Patellts Act 1977 IP/NIlIGBRlPI 1 
Page 45 
PART I (b) for an entry to be made in the register to the effect that 
licences under the patent are to be available as of right, 
or 
(c) where the applicant is a government department, for the 
grant to any person specified in the application of a 
licence under the patent. 
(2) A rule prescribing any such other period under subsection 
(1) above shall not be made unless a draft of the rule has been 
laid before, and approved by resolution of, each House of 
Parliament. 
(3) The grounds are:-
(a) where the patented invention is capable of being com­
mercially worked in the United Kingdom, that it is not 
being so worked or is not being so worked to the fullest 
extent that is reasonably practicable; 
(b) where the patented invention is a product, that a demand 
for the product in the United Kingdom-
(i) is not being met on reasonable terms, or 
(ii) is being met to a substantial extent by 
importation; 
(c) where the patented invention is capable of being com­
mercially worked in the United Kingdom, that it is 
being prevented or hindered from being so worked-
(i) where the invention is a product, by the 
importation of the product, 
(ii) where the invention is a process, by the importa­
tion of a product obtained directly by means of 
the process or to which the process has been applied; 
(d) that by reason of the refusal of the proprietor of the 
patent to grant a licence or licences on reasonable 
terms-
(i) a market for the export of any patented product 
made in the United Kingdom is not being supplied, 
or 
(ii) the working or efficient working in the United 
Kingdom of any other patented invention which 
makes a substantial contribution to the art is 
prevented or hindered, or 
(iii) the establishment or development of com­
mercial or industrial activities in the United King­
dom is unfairly prejudiced: 
(e) that by reason of conditions imposed by the proprietor 
of the patent on the grant of licences under the patent, 
or on the disposal or use of the patented product or on IP/N/lIGBRlP/l 
Page 46 
Patents Act 1977 c.37 
the use of the patented process, the manufacture. use 
or disposal of materials not protected by the patent, 
or the establishment or development of commercial 
or industrial activities in the United Kingdom. is 
unfairly prejudiced. 
(4) Subject to the provisions of subsections (5) to (7) below, 
if he is satisfied that any of those grounds are established. the 
comptroller may-
(a) where the application is under subsection (1)(a) above, 
order the grant of a licence to the applicant on such 
terms as the comptroller thinks fit; 
(b) where the application is under subsection (l)(b) above, 
make such an entry as is there mentioned; 
(c) where the application is under subsection (l)(c) above, 
order the grant of a licence to the person specified in 
the application on such terms as the comptroller thinks 
fit. 
(5) Where the application is made on the ground that the 
patented invention is not being commercially worked in the 
United Kingdom or is not being so worked to the fullest extent 
that is reasonably practicable, and it appears to the comptroller 
that the time which has elapsed since the publication in the 
journal of a notice of the grant of the patent has for any reason 
been insufficient to enable the invention to be so worked, he 
may by order adjourn the application for such period as will 
in his opinion give sufficient time for the invention to be so 
worked. 
(6) No entry shall be made in the register under this section 
on the ground mentioned in subsection (3)(d)(i) above. and any 
licence granted under this section on that ground shall contain 
such provisions as appear to the comptroller to be expedient 
for restricting the countries in which any product concerned may 
be disposed of or used by the licensee. 
(7) No order or entry shall be made under this section in 
respect of a patent <the patent concerned) on the ground men­
tioned in subsection (3)(d)(ii) above unless the comptroller is 
satisfied that the proprietor of the patent for the other invention 
is able and willing to grant to the proprietor of the patent 
concerned and his licensees a licence under the patent for the 
other invention on reasonable terms. 
(8) An application may be made under this section in respect 
of a patent notwithstanding that the applicant is already the 
holder of a licence under the patent; and no person shall be 
estopped or barred from alleging any of the matters specified in 
subsection (3) above by reason of any admission made by him. 
whether in such a licence or otherwise. or by reason of his 
having accepted such a licence. PART I PART I 
Provisio!l.3 
about lic.:nces 
under :i. 43. 
Ex~r,;i:)e of 
powers on 
applications 
under s. 43. c.37 Patellts Act 1977 IP IN I lIGBRlP 11 
Page 47 
49.-(1) Where. th~ comptroller is satisfied, on an applica­
tion made undl!f $~ction 48 above in respect of a patent. 
that the manufacture. use or disposal of materials not protected 
by the patent is unfairly prejudiced by reason of conditions 
imposed by the proprietor of the patent on the grant of licences 
under the patent, or on the disposal or use of the patented product 
or tbe use of the patented process, he may (subject to the pro­
visions of that section) order the grant of licences under the patent 
to such customers of the applicant as he thinks fit as well as to 
the applicant. 
(2) \Vhere an appli.:ation under section 48 above is made in 
respect of a patent by a person who holds a licence under the 
patent, the comptroller-
(a) may. if he orders the grant of a licence to the applicant, 
order the existing licence to be cancelled. or 
(b) may. instead of ordering the grant of a licence to the 
applicant, order the existing licence to be amended. 
(3) Where, on an application under section 48 above in 
respect of a patent, the comptroller orders the grant of a licence, 
he may direct that the licence shall operate-
(a) to deprive the proprietor of the patent of any right he 
has to work the invention concerned or grant licences 
under the patent; 
(b) to revoke all existing licences granted under the patent. 
(4) Section 46(4) and (5) above shall apply to a licence granted 
in pursuance of an order under section 48 above and to a 
licence granted by virtue of an entry under that section as it 
applies to a licence granted by virtue of an entry under section 
46 above. 
50.-(1) The powers of the comptroller on an application 
under section 48 above in respect of a patent shall be exercised 
with a view to securing the following general purposes:-
(a) that inventions which can be worked on a commercial 
scale in the United Kingdom and which should in 
the public interest be so worked shall be worked there 
without undue delay and to the fullest extent that is 
reasonably practicable; 
(b) that the inventor or other person beneficially entitled 
to a patent shall receive reasonable remuneration having 
regard to the nature of the invention ; 
(c) that the interests of any person for the time being work­
ing or developing an invention in the United Kingdom 
under the protection of a pa tent shall not be unfairly 
prejudiced. IP/NIlIGBRlPI 1 
Page 48 
Patents Act 1977 c.37 
(2) Subject to subsection (1) above, the comptroller shall, 
in determining whether to make an order or entry in pursuance 
of such an application, take account of the following matters. 
that is to say-
(a) the nature of the invention, the time which has elapsed 
since the publication in the journal of a notice of the 
grant of the patent and the measures already taken by 
the proprietor of the patent or any licensee to make 
full use of the invention; 
(b) the ability of any person to whom a licence would be 
granted under the order concerned to work the inven· 
tion to the public advantage; and 
(c) the risks to be undertaken by that person in providing 
capital and working the invention if the application for 
an order is granted, 
but shall not be required to take account of matters subsequent 
to the making of the application. PART I 
51.-(1) \Vhere, on a reference under section 50 or 51 of the Appiication by 
Fair Trading Act 1973 (the 1973 Act). a report of the Monopolies Crown in c1asl!s 
a.nd Mergers <;ommissio~ (the Commission), as laid before Par· ~r ~~~gOe~~ y 
bament, contaIns conclUSIOns to the effect- 1973 c. 41. 
(a) that a monopoly situation (within the meaning of the 
1973 Act) exists in relation to a description of goods 
which consist of or include patented products or in 
relation to a description of services in which a patented 
product or process is used, and 
(b) that facts found by the Commission in pursuance of 
their investigations under section 49 of the 1973 Act 
operate. or may be expected to operate, against the 
public interest, 
the appropriate Minister or Ministers may, subject to subsection 
(3) below, apply to the comptroller for relief under subsection (4) 
below in respect of the patent. 
(2) Where, on a reference under section 64 or 75 of the 1973 
Act, a report of the Commission, as laid before Parliament, 
contains conclusions to the efIect-
(a) that a merger situation qualifying for investigation has 
been created; 
(b) that one of the elements which constitute the creation 
of that situation is that the condition specified in 
section 64(2) or (3) of the 1973 Act prevails (or does so 
to a greater extent> in respect of a description of goods 
which consist of or include patented products or in 
respect of a description of services in which a patented 
product or process is used; and PART I c.37 Patents. Act 1977 IP/N/1/GBRlP/l 
Page 49 
(c) that the creation of that situation, or particular elements 
in or consequences of it specified in the report, operate, 
or may be expected to operate, against the public 
interest. 
the Secretary of State may, subject to subsection (3) below, 
apply to the comptroller for relief under subsection (5) below in 
respect of the patent. 
(3) Before making an application under subsection (1) or (2) 
above. the appropriate Minister or Ministers shall publish. in 
such manner as he or they think appropriate, a notice describing 
the nature of the proposed application, and shall consider any 
representations which, within the period of thirty days from the 
date of publication of the notice, may be made to him or them 
by persons whose interests appear to the appropriate Minister 
or MInisters to be likely to be affected by the proposed appli­
catioTJ. 
(4) If on an application under subsection (1) above it appears 
to the comptroller that the facts specified in the Commission's 
rerort as being those which, in the Commission's opinion, 
operate or may be expected to operate against the public interest 
include-
(a) any conditions in a licence or licences granted under 
the patent by its proprietor restricting the use of the 
invention concerned by the licensee or the right of the 
proprietor to grant other licences under the patent, or 
(b) a refusal by the proprietor to grant licences under the 
patent on reasonable terms, 
the comptroller may by order cancel or modify any such con­
dition or may, instead or in addition, make an entry in the 
register to the effect that licences under the patent are to be 
available as of right. 
(5) If on an application under subsection (2) above it appears 
to the comptroller that the particular matters indicated in the 
Commission's report as being those which, in the Commission's 
opinion. operate or may be expected to operate against the pub­
lic interest (whether those matters are so indicated in pursuance 
of a requirement imposed under section 69(4) or 75(3) of the 
1973 Act or otherwise) include any such condition or refusal as 
is mentioned in paragraph (a) or (b) or subsection (4) above, the 
comptroller may by order cancel or modify a/ny such condition 
or may, instead or in addition, make an entry in the register 
to the effect that 1icences under the patent are to be available 
as of right. 
(6) In this section "the appropriate Minister or Ministers", 
in relation to a report of the Commission, means the Minister 
or Ministers to whom the report is made. IP/NIlIGBRlPI1 
Page 50 
Patellts Act 1977 c.37 
52.-(1) The proprietor of the patent concerned or any other PART I 
person wishing to .oppose an application under sections 48 to Opposition. 
51 above may, in accordance with rules, give to the comptroller app.eal ~nd 
notice of opposition; and the comptroller shall consider the arbitratIOn. 
opposition in deciding whether to grant the application. 
(2) Where an appeal is brought from an order made by 
the comptroller in pursuance of an application under sections 
48 to 51 above or from a decision of his to make an entry 
in the register in pursuance of such an application or from a 
refusal of his to make such an order or entry. the Attorney 
General, Lord Advocate or Attorney General for Northern 
Ireland. or such other counsel as any of them may appoint, shall 
be entitled to appear and be heard. 
(3) \Vhere an application under sections 48 to 51 above is 
opposed under subsection 0) above. and either-
(a) the parties consent, or 
Cb) the proceedings require a prolonged examination of 
documents or any scientific or local investigati.on \vhich 
cannot in the opinion of the comptroller conveniently 
be made before him. 
the comptroller may at any time order the whole proceedings, or 
any question or issue of fact arising in them. to be referred to 
an arbitrator or arbiter agreed on by the parties or, in default 
of agreement, appointed by the comptroller. 
(4) Where the whole proceedings are so referred, section 21 of 
the Arbitration Act 1950 or, as the case may be, section 22 of 1950 c. 27. 
the Arbitration Act (Northern Ireland) 1937 (statement of cases 1937 c. 8. 
by arbitrators) shall not apply to the arbitration; but unless the (I Edw. 8 & 1 
parties othef\vise agree before the award of the arbitrator or Geo. 6) (N.I.). 
arbiter is made an appeal shall lie from the award to the court. 
(5) \Vbere a question or issue of fact is so referred, the 
arbitrator or arbiter shall report his findings to the comptroller. 
53.-(1) \Vithout prejudice to section 86 below (by virtue of <;'ompu1sory 
which the Community Patent Convention has effect in the United llcenfes; 
Kingdom), sections 48 to 51 above shall have effect subject to ~~~ei~~~~tary 
any provision of that convention relating to the grant of com- . 
pulsory licences for lack or insufficiency of exploitation as that 
provision applies by virtue of that section. 
(2) In any proceedings on an application made in relation to 
a patent under sections 48 to 51 above, any statement with 
respect to any activity in relation to the patented invention, or 
with respect to the grant or refusal of licences under the patent, PARTl 
1973 c. 41. 
Special 
provisions 
where 
patented 
invention is 
being worked 
abroad. 
Use of 
patented 
inventions for 
services of 
the CroWD. c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 51 
contained in a report of the Monopolies and Mergers Com~ 
mission laid before Parliament under Part VII of the Fair 
Trading Act 1973 shall be prima facie evidence of the matters 
stated, and in Scotland shall be sufficient evidence of those 
matters. 
(3) The comptroller may make an entry in the register under 
sections 48 to 51 above notwithstanding any contract which 
would have precluded the entry on the application of the pro­
prietor of the patent under section 46 above. 
(4) An entry made in the register under sections 48 to 51 
above shall for all purposes have the same effect as an entry 
made under section 46 above. 
(5) No order or entry shall be made in pursuance of an appli~ 
cation under sections 48 to 51 above which would be at variance 
with any treaty or international convention to which the United 
Kingdom is a party. 
54.-(1) Her :rvlajesty may by Order in Council provide that 
the comptroller may not (otherwise than for purposes of the 
public interest) make an order or entry in respect of a patent in 
pursuance of an application under sections 48 to 51 above if the 
invention concerned is being commercially worked in any relevant 
country specified in the Order and demand in the United 
Kingdom for any patented product resulting from that working is 
bein~ met by importation from that country. 
(2) In subsection (1) above "relevant country" means a 
country other than a member state whose law in tbe opinion of 
Her Majesty in Council incorporates or will incorporate provi~ 
sions treating the working of an invention in, and importation 
from, the United Kingdom in a similar way to that in which the 
Order in Council would (if made) treat the working of an 
invention in. and importation from, that country. 
Use of patented inventions for services of the Crown 
55.-(1) Notwithstanding anything in this Act, any govern­
ment department and any person authorised in writing by a 
government department may, for the services of the Crown and 
in accordance with this section, do any of the follo\ving acts in 
the United Kingdom in relation to a patented invention without 
the consent of the proprietor of the patent, that is to say-
la) where the invention is a product, may-
(i) make, use, import or keep the product, or sell 
or offer to sell it where to do so would be incidental 
or ancillary to making, using. importing or keeping 
it ; or IP 1Nl lIGBRJP /l 
Page 52 
Patents Act 1977 c.37 
(iD in any event, sell or offer to sell it for foreign 
defence purposes or for the production or supply 
of specified drugs and medicines, or dispose or offer 
to dispose of it (otherwise than by selling it) for any 
purpose whatever; 
(b) where the invention is a process. may use it or do in 
relation to any product obtained directly by means of 
the process anything mentioned in paragraph (a) 
above: 
(c) \vithout prejudice to the foregoing. where the invention 
or any product obtained directly by means of the inven­
tion is a specified drug or medicine. may sell or offer to 
sell the drug or medicine; 
(d) may supply or offer to supply to any person any of the 
means, relating to an essential element of the invention. 
for putting the invention into effect; 
(e) may dispose or offer to dispose of anything which was 
made. used, imported or kept in the exercise of the 
powers conferred by this section and which is no longer 
required for the purpose for which it was made, used, 
imported or kept (as the case may be). 
and anything done by virtue of this subsection shall not amount 
to an infringement of the patent concerned. 
(2) Any act done in relation to an invention by virtue of 
this section is in the following provisions of this section referred 
to as use of the invention; and" use ". in relation to an inven­
tion, in sections 56 to 58 below shall be construed accordingly. 
(3) So far as the invention has before its priority date been 
duly recorded by or tried by or on behalf of a government 
department or the United Kingdom Atomic Energy Authority 
otherwise than in consequence of a relevant communication made 
in confidence, any use of the invention by virtue of this section 
may be made free of any royalty or other payment to the 
proprietor. 
(4) So far as the invention has not been so recorded or tried, 
any use of it made by virtue of this section at any time either-
(a) after the publication of the application for the patent 
for the invention; or 
(b) without prejudice to paragraph (a) above, in consequence 
of a relevant communication made after the priority 
date of the invention otherwise than in confidence; 
shall be made on such terms as may be agreed either before or 
after the use by the government department and the proprietor 
of the patent with the approval of the Treasury or as may in 
default of agreement be deternlined by the court on a reference 
under section 58 below. PART I PART I c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 53 
(5) Where an invention is used by virtue of this section at 
any time after publication of an application for a patent for 
the invention but before such a patent is granted, and the terms 
for its use agreed or determined as mentioned in subsection (4) 
above include terms as to payment for the use, then (notwith­
standing anything in those terms) any such payment shall be 
recoverable only-
(a) after such a patent is granted; and 
(b) if (apart from this section) the use would, if the patent 
had been granted on the date of the publication of the 
application, have infringed not only the patent but also 
the claims (as interpreted by the description and any 
drawings referred to in the description or claims) in 
the form in which they were contained in the application 
immediately before the preparations for its publication 
\vere completed by the Patent Office. 
(6) The authority of a government department in respect of 
an invention may be given under this section either before 
or after the patent is granted and either before or after the 
use in respect of which the authority is given is made, and may 
be given to any person whether or not he is authorised directly 
or indirectly by the proprietor of the patent to do anything in 
relation to the invention. 
(7) Where any use of an invention is made by or with the 
authority of a government department under this section, then. 
unless it appears to the department that it would be contrary to 
the public interest to do so, the department shall notify the 
proprietor of the patent as soon as practicable after the second 
of the following events, that is to say, the use is begun and the 
patent is granted, and furnish him with such information as to 
the extent of the use as he may from time to time require. 
~8) A person acquiring anything disposed of in the exercise 
of powers conferred by this section, and any person claiming 
through him, may deal with it in the same manner as if the 
patent were held on behalf of the Crown. 
(9) In this section " relevant communication", in relation to 
an invention, means a communication of the invention directly 
or indirectly by the proprietor of the patent or any person from 
whom he derives title. 
(1Q) Subsection (4) above is without prejudice to any rule of 
law relating to the confidentiality of information. 
(11) In the application of this section to Northern I reland, the 
reference in subsection (4) above to the Treasury shall, where 
the government department referred to in that subsection is IP/N/1/GBRlP/l 
Page 54 
Patents Act 1977 c.37 
a department of the Government of Northern Ireland, be con­
strued as a reference to the Department of Finance for Northern 
Ireland. PART I 
56.-0) Any reference in section 55 above to a patented Interpretation, . . . I· .. ft· . etc of InventIOn, In re ation to any hme, IS a re erence 0 an Invention pr~~isions 
for which a patent has before that time been, or is subsequently. about Crown 
granted. use. 
(2) In this Act. except so far as the context otherwise requires, 
.. the services of the Crown" inc1udes-
(a) the supply of anything for foreign defence purposes; 
(b) the production or supply of specified drugs and 
medicines; and 
(c) such purposes relating to the production or use of atomic 
energy or research into matters connected therewith as 
the Secretary of State thinks necessary or expedient; 
and "use for the services of the Crov,m" shall be construed 
accordingly. 
