GB003: Patents, Act (Ch. 87), 16/12/1949

Patents Act, 1949

12, 13 & 14 Geo. 6 Ch. 87

CHAPTER 87

An Act to consolidate certain enactments relating to patents.

[16th December 1949.]

Be it enacted by the King'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:-

Application, investigation, opposition, etc.

Persons entitled to make application.

(a) by any person claiming to be the true and first inventor of the invention;

(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;

and may be made by that person either alone or jointly with any other person.

Provided that no application shall be made by virtue of this subsection after the expiration of twelve months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application.

Application.

Complete and provisional specifications.

Contents of specification.

Priority date of claims of complete specification.

Examination of application.

Search for anticipation by previous publication.

Search for anticipation by prior claim.

(a) that the invention, so far as claimed in any claim of the applicant's complete specification, has been claimed in any such specification as is mentioned in subsection (1) of that section; and

(b) that the other specification was published on or after the priority date of the applicant's claim,

then unless it has been shown to the satisfaction of the comptroller under that section that the priority date of the applicant's claim is not later than the priority date of the claim of that other specification, the provisions of subsection (2) of this section shall apply as they apply in relation to a specification published on or after the date of filing of the applicant's complete specification.

Reference in case of potential infringement.

(a) that other patent is revoked or otherwise ceases to be in force; or

(b) the specification of that other patent is amended by the deletion of the relevant claim; or

(c) it is found, in proceedings before the court or the comptroller, that the relevant claim of that other patent is invalid or is not infringed by any working of the applicant's invention,

the comptroller may, on the application of the applicant, delete the reference to that other patent.

Refusal of application in certain cases.

(a) that it is frivolous on the ground that it claims as an invention anything obviously contrary to well-established natural laws; or

(b) that the use of the invention in respect of which the application is made would be contrary to law or morality; or

(c) that it claims as an invention a substance capable of being used as food or medicine which is a mixture of known ingredients possessing only the aggregate of the known properties of the ingredients, or that it claims as an invention a process producing such a substance by mere admixture,

he may refuse the application.

Supplementary provisions as to searches, etc.

Time for putting application in order for acceptance.

Acceptance and publication of complete specification.

Provided that the applicant may give notice to the comptroller requesting him to postpone acceptance until such date, not being later than fifteen months from the date of filing of the complete specification, as may be specified in the notice; and if such notice is given and, where the notice requests a postponement to a date later than twelve months from the date aforesaid, the prescribed fee is paid, the comptroller may postpone acceptance accordingly.

Provided that an applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.

Opposition to grant of patent.

Refusal of patent without opposition.

(a) in any specification filed in pursuance of an application for a patent made in the United Kingdom and dated within fifty years next before the date of filing of the applicant's complete specification; or

(b) in any other document (not being a document of any class described in subsection (1) of section fifty of this Act),

the comptroller may refuse to grant the patent unless within such time as may be prescribed the complete specification is amended to his satisfaction.

Mention of inventor as such in patent.

(a) that the person in respect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and

(b) that the application for the patent is a direct consequence of his being the inventor,

the comptroller shall, subject to the provisions of this section, cause him to be mentioned as inventor in any patent granted in pursuance of the application, in the complete specification, and in the register of patents:

Provided that the mention of any person as inventor under this section shall not confer or derogate from any rights under the patent.

Substitution of applicants, etc.

Provisions for secrecy of certain inventions.

(a) an application for a patent for the same invention has been made in the United Kingdom not less than six weeks before the application outside the United Kingdom; and

(b) either no directions have been given under subsection (1) of this section or under section twelve of the Atomic Energy Act, 1946, in relation to the application in the United Kingdom, or all such directions have been revoked:

Provided that this subsection shall not apply in relation to an invention for which an application for protection has first been filed in a country outside the United Kingdom by a person resident outside the United Kingdom.

Grant, effect and term of patent

Grant and sealing of patent.

Provided that the first-mentioned period shall not be extended under this subsection by more than six months or such shorter period as may be prescribed.

Amendment of patent granted to deceased applicant.

Extent, effect and form of patent.

Provided that a patent may be assigned for any place in or part of the United Kingdom or Isle of Man as effectually as if it were granted so as to extend to that place or part only.

Date and term of patent.

Provided that no proceeding shall be taken in respect of an infringement committed before the date of the publication of the complete specification.

Extension on ground of inadequate remuneration.

Extension on ground of war loss.

