UK Amendments in Detail
This article was taken from the Venner Shipley Newsletter edition 19.
On 1 January 2005, several amendments to the UK Patents Act came into force, including those set out below.
1. The rules relating to the claiming of priority have been relaxed. It is now possible to inform the UK Patent Office of the details of an application from which it is desired to claim priority in respect of a new UK application, up to 16 months after the earliest priority date, provided the UK application was filed within the normal 12-month priority period. Furthermore, a UK application may be filed claiming priority from an application made up to 14 months previously, if it can be shown that the failure to file within the normal 12-month period was unintentional.
2. The fee structure for applications filed after 1 January 2005 has altered, but the overall cost of requesting preliminary examination and search is unchanged.
3. Some of the restrictions on the filing of patent applications abroad by UK residents have been lifted. The vast majority of applications do not relate to military technology and do not contain information that might be prejudicial to public safety or national security, and for such cases it is no longer necessary to seek permission for filing abroad as a matter of course.
4. Amendments have been made to the law relating to actionable threats of infringement proceedings, in order to encourage genuine attempts to settle disputes. Patent proprietors are protected from claims for groundless threats made to so-called ‘primary infringers’ (those making or importing a patented product or using a patented process) in respect of any act of infringement. For instance, proceedings can be threatened against a retailer who is also engaged in importing the patented product, in respect of the acts of both importation and sale. In addition, proprietors need no longer be concerned about possible actions for unjustified threats in the event that their patent is ultimately held to be invalid, as long as they had no reason to suspect this when the threat was made. Finally, the new law extends the definition of non-threatening acts to include: providing purely factual information about the patent; making enquiries to discover whether and by whom a primary infringement has been committed; and making assertions about the patent (such as its validity) for the purpose of making such enquiries. To ensure compliance with the new provisions, we would encourage clients to seek our advice before entering into correspondence of this nature.
5. The law has been simplified in relation to the compensation available to a UK employee who makes an invention that later becomes the subject of a granted patent belonging to their employer. The employer is now required to provide compensation if the invention itself, in addition to or instead of the patent, is of ‘outstanding benefit’. Benefits from the invention may include profits due to the invention being a successful technical solution in itself, but not those derived from extensive marketing. Although such awards of compensation by the courts are rare, UK employers may wish to update any existing in-house compensation schemes to take account of the new provisions.
Further changes, in particular an increase in the period available for payment of renewal fees, are expected to come into force later this year. An unofficial consolidation of the new Act can be found at the following url:http://www.patent.gov.uk/patent/legal/consolidation.pdf