(3) In section 55 (l)(a) above and subsection (2)(a) above. 
references to a sale or supply of anything for foreign defence 
purposes are references to a sale or supply of the thing-
(a) to the government of any country outside the United 
Kingdom. in pursuance of an agreement or arrange­
ment between Her Majesty's Government in the United 
Kingdom and the government of that country, where 
the thing is required for the defence of that country 
or of any other country whose government is party 
to any agreement or arrangement with Her Majesty's 
Government in respect of defence matters; or 
(b) to the United Nations. or to the government of any 
country belonging to that organisation. in pursuance 
of an agreement or arrangement between Her Majesty's 
Government and that organisation or government, 
where the thing is required for any armed forces 
operating in pursuance of a resolution of that organisa­
tion or any organ of that organisation. 
(4) For the purposes of section 55(1)(a) and (c) above and 
subsection (2)(b) above. specified drugs and medicines are drugs 
and medicines which are both-
(a) required for the provision of pharmaceutical services, 
general medical services or general dental services, 
that is to say. services of those respective kinds under 
Part 11 of the National Health Service Act 1977, Part 1977 c. 49. 
IV of the National Health Service (Scotland) Act 1947 1947 c. 27. 
or the corresponding provisions of the law jn force in 
. Northern "Ireland or the Isle of Man, and c.3i Patents Act 1977 IP/N/1/GBRlP/1 
Page 55 
PART ( (b) specified for the purposes of this subsection in regula-
Rights of 
third parties 
in respect of 
Crown use. tions made by the Secretary of State. 
57.-~ l) In relation to-
(a) any use made for the services of the Crown of an 
invention by a government department, or a person 
authorised by a government department, by virtue of 
section 55 above, or 
(bi anything done for the services of the Crown to the 
order of a government department by the proprietor 
of a patent in respect of a patented invention or by 
the proprietor of an application in respect of an inven­
tion for which an application for a patent has been 
filed and is still pending, 
the provisions of any licence, assignment, assignation or agree­
ment to which this subsection applies shall be of no effect so far 
as those provisions restrict or regulate the working of the 
invention, or the use of any model, document or information 
relating to it, or provide for tbe making of payments in respect 
of, or calculated by reference to, such working or use ; and the 
reproduction or publication of any model or document in 
connection with the said working or use shall not be deemed to 
be an infringement of any cop'-'yright subsisting in the model 
or document. 
(2) Subsection (1) above applies to a licence, assignment, 
assignation or agreement which is made, whether before or 
after the appointed day, between (on the one hand) any person 
who is a proprietor of or an applicant for the patent, or any­
one who derives title from any such person or from whom such 
person derives title, and (on the other hand) any person what­
ever other than a government department. 
(3) Where an exclusive licence granted otherwise than for 
royalties or other benefits determined by reference to the 
working of the invention is in force under the patent or applica­
tion concerned. then-
(a) in relation to anything done in respect of the invention 
which, but for the provisions of this section and section 
55 above, would constitute an infringement of the 
rights of the licensee, subsection (4) of that section shall 
have effect as if for the reference to the proprietor of 
the patent there were substituted a reference to the 
licensee; and 
<b) in relation to anything done in respect of the invention 
by the licensee by virtue of an authority given under 
that section. that section shall have effect as if the 
said subsection (4) were omitted. IP/NIlIGBRlPI 1 
Page 56 
Patents Act 1977 c.37 
(4) Subject to the provisions of subsection (3) above, where 
the patent. or the right to the grant of the patent, has been 
assigned to the proprietor of the patent or application in con­
sideration of royalties or other benefits determined by reference 
to the \vorking of the invention. then-
(a) in relation to any use of the invention by yirtue of 
section 55 above, subsection (4) of that section shall 
ha ve effect as if the reference to the proprietor of the 
patent included a reference to the assignor. and any 
sum payable by virtue of that subsection. shall be 
divided between the proprietor of the patent or 
application and the assignor in such proportion as may 
be agreed on by them or as may in default of agree­
ment be deternlined by the court on a reference under 
section 58 below; and 
(b) in relation to any act done in respect of the invention 
for the services of the Cro\vn by the proprietor of the 
patent or application to the order of a government 
department, section 55(4) above shall have effect as 
if that act were use made by yirtue of an authority 
given under that section. 
(5) V/here section 55(4) above applies to any use of an 
invention and a person holds an exclusive licence under the 
patent or application concerned (other than such a licence as is 
mentioned in subsection (3) above) authorising him to work the 
invention, then subsections (7) and (8) belo\\,:-shall apply. 
(6) In those subsections" the section 55{4)~' payment means 
such payment (if any) as the proprietor of the patent or applica­
tion and the department agree under section 55 above, or the 
court determines under section 53 below, should be made by the 
department to the proprietor in respect of the use of the 
invention. 
(7) The licensee shall be entitled to recover from the pro­
prietor of the patent or application such part (if any) of the 
section 55(4) payn1ent as may be agreed on by them or as may 
in default of agreement be determined bv the court under section 
58 below to be just having regard to any expenditure incurred 
by the licensee-
(a) in developing the invention, or 
(b) in making payments to the proprietor in consideration 
of the licence, other than royalties or other payments 
determined by reference to the use of the invention. 
(8) Any agreement by the proprietor of the patent or applica­
tion and the department under section 55(4) above as to the 
amount of the section 55(4) payment shall be of no effect unless 
the licensee consents to the agreement; and any detennination PART 1 PART I 
References of 
disputes as to 
Crown use. c.37 Patents Act 1977 IP IN I lIGBRlP /1 
Page 57 
by the court under section 55(4) above as to the amount of that 
payment shall be of no effect unless the licensee has been 
informed of the reference to the court and is given an opportunity 
to be heard. 
(9) Where any models, documents or information relating to 
an invention are used in connection with any use of the inven­
tion which falls within subsection (l)(a) above, or with anything 
done in respect of the invention which falls within subsection 
O)(b) above, subsection (4) of section 55 above shall (whether 
or not it applies to any such use of the invention) apply to the 
use of the models, documents or information as if for the 
reference in it to the proprietor of the patent there were sub­
stituted a reference to the person entitled to the benefit of any 
provision of an agreement which is rendered inoperative by this 
section in relation to that use; and in section 58 below the 
references to terms for the use of an invention shall be construed 
accordingly. 
(1 Q) Nothing in this section shall be construed as authorising 
the disclosure to a government department or any other person 
of any model. document or information to the use of which this 
section applies in contravention of any such licence, assignment, 
assignation or agreement as is mentioned in this section. 
58.-(1) Any dispute as to the exercise by a government 
department or a person authorised by a government depart­
ment of the po\vers conferred by section 55 above, or as to 
terms for the use of an invention for the services of the Crown 
thereunder, or as to the right of any person to receive any part 
of a payment made or agreed to be made in pursuance of 
subsection (4) of that section or determined by the court in 
pursuance of that subsection and this section. may be referred 
to the court by either party to the dispute after a patent has been 
granted for the invention. 
(2) If in such proceedings any question arises whether an 
invention has been recorded or tried as mentioned in section 
55 above, and the disclosure of any document recording the 
invention, or of any evidence of the trial thereof, would in the 
opinion of the department be prejudicial to the public interest, 
the disclosure may be made confidentially to counsel for the 
other party or to an independent expert mutually agreed upon. 
(3) In determining under this ~ection any dispute between a 
government department and any person as to the terms for the 
use of an invention for the services of the Crown, the court 
shall have regard-
(a) to any benefit or compensation which that person or 
any person from whom he derives title may have IP/N/lIGBRlP/l 
Page 58 
Patents Act 1977 c.37 
received or may be entitled to receive directly or 
indirectly from any government department in respect 
of the invention in question; 
(b) to whether that person or any person from whom he 
derives title has in the court's opinion without reason­
able cause failed to comply with a request of the 
department to use the invention for the services of the 
Crown on reasonable terms. 
(4) In determining whether or not to grant any relief under 
this section and the nature and extent of the relief granted the 
court shall, subject to the following provisions of this section, 
apply the principles applied by the court immediately before 
the appointed day to the granting of relief under section 48 of 
the 1949 Act. 
(5) On a reference under this section the court may refuse 
to grant relief by way of compensation in respect of the use of 
an invention for the services of the Crown during any further 
period specified under section 25 (4) above, but before the pay­
ment of the renewal fee and any additional fee prescribed for 
the purposes of that section. 
(6) \Vhere an amendment of the specification of a patent 
has been allowed under any of the provisions of this Act, the 
court shall not grant relief by way of compensation under this 
section in respect of any such use before the decision to allow 
the amendment unless the court is satisfied that the specification 
of the patent as published was framed in good faith and with 
reasonable skill and knowledge. 
(7) If the validity of a patent is put in issue in proceedings 
under this section and it is found that the patent is only partially 
\"alid, the court may, subject to subsection (8) below, grant 
relief to the proprietor of the patent in respect of that part of 
the patent which is found to be valid and to have been used for 
the services of the Cro\vn. 
(8) Where in any such proceedings it is found that a patent 
is only partially valid, the court shall not grant relief by way of 
compensation, costs or expenses except where the proprietor 
of the patent proves that the specification of the patent was 
framed in good faith and with reasonable skill and knowledge, 
and in that event the court may grant relief in respect of that 
part of the patent which is valid and has been so used, subject 
to the discretion of the court as to costs and expenses and as to 
the date from which compensation should be awarded. 
(9) As a condition of any such relief the court may direct 
that the specification of the patent shall be anlended to its satis­
faction upon an application made for that purpose under section PART I P.-\RT ( c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 59 
75 below, and ail application nlay be so made accordingly, 
\vhether or not all other issues in the proceedings have been 
determined. 
(l0) In considering the amount of any compensation for the 
use of an invention for the services of the Crown after publica­
tion of an application for a patent for the invention and before 
such a patent is granted, the court 'shall consider whether or 
not it would have been reasonable to expect, from a considera­
tion of the application as published under section 16 above, 
that a patent would be granted conferring on the proprietor 
of the patent protection for an act of the same description as 
that found to constitute that use, and if the court finds that it 
would not have been reasonable, it shall reduce the compensa­
tion to such amount as it thinks just. 
(11) Where by virtue of a transaction, instrunlent or event to 
which section 33 above applies a person becomes the pro­
prietor or one of the proprietors or an exclusive licensee of a 
patent (the new proprietor or licensee) and a government depart­
ment or a person authorised by a government department 
subsequently makes use under section 55 above of the 
patented invention, the new proprietor or licensee shall not be 
entitled to any compensation under section 55(4) above (as it 
stands or as lTIodified by section 57(3) above) in respect of a 
subsequent use of the invention before the transaction. instru­
ment or event is registered unless-
(a) the transaction, instrument or event is registered \vithin 
the period of six months beginning with its date; or 
(b) the court is satisfied that it was not practicable to regis­
ter the iransaction, instrument or event before the end 
of that period and that it was registered as soon as 
practicable thereafter. 
(12) In any proceedin~s under this section the court may at 
any time order the whole proceedings or any question or issue 
of fact arising in them to be referred, on such terms as the 
court may direct, to a Circuit judge discharging tIle functions 
of an official refer~e or ::l11 arbitrator in England and Wales or 
Northern Ireland, or to an arbiter in Scotland; and references 
to the court in the foregoing provisions of this section shall be 
construed accord ingl":/. 
(13) One of two or more joint proprietors of a patent or 
application for a patent may without the concurrence of the 
others refer a dispute to the court under this section, but shall 
not do so unless the others are made parties to the proceedings; 
but any of the others made a defendant or defender shall not be 
liable for any costs or expenses unless he enters an appearance 
and takes part in the proceedings. IP/N/1/GBRJP/l 
Page 60 
Patents Act 1977 c.37 
59.-(1) During any period of emergency within the meaning PART I 
of this section the po\vers exercisable in relation to an invention Special 
by a government department or a person authorised by a gov-provisions a3 
ernment department under section 55 above shall include ~o <;rown use 
power to use the invention for a~y purpose which appears to e~:ency. 
the department necessary or exped.lent-
(a) for the efficient prosecution of any war in which Her 
~Iajesty may be engaged; 
(b) for the maintenance of supplies and services essential 
to the life of the community; 
(c) for securing a sufficiency of supplies and services e~n­
tial to the well-being of the community ; 
(cl) for promoting the productivity of industry, commerce 
and agriculture; 
(e) for fostering and directing exports and reducing imports. 
or imports of any classes, from all or any countries 
and for redressing the balance of trade; 
(f) generally for ensuring that the whole resources of the 
community are available for use, and are used, in a 
manner best calculated to serve the interests of the 
community; or 
(g) for assisting the relief of suffering and the restoration 
and distribution of essential supplies and services in 
any country or territory outside the United Kingdom 
which is in grave distress as the result of war; 
and any reference in this Act to the services of the Crown shall, 
as respects any period of emergency. include a reference to those 
purposes. 
(2) In this section the use of an invention includes, in addi­
tion to any act constituting such use by virtue of section 55 
above, any act which would, apart from that section and this 
section, amount to an infringement of the patent concerned 
or, as the case may be, give rise to a right under section 69 
below to bring proceedings in respect of the application 
concerned, and any reference in this Act to " use for the services 
of the Crown" shall, as respects any period of emergency, be 
construed accordingly. 
(3) In this section "period of emergency" means any 
period beginning with such date as may be declared by Order 
in Council to be the commencement, and ending with such date 
as may be so declared to be the termination. of a period of 
emergency for the purposes of this section. 
(4) A draft of an Order under this section shall not be sub­
mitted to Her Majesty unless it has been laid before, and 
approved by resolution of. each House of Parliament. 
C PART I 
Meaning of 
infringement c.37 Patents Act 1977 
Infringement IP IN I lIGBRlP 11 
Page 61 
60.-(1) Subject to the provisions of this section, a person 
infringes a patent for an invention if, but only if, while the 
patent is in force, he does any of the following things in the 
United Kingdom in relation to the invention without the consent 
of the proprietor of the patent. that is to say-
(a) where the invention is a product, he makes, disposes 
of. offers to dispose of. uses or inlPOrts the product or 
keeps it whether for disposal or otherwise ; 
(b) where the invention is a process. he uses the process 
or he offers it for use in the United Kingdom when he 
knows. or it is obvious to a reasonable person in the 
circumstances. that its use there without the consent of 
the proprietor would be an infringement of the patent: 
(c) where the invention is a process, he disposes of, offers 
to dispose of, uses or imports any product obtained 
directly by means of that proce~ or keeps any such 
product whether for disposal or otherwise. 
(2) Subject to the following provisions of this section, a person 
(other than the proprietor of the patent) also infringes a patent 
for an invention if, while the patent is in force and without the 
consent of the proprietor, he supplies or offers to supply in 
the United Kingdom a person other than a licensee or other 
person entitled to work the invention with any of the means, 
relating to an essential element of the invention, for putting 
the invention into effect when he knows, or it is obvious to a 
reasonable person in the circumstances, that those means are 
suitable for putting, and are intended to put. the invention into 
effect in the United Kingdom. 
(3) Subsection (2) above shall not apply to the supply or offer 
of a staple commercial product unless the supply or the offer 
is made for the purpose of inducing the person supplied or, as 
the case may be. the person to whom the offer is made to do an 
act which constitutes an infringement of the patent by virtue of 
subsection (1) above. 
(4) Without prejudice to section 86 below, subsections (1) and 
(2) above shall not apply to any act which, under any provision 
of the Community Patent Convention relating to the exhaustion 
of the rights of the proprietor of a patent, as that provision 
applies by virtue of that section. cannot be prevented by the 
proprietor of the patent. 
(5) An act Which, apart from this subsection, would consti­
tute an infringement of a patent for an invention shall not do 
so if-
(a) it is done privately and for purposes which are not 
commercial; IP/NI 1 IGBRlPI 1 
Page 62 
Patellts Act 1977 c.37 
(b) it is done for experinlental purposes relating to the 
subject-matter of the invention; 
(c) it consists of the extemporaneous preparation in a 
phannacy of a medicine for an individual in accord­
ance with a prescription given by a registered medical 
or dental practitioner or consists of dealing with a 
medicine so prepared; 
(d) it consists of the use. exclusively for the needs of a 
relevant ship. of a product or process in the body of 
such a ship or in its machinery. tackle. apparatus or 
other accessories. in a case where the ship has tem­
porarily or accidentally entered the internal or terri­
torial waters of the United Kingdom; 
(e) it consists of the use of a product or process in the 
body or operation of a relevant aircraft. hover­
craft or vehicle which has temporarily or accidentally 
entered or is crossing the United Kingdom (including 
the air space above it and its territorial waters) or the 
use of accessories for such a relevant aircraft. hover­
craft or vehlcle ; 
(f) it consists of the use of an exempted aircraft which has 
lawfully entered or is la\vfully crossing the United 
Kingdom as aforesaid or of the importation into the 
United Kingdom. or the use or storage there, of any 
part or accessory for such an aircraft. 
(6) For the purposes of subsection (2) above a person who 
does an act in relation to an invention which is prevented only 
by virtue of paragraph (a), (b) or (c) of subsection (5) above from 
constituting an infringement of a patent for the invention shall 
not be treated as a person entitled to work the invention, but-
(a) the reference in that subsection to a person entitled to 
work an invention includes a reference to a person so 
entitled by virtue of section 55 above, and 
(b) a person who by virtue of section 28(6) above or section 
64 below is entitled to do an act in relation to the 
invention without it constituting such an infringement 
shall. so far as concerns that act. be treated as a 
person entitled to work the invention. 
(7) In this section-
"relevant ship" and "relevant aircraft, hovercraft or 
vehicle" mean respectively a ship and an aircraft, 
hovercraft or vehicle registered in. or belonging to, any 
country, other than the United Kingdom. which is a 
party to the Convention for the Protection of Industrial 
Property signed at Paris on 20th March 1883; and 
C2 PART [ PART I 
1949 c. 67. c.37 Patents Act 1977 IP/N/lIGBRlP/l 
Page 63 
"exempted aircraft" means an aircraft to which section 
53 of the Civil Aviation Act 1949 (aircraft exempted 
from seizure in respect of patent claims) applies. 
Procel!dings for 61.-( 1) Subject to the following provisions of this Part of 
infringement this Act, civil proceedings may be brought in the court by 
of patent. the proprietor of a patent in respect of any act alleged to infringe 
the patent and (without prejudice to any other jurisdiction of 
the court) in those proceedings a claim may be made-
(a) for an injunction or interdict restraining the defendant 
or defender from any apprehended act of infringement; 
(b) for an order for him to deliver up or destroy any 
patented product in relation to \vhich the patent is 
infringed or any article in which that product is 
inextricably comprised; 
(c) for damages in respect of the infringement; 
(cl) for an account of the profits derived by hinl from the 
infringement; 
(e) for a declaration or declarator that the patent is valid 
and has been infringed by him. 
(2) The court shall not, in respect of the same infringement, 
both award the proprietor of a patent damages and order that 
he shall be given an account of the profits. 
(3) The proprietor of a patent and any other person may by 
agreement with each other refer to the comptroller the question 
whether that other person has infringed the patent and on the 
reference the proprietor of the patent may make any claim 
mentioned in subsection (l)(c) or (e) above. 
(4) Except so far as the context requires. in the following 
provisions of this Act-
(a) any reference to proceedings for infringement and the 
bringing of such proceedings includes a reference to a 
reference under subsection (3) above and the making 
of such a reference; 
(b) any reference to a plaintiff or pursuer includes a refer­
ence to the proprietor of the patent; and 
(c) any reference to a defendant or defender includes a 
reference to any other party to the reference. 