Provided that the court or comptroller shall not allow an application to be made later than the expiration of the said term unless satisfied that the applicant has been prevented from making the application before the expiration of that term by being on active service or by other circumstances arising by reason of any such hostilities as aforesaid.

and for the purpose of this section no account shall be taken of any loss or damage suffered by any person during any period during which he was such a subject as aforesaid, or by any company during any period during which its business was managed or controlled or carried on as aforesaid.

Extension on ground of war loss of licensee.

Patents of addition.

(a) the main invention described in the complete specification relating thereto; or

(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition;

and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

Restoration of lapsed patents and patent applications

Restoration of lapsed patents.

(a) may be made subject to such conditions as the comptroller thinks fit, including in particular a condition requiring the registration in the register of patents of any matter in respect of which the provisions of this Act as to entries in that register have not been complied with; and

(b) shall contain such provision as may be prescribed for the protection of persons who may have begun to avail themselves of the patented invention between the date when the patent ceased to have effect and the date of the application under this section;

and if any condition of an order under this section is not complied with by the patentee the comptroller may, after giving to the patentee an opportunity to be heard, revoke the order and give such directions consequential on the revocation as he thinks fit.

Restoration of lapsed applications for patents.

Amendment of specifications

Amendment of specification with leave of comptroller.

Provided that the comptroller shall not allow a specification to be amended under this section upon an application made while any action before the court for infringement of the patent or any proceeding before the court for the revocation of the patent is pending.

Provided that where the application is made before the publication of the complete specification, the comptroller may, if he thinks fit, dispense with advertisement under this subsection or direct that advertisement shall be postponed until the complete specification is published.

Amendment of specification with leave of the court.

Supplementary provisions as to amendment of specification.

Provided that in construing the specification as amended reference may be made to the specification as originally published.

Revocation and surrender of patents

Revocation of patent by court.

(a) for the purpose of reasonable trial or experiment only; or

(b) by a Government department or any person authorised by a Government department, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention directly or indirectly to a Government department or person authorised as aforesaid; or

(c) by any other person, in consequence of the applicant for the patent or any person from whom he derives title having communicated or disclosed the invention, and without the consent or acquiescence of the applicant or of any person from whom he derives title;

and for the purposes of paragraph (e) or paragraph (f) of the said subsection (1) no account shall be taken of any secret use.

Revocation of patent by comptroller.

Provided that when an action for infringement, or proceedings for the revocation, of a patent are pending in any court, an application to the comptroller under this section shall not be made except with the leave of the court.

Provided that the comptroller shall not make an order for the unconditional revocation of a patent under this section unless the circumstances are such as would have justified him in refusing to grant the patent in proceedings under section fourteen of this Act.

Surrender of patent.

Voluntary endorsement of patent

Endorsement of patent "licences of right".

Provided that a patentee so added as defendant shah not be liable for any costs unless he enters an appearance and takes part in the proceedings.

Cancellation of endorsement under section 35.

(a) in the case of an application under subsection (1) of this section, any person interested; and

(b) in the case of an application under subsection (2) of this section, the patentee,

may give notice to the comptroller of opposition to the cancellation.

Compulsory licenses, etc.

Compulsory endorsement.

Provisions as to licences under section 37.

Exercise of powers on applications under section 37.

(a) the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee 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 to work the invention to the public advantage; and

(c) the risks to be undertaken by that person in providing capital and working the invention if the application is granted;

but shall not be required to take account of matters subsequent to the making of the application.

Endorsement, etc. on application of Crown.

(a) any conditions in a licence or licences granted by the patentee under the patent restricting the use of the invention by the licensee or the right of the patentee to grant other licences under the patent; or

(b) a refusal by the patentee to grant licences under the patent on reasonable terms,

he may by order cancel or modify any such condition as aforesaid or may, if he thinks fit, instead of making such an order or in addition to making such an order, order the patent to be endorsed with the words "licences of right".

Inventions relating to food or medicine, etc.

(a) a substance capable of being used as food or medicine or in the production of food or medicine; or

(b) a process for producing such a substance as aforesaid; or

(c) any invention capable of being used as or as part of a surgical or curative device,

the comptroller shall, on application made to him by any person interested, order the grant to the applicant of a licence under the patent on such terms as he thinks fit, unless it appears to him that there are good reasons for refusing the application.

Revocation of patent.

(a) that any of the said grounds are established; and

(b) that the purposes for which an order may be made in pursuance of an application under the said section thirty-seven could not be achieved by the making of any such order as is authorised to be made in pursuance of such an application,

he may order the patent to be revoked.

