Section 64

Right to continue use begun before priority date

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64.-(1) Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention -

  • (a) does in good faith an act which would constitute an infringement of the patent if it were in force, or
  • (b) makes in good faith effective and serious preparations to do such an act,

has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act.

(2) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may -

  • (a) authorise the doing of that act by any partners of his for the time being in that business, and
  • (b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

(3) Where a product is disposed of to another in exercise of the rights conferred by subsection (1) or (2), that other and any person claiming through him may deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.

Notes:
Manual of Patent Practice

Lubrizol v Esso [1998] RPC 727 (at p770, per Jacob LJ):

  • "Clearly the right given by section 64 cannot be a right to manufacture any product nor a right to expand into other products. However I do not believe that identicality is required".

and approving the lower court's view ([1997] RPC 195 at 216):

  • "If the protected act has to be exactly the same (whatever that may mean) as the prior art then the protection given by the section would be illusory. The section is intended to give practical protection to enable a man to continue doing what in substance he was doing before".
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