(5) If it appears to the comptroller on a reference under 
subsection (3) above that the question referred to him would 
more properly be determined by the court. he may declive to 
deal with it and the court shall have jurisdiction to determine 
the question as if the reference were proceedings brought in the 
court. IP/NIl/GBRJPI 1 
Page 64 
Patents Act 1977 c.37 
(6) Subject to the following prOVISIOns of this Part of this 
Act. in determining whether or not to grant any kind of relief 
claimed under this section and the extent of the relief granted 
the court or the comptroller shall apply the principles applied 
by the court in relation to that kind of relief immediately before 
the appointed day. PART I 
62.-(1) In proceedings for infringement of a patent damages Restrictions on 
shall not be awarded, and no order shall be made for an account recovery of 
of profits. against a defendant or defender who proves that at the ~~~ages for 
date of the infringement he was not aware. and had no reason- 1 nngement. 
able grounds for supposing, that the patent existed; and a person 
shall not be taken to have been so aware or to have had reason-
able grounds for so supposing by reason only of the application 
to a product of the word" patent" or " patented ", or any word 
or words expressing or implying that a patent has been obtained 
for the product, unless the number of the patent accompanied 
the word or words in question. 
(2) In proceedings for infringement of a patent the court or 
the comptroller may, if it or he thinks fit, refuse to a \vard any 
damages or make any such order in respect of an infringement 
committed during any further period specified under section 
25(4) above, but before the payment of the renewal fee and 
any additional fee prescribed for the purposes of that subsection. 
(3) Where an amendment of the specification of a patent has 
been allowed under any of the provisions of this Act, no 
damages shall be awarded in proceedings for an infringement 
of the patent committed before the decision to allow the amend­
ment unless the court or the comptroller is satisfied that the 
specification of the patent as published was framed in good 
faith and with reasonable skill and knowledge. 
63.-(1) If the validity of a patent is put in issue in proceed- Relief for 
ings for infringement of the patent and it is found that the infring~ment 
patent is only partially valid. the court or the comptroller may. oftJrtJaIly 
subject to subsection (2) below. grant relief in respect of that ;~t~t 
part of the patent which is found to be valid and infringed. . 
(2) Where in any such proceedings it is found that a patent 
is only partially valid. the court or the comptroller shall not 
grant relief. by way of damages. costs or expenses. except 
where the plaintiff or pursuer proves that the specification for the 
patent was framed in good faith and with reasonable skill and 
knowledge, and in that event the court or the comptroller may 
grant relief in respect of that part of the patent which is valid 
and infringed. subject to the discretion of the court or 
the comptroller as to costs or expenses and as to the date from 
which damages should be reckoned. 
C3 PART I 
Right to 
continue use 
begun before 
priority date. 
Certificate oC 
contested 
validity of 
patent. c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 65 
(3) As a condition of relief under this section the court or 
the comptroller may direct that the specification of the patent 
shall be amended to its or his satisfaction upon an application 
made for that purpose under section 75 below, and an applica­
tion nlay be so made accordingly, whether or not all other 
issues in the proceedings have been determined. 
64.-(1) Where a patent is granted for an invention, a person 
who in the United Kingdom before the priority date of the 
invention does in good faith an act which would constitute an 
infringement of the patent if it were in force, or makes in good 
faith effective and serious preparations to do such an act, shall 
have the rights conferred by subsection (2) below. 
(2) Any such person shall have the right-
(a) to continue to do or, as the case may be, to do that act 
himself; and 
(b) if it was done or preparations had been made to do it 
in the course of a business, to assign the right to do 
it or to transmit iliat right on his death or, in the case 
of a body corporate on its dissolution, to any person 
who acquires iliat part of the business in the course 
of which the act was done or preparations had been 
made to do it, or to authorise it to be done by any 
partners of his for the time being in that business; 
and the doing of that act by virtue of this subsection shall not 
amount to an infringement of the patent concerned. 
(3) The rights mentioned in subsection (2) above shall not 
include the right to grant a licence to any person to do an act 
so mentioned. 
(4) \Vhere a patented product is disposed of by any person 
to another in exercise of a right conferred by subsection (2) 
above, that other and any person claiming through him shall be 
entitled to deal with the product in the same way as if it had 
been disposed of by a sole registered proprietor. 
65.-(1) If in any proceedings before the court or the comp­
troller the validity of a patent to any extent is contested and that 
patent is found by the court or the comptroller to be wbo!ly 
or partially valid, the court or the comptroller may certIfy 
the finding and the fact that ilie validity of the patent was so 
contested. 
(2) Where a certificate is granted under this section, then, if in 
any subsequent proceedings before the court or the comp.troUer 
for infringement of the patent concerned or for revocatIOn of 
the patent a final order or judgment or interlocuto~ is made 
or given in favour of the party relying on the validity of the IP/N/I/GBRJP/l 
Page 66 
Patents Act 1977 c.37 
patent as found in the earlier proceedings, that party shall. 
unless the court or the comptroller otherwise directs, be 
entitled to his costs or expenses as between solicitor and own 
client <other than the costs or expenses of any appeal in the 
su bseq uen t proceedings). PART I 
66.-0) In the application of section 60 above to a patent ~ro~eedings 
of which there are two or more joint proprietors the reference InfrIngement 
to the proprietor shall be construed- ~~'~e~~-
(a) in relation to any act, as a reference to that proprietor 
or those proprietors who, by virtue of section 36 above 
or any agreement referred to in that section. is or are 
entitled to do that act without its amounting to an 
infringement; and 
(b) in relation to any consent. as a reference to that pro­
prietor or those proprietors who, by virtue of section 
36 above or any such agreement, is or are the proper 
person or persons to give the requisite consent. 
(2) One of two or more joint proprietors of a patent may 
without the concurrence of the others bring proceedings in respect 
of an act alleged to infringe the patent, but shall not do so 
unless the others are made parties to the proceedings; but any 
of the others made a defendant or defender shall not be liable 
for any costs or expenses unless he enters an appearance and 
takes part in the proceedings. 
67.-(1) Subject to the provisions of this section, the holder Proceedings for 
of an exclusive licence under a patent shall have the same right infringem.ent 
as the proprietor of the patent to bring proceedings in respect I~Y exclUSIVO 
f . f· f b . f h lcensee. o any In nngement 0 t e patent commItted a ter t e date of 
the licence: and references to the proprietor of the patent in the 
provisions of this Act relating to infringement shall be construed 
accordingly. 
(2) In awarding damages or granting any other relief in any 
such proceedings the court or the comptroller shall take into 
consideration any loss suffered or likely to be suffered by the 
exclusive licensee as such as a result of the infringement, or, 
as the case may be, the profits derived from the infringement, 
so far as it constitutes an infringement of the rights of the 
exclusive licensee as such. 
(3) In any proceedings taken by an exclusive licensee by virtue 
of this section the proprietor of the patent shall be made a 
party to the proceedings, but if made a defendant or defender 
shall not be liable· for any costs or expenses unless he enters 
an appearance and takes part in the proceedings. 
C4 PART I 
Effect of non­
registration on 
infringement 
proceedings. 
Infringement 
of rights 
conferred by 
publication of 
application. c.37 Patents Act 1977 IP/NIlIGBRJPI 1 
Page 67 
68. Where by virtue of a transaction, instrument or event to 
which section 33 above applies a person becomes the proprietor 
or one of the proprietors or an exclusive licensee of a patent 
and the patent is subsequently infringed, the court or the comp­
troller shall not award him damages or order that he be given 
an account of the profits in respect of such a subsequent 
infringement occurring before the transaction, instrument or 
event is registered unless-
(a) the transaction, instrument or event is registered within 
the period of six months beginning with its date; or 
(b) the court or the comptroller is satisfied that it \vas not 
practicable to register the transaction, instrument or 
event before the end of that period and that it was 
registered as soon as practicable thereafter. 
69.-(1) Where an application for a patent for an invention is 
published, then, subject to subsections (2) and (3) below, the 
applicant shall have, as from the publication and until the grant 
of the patent, the same right as he would have had. if the patent 
had been granted on the date of the publication of the applica­
tion, to bring proceedings in the court or before the comptroller 
for damages in respect of any act which would have infringed 
the patent; and (subject to subsections (2) and (3) below) refer­
ences in sections 60 to 62 and 66 to 68 above to a patent and 
the proprietor of a patent shall be respectively construed as 
including references to any such application and the applicant, 
and references to a patent being in force, being granted. being 
valid or existing shall be construed accordingly. 
(2) The applicant shall be entitled to bring proceedings by 
virtue of this section in respect of any act only-
(a) after the patent has been granted; and 
(b) if the act would, if the patent had been granted on the 
date of the publication of the application, have infringed 
not only the patent, but also the claims (as interpreted 
by the description and any drawings referred to in the 
description or claims) in the form in which they were 
contained in the application immediately before the 
preparations for its pUblication were completed by the 
Patent Office. 
(3) Section 62(2) and (3) above shall not apply to an infringe­
ment of the rights conferred by this section, but in considering 
the amount of any damages for such an infringement, the court 
or the comptroller shall consider whether or not it would have 
been reasonable to expect, from a consideration of the applica .. 
tion as published under section 16 above, that a patent would 
be granted conferring on the proprietor of the patent protection IP/N/1/GBRlP/l 
Page 68 
Patents Act 1977 c.37 
from an act of the same description as that found to infringe 
those rights. and if the court or the comptroller finds that it 
would not have been reasonable. it or he shall reduce the damages 
to such an aInount as it or he thinks just. PART I 
70.-(1) Where a person (whether or not the proprietor of, or Remedy for 
entitled to any right in. a patent) by circulars. advertisements grouudless 
or otherwise threatens another person with proceedings for any ~hfre.ats of I . . . d b .... h h In rIngemen . Infnngement of a patent, a person aggneve y t e t reats proceeding~ .. 
(whether or not he is the person to whom the threats are made) ~ 
may. subject to subsection (4) below, bring proceedings in the 
court against the person making the threats, chiming any relief 
mentioned in subsection (3) below. 
(2) In any such proceedings the plaintiff or pursuer shall. if he 
proves that the threats were so made and satisfies the court that 
he is a person aggrieved by them. be entitled to the relief claimed 
unless-
(a) the defendant or defender proves that the acts in respect 
of which proceedings were threatened constitute or, if 
done, would constitute an infringement of a patent; 
and 
(b) the patent alleged to be infringed is not shown by the 
plaintiff or pursuer to be invalid in a relevant respect. 
(3) The said relief is-
(a) a declaration or declarator to the effect that the threats 
are unjustifiable; 
(b) an injunction or interdict against the continuance of the 
threa ts ; and 
(c) damages in respect of any loss whlch the plaintiff or 
pursuer has sustained by the threats. 
(4) Proceedings may not be brought under this section for 
a threat to bring proceedings for an infringement alleged to 
consist of making or importing a product for disposal or of 
using a process. 
(5) It is hereby declared that a mere notification of the 
existence of a patent does not constitute a threat of proceedings 
within the meaning of tbis section. 
71.-(1) Without prejudice to the court's jurisdiction to make Declaration 
a declaration or declarator apart from this section, a declaration or declarator 
or dec1arator that an act does not. or a proposed act would not ~ft~ non· . 'nf . t f t t b d b h • ID nngement. constItute an 1 nngemen 0 a pa en may e ma e y t e court i'ART I 
Power to 
revoke patents 
on application. c.37 Patellts Act 1977 IP/NIl/GBRlPI 1 
Page 69 
or the comptroller in proceedings between the person doing or 
proposing to do the act and the proprietor of the patent, not­
withstanding that no assertion to the contrary has been made by 
the proprietor, if it is shown-
(a) that that person has applied in writing to the proprietor 
for a written acknowledgment to the effect of the 
declaration or declarator claimed. and has furnished 
him with full particulars in writing of the act in ques­
tion; and 
(b) that the proprietor has refused or failed to give any 
such acknowledgment. 
(2) Subject to section 72(5) below, a declaration made by the 
comptroller under this section shall have the same effect as a 
declaration or declarator by the court. 
Revocation of patents 
72.-(1) Subject to the following provisions of this Act, the 
court or the comptroller may on the application of any person 
by order revoke a patent for an invention on (but only on) any 
of the following grounds, that is to say-
(a) the invention is not a patentable invention; 
(b) the patent was granted to a person who was not the only 
person entitled under section 7(2) above to be granted 
that patent or to two or more persons who were not 
the only persons so entitled; 
(c) the specification of the patent does not disclose the 
invention clearly enough and completely enough for 
it to be performed by a person skilled in the art; 
(cl) the matter disclosed in the specification of the patent 
extends beyond that disclosed in the application for 
the patent. as filed. or, if the patent was granted on 
a new application filed under section 8(3), 12 or 37(4) 
above or as mentioned in section 15(4) above, in the 
earlier application, as filed; 
(e) the protection conferred by the patent has been ex­
tended by an amendment which should not have been 
allowed. 
(2) An applicatiQn for the revocation of a patent on the 
ground mentioned in subsection (l)(b) above-
(a) may only be made by a person found by the court in an 
action for a declaration or dec1arator, or found by the 
court or the comptroller on a reference under section 37 
above, to be entitled to be granted that patent or to be 
granted a patent for part of the matter comprised in the 
specification of the patent sought to be revoked; and 
(b) may not be made if that action was commenced or that 
reference was made after the end of the period of two IP/N/lIGBRlP/l 
Page 70 
Patents Act 1977 c.37 
years beginning with the date of the grant of the patent 
sought to be revoked, unless it is shown that any person 
registered as a proprietor of the patent knew at the 
time of the grant or of the transfer of the patent to 
hinl that he was not entitled to the patent. 
(3) Rules under section 14(··P and (8) above shall, with any 
necessary modifications, apply for the purposes of subsection 
(l)(c) above as they apply for the purposes of section 14(3) 
above. 
(4) An order under this section may be an order for the 
unconditional revocation of the patent or, where the court or the 
comptroller determines that one of the grounds mentioned in 
subsection (1) above has be.:n established, but only so as to 
invalidate the patent to a limited extent, an order that the patent 
should be revoked unless within a specified time the specification 
is amended under section 75 below to the satisfaction of the 
court or the comptroller, as the case may be. 
(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 invalidity 
of the patent on any of the grounds referred to in subsection 
(l) above, whether or not any of the issues involved were decided 
in the said decision. 
(6) \Vhere the comptroller refuses to grant an application 
made to him by any person under this section, no application 
(otherwise than by way of appeal or by way of putting validity 
in issue in proceedings for infringement> may be made to the 
court by that person under this section in relation to the patent 
concerned, without the leave of the court. 
(7) \Vhere the comptroller has not disposed of an application 
made to him under this section, the applicant may not apply to 
the court under this section in respect of the patent concerned 
unless either-
(a) the proprietor of the patent agrees that the aprlicant 
may so apply, or 
(b) the comptroller certifies in \vriting that it appears to him 
that the question whether the patent should be revoked 
is one which would more properly be determined by 
the court. PART I 
73.-(1) If it appears to the comptroller that an invention for Comptroller's 
which a patent has been granted fonned part of the state of the power to 
art by virtue only of section 2(3) above, he may on his own revo~e patents 
. ... b d k h t b h 11 d on hIS own InItIatIve y or er revo e tepa ent, ut s a not 0 so initiative 
without giving the proprietor of the patent an opportunity of . PART I 
Proceedings 
in which 
validity of 
patent may be 
put in issue. c.37 Patents Act 1977 IP IN I 11GB RIP 11 
Page 71 
making any observations and of amending the specification of the 
patent so as to exclude any matter which formed part of the state 
of the art as aforesaid without contravening section 76 below. 
(2) If it appears to the comptroller that a patent under this 
Act and a European patent (UK) have been granted for the 
same invention having the same priority date and that the 
applications for both patents were filed by the same applicant 
or his successor in title, the comptroller may, on his own initiative 
but only after the relevant date, consider \vhether to revoke 
the patent granted under this Act and may, after giving the 
proprietor of the patent an opportunity of making any observa­
tions and of amending the specification of the patent, revoke 
the patent. 
(3) In this section" the relevant date" means whichever of the 
following dates is relevant, that is to say-
(a) the date on which the period for filing an opposition 
to the patent under the European Patent Convention 
expires without an opposition being filed; 
(b) the date when any opposition proceedings under that 
convention are finally disposed of by a decision to 
maintain the European patent; 
(c) if later than either of the foregoing dates. the date when 
the patent under this Act is granted. 
Putting validity in issue 
74.-( 1) Subject to the following provisions of this section, 
the validity of a patent may be put in issue-
(a) by way of defence, in proceedings for infringement of 
the patent under section 61 above or proceedings under 
section 69 above for infringment of rights conferred 
by the publication of an application; 
(b) in proceedings under section 70 above; 
(c) in proceedings in which a declaration in relation to the 
patent is sought under section 71 above; 
(cl) in proceedings before the court or the comptroller under 
section 72 above for the revocation of the patent; 
(e) in proceedings under section 58 above. 
(2) The validity of a patent may not be put in issue in any 
other proceedings and, in particular, no proceedings may be 
instituted (whether under this Act or otherwise) seeking only a 
declaration as to the validity or invalidity of a patent. 
(3) The only grounds on which the validity of a patent may be. 
put in issue (whether in proceedings for revocation under section 
72 above or otherwise) are the grounds on which the patent 
may be revoked under that section. IP/NI1 IGBRlPI1 
Page 72 
Patents Act 1977 c.37 
(4) No deternlination shall be made in any proceedings 
mentioned in subsection (1) above on the validity of a patent 
which any person puts in issue on the ground mentioned in 
section 72(l)(b) above unless-
(a) it has been determined In entitlement proceedings 
commenced by that person or in the proceedings in 
which the validity of the patent is in issue that the 
patent should have been granted to him and not some 
other person; and 
(b) except where it has been so determined in entitlement 
proceedings. the proceedings in which the validity of the 
patent is in issue are commenced before the end of the 
period of two years beginning with the date of the grant 
of the patent or it is shown that any person registered 
as a pi"oprietor of the patent knew at the time of the 
grant or of the transfer of the patent to him that he was 
not entitled to the patent. 
(5) \Vhere the validity of a patent is put in issue by way of 
defence or counterclaim the court or the comptroller shall. if it or 
he thinks it just to do so. give the defendant an opportunity to 
comply with the condition in subsection (4)(a) above. 
(6) In subsection (4) above "entitlement proceedings". in 
relation to a patent. means a reference under section 37 (l)(a) 
above on the ground that the patent was granted to a person not 
entitled to it or proceedings for a declaration or declarator that 
it was so granted. 
(7) Where proceedings with respect to a patent are pending 
in the court under any provision of this Act mentioned in sub­
section (1) above. no proceedings may be instituted without the 
leave of the court before the comptroller with respect to that 
patent under section 61(3). 69. 71 or 72 above. 
(8) It is hereby declared that for the purposes of this Act the 
validity of a patent is not put in issue merely because the comp­
troller is considering its validity in order to decide whether to 
revoke it under section 73 above. 
General provisions as to amendment of patents and applications PART I 
75.-( 1) In any proceedings before the court or the comp-Amc:ldment of 
troIler in which the validity of a patent is put in issue the court pat~nt in 
or as the case may be the comptroller may subject to section lIlfnngeme.Dt , 11 h'· ' or revocatIoD 76 below, a ow t e propnetor of the patent to amend the proceedings 
specifica,tion of the patent in such manner, and subject to such . 
terms as to advertising the proposed amendment and as to 
costs, expenses or otherwise, as the court or comptroller thinks 
fit. PART I c.37 Patents Act 1977 IP/NIlIGBRlPI 1 
Page 73 
(2) A person may give notice to the court or the comptroller 
of his opposition to an amendment proposed by the proprietor 
of the patent under this section. and if he does so the court or 
the comptroller shall notify the proprietor and consider the 
opposition in deciding whether the amendment or any amend­
ment should be allowed. 
