Part I New Domestic Law

Patentability

1.     Patentable inventions

2.     Novelty

3.     Inventive step

4.     Industrial application

5.     Priority date

6.     Disclosure of matter, etc., between earlier and later applications

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 under section 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

20.     Failure of application

21.     Observation by third party on patentability

Security and safety

22.     Information prejudicial to defence of realm or safety of public

23.     Restrictions on applications abroad by United Kingdom residents

Provisions as to patents after grant

24.     Publication and certificate of grant

25.     Term of patent

26.     Patent not to be impugned for lack of unity

27.     General power to amend specification after grant

28.     Restoration of lapsed patents

28A.     Effect of order for restoration of patent

29.     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. [repealed]

36.     Co-ownership of patents and applications for patents

37.     Determination of right to patent after grant

38.     Effect of transfer of patent under section 37

Employee’s inventions

39.     Right to employee’s inventions

40.     Compensation of employees for certain inventions

41.     Amount of compensation

42.     Enforceability of contracts relating to employee’s 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 section 46

48.     Compulsory licences

49.     Provisions about licences under section 48

50.     Exercise of powers on applications under section 48

51.     Powers exercisable in consequence of report of Monopolies and Mergers Commission

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 services 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

57A.     Compensation for loss of profit

58.     References of disputes as to Crown use

59.     Special provisions as to Crown use during emergency

Infringement

60.     Meaning 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 application

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

Part II Provisions About International Conventions

European patents and patent applications

77.     Effect of European patent (UK)

78.     Effect of filing an application for a European patent (UK)

79.     Operation of section 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 [repealed]

85.     European patent attorneys [repealed]

Community patents

86.     Implementation of Community Patent Convention

87.     Decisions on Community Patent Convention

88.     Jurisdiction in legal proceedings in connection with Community Patent Convention [repealed]

International applications for patents

89.     Effect of international application for patent

89A.     International and national phases of application

89B.     Adaptation of provisions in relation to international application

Convention countries

90.     Orders in Council as to convention countries

Miscellaneous

91.     Evidence of conventions and instruments under conventions

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 [repealed]

97.     Appeals from the comptroller

98.     Proceedings in Scotland

99.     General powers of the court

99A.     Power of Patents Court to order report

99B.     Power of Court of Session to order report

100.     Burden of proof in certain cases

101.     Exercise of comptroller’s discretionary powers

102.     Right of audience, etc. in proceedings before comptroller

102A.     Right of audience, etc. in proceedings on appeal from the comptroller

103.     Extension of privilege for communications with solicitors relating to patent proceedings

104.     Privilege for communications with patent agents relating to patent proceedings [repealed]

105.     Extension of privilege in Scotland for communications relating to patent proceedings

106.     Costs and expenses in proceedings before the Court under section 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 [repealed]

115.     Power of comptroller to refuse to deal with certain agents [repealed]

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

125A.     Disclosure of invention by specification; availability of samples of micro-organisms

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 amendments and repeals

SCHEDULES:

Schedule 1—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

Patentability

(Patentable inventions)

1.—(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to 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.

(2) It is hereby declared that the following (among other 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;

(d) 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 product 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.

(Novelty)

2.—(1) 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 all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available 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 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 purpose 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 was 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 confidence 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 mentioned 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 international exhibition and the applicant states, on filing the application, that the invention has been so displayed and also, within the prescribed period, files written evidence in support of the statement complying with any prescribed conditions.

(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 composition 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 or composition in any such method does not form part of the state of the art.

(Inventive step)

3. An invention shall be taken to involve an inventive 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 application)

4.—(1) Subject to subsection (2) below, an invention shall 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 consisting 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) contained 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, complying with the relevant requirements of rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his and each having a date of filing during the period of twelve months immediately preceding the date of filing the application in suit 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 application 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 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 application in suit was also disclosed in two earlier relevant applications filed by the same applicant as in the case of the application 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 applications shall, so far as concerns that invention or matter, be disregarded unless—

(a) it was 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 withdrawn, or was abandoned or refused, without—

(i)     having been made available to the public (whether in the United Kingdom or elsewhere);

(ii)     leaving any rights outstanding; and

(iii)     having 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 which 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 international convention to which a convention country is a party, is equivalent to such an application.

