Section 130: Interpretation
Sections (130.01 - 130.35.1) last updated October 2015.
This section defines certain terms used in the Act and, in subsections (7) and (9), is concerned with the interpretation and construction of certain provisions and references. It should be noted that other terms are defined in other sections of the Act, for example “relevant application” is defined in s.5(5) see 5.30, although some of those definitions apply only in specified section(s).
|In this Act, except so far as the context otherwise requires “
application fee” means the fee prescribed for the purposes of section 14(1A) above;
“application for a European patent (UK)” and (subject to subsection (4A) below) “international application for a patent (UK)” each mean an application of the relevant description which, on its date of filing, designates the United Kingdom;
The definitions in subsection (1) thus apply throughout the Act unless the context otherwise requires.
The terms “date of filing”, “designate”, “European patent (UK)” and “international application for a patent” (used in the above definitions) are defined later in subsection (1), see below.
|“appointed day”, in any provision of this Act, means the day appointed under section 132 below for the coming into operation of that provision;|
|“biological material” means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system;
“biotechnological invention” means an invention which concerns a product consisting of or containing biological material or a process by means of which biological material is
|produced, processed or used;|
These definitions were introduced into s.130(1) by the Patents Regulations 2000 (SI 2000 No.2037). Schedule A2 to the Act (also introduced by the Patents Regulations 2000 under s.76A) makes certain specific provisions concerning “biotechnological inventions”, as defined above. References to “biological material” in that Schedule and elsewhere in the Act are also to be interpreted in the light of the above definition.
|“Community Patent Convention” means the Convention for the European Patent for the Common Market;|
|“comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;|
It is a requirement of the Patents and Designs Act 1907 that there is a “Comptroller General of Patents, Designs, and Trade Marks”; the definition in s.130(1) is therefore intended to allow for brevity in the Patents Act 1977 whilst ensuring consistency with the 1907 Act. The comptroller is appointed by the Secretary of State under s.63(1) of the 1907 Act.
Any act or thing directed to be done by or to the comptroller may be done by or to any officer authorised by the Secretary of State (see s.62(3) of the 1907 Act) or any officer authorised by the comptroller himself (see s.74 of the Deregulation and Contracting Out Act 1994). The current authorisation, dated 11 August 2014, authorises various officers of the Office to perform functions of the comptroller in accordance with the following schedule. Like previous authorisations, it is drawn in broader terms than will normally be applied in practice.
The comptroller’s tribunal function in respect of patent disputes under the Patents Act 1977 was considered to be a court for the purposes of Article 24 of the Council Regulation (EC) 44/2001 (now Article 26 of Regulation (EU) No. 1215/2012) in Future New Developments Ltd v B & S Patente Und Marken GmbH  EWHC 1874 (IPEC).
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|Director (PDTMD), Divisional directors (patents) and deputy directors (patents)||1. All the provisions of:
(i) the Patents Acts 1949 and 1977,
(ii) the Registered Designs Act 1949,
(iii) the Copyright, Designs and Patents Act 1988, and
(iv) the Trade Marks Acts 1938 and 1994.
2. The relevant Rules, Orders and Regulations made under the above Acts.
3. All the provisions of the Patents and Plant Variety Rights (Compulsory Licensing) Regulations 2002.
4. Regulation 36 of the European Communities (Recognition of Professional Qualifications) Regulations 2007.
|Officers of span D1 (patents), senior patent examiners||1. All the provisions of the Patents Acts 1949 and 1977 except insofar as they involve:
(i) opposed requests, references and applications, or
(ii) the refusal of any application or request where the refusal is disputed by the applicant or requester and where the technical content of specifications is involved.
2. All the provisions of the Registered Designs Act 1949.
3. The relevant Rules, Orders and Regulations made under the above Acts.
|Patent examiners, associate patent examiners and private applicant unit examiners||1. All the provisions of the Patents Act 1977 except insofar as they involve:
(i) opposed requests, references and applications, or
(ii) the refusal of any application or request where the refusal is disputed by the applicant or requester.
2. The relevant Rules, Orders and Regulations made under the above Act.
|Director (finance), Divisional director (trade marks and designs), Where not already mentioned officers of span C2 or higher||All the provisions of:
(i) the Patents Acts 1949 and 1977, including opposed requests, references and applications insofar as these relate to preliminary or procedural matters, except insofar as these involve the technical content of specifications,
(ii)the Registered Designs Act 1949, and
(iii) the Trade Marks Acts 1938 and 1994.
