Section 77

Effect of European patent (UK)

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77.-(1) Subject to the provisions of this Act, a European patent (UK) shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated for the purposes of Parts I and III of this Act as if it were a patent under this Act granted in pursuance of an application made under this Act and as if notice of the grant of the patent had, on the date of that publication, been published under section 24 above in the journal; and -

  • (a) the proprietor of a European patent (UK) shall accordingly as respects the United Kingdom have the same rights and remedies, subject to the same conditions, as the proprietor of a patent under this Act;
  • (b) references in Parts I and III of this Act to a patent shall be construed accordingly; and
  • (c) any statement made and any certificate filed for the purposes of the provision of the convention corresponding to section 2(4)(c) above shall be respectively treated as a statement made and written evidence filed for the purposes of the said paragraph (c).

(2) Subsection (1) above shall not affect the operation in relation to a European patent (UK) of any provisions of the European Patent Convention relating to the amendment or revocation of such a patent in proceedings before the European Patent Office.

(3) Where in the case of a European patent (UK) -

  • (a) proceedings for infringement, or proceedings under section 58 above, have been commenced before the court or the comptroller and have not been finally disposed of, and
  • (b) it is established in proceedings before the European Patent Office that the patent is only partially valid,

the provisions of section 63 or, as the case may be, of subsections (7) to (9) of section 58 apply as they apply to proceedings in which the validity of a patent is put in issue and in which it is found that the patent is only partially valid.

(4) Where a European patent (UK) is amended in accordance with the European Patent Convention, the amendment shall have effect for the purposes of Parts I and III of this Act as if the specification of the patent had been amended under this Act; but subject to subsection (6)(b) below.

(4A) Where a European patent (UK) is revoked in accordance with the European Patent Convention, the patent shall be treated for the purposes of Parts I and III of this Act as having been revoked under this Act.

(5) Where -

  • (a) under the European Patent Convention a European patent (UK) is revoked for failure to observe a time limit and is subsequently restored or is revoked by the Board of Appeal and is subsequently restored by the Enlarged Board of Appeal; and
  • (b) between the revocation and publication of the fact that it has been restored a person begins in good faith to do an act which would, apart from section 55 above, constitute an infringement of the patent or makes in good faith effective and serious preparations to do such an act;

he shall have the rights conferred by section 28A(4) and (5) above, and subsections (6) and (7) of that section shall apply accordingly.

(5A)1 Where, under the European Patent Convention, a European patent (UK) is revoked and subsequently restored (including where it is revoked by the Board of Appeal and subsequently restored by the Enlarged Board of Appeal), any fee that would have been imposed in relation to the patent after the revocation but before the restoration is payable within the prescribed period following the restoration.

(6) While this subsection is in force -

  • (a) subsection (1) above shall not apply to a European patent (UK) the specification of which was published in French or German, unless a translation of the specification into English is filed at the Patent Office and the prescribed fee is paid before the end of the prescribed period [Rule 56(6): 3 months from date of publication of grant];
  • (b) subsection (4) above shall not apply to an amendment made in French or German unless a translation into English of the specification as amended is filed at the Patent Office and the prescribed fee is paid before the end of the prescribed period.

(7) Where such a translation is not filed, the patent shall be treated as always having been void.

(8) The comptroller shall publish any translation filed at the Patent Office under subsection (6) above.

(9) Subsection (6) above shall come into force on a day appointed for the purpose by rules and shall cease to have effect on a day so appointed, without prejudice, however, to the power to bring it into force again.

Notes:
Manual of Patent Practice

Subsection (6) ceases to have effect as from 1 May 2008, when the London Agreement enters into force. See press release from the UK-IPO dated 30 January 2008.

Subsection 5(a) amended by Schedule 1 of the Patents Act 2004, as commenced by the Patents Act 2004 (Commencement No. 4 and Transitional Provisions) Order 2007 SI 2007 No. 3396, from 13 December 2007.

Subsection 6 above ceases to have effect when (or if) the London Translation Agreement comes into force, according to The Patents (Translations) Rules 2005, SI 2005 No. 687.

In Unilin Beheer BV v Berry Floor NV & Ors [2007] EWCA Civ 364 (25 April 2007), regarding whether damages and costs should be awarded in relation to an EP(UK) patent found (partially) valid and infringed before an English court, the same patent also being the subject of parallel ongoing opposition proceedings at the EPO, Jacob LJ stated,

"Now a purist may say: it is a nonsense, and moreover an unjust nonsense, for a man to have to pay for doing what, with hindsight, we know to have been lawful. The purist might, I suppose, also say that a licensee who has paid royalties under a patent subsequently revoked ex tunc should get his money back. He might even say that a man who lost profits by refraining from some commercial activity by reason of a fear, now known to be groundless, of infringing the patent should have some remedy.

But I think there are good and pragmatic reasons why the purist approach makes bad business sense. You cannot unravel everything without creating uncertainty. And where a final decision has been made on a fair contest between the parties, that should stand as the final answer between them.

In a sense a patent is always potentially at risk - someone may come up with a bang on but obscure piece of prior art (my favourite pretend example is an anticipation written in Sanskrit wrongly placed in the children's section of Alice Springs public library), or simply with better evidence on known prior art. That is no reason for undoing what has been done or regarding a final decision as merely provisional. After a final decision businessmen should be able to get on with their businesses, knowing what the position is" (paragraphs 44-46).

And in relation to s77(4A),

"[A]ll [s.77(4A)] says is that where a European patent (UK) is revoked in accordance with the EPC, the patent shall be treated as having been revoked under the Act. That does not suggest in any way that an estoppel preventing a party from relying on a subsequent revocation is in any way different for patents obtained via the EPO route as opposed to those obtained via the national route. On the contrary it indicates the effect is the same" (paragraph 58).

"[B]usinessmen in this country know that they can use the rather speedy court system here to get a conclusion one way or the other. If the patent is revoked, the way is cleared; if it is upheld and held infringed then compensation will be payable for past acts. And an injunction will run unless there is a later revocation by the EPO. Subject to that last point, the effect of all this is that one does not have to wait to find out who has won until the slowest horse in the race gets there" (paragraph 88).

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