(Disclosure of matter, etc., between earlier and later applications)

6.—(1) It is hereby declared for the avoidance of doubt that where an application (the application in suit) is made for a patent and a declaration is made in accordance with section 5(2) above in or in connection with that application specifying an earlier relevant application, the application in suit and any 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 between the dates of the earlier relevant application and the application in suit, as for example, filing another application for the invention for which the earlier relevant application was made, making information 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

(Right to apply for and obtain a patent)

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.

(Determination before grant of questions about entitlement to patents, etc.)

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

(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 (1)(a) above to the comptroller after an application 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 tosubsection (6) below,—

(a) order that the application shall proceed in the name 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;

(d) 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 (1)(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 reference (whether the reference was made before or after the publication of the application); or

(c) any such application is refused under any 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 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 (1)(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 were 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 property 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 personal representatives of deceased persons, or their rights or obligations as such.

(Determination after grant of questions referred before grant)

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 the patent, and is not determined before the time when the application 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 to the comptroller under section 37 below any question mentioned in that section which the comptroller thinks appropriate.

(Handling of application by joint applicants)

10. If any dispute arises between joint applicants for a patent whether or in what manner the application should be proceeded with, the comptroller may, on a request made by any of the 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 may require.

(Effect of transfer of application under section 8 or 10)

11.—(1) Where an order is made or directions are given under section 8 or 10 above that an application for a patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application 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 application is to proceed.

(2) Where 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 were 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, where the application has not been published, on the making of the order.

(3) If before registration 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 preparations 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 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 terms.

(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 of questions about entitlement to foreign and convention patents, etc.)

12.—(1) At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made)—

(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 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 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 insubsection (1) above as it applies to joint applicants for a patent under this Act.

(5) Section 11 above shall apply in relation to—

(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 corresponding 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 publication of the application but before a question relating to the right to the patent has been referred to the comptroller 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 applicant) appearing to him to be entitled to be granted a patent under this Act may within the prescribed period make an application 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 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.

(Mention of inventor)

13.— (1) The inventor or joint inventors of an invention shall 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 invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document.

(2) Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with 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 inventor 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 ofsubsection (1) above.

Applications

(Making of application)

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 purposes 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;

(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 invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

(4) [Repealed.]

(5) The claim or claims shall—

(a) define the matter for which the applicant seeks protection;

(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 information 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 determine whether the abstract adequately fulfils its purpose and, if it does not, may reframe it so that it does.

(8) [Repealed.]

(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.

(Date of filing application)

15.—(1) The date of filing an application for a patent shall, subject to the following provisions of this Act, be taken to be 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 description complies with the other provisions of this Act and with any relevant rules); and

(d) the applicant pays 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 application 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 application shall be treated as omitted.

(3A) Nothing in subsection (2) or (3) above shall be construed as affecting the power of the comptroller under section 117(1) below to correct errors or mistakes with respect to the filing of drawings.

(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.

(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 examination and search under the following provisions of this Act and pays the search fee.

(Publication of application)

16.— (1) Subject to section 22 below, where an application has a date of filing, then, as soon as possible after the end of the prescribed period, the comptroller shall, unless the application is withdrawn or refused before preparations for its publication have been completed by the Patent Office, publish it as filed (including not only the original claims but also any amendments 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 would in his opinion be generally expected to encourage offensive, immoral or anti-social behaviour.

Examination and search

(Preliminary examination and search)

17.— (1) Where an application for a patent has a date of filing and is not withdrawn, and before the end of the prescribed period—

(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 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), and if the applicant fails to do so the comptroller may refuse the application.

(4) Subject to subsection (5) and (6) below, on a search requested under this section, the examiner shall make 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 application 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 he determines that the search would not serve such a purpose in relation to the whole or part of the application, he shall report accordingly to the comptroller; and in either event the applicant shall be informed of the examiner’s report.

(6) If it appears to the examiner, either before or on conducting 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 application to an examiner for a supplementary search, and subsections (4) and (5) above shall apply in relation to a supplementary search as they apply in relation to any other search under this section.

(8) A reference for a supplementary search in consequence of—

(a) an amendment of the application made by the applicant under section 18(3) or 19(1) below, or