(3) An amendment of a specification of a patent under this 
section shall have effect and be deemed always to have had 
effect from the grant of the patent. 
(4) \Vhere an application for an order under this section is 
made to the court, the applicant shall notify the comptroller 
\vho shall be entitled to appear and be heard and shall appear if 
so directed by the court. 
An:end~;.ellts 76.-( 1) An application for a patent (the later application) 
of applications shaH not be allo\ved to be filed under section 8(3), 12, or 37(4) 
and pa~enltsd above or as mentioned in section 15(4) above, in respect of any 
not to me u e d' 1 d' l' 1" h 'fi' f ac ~ed matter. matter ISC ose In an ear ler app lcatlOn or t e speCI catIon 0 
U a patent which has been granted, if the later application discloses 
matter which extends beyond that disclosed in the earlier 
application, as filed, or the application for the patent, as filed. 
Effect of 
European 
patent (UK). (2) No amendment of an application or the specification of 
a patent shall be allowed under any of the provisions of this 
Act to which this subsection applies if it-
(a) results in the application or specification disclosing any 
such matter, or 
(b) (where a patent has been granted) extends the protection 
conferred by the patent. 
(3) Subsection (2) above applies to the following provisions of 
this Act, namely, sections 17(3), 18(3), 19(1), 27(1), 73 and 75. 
PART 11 
PROVISIONS ABOUT INTERNATIONAL 
CoNVENTIONS 
European patents and patent applications 
77.-0) Subject to the provisions of this Act, a ~uro~n 
patent (UK) shall, as from the publication of the mention of Its 
grant in the European Patent Bulletin. be treated for the purpo~s 
of Parts I and III of this Act as if it were a patent undc:r thIS 
Act granted in pursuance of an application made under thIS Act IP/NIlIGBRlPI 1 
Page 74 
Patellts Act 1977 c.37 
and as if notice of the grant of the patent had. on the date of PART IT 
that publication, been published under section 24 above in the 
journal; and-
(a) the proprietor of a European patent (UK) shall 
accordingly as respects the United Kingdom have the 
same rights and remedies, subject to the same condi­
tions. as the proprietor of a patent under this Act; 
(b) references in Parts I and In of this Act to a. patent 
shall be construed accordingly; and 
(c) any statement made and any certificate filed for the 
purposes of the provision of the convention corres­
ponding to section 2(4)(c) above shall be respectively 
treated as a statement made and written evidence filed 
for the purposes of the said paragraph (c). 
(2) Subsection (1) above shall not affect the operation in reIa" 
tion to a European patent (UK) of any provisions of the 
European Patent Convention relating to the amendment or 
revocation of such a patent in proceedings before the European 
Patent Office. 
(3) Sections 58(7) to (9) and 63 above shall apply to the case 
where, after proceedings for the infringement of a European 
patent have been commenced before the court or the comptroller 
but have not been finally disposed of, it is established in pro­
ceedings before the European Patent Office that the patent is 
only partially valid as those provisions apply to proceedings 
in which the validity of a patent is put in issue and in which it 
is found that the patent is only partially valid. 
(4) Subject to subsection (6) below, \vhere a European patent 
(UK) is amended or revoked in accordance with the European 
Patent Convention, the amendment shall be treated for the 
purposes of Parts I and III of this Act as if it had been made. 
or as the case may be the patent shall be treated for those 
purposes as having been revoked, under this Act. 
(5) \Vhere-
(a) under the European Patent Convention a European 
patent (UK) is revoked for failure to observe a time 
limit and is subsequently restored; and 
(b) between the revocation and publication of the fact that 
it has been restored a person begins in good faith to do 
an act which would, apart from section 55 above, 
constitute an infringement of the patent or makes in 
good faith effective and serious preparations to do such 
an act; 
be shall have the rights conferred by section 28(6) above, and 
subsections (8) and (9) of that section shall apply accordingly. PARTII c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 75 
(6) 'Vhile this subsection is in force-
(a) subsection (1) above shall not apply to a European 
patent (UK) the specification of whIch was published 
ill French or German, unless a translation of the 
specification into English is filed at the Patent Office 
and the prescribed fee is paid before the end of the 
prescribed period ; 
(b) subsection (4) above shall not apply to an amendment 
made in French or German unless a translation of the 
amendment into English is filed at the Patent Office 
and the prescribed fee is paid before the end of the 
prescribed pericxi. 
(7) Where a translation of a specification or amendment 
into English is not filed in accordance with subsection (6)(a)· or 
(b) above, the patent shall be treated as always having been void. 
(8) The comptroller shall publish any translation filed at the 
Patent Office under subsection (6) above. 
(9) Subsection (6) above shall come into force on a day 
appointed for the purpose by rules and shall cease to have effoct 
on a day so appointed, without prejudice, however, to the power 
to bring it into force again. 
Effect of 78.-(1) Subject to the provisions of this Act, an application 
filin~ an. for a European patent (UK) having a date of filing under the 
~pplIcatlOn European Patent Convention shall be treated for the purposes 
10r a European f h . . f hi A h· h thi . 1· patent (UK) 0 t e provIsIons 0 t s ct to W IC S sectIon app les as an 
. application for a patent under this Act having that date as its 
date of filing and having the other incidents listed in subsection 
(3) below, but subject to the mcxiifications mentioned in the 
following provisions of this section. 
(2) This section applies to the following provisions of this 
Act:-
section 2(3) and so much of section 14(7) as relates to 
section 2(3) ; 
section 5 ; 
section 6 ; 
so much of section 13 (3) as relates to an application for and 
issue of a certificate under that subsection; 
sections 30 to 33 ; 
section 36 ; 
sections 55 to 69 ; 
section 74, so far as relevant to any of the provisions 
mentioned above; 
section 111 ; and 
section 125. IP/NIlIGBRlPI 1 
Page 76 
Patents Act 1977 c.37 
(3) The incidents referred to in subsection (1) above in relation 
to an application for a European patent (UK) are as follows:-
(a) any declaration of priority made in connection with the 
application under the European Patent Convention 
shall be treated for the purposes of this Act as a 
declaration made under section 5(2) above; 
(b) where a period of time relevant to priority is extended 
under that convention. the period of twelve months 
specified in section 5(2) above shall be so treated as 
altered correspondingly; 
(c) where the date of filing an application is re-dated under 
that convention to a later date. that date shall be so 
treated as the date of filing the application; 
(d) the application. if published in accordance with that 
convention, shall, subject to subsection (7) and section 
79 below, be so treated as published under section 16 
above; 
(e) any designation of the inventor under that convention 
or any statement under it indicating the origin of the 
right to a European patent shall be treated for the 
purposes of section 13(3) above as a statement filed 
under section 13(2) above; 
<f) registration of the application in the register of European 
patents shall be treated as registration under this Act. 
(4) Rules under section 32 above may not impose any 
requirements as to the registration of applications for European 
patents (UK) but may provide for the registration of copies of 
entries relating to such applications in the European register of 
patents. 
(5) Subsections (1) to (3) above shall cease to apply to an 
application for a European patent (UK) when the application 
is refused or withdrawn or deemed to be withdrawn. or the 
designation of the United Kingdom in the application is with­
drawn or deemed to be withdrawn. but if the rights of the 
applicant are re-established under the European Patent Conven­
tion, subsections (1) to (3) above shall as from the re-establishment 
of those rights again apply to the application. 
(6) Where between those subsections ceasing to apply to any 
such application and the re-establishment of the rights of the 
applicant a person begins in good faith to do an act which 
would. apart from section 55 above, constitute an infringement 
of the application if those subsections then applied, or makes in 
good faith effective and serious prepara,tions to do such an act, 
he shall have the rights conferred by section 28(6) above, and 
section 28(8) and (9) above shall apply to the exercise of any 
such right accordingly. PART II c.37 Patents Act 1977 IP/N/lIGBRlP/l 
Page 77 
PART 11 (7) While this subsection is in force, an application for a 
European patent (UK) published by the Europ~n Patent Office 
under the European Patent Convention in French or German 
shall be treated for the purposes of sections 55 and 69 above 
as published under section 16 above \vhen a translation into 
English of the claims of the specification of the application has 
been filed a t and published by the Paten t Office and the pre­
scribed fee has been paid, but an applicant-
Operation 
of s. 78 in 
relation 
to certain 
European 
patent 
applications. (a) may recover a payment by virtue of section 55(5) above 
in respect of the use of the invention in question before 
publication of that translation; or 
(b) may bring proceedings by virtue of section 69 above in 
respect of an act mentioned in that section which is 
done before publication of that translation; 
if before that use or the doing of that act he has sent by post or 
delivered to the government department who made use or 
authorised the use of the invention, or, as the case may be, to 
the person alleged to have done the act, a translation into 
English of those claims. 
(8) Subsection (7) above shall come into force on a day 
appointed for the purpose by rules and shall cease to have effect 
on a day so appointed, without prejudice, however, to the power 
to bring it into force again. 
79.-0) Subject to the follo\',:ing prOVIsIOns of this section, 
section 78 above, in its operation in relation to an international 
application for a patent (UK) which is treated by virtue of the 
European Patent Convention as an application for a European 
patent (UK), shall have effect as if any reference in that section 
to anything done in relation to the application under the Euro­
pean Patent Convention included a reference to the correspond­
ing thing done under the Patent Co-operation Treaty. 
(2) Any such international application which is published 
under that treaty shall be treated for the purposes of section 2(3) 
above as published only when a copy of the application has been 
supplied to the European Patent Office in English, French or 
German and the relevant fee has been paid under that 
convention. 
(3) Any such international application which is published 
under that treaty in a language other than English. French or 
German shall, subject to section 78(7) above, be treated for the 
purposes of sections 55 and 69 above as published only when it 
is re-published in English, French or German by the European 
Patent Office under that convention. IP/NIlIGBRlPI 1 
Page 78 
Patents Act 1977 c.37 
80.-(1) Subject to subsection (2) below, the text of a Euro- PART 1I 
pean patent or application for such a patent in the language Authentic 
of the proceedings. that is to say. the langua,ge in which pro-text of 
ceedinos relating to the patent or the' application are to be European d 
::: Offi h 11 b h patents an conducted before the European Patent . ce. sa. e t C patent 
authentic text for the purposes of any domestIc proceedIngs. that applications. 
is to say. any proceedings relating to the patent or application 
before the comptroller or the court. 
(2) Where the language of the proceedings is French or 
Gern1an. a translation into English of the specification of the 
patent under section 77 above or of the claims of the application 
under section 78 above shall be treated as the authentic 
text for the purpose of any domestic proceedings. other than 
proceedings for the revocation of the patent, if the patent or 
application as translated into English confers protection which 
is narrower than that conferred by it in French or German. 
(3) If any such translation results in a European patent or 
application conferring the narrower protection. the proprietor of 
or applicant for the patent may file a corrected translation ,,,,ith 
the Patent Office and. if he pays the prescribed fee within the 
prescribed period. the Patent Office shall publish it. but-
(a) any payment for any use of the invention which (apart 
from section 55 above) would have infringed the 
patent as correctly translated. but not as originally 
translated. or in the case of an application would have 
infringed it as aforesaid if the patent had been granted. 
shall not be recoverable under that section, 
(b) the proprietor or applicant shall not be entitled to bring 
proceedings in respect of an act which infringed the 
patent as correctly translated. but not as originally 
translated, or in the case of an application would have 
infringed it as aforesaid if the patent had been granted. 
unless before that use or the doing of the act the corrected 
translation has been published by the Patent Office or the 
proprietor or applicant has sent the corrected translation by post 
or delivered it to the government department who made use or 
authorised the use of the invention or. as the case may be. to 
the person alleged to have done that act. 
(4) Where a correction of a translation is published under 
subsection (3) above and before it is so published a person 
begins in good faith to do an act which would not constitute an 
infringement of the patent or application as originally translated 
but would (apart from section 55 above) constitute an infringe­
ment of it under the amended translation. or makes in good 
faith effective and serious preparations to do such an act, he shall 
have the rights conferred by section 28(6) above. and section 
28(8) and (9) above shall apply to the exercise of any such right 
accordingly. PARTII 
Conversion 
of European 
patent appli­
cations. c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 79 
81.-(1) The comptroller may direct that on compliance with 
the relevant conditions mentioned in subsection (2) below an 
application for a European pa.tent (UK) shall be treated as an 
application for a patent under this Act in the following cases:-
(a) where the application is deemed to be withdrawn under 
the provisions of the European Patent Convention re­
lating to the restriction of the processing of applica­
tions; 
(b) where under the convention the application is dec:med 
to be withdrawn because it has not, \vithin the period 
required by the convention. been received by the 
European Patent Office. 
(2) The relevant conditions referred to above are that-
(a) in the case of an application falling within subsection 
(1)(a) above, the European Patent Office transmits a 
request of the applicant to the Patent Office that his 
application should be converted into an application 
under this Act, together with a copy of the files relating 
to the application; 
(b) in the case of an application falling within subsection 
(1)(b) above.-
(i) the applicant requests the comptroller within 
the relevant prescribed period (where the application 
was filed with the Patent Office) to give a direction 
under this section, or 
(ii) the central industrial property office of a 
country which is party to the convention, other than 
the United Kingdom, with which the application was 
filed transmits within the relevant prescribed period 
a request that the application should be converted 
into an application under this Act. together with a 
copy of the application; and 
(c) in either case the applicant within the relevant pre­
scribed period pays the filing fee and if the application 
is in a language other than English, files a translation 
into English of the application and of any amend­
ments previously made in accordance with the 
convention. 
(3) Where an application for a European patent falls to be 
treated as an application for ~ patent under this Act by virtue 
of a direction under this section-
(a) the date which is the date of filing the application 
under the European Patent Convention shall be treated 
as its date of filing for the purposes of this Act but if 
that date is re-dated under the convention to a later IP/N/1/GBRlP/l 
Page 80 
Patents Act 1977 c.37 
date, that later date shall be treated for those purposes 
as the date of filing the application; 
(b) if the application satisfies a requirement of the conven­
tion corresponding to any of the requirements of this 
Act or rules designated as formal requirements, it shall 
be treated as satisfying that fomlal requirement; 
(c) any document filed with the European Patent Office 
under any provision of the convention corresponding 
to any of the following provisions of tills Act, that is 
to say. sections 2(4}(c), 5, 13(2) and 14, or. any rule 
made for the purposes of any of those provisions, shall 
be treated as filed with the Patent Office under that 
provision or rule; and 
(d) the comptroller shall refer the application for only so 
much of the examination and search required by 
sections 17 and 18 above as he considers appropriate 
in view of any examination and search carried out 
under the convention, and those sections shall apply 
with any necessary modifications accordingly. PART II 
82.-(1) The court shall not have jurisdiction to determine a Jurisdicti~n 
question to which this section applies except in accordance with tqo edet~ermlne 
f I· . . f h· . u s lons as the 01 OWIng provIsIons 0 t IS sectlon. to right to a 
(2) Section 12 above shall not confer jurisdiction on the patent. 
comptroller to determine a question to which this section applies 
except in accordance with the following provisions of this 
section. 
(3) This section applies to a question arising before the grant 
of a European patent whether a person has a right to be granted 
a European patent, or a share in any such patent, and in this 
section" employer-employee question" mean9 any such question 
between an employer and an employee, or their successors in 
title, arising out of an application for a European patent for an 
invention made by the employee. 
(4) The court and the comptroller shall have jurisdiction to 
determine any question to which this section applies, other than 
an employer-employee question, if either of the following con­
ditions is satisfied. that is to say-
(a) the applicant has his residence or principal place of 
business in the United Kingdom; or 
(b) the other party claims that the patent should be granted 
to him and he has his residence or principal place of 
business in the United Kingdom and the applicant does 
not have his residence or principal place of business in 
any of the relevant contracting states; 
and also if in either of those cases there is no written evidence 
that the parties have agreed to submit to the jurisdiction of the PART 11 c.37 Patents Act 1977 IP/N/1/GBRlP/1 
Page 81 
competent authority of a relevant contracting state other than 
the United Kingdom. 
(5) The court and the comptroller shall have jurisdiction to 
determine an employer-employee question if either of the follow­
ing conditions is satisfieq. that is to say-
(a) the employee is mainly employed in the United 
Kingdom; or 
(b) the employee is not mainly employed anywhere or his 
place of nlain employment cannot be determined, but 
the employer has a place of business in the United 
Kingdom to which the employee is attached (whether 
or not he is also attached elsewhere) ; 
and also if in either of those cases there is no written evidence 
that the parties have agreed to submit to the jurisdiction of the 
competent authority of a relevant contracting state other than 
the United KingdoITI or. where there is such evidence of such 
an agreement. if the proper law of the contract of employment 
does not recognise the validity of the agreement. 
(6) \Vithout prejudice to subsections (2) to (5) above. the 
court and the comptroller shall have jurisdiction to determine 
any question to which this section applies if there is written 
evidence that the parties have agreed to submit to the juris­
diction of the court or the comptroller. as the case may be. 
and. in the case of an employer-employee question. the proper 
law of the contract of employment recognises the validity of the 
agreement. 
(7) If, after proceedings to determine a question to which this 
section applies have been brought before the competent 
authority of a relevant contracting state other than the United 
Kingdom. proceedings are begun before the court or a reference 
is made to the comptroller under section 12 above to determine 
that question. the court or the comptroller, as the case may be. 
shall stay or sist the proceedings before the court or the comp­
troller unless or until the competent authority of that other 
state either-
(a) determines to decline jurisdiction and no appeal ~es 
from the determination or the time for appealIng 
expires. or 
(b) makes a determination which the court or the comp­
troller refuses to recognise under section 83 below. 
(8) References in this section to the determination of a 
question include respectively references to-
(a) the making of a declaration or the grant of a declarator 
with respect to that question (in the case of the court) : 
and IP/NI1/GBRlPI1 
Page 82 
Patellts Act 1977 c.37 
(b) the making of an order under section 12 above in 
relation to that question (in the case of the court or 
the comptroller). 
(9) In this section and section 83 below" relevant contract­
ing state" means a country which is a party to the European 
Patent Convention and has not exercised its right under the 
convention to exclude the application of the protocol to the 
convention known as the Protocol on Recognition. PART II 
83.-,1) A deternlination of a question to \vhich section 82 EITect of 
above applies by the competent authority of a relevant contract- p~t~~t 
ing state other than the United Kingdom shall. if no appeal d';:ClSlOns of 
1· f h d .. h· ..... ~ li h . d competent les rOln t e etenrunatJ.on or t e tIme tor appea ng as expIre • authorities of 
be recognised in the United Kingdom as if it had been made by other sta.te). 
the court or the comptroller unless the court or he refuses to 
recognise it under subsection (2) below. 
(2) The court or the comptroller may refuse to recognise any 
such determination that the applicant for a European patent 
had no right to be granted the patent, or any share in it, if 
either-
(a) the applicant did not contest the proceedings in question 
because he was not notified of them at all or in the 
proper manner or was not notified of them in time for 
him to contest the proceedings; or 
(b) the determination in the proceedings in question con­
flicts with the determination of the competent authority 
of any relevant contracting state in proceedings 
instituted earlier between the same parties as in the 
proceeedings in question. 