Procedure on application under sections 37 to 42.

Appeal and references to arbitrator.

(a) the parties consent; or

(b) the proceedings require a prolonged examination of documents or any scientific or local investigation which 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 therein, to be referred to an arbitrator agreed on by the parties, or, in default of agreement, appointed by the comptroller.

Supplementary provisions.

Use of patented inventions for services of the Crown

Use of patented inventions for services of the Crown.

Rights of third parties in respect of Crown use.

(a) by a Government department or a person authorised by a Government department under the last foregoing section; or

(b) by the patentee or applicant for the patent to the order of a Government department,

the provisions of any licence, assignment or agreement made, whether before or after the commencement of this Act, between the patentee or applicant for the patent, or any person who derives title from him or from whom he derives title, and any person other than a Government department shall be of no effect so far as those provisions restrict or regulate the use of the invention, or any model, document or information relating thereto, or provide for the making of payments in respect of any such use, or calculated by reference thereto; and the reproduction or publication of any model or document in connection with the said use shall not be deemed to be an infringement of any copyright subsisting in the model or document.

(a) in developing the said invention; or

(b) in making payments to the patentee, other than royalties, or other payments determined by reference to the use of the invention, in consideration of the licence;

and if, at any time before the amount of any such payment has been agreed upon between the Government department and the patentee, that person gives notice in writing of his interest to the department, any agreement as to the amount of that payment shall be of no effect unless it is made with his consent.

Reference of disputes as Crown use.

Special provisions as to Crown use during emergency.

(a) for the efficient prosecution of any war in which His Majesty 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 essential to the well-being of the community;

(d) 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 part of His Majesty's dominions or any foreign countries that are in grave distress as the result of war;

and any reference in that section or in section forty-seven or section forty-eight of this Act to the services of the Crown shall be construed as including a reference to the purposes aforesaid.

Anticipation, etc.

Previous publication.

(a) that the matter published was obtained from him or (where he is not himself the true and first inventor) from any person from whom he derives title, and was published without his consent or the consent of any such person; and

(b) where the patentee or applicant for the patent or any person from whom he derives title learned of the publication before the date of the application for the patent or (in the case of a convention application) before the date of the application for protection in a convention country, that the application or the application in a convention country, as the case may be, was made as soon as reasonably practicable thereafter:

Provided that this subsection shall not apply if the invention was before the priority date of the claim commercially worked in the United Kingdom, otherwise than for the purpose of reasonable trial, either by the patentee or applicant for the patent or any person from whom he derives tide or by any other person with the consent of the patentee or applicant for the patent or any person from whom he derives title.

Previous communication, display or working.

(a) the display of the invention with the consent of the true and first inventor at an exhibition certified by the Board of Trade for the purposes of this section, or the use thereof with his consent for the purposes of such an exhibition in the place where it is held;

(b) the publication of any description of the invention in consequence of the display or use of the invention at any such exhibition as aforesaid;

(c) the use of the invention, after it has been displayed or used at any such exhibition as aforesaid and during the period of the exhibition, by any person without the consent of the true and first inventor; or

(d) the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society,

if the application for the patent is made by the true and first inventor or a person deriving title from him not later than six months after the opening of the exhibition or the reading or publication of the paper as the case may be.

(a) by the patentee or applicant for the patent or any person from whom he derives title; or

(b) by any other person with the consent of the patentee or applicant for the patent or any person from whom he derives title,

if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public.

Use and publication after provisional specification or foreign application.

Priority date in case of obtaining.

(a) the comptroller has refused to grant a patent in pursuance of that other application on the ground specified in paragraph (a) of subsection (1) of section fourteen of this Act;

(b) a patent granted in pursuance of that other application has been revoked by the court or the comptroller on the ground specified in paragraph (a) of subsection (1) of section fourteen or paragraph (c) of subsection (1) of section thirty-two of this Act; or

(c) the complete specification filed in pursuance of the said other application has, in proceedings under section fourteen or section thirty-three of this Act, been amended by the exclusion of the claim relating to the said invention in consequence of a finding by the comptroller that the invention was obtained by the applicant or patentee from any other person,

the comptroller may direct that the first-mentioned application and any specification filed in pursuance thereof shall be deemed, for the purposes of the provisions of this Act relating to the priority date of claims of complete specifications, to have been filed on the date on which the corresponding document was or was deemed to have been filed in the proceedings upon the said other application.

Miscellaneous provisions as to rights in inventions

Co-ownership of patents.

Power of comptroller to give directions to co-owners.