2.The relevant Rules, Orders and Regulations made under the above Acts.
|Where not already mentioned Officers of span B3 or higher Assistant heads of administration (patents)||1. All the provisions of:
(i) the Patents Acts 1949 and 1977 except insofar as opposed requests, references and applications made thereunder or the technical content of specifications are involved,
(ii) the Registered Designs Act 1949, and
(iii) the Trade Marks Acts 1938 and 1994.
2. The relevant Rules, Orders and Regulations made under the above Acts.
|All officers of span B1 or B2||1. The provisions of:
(i) Sections 25, 27(3), 34, 37, 38, 39, 40,43, 44, 46, 47, 63(2), 63(3), 64, 65 and 67 of the Trade Marks Act 1994,
(ii) Sections 1(5) and (8), 17, 22, 23, 25, 28, 34, 35 and 36 of the Trade Marks Act 1938,
(iii) Sections 28, 47 and 117 of the Patents Act 1977 except insofar as opposed requests or the technical content of specifications are involved,
(iv) the relevant related Rules made under the above Acts,
(v) Orders made under Sections 8 and 54 the Trade Marks Act 1994,
(vi) Regulations made under the Trade Marks Act 1994,
(vii) Rules made under Sections 41, 52, 68, 69, 78 and 81 of the Trade Marks Act, and
(viii) the following Rules:
(a) Rules 53, 106, 108(1), 111(1) and 113(4) of the Patents Rules 2007,
(b) Schedule 1 to the Patents Rules 2007 in connection with certificates authorising the release of biological material except insofar as an objection to release to a named expert is raised,(c) Rule 39 of the Registered Designs Rules 2006, and
(d) Rule 20(1) of the Design Right (Proceedings before Comptroller) Rules 1989.
|All officers of span A2 or A3 or higher||1. The provisions of:
(i) Sections 117B(2), 118(1) and 118(5) of the Patents Act 1977 and the relevant related Rules made under the Act, except insofar as opposed requests or the technical content of specifications are involved,
(ii) Rules 11(3), 35(3), 35(5), 35(6), 47(2), 104(1) and 108(2) of the Patents Rules 2007,
(iii) the Registered Designs Act 1949 and the Rules made under the Act insofar as the examination of design applications and the registration, renewal, restoration, assignment, licensing, cancellation and invalidation of registered designs is concerned,
(iv) Section 21 of the Registered Designs Act 1949, and
(v) Rules made under Section 30 of the Registered Designs Act 1949.
2. Certifying certificates for the purposes of Section 32(10) of the Patents Act 1977 and copies or extracts falling within Section 32(11) and (13) of the Patents Act 1977 in accordance with the relevant Rules made under the Act.
3. Certifying copies of an entry in the register or an extract from the register under the provisions of Section 63(3) of the Trade Marks Act 1994 in accordance with the relevant Rules and Regulations made under the Act.
4. Certifying certificates for the purposes of Section 17(9) of the Registered Designs Act 1949 and copies or extracts falling within Section 17(10) and (12) of the Registered Designs Act 1949 in accordance with the relevant Rules made under the Act.
|All officers of span A2, A3 or highed||1. The provisions of:
Sections 117B(2) of the Patents Act 1977 and Rule 109 of the Patent Rules 2007.
2. All ordinary administrative functions under the Acts, Rules, Regulations and Orders mentioned in this Schedule, such as where the comptroller is required to send or issue any document, notify or give notice of any event or requirement, request information or payment of a fee, specify a period, publish or advertise any information, or enter or amend information in the register.
|“Convention on International Exhibitions” means the Convention relating to International Exhibitions signed in Paris on 22 November 1928, as amended or supplemented by any protocol to that convention which is for the time being in force;|
(a) as respects England and Wales, the High Court;
(b) as respects Scotland, the Court of Session;
(c) as respects Northern Ireland, the High Court in Northern Ireland;
(d) as respects the Isle of Man, Her Majesty’s High Court of Justice of the Isle of Man;
Part (d) of the definition of “court” was added by the Patents (Isle of Man) Order 2013 (SI 2013/2602), which is the current Order in force. See 132.03 for information on previous Orders. The reference to patents county courts added to part (a) by the CDP Act 1988 was repealed by the Crimes and Courts Act 2013.
|“date of filing” means
(a) in relation to an application for a patent made under this Act, the date which is the date of filing that application by virtue of section 15 above; and
(b) in relation to any other application, the date which, under the law of the country where the application was made or in accordance with the terms of a treaty or convention to which that country is a party, is to be treated as the date of filing that application or is equivalent to the date of filing an application in that country (whatever the outcome of the application);
The date of filing of an application under the Act is thus the date accorded under section 15.