84.-(1) No individual shall carry on for gain in the United Patent agents 
Kingdom, alone or in partnership with any other person, the and other 
business of acting as agent or other representative of other r~presenta-
f tb f I· f b .. E tlves. persons or e purpose 0 app ymg or or 0 tammg uropean 
patents or for the purpose of conducting proceedings in con­
nection with such patents before the European Patent Office 
or the comptroller, or hold himself out or permit himself to be 
held out as so carrying on such a business, unless he satisfies the 
condition that his name and that of each of his partners appears 
on the European list. 
(2) Subsection (1) above shall not prohibit a barrister, advocate 
or solicitor of any part of the United Kingdom from conducting 
or otherwise taking part in any proceedings in connection with 
European patents before the European Patent Office or the 
comptroller to the same extent as he is entitled to take part in 
the corresponding proceedings in connection with patents under 
this Act before the Patent Office or the comptroller. c.37 Patents Act 1977 IP IN I lIGBRlP /l 
Page 83 
PART 11 (3) A body corporate shall not for gain act or describe 
European 
patent 
attorneys. 
1974 c. 47. 
S.l. 1976/582 
(N.I. 12). 
1933 c. 21. itself or hold itself out as entitled to act as agent or other 
representative of other persons for any purpose mentioned in 
subsection (1) above unless pernlitted to do so under the Euro­
pean Patent Convention. 
(4) Any person who contravenes subsection (1) or (3) above 
shall be liable on summary conviction to a fine not exceeding 
£1,000. 
(5) Proceedings for an offence under this section may be 
begun at any time within twelve months from the d~te of the 
offence. 
{6) A person who does any act mentioned in subsection (1) 
above, but satisfies the condition mentioned in that subsection, 
shall not be treated as contravening section 114 belo\v so long 
as he does not describe himself as a patent agent without 
qualification and does not hold himself out or permit himself 
to be held out as carrying on any business other than one 
mentioned in that subsection. 
(7) In this section" the European list" means the list of pro­
fessional representatives maintained by the European Patent 
Office in pursuance of the European Patent Convention. 
85.-(1) For the avoidance of doubt, it is hereby declared. 
that any person whose name appears on the European list shall 
not be guilty of an offence under section 21 of the Solicitors 
Act 1974 or Article 22 of the Solicitors (Northern Ireland) Order 
1976 by reason only of his describing himself as Q European 
patent attorney. 
(2) A person whose name appears on the European list shall 
not be guilty of an offence under any of the enactments men­
tioned in subsection (3) below by reason only of the preparation 
by him of any document (other than a deed) for use in proceed­
ings before the comptroller under this Act, in relation to a 
European patent or application for such a patent. 
(3) The enactments referred to in subsection (2) above (v"'hich 
prohibit the preparation for reward of certain instruments or 
writs by persons not legally qualified) are-
(a) section 22 of the Solicitors Act 1974 ; 
(b) section 39 of the Solicitors (Scotland) Act 1933 ; and 
(c) Article 23 of the Solicitors <Northern Ireland) Order 
1976. 
(4) In this section "the European list" means the list of 
professional representatives maintained by the European Patent 
Office in pursuance of the European Patent Convention. IP/N/l/GBRJP/1 
Page 84 
Patents Act 1977 c,37 
Community patents PART II 
86.-(1) All rights, powers, liabilities, obligations and restric- Implemen­
tions from time to time created or arising by or under the ~tlon of"t 
Community Patent Convention and all remedies and procedures P~t~n~~~ri: 
from time to time provided for by or under that convention vcotion. 
shall by virtue of this section have legal effect in the United 
Kingdom and shall be used there, be recognised and available 
in law and be enforced, allowed and followed accordingly. 
(2) The Secretary of State may by regulations make 
provision-
(a) for implementing any obligation imposed by that con­
vention on a domestic in~titution or enabling any such 
obligation to be implemented or enabling any rights 
or powers conferred on any such institution to be 
exercised; and 
(b) otherwise for giving effect to subsection (1) above and 
dealing with matters arising out of its commencement 
or operation. 
(3) Regulations under this section may include any incidental. 
consequential, transitional or supplementary provision appear­
ing to the Secretary of State to be necessary or expedient, 
including provision amending any enactment, wheIlever passed, 
other than an enactment contained in this Part of this Act, 
and provision for the application of any provision of the regula­
tions outside the United Kingdom. 
(4) Sections 12, 73(2), 77 to 80, 82 and 83 above shall not 
apply to any application for a European patent which under the 
Community Patent Convention is treated as an application for 
a Community patent, or to a Community patent (since any such 
application or patent falls within the foregoing provisions of 
this section). 
(5) In this section" domestic institution" means the court, the 
comptroller or the Patent Office, as the case may require. 
87.-(1) For the purposes of all legal proceedings, including Decisions on 
proceedings before the comptroller, any question as to the mean-Community 
ing or effect of the Community Patent Convention, or as to the cPatent t" 
I'd' . d fI f' d d . onven IOn. va 1 lty, meanmg an e ect 0 any Instrument ma e un er or In 
implementation of that convention by any relevant convention 
institution shall be treated as a question of law (and if not ref-
erred to the relevant convention court, be for determination as 
such in accordance with the principles laid down by and any 
relevant decision of that court). PART II 
Jurisdiction 
in legal 
proceedings in 
connection 
with 
Community 
Patent 
Convention. 
19~8 c. 38. c.37 Patents Act 1977 IP/N/lIGBRlP/l 
Page 85 
(2) In this section-
"relevant convention institution" means any institution 
established by or having functions under the Com­
munity Patent Convention, not being an institution 
of the United Kingdom or any other member state, and 
"relevant convention court" does not include-
(a) the European Patent Office or any of its depart­
ments; or 
(b) a court of the United Kingdom or of any other 
nlember state. 
88.-(1) For the purposes of the application in the United 
Kingdom of Article 69 of the Community Patent Convention 
(residence of a party as founding jurisdiction in actions for 
infringement, etc.) the residence of a party shall be determined 
in accordance with the following provisions of this section until 
such date as the Secretary of State may by order appoint for 
the repeal of those provisions. 
(2) For the purpose of determining whether a person is resi· 
dent in any part of the United Kingdom the court shall apply the 
law of that part of the United Kingdom. 
(3) A company within the meaning of the Companies Act 
1948 shall be treated for the purposes of subsection (2) above 
as resident in that part of the United Kingdom where its registered 
office is situa,ted or where it has a principal place of business. 
(4) Any other body corporate or any unincorporated body of 
persons shall be so treated as resident in that part of the United 
Kingdom where it has a principal place of business. 
(5) Where any body has a principal place of business in two 
or more parts of the United Kingdom it shall be so treated as 
resident in all those parts. 
(6) If the court determines that a person is not resident ~n 
the United Kingdom, then, in order to determine whe~her he IS 
resident in a country which is a party to the Commu~ty P~te~t 
Convention the court shall, except in a case fallmg ~lthln 
subsection (7) below, apply the law which would be applIed by 
the courts of that country in order to found jurisdiction under 
that convention. . 
(7) The question whether a person is to be tak~n for the 
purposes of this section as resident in the United Klng~om or 
any other country shall be determined in accordance wIth ~e 
law of that country of which he is a citizen if by that law ~s 
residence depends on that of another person or on the locatIon 
of an authority. IP/N/lIGBRJP/l 
Page 86 
Patents Act 1977 c.37 
International applications for patents PART II 
89.-(1) Subject to the provisions of this Act, an international Ef!ect of 
application for a patent (UK) for which a date of filing has ~hng . 
been accorded (whether by the Patent Office or by any other mter.nat~onal 
h P C . T (' h' ,apphcatlOn body) under t e atent o-operatI?n ,reaty In, t IS sectIon for a patent, 
referred to as the Treaty) shall, untIl this subsectlOn ceases to 
apply to the application, be treated for the purposes of Parts I 
and III of this Act as an application for a patent under this 
Act having that date as its date of filing and-
(a) the application, if published in accordance with the 
Treaty and if it satisfies relevant conditions, shall 
be so treated as published under section 16 above, 
subject, however, to subsection (7) below; 
(b) wbere the date of filing an application is re-dated under 
the Treaty to a later date, that date shall be so treated 
as the date of filing the application; 
(c) any declaration of priority made under the Treaty shall 
be so treated as a declaration made under section 5 (2) 
above; 
(d) where a period of time relevant to priority is extended 
under the Treaty. the period of twelve months specified 
in section 5(2) above shall be treated as altered 
correspondingly; 
(e) any statement of the name of the inventor under the 
Treaty shall be so treated as a statement filed under 
section 13(2) abo''v'e ; and 
(f) an amendment of the application made in accordance 
with the Treaty shall, if it satisfies the relevant con­
ditions, be so treated as made under this Act. 
(2) Accordingly, until subsection (1) above ceases to apply to 
an application filed or published in accordance with the Treaty, 
the applicant shall, subject to subsection (7) below, have the 
same rigbts and remedies in relation to the application as an 
applicant for a patent under this Act has in relation to a filed 
or. as the case may be, a published application for such a patent. 
(3) Notwithstanding anything in subsection (1) above. the 
provisions of the Treaty and not those of this Act relating to 
publication, search. examination and amendment shall apply 
to any such application until all the relevant conditions are 
satisfied and, if those conditions are not satisfied before the 
end of the prescribed period, the application shall be taken 
to be withdrawn. 
(4) The relevant conditions-
(a) in the case of an application. are that a copy of the 
application· and. if it is not in English. a translation 
into English have been filed at the Patent Office and PARTII c.37 Parents Act 1977 IP/N/1/GBRlP/l 
Page 87 
the filing fee has been paid to the Patent Office by 
the applicant; and 
(b) in the case of an amendment, are that a copy of the 
amendment and, if it is not in English, a translation 
into English have been filed at the Patent Office. 
(5) The comptroller shall on payment of the prescribed fee 
publish any translation filed at the Patent Office under sub. 
section (4) above. 
(6) Before the relevant conditions are satisfied, subsection 
(1) above shall not operate so as to secure that an international 
application for a patent (UK) is to be treated for the purposes 
of section 8 above as an application for a patent under this. 
Act and shall not affect the application of section 12 above 
to an invention for which an international application of a patent 
is made or proposed to be made, but when the relevant condi­
tions are satisfied the international application shall be so 
treated and accordingly section 12 above shall not apply to it. 
(7) For the purposes of sections 55 and 69 above an inter­
national application for a patent (UK) published in accordance 
with the Treaty-
(a) shall, if published in English, be treated as published 
under section 16 above on its publication in accord­
ance with the Treaty ; 
(b) shall, if published in any other language and if the 
relevant conditions are satisfied, be treated as pub­
lished under section 16 above on the publication of a 
translation of the application under subsection (5) 
above; 
but, if the application is published in a language other than 
English, the applicant may recover a payment by virtue of 
section 55 above in respect of the use of the invention in 
question before publication of that translation, or may bring 
proceedings by virtue of section 69 above in respect of an act 
mentioned in that section which is done before publication of 
that translation, if before that use or the doing of that act he 
has sent by post or delivered to the government department 
who made use or authorised the use of the invention, or, as 
the case may be, to the person alleged to have done the act, a 
translation into English of the specification of the application. 
(8) Subsection (1) above shall cease to apply to an inter­
national application for a patent (UK) if-
(a) the application is withdrawn or deemed to be with­
drawn; or IP IN I lIGBRlP 11 
Page 88 
Patents Act 1977 c.37 
(b) the designation of the United Kingdom in the applica-
tion is withdrawn or deemed to be withdrawn; 
except where the application or the designation of the United 
Kingdom in the application is deemed to be withdrawn under 
the Treaty because of an error or omission in the Patent Office 
or any other institution having functions under the Treaty or of 
an application not being received by the International Bureau. 
owing to circumstances outside the applicant's control. before 
the end of the time limited for that purpose by the Treaty. 
(9) \Vhere the relevant conditions are satisfied before the end 
of the prescribed period. the comptroller shall refer the applica­
tion for so much of the examination and search as is required 
by sections 17 and 18 above as he considers appropriate in view 
of any examination and search carried out under the Treaty, and 
those sections shall apply with any necessary modifications 
accordingly. 
(10) The foregoing provisions of this section shall not apply 
to an international application for a patent (UK) which is treated 
by virtue of the European Patent Convention as an application 
for a European patent (UK) or which contains an indication 
that the applicant wishes to obtain a European patent (UK). 
(11) If an international application for a patent which pur­
ports to designate the United Kingdom is refused a filing date 
under the Treaty and the comptroller determines that the refusal 
was caused by an error or omission in the Patent Office or any 
other institution having functions under the Treaty, he may 
direct that the application shall be treated as an application 
under this Act. 
Convention countries PARTII 
90.-(1) Her Majesty may with a view to the fulfilment of a Orders in 
treaty or international convention, arrangement or engagement, Council. as to 
by Order in Council declare that any country specified in the conve~tlOD 
O d . . f h f· 5 countrIes. r er IS a conventlon country or t e purposes 0 sectIon 
above. 
(2) Her Majesty may by Order in Council direct that any of 
the Channel Islands, any colony or any British protectorate 
or protected state shall be taken to be a convention country for 
those purposes. 
(3) For the purposes of subsection (1) above every colony. 
protectorate. and territory subject to the authority or under the 
suzerainty of another country, and every territory administered 
by another country under the trusteeship system of the United 
Nations shall be taken to be a country in the case of which a 
declaration may be made under that subsection. PARTII 
Evidence of 
cODventions 
and instru­
ments under 
cODventions. c.37 Patents Act 1977 
Miscellaneous IP/NIlIGBRlPI 1 
Page 89 
. 91.-(1) Judicial notice shall be taken of the following, that 
IS to say-
(a) the European Patent Convention, the Community Patent 
Convention and the Patent Co-operation Treaty (each 
of which is hereafter in this section referred to as the 
relevant convention) ; 
(b) any bulletin, journal or gazette published under the 
relevant convention and the register of European or 
Community patents kept under it; and 
(c) any decision of, or expression of opinion by, the relevant 
convention court on any question arising under or in 
connection with the relevant convention. 
(2) Any document mentioned in subsection (l)(b) above 
shall be admissible as evidence of any instrument or other act 
thereby communicated of any convention institution. 
(3) Evidence of any instrument issued under the relevant 
convention by any such institution, including any judgment or 
order of the relevant convention court, or of any document in 
the custody of any such institution or reproducing in legible form 
any information in such custody otherwise than in legible form, 
or any entry in or extract from such a document, may be given 
in any legal proceedings by production of a copy certified as a 
true copy by an official of that institution; and any document 
purporting to be such a copy shall be received in evidence with· 
out proof of the official position or handwriting of the person 
signing the certificate. 
(4) Evidence of any such instrument may also be given in 
any legal proceedings-
(a) by production of a copy purporting to be printed by the 
Queen's Printer; 
(b) where the instrument is in the custody of a government 
department, by production of a copy certified on 
behalf of the department to be a true copy by an 
officer of the department generally or specially 
authorised to do so ; 
and any document purporting to be such a copy as is mentioned 
in paragraph (b) above of an instrument in the custody of a 
department shall be received in evidence with?u~ . proof of tpe 
official position or handwriting of the person slgnmg the ce~fi­
cate, or of his authority to do so, or of the document bemg 
in the custody of the department. 
(5) In any legal proceedings in Scotland evid~nce of any 
matter given in a manner authorised by this section shall be 
sufficient evidence of it. IP/NIlIGBRlPI 1 
Page 90 
(6) In this section-Patents Act 1977 c.37 
"convention institution" means an institution established 
by or having functions under the relevant convention; 
"relevant convention court" does not include a court of 
the United Kingdom or of any other country which is 
a party to the relevant convention; and 
"legal proceedings", in relation to the United Kingdom, 
includes proceedings before the comptroller. PART 11 
92.-(1) Sections 1 to 3 of the Evidence (Proceedings in Other Obtaining 
Jurisdictions) Act 1975 (provisions enabling United Kingdom evidenc~ for 
courts to assist in obtainin cr evidence for foreion courts) shall proceedmgs 
I ,::, d' b f "I under the app y for the purpose of procee lngs e ore a re evant conven- European 
tion court under the European Patent Convention as they apply Patent 
for the purpose of civil proceedings in a court exercising juris-Convention 
diction in a country outside the United Kingdom. 1975 c. 34. 
(2) In the application of those sections by virtue of this section 
any reference to the High Conrt, the Court of Session or the 
High Court of Justice in Northern Ireland shall include a refer­
ence to the comptroller. 
(3) Rules under this Act may include provision-
(a) as to the manner in which an application under section 
1 of the said Act of 1975 is to be made to the comp­
troller for the purpose of proceedings before a relevant 
convention court under the European Patent Conven­
tion; and 
(b) subject to the provisions of that Act, as to the circum­
stances in which an order can be made under section 2 
of that Act on any such application. 
(4) Rules of court and rules under this Act may provide for 
an officer of the European Patent Office to attend the hearing 
of an application under section 1 of that Act before the court 
or the comptroller, as the case may be, and examine the wit­
nesses or request the court or comptroller to put specified 
questions to the witnesses. 
(5) Section 1(4) of the Perjury Act 1911 and section 1(4) 1911 c.6 
of the Perjury Act (Northern Ireland) 1946 (statements made 1946 c.13 
for the purposes, among others, of judicial proceedings in a tri-(N. I.). 
bunal of a foreign state) shall apply in relation to proceedings 
before a relevant convention court under the European Patent 
Convention as they apply to a judicial proceeding in a tribunal 
of a foreign state. PART 11 
Enforcement 
of orders for 
costs. c.37 Patents Act 1977 IP/N/1/GBRlP/I 
Page 91 
93. If the European Patent Office orders the payment of costs 
in any proceedings before it-
(a) in England and Wales the costs shall, if a county court 
so orders. be recoverable by execution issued from the 
county court or otherwise as if they were payable under 
an order of that court ; 
(b) in Scotland the order may be enforced in like manner 
as a, recorded decree arbitral. 
(c) in Northern Ireland the order may be enforced as if it 
were a money judgment. 
C;ommunica- 94. It shall not be unlawful by virtue of any enactment to 
!:c;n of tie t communicate the following information in pursuance of the lworma on 0 E P . the European uropean atent Conventlon to the European Patent Office or 
Patent Office. the competent authority of any country which is party to the 
etc. Convention. that is to say-
Financial 
provisions. (a) information in the files of the court which. in accor­
dance with rules of court, the court authorises to be so 
communicated ; 
(b) information in the files of the Patent Office which, in 
accordance with rules under this Act, the comptroller 
authorises to be so communicated. 
95.-0) There shall be paid out of moneys provided by 
Parliament any sums required by any Minister of the Crown 
or government department to meet any financial obligation of 
the United Kingdom under the European Patent Convention, the 
Community Patent Convention or the Patent Co-operation 
Treaty. 
(2) Any sums received by any Minister of the Crown or 
government department in pursuance of either of those con­
ventions or that treaty shall be paid into the Consolidated Fund. 
PART III 
MISCELLANEOUS AND GENERAL 
Legal Proceedings 
The Patents 96.-(1) There shall be constituted, as part of the Chancery 
Court. Division of the High Court, a Patents Court to take such pro­
ceedings relating to patents and other matters as may be 
prescribed by rules of court. 
(2) The judges of the Patents Court shall be such of the 
puisne judges of the High Court as the Lord Chancellor may 
from time to time nominate. IP/NIlIGBRlPI 1 
Page 92 
Patents Act 1977 c.37 
(3) The foregoing provisions of this section shall not be taken PART III 
as prejudicing the provisions of the Supreme Court of Judicature 19~5 c. 49. 
(Consolidation) Act 1925 which enable the whole jurisdiction of 
the High Court to be exercised by any judge of that court. 