Disputes as to inventions made by employees.

Provided that if it appears to the comptroller upon any application under this section that the matter in dispute involves questions which would more properly be determined by the court, he may decline to deal therewith.

Avoidance of certain restrictive conditions.

Determination of certain contracts.

Proceedings for infringement, etc.

Restrictions on recovery of damages for infringement.

Order for account in action for infringement.

Counterclaim for revocation in action for infringement.

Relief for infringement of partially valid specification.

Provided that the court shall not grant relief by way of damages or costs except in the circumstances mentioned in the next following subsection.

Proceedings for infringement by exclusive licensee.

Provided that a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

Certificate of contested validity of specification.

Provided that this subsection shall not apply to the costs of any appeal in any such proceedings as aforesaid.

Remedy for groundless threats of infringement proceedings.

Power of court to make declaration as to non-infringement.

Reference to comptroller of disputes as to infringement.

(a) whether any claim of the specification of a patent is infringed by anything done by that other person; or

(b) whether any such claim which is alleged to be so infringed is valid,

may, by agreement between the parties, be referred to the comptroller for determination in accordance with such procedure as may be prescribed by rules made by the Board of Trade under this Act:

Provided that if it appears to the comptroller that any dispute referred to him under this section involves questions which would more properly be determined by the court, he may decline to deal therewith.

International Agreements, etc.

Orders in Council as to convention countries.

Provided that a declaration may be made as aforesaid for the purposes either of all or of some only of the provisions of this Act, and a country in the case of which a declaration made for the purposes of some only of the provisions of this Act is in force shall be deemed to be a convention country for the purposes of those provisions only.

Supplementary provisions as to convention applications.

(a) in accordance with the terms of a treaty subsisting between any two or more convention countries, is equivalent to an application duly made in any one of those convention countries, or

(b) in accordance with the law of any convention country, is equivalent to an application duly made in that convention country,

he shall be deemed for the purposes of this Act to have applied in that convention country.

Special provisions as to vessels, aircraft and land vehicles.

(a) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or

(b) in the construction or working of the aircraft or land vehicle or of the accessories thereof,

as the case may be.

Extension of time for certain convention applications.

Protection of inventions communicated under international agreements.

Register of patents, etc.

Register of patents.

Registration of assignments, etc.

Provided that any equities in respect of the patent may be enforced in like manner as in respect of any other personal property.

Rectification of register.

Power to correct clerical errors, etc.

Evidence of entries, documents, etc.

Requests for information as to patent or patent application.

Restriction upon publication of specifications, etc.

Provided that the comptroller may, on application made in the prescribed manner by any person, disclose the result of any search made under section seven or section eight of this Act in respect of any application for a patent where the complete specification has been published.

Loss or destruction of patent.

Proceedings before Comptroller

Exercise of discretionary powers of comptroller.

Costs and security for costs.

Evidence before comptroller.

The Court and the Appeal Tribunal

The Court.

The Appeal Tribunal.

Appeals from decisions of the comptroller in Scottish cases.

Appeals to Court of Appeal and Court of Session.

Patent Agents

Restrictions on practice as patent agent.

Power of comptroller to refuse to deal with certain agents.

Offences

Falsification of register, etc.

Unauthorised claim of patent rights.

Unauthorised assumption of Royal Arms.

Provided that this section shall not affect the right, if any, of the proprietor of a trade mark containing such Arms to continue to use that trade mark.

Offences by companies.

Rules, etc.

General power of Board of Trade to make rules, etc.

Provisions as to rules and Orders.

Proceedings of Board of Trade.

Supplemental

Service of notices, etc., by post.

Hours of business and excluded days.

Fees.

Provided that the fees so prescribed in respect of the instruments and matters specified in the First Schedule to this Act shall not exceed the amounts specified in that Schedule.

Annual report of comptroller.

Interpretation.

Saving for Royal prerogative, etc.

Application to Scotland.

Application to Northern Ireland.

Isle of Man.

Repeals, transitional provisions and amendment.

Short title and commencement.

SCHEDULES

Section 99.

FIRST SCHEDULE
Maximum Fees

	£	s.	d.
On application for patent	1	0	0
On filing of complete specification	4	0	0
On sealing of patent	5	0	0
Renewal fees in respect of-
fifth year of patent	10	0	0
sixth year of patent	10	0	0
seventh year of patent	10	0	0
eighth year of patent	10	0	0
ninth year of patent	15	0	0
tenth year of patent	15	0	0
eleventh year of patent	20	0	0
twelfth year of patent	20	0	0
thirteenth year of patent	20	0	0
fourteenth year of patent	20	0	0
fifteenth year of patent	20	0	0
sixteenth year of patent	20	0	0

Section 106.