|“designate” in relation to an application or a patent, means designate the country or countries (in pursuance of the European Patent Convention or the Patent Co-operation Treaty) in which protection is sought for the invention which is the subject of the application or patent and includes a reference to a country being treated as designated in pursuance of the convention or treaty;|
EPC r.41 PCT rr. 3 and 4 are also relevant
“European Patent Convention” (EPC) and “Patent Co-operation Treaty” (PCT) are defined later in subsection (1), see below. Designations are made on the relevant EPC or PCT request form – although in both cases it is now the case that all states and regions are by default treated as being designated on filing.
|“electronic communication” has the same meaning as in the Electronic Communications Act 2000;|
This definition was inserted into s.130(1) by the Patents Act 1977 (Electronic Communications) Order 2003 (S.I. 2003 No. 512), which inserted s.124A into the Act.
“employee” means a person who works or (where the employment has ceased) worked under a contract of employment or in employment under or for the purposes of a government department or a person who serves (or served) in the naval, military or air forces of the Crown;
The part of the definition of “employee” following the word “department” was added by the Armed Forces Act 1981 (c.55), section 22.
|“employer” in relation to an employee, means the person by whom the employee is or was employed;|
|“enactment” includes an Act of Tynwald;|
The definition of “enactment” was added by the Patents Act 1977 (Isle of Man) (Variation) Order 1990. This Order was revoked by the Patents Act 1977 (Isle of Man) Order 2003 (S.I. 2003 No. 1249), which re-inserted this definition into the Patents Act.
|“European Patent Convention” means the Convention on the Grant of European Patents, “European patent” means a patent granted under that convention, “European patent (UK)” means a European patent designating the United Kingdom, “European Patent Bulletin” means the bulletin of that name published under the convention, and “European Patent Office” means the office of that name established by that convention;|
|“exclusive licence” means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and “exclusive licensee” and “non-exclusive licence” shall be construed accordingly;|
|“filing fee” means the fee prescribed for the purposes of section 14|
s.14(1)(b) s.89A(3) are also relevant
|“formal requirements” means those requirements designated as such by rules made for the purposes of section 15A above;|
The formal requirements are set out in r.25 (see 17.07).
|“international application for a patent” means an application made under the Patent Co operation Treaty;|
“Patent Co-operation Treaty” is defined later in subsection (1), see below.
|“International Bureau” means the secretariat of the World Intellectual Property Organization established by a convention signed at Stockholm on 14 July 1967;|
|“international exhibition” means an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions or falling within the terms of any subsequent treaty or convention replacing that convention;|
“Convention on International Exhibitions” is defined earlier in subsection (1),
see above. See also 2.40-41.
|“inventor” has the meaning assigned to it by section 7 above;|
|“journal” has the meaning assigned to it by section 123 (6) above;|
|“mortgage”, when used as a noun, includes a charge for securing money or money’s worth and, when used as a verb, shall be construed accordingly;|
|“1949 Act” means the Patents Act 1949;|
|“patent” means a patent under this Act;|
s.86(4) is also relevant
Thus the provisions of the Act apply only to “patents” granted, or applications for “patents” filed, under the Act except where there is provision to the contrary. There are such exceptions making parts of the Act applicable in the cases of 1949 Act patents and applications, in accordance with s.127 and Schedules 2 and 4 (see 127.06-07 and 127.10); European patents (UK), in accordance with s.77 (see 77.03 et seq); applications for European patents (UK), in accordance with s.78 (see 78.05); and international applications for patents (UK), in accordance with s.89 (see 89.05 et seq). However, the provisions of the Act are not applicable to Community patents.
|“Patent Co-operation Treaty” means the treaty of that name signed at Washington on 19 June 1970;|
|“patented invention” means an invention for which a patent is granted and “patented process” shall be construed accordingly;|
|“patented product” means a product which is a patented invention or, in relation to a patented process, a product obtained directly by means of the process or to which the process has been applied;|
|“prescribed” and “rules” have the meanings assigned to them by section 123 above;|
|“priority date” means the date determined as such under section 5 above;|
See 5.03 et seq.
|“published” means made available to the public (whether in the United Kingdom or elsewhere) and a document shall be taken to be published under any provision of this Act if it can be inspected as of right at any place in the United Kingdom by members of the public, whether on payment of a fee or not; and “republished” shall be construed accordingly;|
Thus an application laid open to public inspection in the Office (see 16.03) has been “published”. Similarly, documents relating to an application and available to inspection under s.118(1) are therefore “published” and thus form part of s.2(2) art.
|“register” and cognate expressions have the meanings assigned to them by section 32 above;|
See the chapter on s.32.