(4) Rules of court shall make provision for the appointment of 
scientific advisers to assist the Patents Court in proceedings 
under this Act and for regulating the functions of such advisers. 
(5) The remuneration of any such adviser shall be determined 
by the Lord Chancellor with the consent of the Minister for the 
Civil Service and shall be defrayed out of moneys provided by 
Parliament. 
97.-0) Except as provided by subsection (4) below, an Appeals 
appeal shall lie to the Patents Court from any decision of the from :h~lJ 
comptroller under this Act or rules except any of the following comp ro ~r. 
decisions. that is to say-
(a) a decision falling within section 14(7) above ~ 
(b) a decision under section 16(2) above to omit matter 
from a· specification; 
(c) a decision to give directions under subsection (1) or (2) 
of section 22 above; 
(d) a decision under rules which is excepted by rules from 
the right of appeal conferred by this section. 
(2) For the purpose of hearing appeals under this section the 
Patents Court may consist of one or more judges of that court 
in accordance with directions given by or on behalf of the Lord 
Chancellor; and the Patents Court shall not be treated as a 
divisional court for the purposes of section 31(1)(f) of the 
Supreme Court of Judicature (Consolidation) Act 1925 (appeals 
from divisional courts). 
(3) An appeal shall not lie to the Court of Appeal from a 
decision of the Patents Court on appeal from a decision of the 
comptroller under this Act or rules-
(a) except where the comptroller's decision was given under 
section 8, 12, 18, 20, 27. 37, 40. 61, 72, 73 or 75 
above; or 
(b) except where the ground of appeal is that the decision 
of the Patents Court is wrong in law; 
but an appeal shall only lie to the Court of Appeal under this 
section if leave to appeal is given by the Patents Court or the 
Court of Appeal. 
(4) An appeal shall lie to the Court of Session fronl any 
decision of the comptroller in proceedings which under rules 
D c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 93 
PART III are held in Scotland, except any decision mentioned in para­
graphs (a) to (d) of subsection (1) above. 
Proceedings in 
Scotland. 
General 
powers of 
the court. 
Burden of 
proof in 
certain cases. 
Exercise of 
comptroller's 
discretionary 
powers. (5) An appeal shall not lie to the Inner House of the Court 
of Session from a decision of an Outer House judge on appeal 
from a decision of the comptroller under this Act or rules-
(a) except where the comptroller's decision was given under 
section 8, 12, 18, 20, 27, 37,40, 61, 72, 73 or 75 above; 
or 
(b) except where the ground of appeal is that the decision 
of the Outer House judge is wrong in law. 
98.-0) In Scotland proceedings relating primarily to patents 
(other than proceedings before the comptroller) shall be com­
petent in the Court of Session only, and any jurisdiction of the 
sheriff court relating to patents is hereby abolished except in 
relation to questions which are incidental to the issue in pro­
ceedings which are otherwise competent there. 
(2) The remuneration of any assessor appointed to assist the 
court in proceedings under this Act in the Court of Session shall 
be determined by the Lord President of the Court of Session 
with the consent of the Minister for the Civil Service and shall 
be defrayed out of moneys provided by Parliament. 
99. The court may, for the purpose of determining any ques­
tion in the exercise of its original or appellate jurisdiction under 
this Act or any treaty or international convention to which the 
United Kingdom is a party, make any order or exercise any 
other power which the comptroller could have made or exercised 
for the purpose of determining that question. 
100.-( 1) If the invention for which a patent is granted is 
a process for obtaining a new product, the same product 
produced by a person other than the proprietor of the patent or 
a licensee of his shall, unless the contrary is proved, be taken in 
any proceedings to have been obtained by that process. 
(2) In considering whether a party has discharged the burd~n 
imposed upon him by this section, the court shall not require 
him to disclose any manufacturing or commercial secrets if it 
appears to the court that it would be unreasonable to do so. 
101. Without prejudice to any rule of law, the comptrolle! shall 
give any party to a proceeding before him an opportunity ?f 
being heard before exercising adversely to that party any dlS­
cretion vested in the comptroller by this Act or rules. IP/N/1/GBRJP/l 
Page 94 
Patents Act 1977 c.37 
102.-0) Any party to any proceedings before the comptroller PART III 
under this Act or any treaty or international convention to which Right of 
the United Kingdom is a party may appear before the comptroller audience in 
in person or be represented by counsel or a solicitor (of any part patent d' 
of the United Kingdom) or a patent agent or, subject to rules procec lOgs. 
under section 115 below. by any other person whom he desires 
to represent him. 
(2) Subsection (1) above. in its application to proceedings 
under any such treaty or convention, shall have effect subject to 
section 84(1) or (3) above. 
(3) Without prejudice to the right of counsel to appear 
before the High Court, a member of the Bar of England and 
Wales \vho is not in actual practice. a solicitor of the Supreme 
Court and a patent agent shall each have the right to appear and 
be heard on behalf of any party to an appeal under this Act from 
the comptroller to the Patents Court. 
103.-(1) It is hereby declared that the rule of law which E::t~:1Silm of 
confers privilege from disclosure in legal proceedings in respect of pnvIlege .for 
communica~ions m~de wit~ a soIic~tor or a .person acting. on his ~~~o~~~.ith 
behalf. or In relatIon to Information obtaIned or supplIed for solicitors 
submission to a solicitor or a person acting on his behalf. for the relating to 
purpose of any pending or contemplated proceedings before a patent . 
court in the United Kingdom extends to such communications so procccLlmgs. 
made for the purpose of any pending or contemplated-
(a) proceedings before the comptroller under this Act or 
any of the relevant conventions. or 
(b) proceedings before the relevant convention court under 
any of those conventions. 
(2) In this section-
" legal proceedings" includes proceedings before the comp­
troller ; 
the references to legal proceedings and pending or con­
templated proceedings include references to applications 
for a patent or a European patent and to international 
applications for a patent; and 
"the relevant conventions" means the European Patent 
Convention. the Community Patent Convention and the 
Patent Co-operation Treaty. 
(3) This section shall not extend to Scotland. 
104.-(1) This section applies to any communication made Privilege for 
for the purpose of any pending or contemplated patent proceed- co~muni: 
incrs beincr either- catIOns wIth 
::;, '::;' .. patent agents 
(a) a communIcatIon between the patent agent of a party to relating to 
those proceedings and that party or any other person; patent 
or proceedings. c.37 Patents Act 1977 IP/NIlIGBRlPI 1 
Page 95 
PART III (b) a communication between a party to those proceedings 
and a person other than his patent agent made for the 
purpose ~f ob~ining, or in r~spons~ to a request for. 
Information whIch that party IS seekIng for the purpose 
of submitting it to his patent agent. 
Extension of 
privilege in 
Scotland for 
communica­
tions relating 
to patent 
proceedings. (2) For the purposes of subsection (1) above a communication 
made by or to a person acting-
(i) on behalf of a patent agent; or 
(iD on behalf of a party to any pending or contemplated 
proceedings, 
shall be treated as made by or to that patent agent or party. as the 
case may be. 
(3) In any legal proceedings other than criminal proceedings 
a communication to which this section applies shall be privileged 
from disclosure in like manner as if any proceedings before the 
comptroller or the relevant convention court for the purpose of 
which the communication was made were proceedings before the 
court (within the meaning of this Act) and the patent agent in 
in question had been the solicitor of the party concerned 
(4) In this section-
" legal proceedings" includes proceedings before the comp­
traIler; 
" patent agent" means an individual registered as a patent 
agent in the register of patent agents, a company law­
fully practising as a patent agent in the United King­
dom or a person who satisfies the condition mentioned 
in section 84(1) or (3) above; 
.. pa tent proceedings" means proceedings under tbis Act 
or any of the relevant conventions before the court. 
the comptroller or the relevant convention court. 
whether contested or uncontested and including an 
application for a patent; 
" party", in relation to any contemplated proceedings. 
means a prospective party to the proceedings; and 
"the relevant conventions" means the European Patent 
Convention. the Community Patent Convention and the 
Patent Co-operation Treaty. 
(5) This section shall not extend to Scotlanq. 
105. It is hereby declared that in Scotland the rules .of lay.' 
which confer privilege from disclosure in legal proceedIngs In 
respect of communications. reports or other documen~s (by 
whomsoever made) made for the purpose of any pendIng or 
contemplated proceedings in a court in the United Kingdonl IP/N/lIGBRlP/l 
Page 96 
Patents Act 1977 c.37 
extend to communications, reports or other documents made PARr III 
for the purpose of patent proceedings within the meaning of 
section 104 above. 
106.-(1) In proceedings before the court under section 40 Costs an~ 
above (whether on an application or on appeal to the court), the expensde~ In . d . . h h t d ts t procee Ings court, In etermlrung w et er 0 awar cos or expenses 0 before the 
any party and what costs or expenses to award, shall have regard Court under 
to all the relevant circumstances, including the financial position s. 40. 
of the parties. 
(2) If in any such proceedings the Patents Court directs that 
any costs of one party shall be paid by another party, the court 
may settle the amount of the costs by fixing a lump sum or may 
direct that the costs shall be taxed on a scale specified by the 
court, being a scale of costs prescribed by the Rules of the 
Supreme Court or by the County Court Rules. 
107.-(1) The comptroller may, in proceedings before him Costs an~ 
d h· A t b d d ty h ts . expenses In un er t IS C, Y or er awar to any pa~ suc cos or, In proceedings 
Scotland, such expenses as he may consIder reasonable and before the 
direct how and by what parties they are to be paid. comptroller. 
(2) In England and Wales any costs awarded under this section 
shall, if a county court so orders, be recoverable by execution 
issued from the county court or otherwise as if they were payable 
under an order of that court. 
(3) In Scotland any order under this section for the payment 
of expenses may be enforced in like nlanner as a recorded decree 
arbitral. 
(4) If any of the following persons, that is to say-
(a) any person by whom a reference is made to the 
comptroller under section 8, 12 or 37 above; 
(b) any person by whom an application is made to the 
comptroller for the revocation of a patent; 
(c) any person by whom notice of opposition is given to 
the comptroller under section 27(5), 29(2), 47(6) or 
52(1) above, or section 117(2) below; 
neither resides nor carries on business in the United Kingdom, 
the comptroller may require him to give security for the costs 
or expenses of the proceedings and in default of such security 
being given may treat the reference, application or notice as 
abandoned. 
(5) In Northern Ireland any order under this section for the 
payment of costs may be enforced as if it were a money 
judgment. 
E PART III 
Licences 
granted by 
order of 
comptro)]er. c.37 Patents Act 1977 IP/NIlIGBRlPI 1 
Page 97 
108. Any order for the grant of a licence under section 11 
38, 48 or 49 above shall, without prejudice to any other method 
of enforcement, have effect as if it were a deed, executed by the 
proprietor of the patent and all other necessary parties, granting 
a licence in accordance with the order. 
Offences 
Falsification of 109. If a person makes or causes to be made a false entry in 
register etc. any register kept under this Act, or a writing falsely 
purporting to be a copy or reproduction of an entry in any 
such register, or produces or tenders or causes to be oroduced or 
tendered in evidence any such writing. knowing the entry or 
writing to be false, he shall be liable-
Unauthorised 
claim of 
patent rights. 
Unauthorised 
claim that 
patent has 
been applied 
for. (a) on summary conviction, to a fine not exceeding £1.000 ~ 
(b) on conviction on indictment. to imprisonment for a 
term not exceeding two years or a fine, or both. 
110.-(1) If a person falsely represents that anything disposed 
of by him for value is a patented product he shall. subject to the 
following provisions of this section, be liable on summary con­
viction to a fine not exceeding £200. 
(2) For the purposes of subsection (I) above a person who 
for value disposes of an article having stamped. engraved or 
impressed on it or othenvise applied to it the word" patent" or 
" patented" or anything expressing or implying that the article 
is a patented product, shall be taken to represent that the article 
is a patented product. 
(3) Subsection (1) above does not apply where the representa­
tion is made in respect of a product after the patent for that 
product or, as the case may be, the process in question has 
expired or been revoked and before the end of a period which 
is reasonably sufficient to enable tbe accused to take steps to 
ensure that the representation is not made (or does not continue 
to be made). 
(4) In proceedings for an offence under this section it shall 
be a defence for the accused to prove that he used due diligence 
to prevent the commission of the offence. 
111.-(1) If a person represents that a patent has bee? applied 
for in respect of any article disposed of for value by hIm and-
(a) no such application has been made. or 
(b) any such application has been refused or withdrawn. 
he shall. subject to the following provisions of this section, be 
liable on summary conviction to a fine not exceeding £200. IP/NIl/GBRlPI 1 
Page 98 
Patents Act 1977 c.37 
(2) Subsection (l)(b) above does not apply where the repre- PART III 
sentation is made (or continues to be made) before the expiry of 
a period which commences with the refusal or withdrawal and 
which is reasonably sufficient to enable the accused to take steps 
to ensure that the representation is not made (or does not 
continue to be made). 
(3) For the purposes of subsection (1) above a person who 
for value disposes of an article having stamped, engraved or 
impressed on it or otherwise applied to it the words "patent 
applied for" or "patent pending", or anything expressing or 
implying that a patent has been applied for in respect of the 
article, shall be taken to represent that a patent has been applied 
for in respect of it. 
(4) In any proceedings for an offence under this section it 
shall be a defence for the accused to prove that he used due 
diligence to prevent the commission of such an offence. 
112. If any person uses on his place of business. or on any ~lisuse of 
documen~ issued by him, or .otherwise~ the words " P~tent ?ffice." ~~c~ ~atent 
or any otner words suggestIng that hIS place of busmess IS, or IS . 
officially connected with. the Patent Office, he shall be liable on 
summary conviction to a fine not exceeding £500. 
113.-0) Where an offence under this Act which has been Offences.by 
committed by a body corporate is proved to have been commit- corporatIon!. 
ted with the consent or connivance of. or to be attributable to 
Jny neglect on the part of, a director, manager. secretary or 
other similar officer of the body corporate, or any person who 
was purporting to act in any such capacity, he, as well as the 
body corporate. shall be guilty of that offence and shall be liable 
to be proceeded Jgainst and punished accordingly. 
(2) \Vhere the affairs of a body corporate are managed by its 
members. subsection (1) above shall apply in relation to the acts 
and defaults of a member in connection with his functions of 
management as if he were a director of the body corporate. 
Patent agents 
114.-(1) An individual shall not, either alone or in partner- Restrictions 
ship with any other person. practise, describe himself or hold on practice as 
himself out as a patent agent, or permit himself to be so described patent agent. 
or held out, unless he is registered as a patent agent in the 
register of patent agents or (as the case may be) unless he and 
all his partners are so registered. 
(2) A body corporate shall not practise, describe itself or hold 
itself out or pennit itself to be described or held out as mentioned 
in subsection 0) above unless--
E2 PART III 
1948 c. 38. 
1974 c. 47. 
1933 c. 2l. 
S.I. 19761582 
(N.I. 12). 
Power of 
comptroller 
to refuse to 
deal with 
certain agents. c.37 Patents Act 1977 IP/N/1/GBRlP/l 
Page 99 
(a) in the ca.se of a compal!y within the meaning of the 
CompanIes Act 1948 whIch began to carry on business 
as a patent agent before 17th November 1917 a 
director or the manager of the company is regist;red 
as a patent agent in the register of patent agents and 
the name of that director or manager is mentioned 
as being so registered in all professional advertisements, 
circu1ars or letters issued by or with the consent of 
the company in which the name of the company 
appears ; 
(b) in any other case, every director or, where the body's 
affairs are managed by its members, every member of 
the body and in any event, if it has a manager who is 
not a director or member, that manager, is so registered. 
(3) Any person who contravenes the provisions of this section 
shall be liable on summary conviction to a fine not exceeding 
£1,000. 
(4) Proceedings for an offence under this section may be begun 
at any time within twelve months from the date of the offence. 
(5) This section shall not be construed as prohibiting solicitors 
from taking such part in proceedings relating to patents and 
applications for patents as has heretofore been taken by solicitors 
and, in particular, shall not derogate from the provisions of 
section 102 above as it applies to solicitors. 
(6) A patent agent shall not be guilty of an offence under 
section 22 of the Solicitors Act 1974 or section 39 of the 
Solicitors (Scotland) Act 1933 (which prohibit the preparation 
for reward of certain instruments or writs by persons not legally 
qualified) by reason only of the preparation by him for use in 
proceedings under this Act before the comptroller or on appeal 
under this Act to the Patents Court from the comptroller of any 
document other than a deed. 
(7) For Article 23(2)(d) of the Solicitors (Northern Ireland) 
Order 1976 there shall be substituted the following paragraph-
" (d) a patent agent within the meaning of the Patents Act 
1977 preparing, for use in proceedings under that Act 
or the Patents Act 1949 before the comptroller (as 
defined in the former Act) or on appeal under either of 
those Acts to the Patents Court from the comptroller, 
any document other than a deed; ". 
115.-(1) Rules may authorise the controller to refuse to 
recognise as agent in respect of any business under this Act-
(a) any individual whose name has been erased from, and 
not restored to, the register of patent agents, or who 
is for the time being suspended from acting as a 
patent agent: IP/N/lIGBRlP/l 
Page 100 
Patents Act 1977 c.37 
(b) any person who has been convicted of an offence under PART III 
section 114 above or section 88 of the 1949 Act (which 
is replaced by section 114) ; 
(c) any person who is found by the Secretary of State to 
have been convicted of any offence or to have been 
guilty of any such misconduct as. in the case of an 
individual registered in the register of patent agents. 
would render him liable to have his name erased from 
it ; 
(cl) any person, not being registered as a patent agent, who 
in the opinion of the comptroller is engaged wholly 
or mainly in acting as agent in applying for patents 
in the United Kingdom or elsewhere in the name or 
for the benefit of a person by whom he is employed ; 
(e) any company or firm. if any person whom the comp­
troller could refuse to recognise as agent in respect of 
any business under this Act is acting as a director or 
manager of the company or is a partner in the firm. 
(2) The comptroller shall refuse to recognise as agent in 
respect of any business under this Act any person who neither 
resides nor has a place of business in the United Kingdom. 
(3) Rules may authorise the comptroller to refuse to recog­
nise as agent or other representative for tbe purpose of applying 
for European patents any person who does not satisfy the con­
dition mentioned in section 84(1) above and does not fall within 
the exemption in subsection (2) of that section. 
I mmunity of department 
116. Neither the Secretary of State nor any officer of his-Immunity of 
. . department as (a) shall be taken to warrant the valIdIty of any patent regards 
granted under this Act or any treaty or intemationa,l official acts. 
convention to which the United Kingdom is a party; 
or 
(b) shall incur any liability by reason of or in connection 
with any examination or investigation required or 
authorised by this Act or any such treaty or conven­
tion, or any report or other proceedings consequent 
on any such examination or investigation. 
Administrative provisions 
117.-(1) The comptroller may, subject to any provision of Correction of 
rules, correct any error of translation or transcription, clerical errors in 
error or mistake in any specification of a patent or application patel~tst~md 
f d fil d . .. h app Ica Ions. or a patent or any ocument e 1n connectIon WIt a patent 
or such an application. 
E3 PART III 
Information 
about patent 
applications 
and patents. 
and inspection 
of documents. c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 101 
(2) Where the comptroller is requested to correct such an 
error or mistake. any person may in accordance with rules give 
the comptroller notice of opposition to the request and the 
comptroller shall determine the matter. 
118.-( 1) After publication of an application for a patent in 
accordance with section 16 above the comptroller shall on a 
request being made to him in the prescribed manner and on 
payment of the prescribed fee (if any) give the person making the 
request such information, and permit him to inspect such docu­
ments. relating to the application or to any patent granted in 
pursuance of the application as may be specified in the request. 
subject. however. to any pre~cribed restrictions. 
