Changes to UK Patent legislation : January 2005

Posted in UK Patents on by Admin

Significant changes to UK Patent legislation have recently been made by the Patents Act 2004 and Regulatory Reform (Patents) Order 2004. This article summarises the most important of the first series of amendments, which took effect on 1st January 2005.

Awards of expenses in patent infringement proceedings.

For certain legal proceedings where patent infringement is an issue, the courts will take into account the (relative) financial position of the parties when deciding on the level of an award of expenses (referred to as costs in England & Wales). Many other factors are also taken into account by courts when determining an award of expenses and this change in law provides no guarantees; however, this change is one step towards making it easier for smaller companies and individuals to pursue larger organisations for patent infringement.

Amendments to threats provisions.

In the UK, it is an offence in certain circumstances to make unjustified threats of legal action for patent infringement. This can make it difficult to make genuine attempts to settle disputes before resorting to legal action. This is because those who make threats can in some circumstances risk retaliatory legal action if their allegations are found to be unfounded.

Amendments to these provisions mean that a patent holder who approaches an infringer in good faith, having no reason to suspect that their patent is invalid, should not be found liable for making unjustified threats simply because their patent is subsequently found to be invalid. Other amendments increase the range of circumstances in which threats can be made without taking on a risk of being sued if the threats turn out to be unjustified. However, it remains the case that patent holders should not make threats of legal action for patent infringement without first taking legal advice.

Compensation for employee inventors.

Employees now have a legal right to claim compensation from an employer if they make an invention which, to paraphrase, (1) belongs to their employer, (2) has been patented by the employer, (3) has been of outstanding benefit to the employer, and (4) if they have not been adequately compensated. It was previously possible in principle for employees to claim compensation if a patent for their invention was of outstanding benefit, now employees can potentially claim if the patent or just the invention was of outstanding benefit to their employer. Only a small number of cases were brought under the previous provisions and none have been successful in court to our knowledge (this does not necessarily mean that none were successful out of court.) The new provisions may increase the number of claims.

Security clearance for filing patent applications abroad.

UK legislation includes provisions aiming to prevent the distribution of ideas abroad which, if published, could prejudice the defence of the realm or public safety. Previously, a criminal offence was committed by all UK residents who filed, or caused to be filed, any patent application abroad, without written permission from the UK Intellectual Property Office, unless the same patent application had been filed in the UK at least 6 weeks previously. Now it is only necessary to seek permission if the patent application contains information which relates to military technology or which might be prejudicial to UK national security, or the safety of the public. A criminal offence is committed by a person if they file, or cause to be filed, a patent application abroad in contravention of these restrictions and the person knows or is reckless as to whether this is the case. This will help reduce bureaucracy as only a small proportion of foreign patent applications should now require clearance. If there is any doubt whatsoever, permission should anyway be obtained.

Application fee for UK patent applications.

An application fee of £30 has been introduced for UK patent applications. The impact of this new fee is minimal as it does not need to be paid until the deadline for requesting search of a patent application and the search fee has been reduced correspondingly by £30. The only practical implication is that the UK Intellectual Property Office does not carry out a preliminary examination of the application to check that it meets formal requirements until the fee has been paid. Nevertheless, we recommend that this fee is paid straight away as it is best to find out about any irregularities in a patent application sooner rather than later.

Enforcement of damage awards made by the Comptroller.

A relatively quick and simple procedure has been put in place to enforce an award of damages made by the Comptroller of the UK Intellectual Property Office for patent infringement. This makes it more practical for the parties involved in a patent infringement action to agree to have the matter decided by the Comptroller of the UK Intellectual Property Office rather than a higher court and so potentially keep costs down.

Other changes.

Other amendments affect the restoration of a patent and requests for reinstatement of a patent, alter the remedies available in patent entitlement disputes, allow late declarations of priority in certain circumstances, alter the signature requirements for patent assignments (outside Scotland) and change certain rules relating to the extension of time limits.