|“relevant convention court”, in relation to any proceedings under the European Patent Convention, or the Patent Co-operation Treaty, means that court or other body which under that convention or treaty has jurisdiction over those proceedings, including (where it has such jurisdiction) any department of the European Patent Office;|
“European Patent Convention” “European Patent Office”, and “Patent Co operation Treaty” are defined earlier in subsection (1), see above. The “relevant convention court” appears to include a national office acting in its capacity as a receiving office under the appropriate convention or treaty. However, it does not include a national office, e.g. that of the USA, processing an international application which was made under the PCT but has entered its national phase before that office and is proceeding under that national law instead of under the treaty (Sonic Tape PLC’s Patent  RPC 251).
“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;
It was held in Hartington Conway Ltd’s Patent Applications  RPC 6 that the term “right”, in relation to an application, encompassed not only a right in relation to an existing application, but also a right to file an application for grant of a patent (see 30.05 and 30.08).
“search fee” means the fee prescribed for the purposes of section 17(1) above;
See 17.02-06. The definition of “search fee” was amended by the CDP Act to make it clear that this term alludes to the fee for a preliminary examination and search, and not to the fee for a supplementary search under s.17(8) and s.18(1A).
|“services of the Crown” and “use for the services of the Crown” have the meanings assigned to them by section 56(2) above, including, as respects any period of emergency within the meaning of section 59 above, the meanings assigned to them by the said section 59.|
See the chapters on ss.56 and 59.
|Rules may provide for stating in the journal that an exhibition falls within the definition of international exhibition in subsection (1) above and any such statement shall be conclusive evidence that the exhibition falls within that definition.|
|For the purposes of this Act matter shall be taken to have been disclosed in any relevant application within the meaning of section 5 above or in the specification of a patent if it was either claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or specification.|
See 5.23-5.25 with regard to disclosure in an earlier relevant application from which priority is claimed. For the meaning of “relevant application”, see 5.30. The term “disclaimer” was held by the Patents Court in Secretary of State for Education and Skills v Frontline Technology  EWHC 37 (Ch) to relate to disclaimers relating to accidental anticipations. In joined cases G1/03 and G2/03 of the EPO Enlarged Board of Appeal, followed in M-Systems Flash Disk Pioneers Ltd v Trek Technology (Singapore) Pte Ltd BL O/318/06, the term “disclaimer” was further held to relate to delimiting a claim against anticipations under s2(3) and subject matter excluded from patentability for non-technical reasons.
|References in this Act to an application for a patent, as filed, are references to such an application in the state it was on the date of filing.|
|An international application for a patent is not, by reason of being treated by virtue of the European Patent Convention as an application for a European patent (UK), to be treated also as an international application for a patent (UK).|
PCT, r.4.9(a) are also relevant
Subsection (4A) was inserted by the Patents Act 2004 and replaced section 89(4). An international application under the PCT automatically designates all contracting states and regions of the PCT on filing. However, if the UK designation on an international application is later withdrawn, that application cannot be considered to be an international application for a patent (UK) on the basis that the EP(UK) designation remains.
|References in this Act to an application for a patent being published are references to its being published under section 16 above.|
|References in this Act to the amendment of a patent or its specification (whether under this Act or by the European Patent Office) include, in particular, limitation of the claims (as interpreted by the description and any drawings referred to in the description or claims).|
This section glosses references to amendment wherever they appear in the 1977 Act. However, this only applies to amendment of a patent, and so does not include references to amendment of a patent application. The paragraph makes it clear that amendment of a patent includes an amendment which limits the scope of the claims – and so limits the protection afforded by the patent. A limitation of the claims may be made under the provisions of this Act or, in the case of a European patent (UK), the claims may be limited at the European Patent Office (under the new procedure introduced by Article 138(3) EPC).
|References in this Act to any of the following conventions, that is to say
(a) The European Patent Convention;
(b) The Community Patent Convention;
(c) The Patent Co-operation Treaty;
are references to that convention or any other international convention or agreement replacing it, as amended or supplemented by any convention or international agreement (including in either case any protocol or annex), or in accordance with the terms of any such convention or agreement, and include references to any instrument made under any such convention or agreement.