(2) Subject to the following provisions of this section. until. 
an application for a patent is so published documents or infor­
mation constituting or relating to the application shall not. 
without the consent of the applicant, be published or communi­
cated to any person by the comptroller. 
(3) Subsection (2) above shall not prevent the comptroller 
from-
(a) sending the European Patent Office information which 
it is his duty to send that office in accordance with any 
provision of the European Patent Convention; or 
(b) publishing or communicating to others any prescribed 
bibliographic information about an unpublished appli­
cation for a patent; 
nor shall that subsection prevent the Secretary of State from 
inspecting or authorising the inspection of an application for a 
patent or any connected documents under section 22(6)(a) above. 
(4) Where a person is notified that an application for a 
patent has been made, but not published in accordance wit)! 
section 16 above. and that the applicant will, if the patent 1S 
granted. bring proceedings against that person in the event of 
his doing an act specified in the notification after the application 
is so published, that person may make a request under sub­
section (1) above, notwithstanding that the application has not 
been published, and that subsection shall apply accordingly. 
(5) Where an application for a patent is filed, but not pub­
lished. and a new application is filed in respect of any part of 
the subject-matter of the earlier application (either in accordance 
with rules or in pursuance of an order under section 8 above) 
and is published. any person may make a request under sub­
section (1) above relating to the earlier application ~d ~n 
payment of the prescribed fe--e the comptroller shall give him IP/N/1/GBRlP/1 
Page 102 
Patents Act 1977 c.37 
such information and permit him to inspect such documents as PART III 
could have been given or inspected if the earlier application had 
been published. 
119. Any notice required or authorised to be given by this Service by 
Act or rules, and any application or other document so post. 
authorised or required to be made or filed, may be given, made 
or filed by post. 
120.-( 1) Rules may specify the hour at which the Patent Hours of 
Office shall be taken to be closed on any day for purposes of business and 
the transaction by the public of business under this Act or of excluded days. 
any class of such business, and may specify days as excluded 
days for any such purposes. 
(2) Any business done under this Act on any day after the 
hour so specified in relation to business of that class, or on a 
day which is an excluded day in relation to business of that class. 
shall be taken to have been done on the next following day not 
being an excluded day; and where the time for doing anything 
under this Act expires on an excluded day that time shall be 
extended to the next following day not being an excluded day. 
121. Before 1st June in every year the comptroller shall cause Comptroller's 
to be laid before both Houses of Parliament a report with respect annual report. 
to the execution of this Act and the discharge of his functions 
under the European Patent Convention, the Community Patent 
Convention and the Patent Co-operation Treaty, and every such 
report shall include an account of all fees, salaries and allow-
ances, and other money received and paid by him under this Act, 
those conventions and that treaty during the previous year. 
Supplemental 
122. Nothing in this Act affects the right of the Crown or any C;rown's 
person deriving title directly or indirectly from the Crown to ?gjt. to sell 
dispose of or ~se articles forfeited under the laws relating to a~ti~:~~~ 
customs or eXCIse. 
123.-(1) The Secretary of State may make such rules as he Rules. 
thinks expedient for regulating the business of the Patent Office 
in relation to patents and applications for patents (including 
European patents, applications for European patents and inter­
national applications for patents) and for regulating all matters 
placed by this Act under the direction or control of the comp­
troller ; and in this Act, except so far as the context otherwise 
requires, " prescribed" means prescribed by rules and " rules" 
means rules made under this section. 
E4 c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 103 
PART III (2) Without prejudice to the generality of subsection (1) 
above, rules may make provision-
(a) prescribing the form and contents of applications for 
patents and other documents which may be filed at 
the Patent Office and requiring copies to be furnished 
of any such documents; 
(b) regulating the procedure to be followed in connection 
with any proceeding or other matter before the comJr 
troller or the Patent Office and authorising the rectifica­
tion of irregularities of procedure; 
(c) requiring fees to be paid in connection with any such 
proceeding or matter or in connection with the pro­
vision of any service by the Patent Office and providing 
for the remission of fees in the prescribed circum­
stances; 
(cl) regulating the mode of giving evidence in any such 
proceeding and empowering the comptroller to compel 
the a,ttendance of witnesses and the discovery of and 
production of documents; 
(e) requiring the comptroller to advertise any proposed 
amendments of patents and any other prescribed 
matters, including any prescribed steps in any such 
proceeding ; 
({) requiring the comptroller to hold proceedings in Scot­
land in such circumstances as may be specified in the 
rules where there is more than one party to proceed­
ings under section 8, 12, 37, 40(1) or (2), 41(8), 61(3), 
71 or 72 above: 
(g) providing for the appointment of advisers to assist the 
comptroller in any proceeding before him; 
(h) prescribing time limits for doing anything required to 
be done in connection with any such proceeding by 
this Act or the rules and providing for the alteration of 
any period of time specified in this Act or the rules; 
(I) giving effect to the right of an inventor of an invention 
to be mentioned in an application for a patent for the 
invention; 
(J) without prejUdice to any other provision of this Act, 
requiring and regulating the translation of documents 
in connection with an application for a patent or a 
European patent or an international application for a 
patent and the filing and authentication of any such 
translations; 
(k) requiring the keeping of a register of patent agents and 
regulating the registration of patent agents and au.tho­
rising in prescribed cases the erasure from the regtster IP IN I lIGBRlP /l 
Page 104 
Patents Act 1977 c.37 
of patent agents of the name of any person registered PART III 
therein or the suspension of the right of any such per-
son to act as a patent agent; 
([) prcviding for the pUblication and sale of documents in 
the Patent Office and of information about such 
documents. 
(3) Rules may make different provision for different cases. 
(4) Rules prescribing fees shall not be made except with the 
consent of the Treasury. 
(5) The remuneration of any adviser appointed under rules 
to assist the comptroller in any proceeding shall be determined 
by the Secretary of State with the consent of the Minister for the 
Civil Service and shall be defrayed out of moneys provided 
by Parliament. 
(6) Rules shall provide for the publication by the comptroller 
of a journal (in this Act referred to as "the journal ") con tain­
ing particulars of applications for and grants of patents, and of 
other proceedings under this Act. 
(7) Rules shall require or authorise the comptroller to make 
arrangements for the publication of reports of cases relating to 
patents, trade marks and registered designs decided by him 
and of cases relating to patents (whether under this Act or 
otherwise) trade marks, registered designs and copyright decided 
by any court or body (whether in the United Kingdom or else­
where). 
124.-(1) Any power conferred on the Secretary of State by Rules, 
this Act to make rules, regulations or orders shall be exercisable regulations 
by statutory instrument. and orders; supplementary. 
(2) Any Order in Council and any statutory instrument con-
taining an order, rules or regulations under this Act. other than 
an order or rule required to be laid before Parliament in draft 
or an order under section 132(5) below. shall be subject to annul­
ment in pursuance of a resolution of either House of Parliament. 
(3) Any Order in Council or order under any provision of this 
Act may be varied or revoked by a subsequent order. 
125.-0) For the purposes of this Act an invention for a Extent of 
patent for which an application has been made or for which a invention. 
patent has been granted shall, unless the context otherwise 
requires, be taken to be that specified in a claim of the specifica-
tion of the application or patent, as the case may be, as inter-
preted by the description and any drawings contained in that 
specification, and the extent of the protection conferred by a 
patent or applkation for a patent shall be determined 
accordingly. c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 105 
PART III (2) It is hereby declared for the avoidance of doubt that 
where more than one invention is specified in any such claim. 
each invention may have a different priority date under section 5 
above. 
(3) The Protocol on the Interpretation of Article 69 of the 
European Patent Convention (which Article contains a provision 
corresponding to subsection (1) above) shall. as for the time being 
in force. apply for the purposes of subsection (1) above as it 
applies for the purposes of that Article. 
Stamp duty. 126.-(1) An instrument relating to a Community patent or 
to an application for a European patent shall not be chargeable 
with stamp duty by reason only of all or any of the provisions 
of the Community Patent Convention mentioned in subsection 
(2) below. 
Existing 
patents and 
applications. (2) The said provisions are-
(a) Article 2.2 (Community patent and application for 
European patent in which the contracting states are 
designated to have effect throughout the territories to 
which the Convention applies) ; 
(b) Article 39.1 (c) (Community patent treated as national 
patent of contracting sta·te in which applicant's repre­
sentative has place of business) ; 
(c) Article 39.1(c) as applied by Article 45 to an application 
for a European patent in which the contracting states 
are designated. 
127.-( 1) No application for a patent may be made under the 
1949 Act on or after the appointed day. 
(2) Schedule I to this Act shall have effect for securing that 
certain provisions of the 1949 Act shall continue to apply on 
and after the appointed day to-
(a) a patent granted before that day; 
(b) an application for a patent which is filed before t~at 
day, and which is accompanied by a complete spe~Ifj­
cation or in respect of which a complete specificatIon 
is filed before that day; 
(c) a patent granted in pursuance of such an application. 
(3) Schedule 2 to this Act shall have effect for securing that 
(subject to the provisions of that Schedule) certain provisions of 
this Act shall apply on and after the appointed day to any patent 
and application to which subsection (2) above relates. but. exc~pt 
as provided by the following provisions of this Act, this Act shall 
not apply to any such patent or application. IP/NIlIGBRlPI 1 
Page 106 
Patents Act 1977 c.37 
(4) An application for a patent which is made before the PART III 
appointed day, but which does not comply with subsection (2)(b) 
above, shall be taken to have been abandoned immediately before 
that day. but, notwithstanding anything in section 5(3) above. 
the application may nevertheless serve to establish a priority 
date in relation to a later application for a patent under this 
Act if the date of filing the abandoned application falls \vithin 
the period of fifteen months immediately preceding the filing of 
the later application. 
(5) Schedule 3 to this Act shall have effect for repealing 
certain provisions of the 1949 Act. 
(6) The transitional provisions and savings in Schedule 4 to 
this Act shall have effect. 
(7) In Schedules 1 to 4 to this Act" existing patent" means a 
patent mentioned in subsection (2)(a) and (c) above, "existing 
application" means an application mentioned in subsection 
(2)(b) aboye, and expressions used in the 1949 Act and those 
Schedules have the same meanings in those Schedules as in that 
Act. 
128.-(1) The following provisions of this section shall have Priorities 
effect for the purpose of resolving questions of priority arising between d 
between patents and ~ppl.ications for patents unde~ the 1949 Act ~;~~r;~tfo~s 
and patents and apphcatlOns for patents under thIS Act. under 1949 
(2) A complete specification under the 1949 Act shall be ~~~ ~~~. 
trca ted for the purposes of sections 2 (3) and 5 (2) a bove-
(0) if published under that Act, as a published application 
for a patent under this Act; 
(b) if it has a date of filing under that Act, as an application 
for a patent under this Act which has a date of filing 
under this Act; 
and in the said section 2(3), as it applies by virtue of this sub­
section in relation to any such specification. the words" both as 
filed and" shall be omitted. 
(3) In section 8(1), (2) and (4) of the 1949 Act (search for 
anticipation by prior claim) the references to any claim of a 
complete specification, other than the applicant's, published and 
filed as mentioned in section 8(1) shall include references to any 
claim contained in an applie;ation made ana published under this 
Act or in the specification of a patent granted under this Act, 
being a claim in respect of an invention having a priority date 
earlier than the date of filing the complete specification under the 
1949 Act. 
(4) In section 32(1)(a) of the 1949 Act (which specifies, as one 
of the grounds of revoking a patent, that the invention was 
claimed in a valid claim of earlier priority date contained in the c.37 Patents Act 1977 IP/NI1/GBRlPI 1 
Page 107 
PART III complete specification of another patent). the reference to such a 
claim shall include a reference to a claim contained in the speci­
fication of a patent granted under this Act (a new claim) which 
satisfies the following conditions:-
Application 
of Act to 
Crown. 
Interpretation. (a) the new claim must be in respect of an invention havincr 
an earlier priority date than that of the relevant clai~ 
of the complete specification of the patent sought to be 
revoked; and 
(b) the patent containing the new claim must be wholly valid 
or be valid in those respects which have a bearing on 
that relevant claim. 
(5) For the purposes of this section and the provisions of the 
1949 Act mentioned in this section the date of filing an applica­
tion for a patent under that Act and the priority date of a claim 
of a complete specification under that Act shall be determined in 
accordance with the provisions of that Act, and the priority date 
of an invention which is the subject of a patent or application for 
a patent under this Act shall be determined in accordance with 
the provisions of this Act. 
129.-This Act does not affect Her Majesty in her private 
capacity but, subject to that, it binds the Crown. 
130.-(1) In this Act, except so far as the context otherwise 
requires-
"application for a European patent (UK)" and "inter­
national application for a patent (UK) " each mean an 
application of the relevant description which, on its 
date of filing, designates the United Kingdom; 
" appointed day", in any provision of this Act, means the 
day appointed under section 132 below for the coming 
into operation of that provision; 
"Community Patent Convention" means the Convention 
for the European Patent for the Common Market and 
"Community patent" means a patent granted under 
that convention; 
" comptroller" means the Comptroller-General of Patents, 
Designs and Trade Marks ; 
" Convention on International Exhibitions" means the Con­
vention relating to International Exhibitions signed in 
Paris on 22nd November 1928, as amended or sup­
plemented by any protocol to that convention which is 
for the time being in force; 
" court " means 
(a) as respects England and Wales, the High 
Court; IP/NIl/GBRlPI 1 
Page 108 
Patents Act 1977 c.37 
(b) as respects Scotland. the Court of Session; PART III 
(c) as respects Northern Ireland. the High Court 
in N ortbem Ireland; 
U date of filing" means-
(a) in relation to an application for a patent made 
under this Act, the date which is the date of filing 
that application by virtue of section 15 above; and 
(b) in relation to any other application, the date 
which, under the law of the country where the appli­
cation was made or in accordance with the terms of 
a treaty or convention to which that country is a 
party, is to be treated as the date of filing that 
application or is equivalent to the date of filing an 
application in that country (whatever the outcome of 
the application): 
.. designate" in relation to an application or a patent, means 
designate the country or countries (in pursuance of the 
European Patent Convention or the Patent Co-opera­
tion Treaty) in which protection is sought for the 
invention which is the subject of the application or 
patent; 
" employee" means a person who works or (where the 
employment has ceased) worked under a contract of 
employment or in employment under or for the 
purposes of a government department; 
" employer ", in relation to an employee, means the person 
by whom the employee is or was employed; 
"European Patent Convention" means the Convention on 
the Grant of European Patents, "European patent" 
means a patent granted under that convention. " Euro­
pean patent (UK) " means a European patent designa­
ting the United Kingdom, " European Patent 
Bulletin" means the bulletin of that name published 
under that convention. and" European Patent Office " 
means the office of that name established by that con­
vention; 
"exclusive licence" means a licence from the proprietor 
of or applicant for a patent conferring on the licensee, 
or on him and persons authorised by him, to the 
exclusion of all other persons (including the proprietor 
or applicant), any right in respect of the invention to 
which the patent or application relates. and" exclusive 
licensee" and "non-exclusive licence" shall be con­
strued accordingly; 
" filing fee" means tbe fee prescribed for the purposes of 
section 14 above; c.37 Patents Act 1977 IP/N/lIGBRlP/1 
Page 109 
PART III "formal requirements" means those requirements desig. 
1949 c. 87. nated as such by rules made for the purposes of section 
17 above; 
" international application for a patent" means an applica­
tion made under the Patent Co-operation Treaty; 
" International Bureau" means the secretariat of the World 
Intellectual Property Organization established by a 
convention signed at Stockholm on 14th July 1967 ; 
cc international exhibition" means an official or officially 
recognised international exhibition falling within the 
terms of the Convention on International Exhibitions 
or falling within the tenus of any subsequent treaty or 
convention replacing that convention; 
" inventor" has the meaning assigned to it by section 7 
above; 
" journal" has the meaning assigned to it by section ] 23 
(6) above; 
" mortgage ", when used as a noun, includes a charge for 
securing money or money's worth and, when used as 
a verb, shall be construed accordingly; 
" 1949 Act" means the Patents Act 1949 ; 
" patent" means a patent under this Act; 
"patent agent" means a person carrying on for gain in 
the United Kingdom the business of acting as agent for 
other persons for the purpose of applying for or obtain­
ing patents (other than European patents) in the 
United Kingdom or elsewhere or for the purpose of 
conducting proceedings in connection with such patents 
before the comptroller; 
"Patent Co-operation Treaty" means the treaty of that 
name signed at Washington on 19th June 1970; 
"patented invention" means an invention for which a 
patent is granted and "patented process" shall be 
construed accordingly; 
" patented product" means a product which is a patented 
invention or, in relation to a patented process, a 
product obtained directly by means of the process or 
to which the process has been applied; . 
&I prescribed" and" rules" have the meanings assigned to 
them by section 123 above; 
., priority date" means the date determined as such under 
section 5 above: 
" published" means made available to the public (whether 
in the United Kingdom or elsewhere) and a document IP/N/1/GBRlP/1 
Page 110 
Patents Act 1977 c.37 
shall be taken to be published under any provision of PART III 
this Act if it can be inspected as of right at any place 
in the United Kingdom by members of the public, 
whether on payment of a fee or not; and" republished" 
shall be construed accordingly; 
., register" and cognate expressions have the meanings 
assigned to them by section 32 above; 
.. relevant convention court", in relation to any proceedings 
under the European Patent Convention, the Community 
Patent Convention or the Patent Co-operation Treaty, 
means that court or other body which under that con­
vention or treaty has jurisdiction over those proceed­
ings, including (where it has such jurisdiction) any 
department of the European Patent Office; 
., right ", in relation to any patent or application, includes 
an interest in the patent or application and, without 
prejudice to the foregoing, any reference to a right 
in a patent includes a reference to a share in the 
patent; 
" search fee" means the fee prescribed for the purposes of 
section 17 above; 
.• services of the Crown" and " use for the services of the 
Crown" have the meanings assigned to them by section 
56(2) above, including, as respects any period of emer­
gency within the meaning of section 59 above, the 
meanings assigned to them by the said section 59. 
(2) Rules may provide for stating in the journal that an 
exhibition falls within the definition of international exhibition 
in subsection (1) above and any such statement shall be con­
clusive evidence that the exhibition falls within that defin1tion. 
(3) For the purposes of this Act matter shall be taken to 
have been disclosed in any relevant application within the mean­
ing of section 5 above or in the specification of a patent if it was 
either claimed or disclosed (otherwise than by way of disclaimer 
or acknowledgment of prior art) in that application or specifica­
tion. 
(4) References in this Act to an application for a patent, as 
filed, are references to such an application in the state it was on 
the date of filing. 
(5) References in this Act to an application for a patent being 
published are references to its being published under section 16 
above. 
(6) References in this Act to any of the following conventions, 
that is to say-
(a) The European Patent Convention; c.37 Patents Act 1977 IP/N/1/GBRlP/l 
Page 111 
PART In (b) The Community Patent Convention; 
1950 c. 27. 
Northern 
Ireland. 
1948 c. 38. (c) The Patent Co-operation Treaty ; 
are references to that convention or any other international 
convention or agreement replacing it, as amended or supple­
mented by any convention or international agreement (includ­
ing in either case any protocol or annex), or in accordance 
with the terms of any such convention or agreement, and include 
references to any instrument made under any such convention 
or agreement. 
