The Patents Act 2004 (Commencement No. 2 and Consequential, etc. and Transitional Provisions) Order 2004

• Citation: S.I. 2004/3205
• Sections: 9

Section 1 Citation, commencement and interpretation of this Order

(1) This Order may be cited as the Patents Act 2004 (Commencement No. 2 and Consequential, etc. and Transitional Provisions) Order 2004, and shall come into force on 1st January 2005.

(2) In this Order—

“the 1977 Act ” means the Patents Act 1977 ;

“the 2004 Act ” means the Patents Act 2004;

“the appointed day” means the day appointed by article 2;

“ the Rules ” means the Patents Rules 1995 .

Section 2 Commencement of the 2004 Act

1st January 2005 is the day appointed for the coming into force of the following provisions of the 2004 Act—

(a) section 5 (for the purposes of the provisions mentioned in sub-paragraphs (i) and (j) below);

(b) section 6;

(c) section 7;

(d) sections 10 to 12;

(e) section 14;

(f) section 16(1) (for the purposes of the provisions mentioned in sub-paragraph (k) below);

(g) section 16(2) (for the purposes of the entries in Schedule 3 relating to provisions brought into force by this article and to the amendment of section 106 of the 1977 Act);

(h) section 16(3);

(i) paragraphs 1, 6, 7 and 8, and paragraph 9(1), (2)(a) and (3), of Schedule 1;

(j) paragraph 9(2)(b) of Schedule 1 (for the purposes of the Patent Co-operation Treaty);

(k) paragraphs 1, 5, 8, 10 to 14, 16, 17, 19, 20 to 22, 25, 27 and 28 of Schedule 2.

Section 3 Consequential, incidental and supplementary provisions

The Rules are amended as follows.

Section 4 Consequential, incidental and supplementary provisions

For rule 9 there is substituted—

Orders under section 8 or 12

(9)

(1) Where an order is made under section 8 or 12—

(a) that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant; or

(b) that a new application for a patent may be made,

the comptroller shall give notice of the making of the order to the original applicant or applicants, and to any of their licensees of whom he is aware.

(2) A person who makes a request under section 11(3) or (3A) must do so before the end of the relevant period.

(3) The relevant period is—

(a) where the request is made by an original applicant, the period of two months starting on the date the notice is sent to him;

(b) where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.

(4) In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).

Section 5 Consequential, incidental and supplementary provisions

For rule 13 there is substituted—

Reference to the comptroller under section 11(5)

(13)

(1) A reference under section 11(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully—

(a) the question referred;

(b) the facts upon which the person making the reference relies; and

(c) the period or terms of the licence which he is prepared to accept or grant.

(2) The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to—

(a) every person in whose name the application is to proceed or, as the case may be, who makes the new application; and

(b) every person claiming to be entitled to be granted a licence,

and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.

(3) The comptroller shall send a copy of the counter-statement to the person who made the reference.

(4) The comptroller may give such directions as he thinks fit with regard to the subsequent procedure.

(5) In this rule, a reference to section 11 includes a reference to that section as applied by section 12(5).

Section 6 Consequential, incidental and supplementary provisions

For rule 57 there is substituted—

Orders under section 37

(57)

(1) Where an order is made under section 37—

(a) that a patent shall be transferred to one or more persons none of whom was an old proprietor; or

(b) that a person other than an old proprietor may make a new application for a patent,

the comptroller shall give notice of the making of the order to the old proprietor or proprietors, and to any of their licensees of whom he is aware; and a person who makes a request under section 38(3) must do so before the end of the relevant period.

(2) The relevant period is—

(a) where the request is made by an old proprietor, the period of two months starting on the date the notice is sent to him;

(b) where the request is made by a licensee, the period of four months starting on the date the notice is sent to him.

Section 7 Consequential, incidental and supplementary provisions

For rule 58 there is substituted—

Reference to the comptroller under section 38(5)

(58)

(1) A reference under section 38(5) shall be made on Patents Form 2/77 and shall be accompanied by a copy and by a statement in duplicate setting out fully—

(a) the question referred;

(b) the facts upon which the person making the reference relies; and

(c) the period or terms of the licence which he is prepared to accept or grant.

(2) The comptroller shall send, except to the person who made the reference, a copy of the reference and statement to—

(a) the new proprietor or proprietors or, as the case may be, the new applicant; and

(b) every person claiming to be entitled to be granted a licence,

and any such person who receives a copy of the reference and statement may, before the end of the period of six weeks starting on the date the copies were sent to him, file a counter-statement (which must be in duplicate) setting out fully his grounds of objection.

(3) The comptroller shall send a copy of the counter-statement to the person who made the reference.

(4) The comptroller may give such directions as he thinks fit with regard to the subsequent procedure.

Section 8 Consequential, incidental and supplementary provisions

In rules 72 and 73, for “plaintiff” (wherever it occurs) there is substituted “claimant”.

Section 9 Transitional provisions

(1) The following transitional provisions have effect notwithstanding the amendments to the 1977 Act made by the provisions brought into force by article 2, or the amendments to the Rules made by articles 4 and 5.

(2) If before the appointed day a question is referred to the comptroller under section 8 or 12 of the 1977 Act, sections 8, 11 and 12 of that Act and rules 9 and 13 have effect in relation to that reference as if the amendments to those sections and rules had not been made.

(3) Where proceedings are brought under section 70 of the 1977 Act in respect of an alleged threat made before the appointed day, that section has effect in relation to that alleged threat as if the amendments to that section had not been made.

(4) Where proceedings are brought before the appointed day, section 75(1) of the 1977 Act has effect in relation to those proceedings as if the amendment to that subsection had not been made.

(5) Where the national phase (as defined by section 89A(3) of the 1977 Act) of an international application for a patent ( UK ) begins before the appointed day, section 89B(2) of that Act has effect in relation to that application as if the amendment to that subsection had not been made.