SECOND SCHEDULE
Enactments Repealed

Session and Chapter	Short title	Extent of repeal
7 Edw. 7. c. 29.	The Patents and Designs Act, 1907.	The whole Act, except section forty-seven, subsections (1), (2) and (3) of section sixty-two, sections sixty-three and sixty-four, and except sections eighty-two, ninety-one and ninety-one A in their application to trade marks and except section eighty-eight in its application to any Order in Council made under section ninety-one A.
9 & 10 Geo. 5. c. 80.	The Patents and Designs Act, 1919.	The whole Act.
18 & 19 Geo. 5. c. 3.	The Patents and Designs (Convention) Act, 1928.	The whole Act, except section four.
22 & 23 Geo. 5. c. 32.	The Patents and Designs Act, 1932.	The whole Act, except so much of the Schedule as amends section ninety-one of the Patents and Designs Act, 1907.
1 & 2 Geo. 6. c. 29	The Patents, etc. (International Conventions) Act, 1938.	The whole Act, except sections eight, nine and ten, subsection (6) of section twelve and so much of the Schedule as amends section ninety-one of the Patents and Designs Act, 1907.
2 & 3 Geo. 6. c. 32.	The Patents and Designs (Limits of Time) Act, 1939.	The whole Act, except section four.
5 & 6 Geo. 6. c. 6.	The Patents and Designs Act, 1942.	The whole Act.
9 & 10 Geo. 6. c. 26.	The Emergency Laws (Transitional Provisions) Act, 1946.	Section seven.
9 & 10 Geo. 6. c. 44.	The Patents and Designs Act, 1946.	Sections one, two, three and five, subsection (3) of section six, subsection (2) of section seven and subsection (4) of section eight.
11 & 12 Geo. 6. c. 10.	The Emergency Laws (Miscellaneous Provisions) Act, 1947.	In section five, paragraph (b) of subsection (2) and subsection (3).
12 & 13 Geo. 6. c. 62.	The Patents and Designs Act, 1949.	The whole Act, except section forty-nine and so much of the First Schedule as amends sections eighty-two, eighty-eight and ninety-one A of the Patents and Designs Act, 1907.

Section 106.

THIRD SCHEDULE
Transitional Provisions

Provided that for the purposes of the said section five a claim of any such specification filed after a provisional specification shall be deemed to by fairly based on the matter disclosed in the provisional specification unless the claim is for a further or different invention to that contained in the provisional specification.

Provided that nothing in this paragraph shall affect any power of the comptroller under section six of the Patents. Designs, Copyright and Trade Marks (Emergency) Act, 1939, to extend the time for filing a complete specification.

Table of Statutes referred to in this Act

Short Title	Session and Chapter
Statute of Monopolies	21 Jac. 1. c. 3.
Petty Sessions (Ireland) Act, 1851	14 & 15 Vict. c. 93.
Interpretation Act, 1889	52 & 53 Vict. c. 63.
Courts of Land Fees (Scotland) Act, 1895	58 & 59 Vict. c. 14.
Patents and Designs Act, 1907	7 Edw. 7. c. 29.
Solicitors Act, 1932	22 & 23 Geo. 5. c. 37.
Solicitors (Scotland) Act, 1933	23 & 24 Geo. 5. c. 21.
Arbitration Act, 1934	24 & 25 Geo. 5. c. 14.
Trade Marks Act, 1938	1 & 2 Geo. 6. c. 22.
Patents, etc. (International Conventions) Act, 1938	1 & 2 Geo 6. c. 29.
Patents, Designs, Copyright and Trade Marks (Emergency) Act, 1939	2 & 3 Geo. 6. c. 107.
Statutory Instruments Act, 1946	9 & 10 Geo. 6. c. 36.
Patents and Designs Act, 1946	9 & 10 Geo. 6. c. 44.
Atomic Energy Act, 1946	9 & 10 Geo. 6. c. 80.
Crown Proceedings Act, 1947	10 & 11 Geo. 6. c. 44.
Monopolies and Restrictive Practices (Inquiry and Control) Act, 1948	11 & 12 Geo. 6. c. 66.
Patents and Designs Act, 1949	12, 13 & 14 Geo. 6. c. 62.
Civil Aviation Act, 1949	12, 13 & 14 Geo. 6. c. 67.