(7) Whereas by a resolution made on the signature of the 
Community Patent Convention the governments of the member 
states of the European Economic Community resolved to adjust 
their laws relating to patents so as (among other things) to bring 
those laws into conformity with the corresponding provisions of 
the European Patent Convention, the Community Patent Con­
vention and the Patent Co-operation Treaty, it is hereby declared 
that the following provisions of this Act, that is to say, sections 
1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and 
(2), 74(4), 82, 83, 88(6) and (7), 100 and 125. are so framed as to 
have, as nearly as practicable, the same effects in the United 
Kingdom as the corresponding provisions of the European Patent 
Convention. the Community Patent Convention and the Patent 
Co-operation Treaty have in the territories to which those Con­
ventions apply. 
(8) The Arbitration Act 1950 shall not apply to any proceed­
ings before the comptroller under this Act. 
(9) Except so far as the context otherwise requires, any 
reference in this Act to any enactment shall be construed as 
a reference to that enactment as amended or extended by or 
under any other enactment, including this Act. 
131. In the application of this Act to Northern Ireland-
(a) "enactment" includes an enactment of the Parliament 
of Northern Ireland and a Measure of the Northern 
Ireland Assembly; 
(b) any reference to a government department includes a 
reference to a Department of the Government of 
Northern Ireland; 
(c) any reference to the Crown includes a reference to the 
Crown in right of Her Majesty's Government in 
Northern Ireland; 
(d) any reference to the Companies Act 1948 includes a 
reference to the corresponding enactments in force in 
Northern Ireland; and IP/N/1/GBRlP/1 
Page 112 
Patents Act 1977 c.37 
(e) the Arbitration Act <Northern Ireland) 1937 shall apply PART III 
in relation to an arbitration in pursuance of this Act 1937 c. 8 
as if this Act related to a matter in respect of which (N.I.). 
the Parliament of Northern Ireland had power to 
make laws. 
132.-(1) This Act may be cited as the Patents Act 1977. Short title, 
. . extent, (2) ThIS Act shall extend to the Isle of Man, subject to any commcnce-
modifications contained in an Order made by Her Majesty in ment ~onse­
Council, and accordingly, subject to any such order, references quentlal 
in this Act to the United Kincrdom shall be construed as including amendments 
references to the Isle of Man~ and repeals. 
(3) For the purposes of this Act the territorial waters of the 
United Kingdom shall be treated as part of the United Kingdon1. 
(4) This Act applies to acts done in an area designated by 
order under section 1(7) of the Continental Shelf Act 1964, in 1964 c. 29. 
connection with the exploration of the sea bed or subsoil or 
exploitation of their natural resources, as it applies to acts done 
in the United Kingdom. 
(5) This Act (except sections 77(6), (7) and (9), 78(7) and (8), 
this subsection and the repeal of section 41 of the 1949 Act) shall 
come into operation on such day as may be appointed by the 
Secretary of State by order, and different days may be appointed 
under this subsection for different purposes. 
(6) The consequential amendments in Schedule 5 shall have 
effect. 
(7) Subject to the provisions of Schedule 4 to this Act, the 
enactments specified in Schedule 6 to this Act (which include 
certain enactrnents which were spent before the passing of this 
Act) are hereby repealed to the extent specified in column 3 of 
that Schedule. Section 127. c.37 Patents Act 1977 
SCHEDULES 
SCHEDULE I IP/N/lIGBRlP/1 
Page 113 
ApPLICATION OF 1949 Acr TO EXISTING PATENTS AND 
APPLICATIONS 
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 follow­
ing 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 sub­
section 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. IP/N/l/GBRlP/I 
Page 114 
Patents Act 1977 c.37 
(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 d.etermination. 
(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 SeH. 1 c.37 Patents Act 1977 IP/NIlIGBRlPI 1 
Page 115 
SCH.l other than the applicant unless notification of the application is given 
to that person. 
Section 127. 5. In 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". 
6. Notwithstanding an)thing 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 comp­
troller), 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.". 
8. In 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; It. 
SCHEDULE 2 
APPLICATION OF TIDS ACT TO EXISTING 
PATENTS AND APPLICATIONS 
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 IP/N/lIGBRlP/1 
Page 116 
Patents Act 1977 c. 37 
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). 
2. In 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 inclurle 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 inven­
tion include respectively a reference to a product and inven­
tion 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. 
SCHEDULE 3 
REPEALS OF PROVISIONS OF 1949 Acr 
1. Subject 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. 
2. The provisions are:-
(a) section 14 (opposition to grant of patent) ; SCH.2 
Section 127, SCH.3 
Section 127. c.37 Patents Act 1977 IP/NIl/GBRlPI 1 
Page 117 
(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) se~tion 71 (extension of time for certain convention applica­
tIons) ; 
(j) section 72 (protection of inventions communicated under 
international agreements). 
SCHEDULE 4 
TRANSITIONAL PROVISIONS 
General 
1. In 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. 
Use of patented invention for services of the Crol1m 
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 govern­
ment 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 modifica­
tions 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. IP/N/lIGBRlP/1 
Page 118 
Patents Act 1977 c.37 
(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. 
Infringement 
3.-(1) Any question whether an act done before the appointed 
day infringes an existing patent or the privileges or rights ansmg 
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 con­
tained in paragraph 2 of Schedule 2 above and the further modifica­
tion that section 69(2) and (3) above shall not apply in relation to an 
existing application. 
(3) \Vhere 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 
priviJeges or rights. 
Notice of opposition 
4.--{1) \Vhere 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 (l)(a) above shall have effect subject to para­
graph 12(2) below. 
Secrecy 
5.-(1) Where directions given under section 18 of the 1949 Act 
in respect of an existing application (directions restricting publica­
tion of infonnation about inventions) are in force immediately before SCH.4 SCH.4 
1946 c. 80. 
1889 c. 63. c.37 Patents Act 1977 IP/N/lIGBRlP/1 
Page 119 
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 (I) 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 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. 
Revocation 
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 comp­
troller'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 (l)(a) above shall have effect subject to para­
graph 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 tbat 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 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 enact.ed. 
licences of right and compulsory licences 
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 IP/N/l/GBRlP/1 
Page 120 
Patents Act 1977 c.37 
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. 
Convention countries 
9.-{l) 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 ~fore 
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. 
Appeals from court on certain petitions for revocation 
10. Where 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. 
Appeals from comptroller under continuing provisions 
of 1949 Act 
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 par"graph 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 SCH.4 SCH.4 c.37 Patents Act 1977 IP/NIlIGBRlPI 1 
Page 121 
(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. 
Appeals from comptroller under repealed provisions 
of 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. 
Appeals from Appeal Tribunal to Court of Appeal 
13. Section 87(1) of the 1949 Act shall continue to apply on 
and after the appointed day to any decision of the Appeal IP/N/1/GBRlP/1 
Page 122 
Patents Act 1977 c.37 
Tribunal given before that day, and any appeal by virtue of 
this paragraph (and any further appeal) shall be prosecuted under 
the old law. 
Rules 
14. The power to make rules under section 123 of this Act 
shall include power to make rules for any purpose mentioned in 
~ection 94 of the 1949 Act. 
Supplementary 
15. Section 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. 
. 16. In 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. 
17. For 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.-{I) Nothing in the repeals made by this Act in sections 23 
and 24 of the 1949 Act shall have effect as respects any such applica­
tion as is mentioned in paragraph 3(3) of Schedule 1 above. SeH.4 
(2) Nothing in the repeal by this Act of the Patents Act 1957 shall 1957 c. 13. 
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. 
SCHEDULE 5 
CoNSEQUENTIAL AMENDMENTS 
Crown Proceedings Act 1947 (c. 44) 
1. In 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 Section 132. Sea.S c.37 Patents Act 1977 IP/N/1/GBRlP/I 
Page 123 
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." 
Registered Designs Act 1949 (c. 88) 
2. In 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 ". 
3. In 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 ". 
Defence Contracts Act 1958 (c. 38) 
4. In 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 ". 
Administration of Justice Act 1970 (c. 31) 
5.-(1) In subsections (2) and (3) of section 10 of the Administra­
tion 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 Adminis­
tration of Justice Act 1969) It. 
(3) For subsection (5) of the said section 10, there shall be sub­
stituted :-
"(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 ". 
Atomic EnerRY Authority (Weapons Group) Act 1973 (c. 4) 
6. In section 5(2) of the Atomic Energy Authority (Weapons 
Group) Act 1973-
Ca) 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 ". 
Fair Trading Act 1973 (c. 41) 
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 1 0 there shall be inserted:-
" lOA. The services of persons carrying on for gain in the 
United Kingdom the business of acting as agents or other repre­
sentatives 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." IP/NIlIGBRlPI 1 
Page 124 
Patents Act 1977 c.37 
Restrictive Trade Practices Act 1976 (c. 34) 
8.-(1) In paragraph 10 of Schedule 1 to the Restrictive Trade 
Practices Act 1976. for" the Patents Act 1949" there shall be sub­
stituted "the Patents Act 1977 ". 
(2) After the said paragraph 10 there shall be inserted:-
"lOA. The services of persons carrying on for gain in the 
United Kingdom the business of acting as agents or other repre­
sentatives 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." 
SCHEDULE 6 
ENACTMENTS REPEALED 
Chapter Short Title Extent of Repeal 
7 Edw. 7. c. 29. The Patents and Designs Section 47(2). 
Act 1907. 
9 & 10 Geo. 6. The Atomic Energy Act 
c.80. 1946. 
12, 13 & 14 The Patents Act 1949. 
Geo. 6. c. 87. 
S & 6 Eliz. 2. The Patents Act 1957. 
Co 13. In section 12, subsections (1) to 
(7). 
Section 1] (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. 
I 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. 
The whole Act, except in rela­
tion to existing applications. SCH.S 
Section 132. SCH.6 c.37 Patents Act 1977 
Chapter Short Title IP IN I lIGBRlP /l 
Page 125 
Extent of Repeal 
9 & 10 Eliz. 2. The Patents and Designs In section 1(1), the words from 
c. 25. (Renewals, Extensions "subsection (5)" to "and 
and Fees) Act 1961. in ". 
Section 2. 
10 & 11 Eliz.2. The Northern Ireland Act In Schedule 1, the entry relating 
c. 30. 1962. to section 84 of the Patents 
1967 c. 80. 
1968. c. 64. 
1969 c. 58. 
1970 c. 31. Act 1949. 
" The Criminal Justice Act In Schedule 3, in Parts I and IV, 
1967. the entries relating to the 
i Patents Act 1949. 
! The Civil Evidence Act Section 15. 
o 1968. I The Administration of In section 24, in subsection (1), 
Justice Act 1969. 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 sub­
section (4) the words from 
" as subsection (11)" to 
.. and tt and the words "in 
the case of the said section 
I 28 tt. I The Administration of In section 10, in subsection (1), 
I Justice Act 1970. the words "Patents Appeal 
I Tribunal or the" and in sub­
section (4), the words from 
"the Patents Appeal" to 
" and to. 
1971 c. 23. I The Courts Act 1971. 
1971 c. 36 (N.I.) The Civil Evidence Act 
(Northern Ireland) 1971. Section 46. 
Section 11. 
1973 c. 41. The Fair Trading Act Section 126. 
1974 c. 47. I , 
I , 
I 1973. In Schedule 3, in paragraph 
16(2), the words from "of 
section 40" to "Commis­
sion)", where first occurring. 
I The Solicitors Act 1974. In Schedule 12, the entry relat­
ing to the Patents Act 1949. 
In Schedule 3, paragraph 3. 
PRINTED IN ENGLAND BY PAUL FREEMAN 
Controller and Chief Executive of Her Majesty's Stationery Office and 
Queen's Printer of Acts of Parliament. 
Reprinted in the Standard Parliamentary Page Size. 
I st Impression August 1977 
8th Impression February 1994 
Printed in the United Kingdom for HMSO 
Dd 5062143 C5 2/94 51.0.0 56219 ON 278177 IP/NIlIGBRlP/1 
Page 126 
Section Patents Act 1977 
CHAPTER 37 
ARRANGEMENT OF SECTIONS 
PART I 
NEW DOMESTIC LAW 
Pa ten tab ility 
1. Patentable inventions. 
2. Novelty. 
3. Inventive step. 
4. Industrial application. 
5. Priority date. 
6. Disclosure of matter, etc., between earlier and later appli­
cations. 
Right to apply for and obtain a patent 
and be mentioned as inventor 
7. Right to apply for and obtain a patent. 
8. Determination before grant of questions about entitlement 
to patents, etc. 
9. Determination after grant of questions referred before 
grant. 
10. Handling of application by joint applicants. 
11. Effect of transfer of application tinder s. 8 or 10. 
12. Determination of questions about entitlement to foreign 
and convention patents, etc. 
13. Mention of inventor. 
Applications 
14. Making of application. 
15. Date of filing application. 
16. Publication of application. 
Examination and search 
17. Preliminary examination and search. 
18. Substantive examination and grant or refusal of patent. 
19. General power to amend application before grant. 
A c.37 Patents Act 1977 
Section 
20. Failure of application. 
21. Observations by third party on patentability. 
Security and safety IP IN I lIGBRlP 11 
Page 127 
22. Information prejudicial to defence of realnl or safety of 
public. 
23. Restrictions on applications abroad by United Kingdonl 
residents. 
24. .,--). 
26. 
27. 
28. 
29. Provisions as to patents after grant 
Publica tion and certificate of 2:rant. 
Term of patent. ~ 
Patent not to be impugned for lack of unity. 
General power to amend specification after grant. 
Restoration of lapsed patents. 
Surrender of patents. 
Property in patents and applications, and registration 
30. Nature of, and transactions in, patents and applications for 
patents. 
31. Nature of, and transactions in, patents and applications for 
patents in Scotland. 
32. Register of patents, etc. 
33. Effect of registration, etc., on rights in patents. 
34. Rectification of register. 
35. Evidence of register, documents, etc. 
36. Co-ownership of patents and applications for patents. 
37. Determination of right to patent after grant. 
38. Effect of transfer of patent under s. 37. 
Employees' inventions 
39. Right to employees' inventions. 
40. Compensation of employees for certain inventions. 
41. Amount of compensation. 
42. Enforceability of contracts relating to employees' inventions. 
43. Supplementary. 
Contracts as to patented products, etc. 
44. Avoidance of certain restrictive conditions. 
45. Determination of parts of certain contracts. 
Licences of right and compulsory licences 
46. Patentee's application for entry in register that licences 
are available as of right. 
47. Cancellation of entry made under s. 46. 
48. Compulsory licences. IP/NIlIGBRlPI 1 
Page 128 
Section Patents Act 1977 
49. Provisions about licences under s. 48. 
50. Exercise of powers on applications under s. 48. c.37 
51. Application by Crown in cases of monopoly or nlerger. 
52. Opposition, appeal and arbitration. 
53. Compulsory licences; supplementary provisions. 
54. Special provisions where patented invention is being 
worked abroad. 
Use of patented inventions for sen'ices of the Crown 
55. Use of patented inventions for services of the Crown. 
56. Interpretation, etc., of provisions about Crown use. 
57. Rights of third parties in respect of Crown use. 
58. References of disputes c\s to Crown use. 
59. Special provisions as to Crown use during emergency. 
Infringemen t 
60. ~1eaning of infringement. 
61. Proceedings for infringement of patent. 
62. Restrictions on recovery of damages for infringement. 
63. Relief for infringement of partially valid patent. 
64. Right to continue use begun before priority date. 
65. Certificate of contested validity of patent. 
66. Proceedings for infringement by a co-owner. 
67. Proceedings for infringement by exclusive licensee. 
68. Effect of non-registration on infringement proceedings. 
69. Infringement of rights conferred by publication of applica­
tion. 
70. Remedy for groundless threats of infringement proceedings. 
71. Declaration or declarator as to non-infringement. 
Revocation of patents 
72. Power to revoke patents on application. 
73. Comptroller's power to revoke patents on his own initiative. 
Putting validity in issue 
74. Proceedings in which validity of patent may be put in 
issue. 
General provisions as to amendment of patents and applications 
75. Amendment of patent in infringement or revocation 
proceedings. 
76. Amendments of applications and patents not to include 
added matter. 
A2 c.37 Patents Act 1977 
PART 11 IP/N/1/GBRlP/l 
Page 129 
PRovISIONS ABOUT INTERNATIONAL CONVENTIONS 
European patents and patent applications 
Section 
77. Effect of European patent (UK). 
78. Effect of filing an application for a European patent (UK). 
79. Operation of s. 78 in relation to certain European patent 
applications. 
80. Authentic text of European patents and patent applications. 
81. Conversion of European patent applications. 
82. Jurisdiction to determine questions as to right to a patent. 
83. Effect of patent decisions of competent authorities of other 
states. 
84. Patent agents and other representatives. 
85. European patent attorneys. 
Community patents 
86. Implementation of Community Patent Convention. 
87. Decisions on Community Patent Convention. 
88. Jurisdiction in legal proceedings in connection with Com­
munity Patent Convention. 
International applications for patents 
89. Effect of filing international application for a patent. 
Convention countries 
90. Orders in Council as to convention countries. 
Miscellaneous 
91. Evidence of conventions and instruments under conven­
tions. 
92. Obtaining evidence for proceedings under the European 
Patent Convention. 
93. Enforcement of orders for costs. 
94. Communication of information to the European Patent 
Office, etc. 
95. Financial provisions. 
PART III 
MISCELLANEOUS AND GENERAL 
Legal proceedings 
96. The Patents Court. 
97. Appeals from the comptroller. 
98. Proceedings in Scotland. 
99. General powers of the court. IP/NI1/GBRlPI 1 
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Section Patents Act 1977 
100. Burden of proof in certain cases. 
101. Exercise of comptroller's discretionary powers. 
102. Right of audience in patent proceedings. c.37 
103. Extension of privilege for communications with solicitors 
relating to patent proceedings. 
104. Privilege for communications with patent agents relating to 
patent proceedings. 
105. Extension of privilege in Scotland for communications 
relating to patent proceedings. 
106. Costs and expenses in proceedings before the Court under 
s.40. 
107. Costs and expenses in proceedings before the comptroller. 
108. Licences granted by order of comptroller. 
Offences 
109. Falsification of register, etc. 
110. Unauthorised claim of patent rights. 
111. Unauthorised claim that patent has been applied for. 
112. Misuse of title" Patent Office". 
113. Offences by corporations. 
Patent agents 
114. Restrictions on practice as patent agent. 
115. Power of comptroller to refuse to deal with certain agents. 
Immunity of department 
116. Immunity of department as regards official acts. 
Administrative provisions 
117. Correction of errors in patents and applications. 
118. Information about patent applications and patents, and 
inspection of documents. 
119. Service by post. 
120. Hours of business and excluded days. 
121. Comptroller's annual report. 
Supplemental 
122. Crown's right to sell forfeited articles. 
123. Rules. 
124. Rules, regulations and orders; supplementary. 
125. Extent of invention. 
126. Stamp duty. 
127. Existing patents and applications. 
128. Priorities between patents and applications under 1949 Act 
and this Act. 
129. Application of Act to Crown. 
130. Interpretation. 
131. Northern Ireland. 
132. Short title, extent, commencement, consequential amend­
ments and repeals. 
A3 c.37 Patents Act 1977 
SCHEDULES: IP/NIl/GBRlPI 1 
Page 131 
Schedule I-Application of 1949 Act to existing patents 
and applications. 
Schedule 2-Application of this Act to existing patents 
and applications. 
Schedule 3-Repeals of provisions of 1949 Act. 
Schedule 4-Transitional provisions. 
Schedule 5-Consequential amendments. 
Schedule 6-Enactments repealed. 