EPC a.33 is also relevant
The Administrative Council of the EPO has from time to time amended the Implementing Regulations and the Rules relating to Fees under the EPC. The PCT was amended on 28 September 1979 and modified on 3 February 1984, and the Regulations including the Schedule of Fees under the treaty have been amended on several occasions.
|Whereas by a resolution made on the signature of the Community Patent Convention the governments of|
|the member states of the European Economic Community resolved to adjust their laws relating to patents so as (among other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty, it is hereby declared that the following provisions of this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6),37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, 100 and 125, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply.|
In the resolution, the governmental signatories recognised that differences between national laws and the provisions of the CPC would entail a duality of standards in patent laws in the contracting states and decided to adjust their national laws to permit ratification of the Strasbourg Convention on the unification of certain points of substantive law on patents for invention and to bring their laws into conformity as far as practical with corresponding provisions of the EPC, CPC and PCT. It would also be anomalous if the provisions of patentability and interpretation differed between the EPC which is applicable to applications for European patents (UK) and to European patents (UK) during the opposition period and our national law which applies to European patents (UK) after grant. Similarly conformity with many other aspects of the EPC and with the PCT is desirable.
The particular provisions of the EPC, CPC and PCT corresponding to the sections of the Act specified in s.130(7) are identified in the chapters relating to those sections. When applying s.130(7) to those sections, the principle of construction quoted by Lord Diplock in The Jade  1 All ER 920, 924 (not a patent case) should be followed. He stated that “As the Act was passed to enable Her Majesty’s Government to give effect to the obligations in international law which it would assume on ratifying the convention …. if there be any difference between the language of the statutory provision and that of the corresponding provisions of the Convention, the Statutory language should be construed in the same sense as that of the Convention if the words of the Statute are reasonably capable of bearing that meaning”. Furthermore, in Merrell Dow Pharmaceuticals Inc. v H.N. Norton & Co Ltd  RPC 76, the House of Lords held that in construing a section of the Patents Act 1977 said by section 130(7) to have, as nearly as practicable, the same effects as the corresponding provisions of the European Patent Convention, the United Kingdom courts must have regard to the decisions of the EPO. Lord Hoffmann said (at page 82): “These decisions are not strictly binding upon the courts in the United Kingdom but they are of great persuasive authority; first, because they are decisions of expert courts (the Boards of Appeal and Enlarged Board of Appeal of the EPO) involved daily in the administration of the EPC, and secondly, because it would be highly undesirable for the provisions for the EPC to be construed differently in the EPO from the way they are interpreted in the national courts of a contracting state”. In the judgment given by Jacob LJ in Actavis UK Ltd v Merck  EWCA Civ 444, it was held that the Court of Appeal can (but is not bound to) depart from its own precedent if it is satisfied that the EPO Boards of Appeal have formed a settled view of European Patent law which is inconsistent with the Court of Appeal earlier decision. Generally the Court of Appeal will follow settled view of the EPO (see para 107 of the decision).
See also the discussion in 0.08-09.
However Lord Diplock himself stated in E’s Applications  RPC at page 251 that resort to the PCT was not permitted under the principle of construction enunciated in The Jade if the wording of the Act is incapable of any other meaning.
When construing the EPC, CPC or PCT it is legitimate to consider the intention behind any provision as indicated in the papers of the conference resulting in the Convention or Treaty. Following the judgment of the House of Lords in Pepper v Hart  3 WLR 1032, the rule excluding reference to Parliamentary material as an aid to statutory construction has been relaxed so as to permit such references where (a) legislation was ambiguous or obscure or led to absurdity; (b) the material relied upon consisted of one or more statements by a minister or other promoter of the Bill together if necessary with such other Parliamentary material as was necessary to understand such statements and their effect and (c) the statements were clear.
The Patent Law Treaty (PLT) was signed by the United Kingdom in 2000 and entered into force for the United Kingdom on 22 March 2006. It is by nature a different type of treaty than those listed in section 130(7), being essentially a minimum standards treaty setting out provisions aimed at providing patent applicants with certain flexibilities. However in [Abaco Machines (Australasia) Pty Ltd’s Application  EWHC 347 (Pat)], which concerned a request to make a late declaration of priority under section 5(2B), Lewison J commented that the PLT is at least part of the background against which section 5 should be viewed. He agreed in principle with the submission put to him that section 5 of the Act should be interpreted in the light of the PLT itself. He then went on to assess the facts of that case using the language of the PLT, although he did also confirm that this was consistent with the language of section 5. Accordingly the Patent Law Treaty may be of relevance when interpreting provisions in the Act or rules that were inspired by this Treaty.
|Part I of the Arbitration Act 1996 shall not apply to any proceedings before the comptroller under this Act.|
The words “Part I of the Arbitration Act 1996” were substituted for “The Arbitration Act 1950” by Schedule III of the Arbitration Act 1996.
|Except so far as the context otherwise requires, any reference in this Act to any enactment shall be construed as a reference to that enactment as amended or extended by or under any other enactment, including this Act.|