Section 23: Restrictions on applications abroad by United Kingdom residents
Sections (23.01 - 23.08) last updated: April 2009.
|Subject to the following provisions of this section, no person resident in the United Kingdom shall, without written authority granted by the comptroller, file or cause to be filed outside the United Kingdom an application for a patent for an invention if subsection (1A) below applies to that application, unless -
(a) an application for a patent for the same invention has been filed in the Patent Office (whether before, on or after the appointed day) not less than six weeks before the application outside the United Kingdom; and
(b) either no directions have been given under section 22 above in relation to the application in the United Kingdom or all such directions have been revoked.
|This subsection applies to an application if -
(a) the application contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or
(b) the application contains information the publication of which might be prejudicial to the safety of the public.
S.23 refers to residence and not to citizenship or nationality. If a person normally resident in the United Kingdom lives abroad for a period of several months, he will be regarded for the purposes of s.23 as having ceased to be a United Kingdom resident during this period. On the other hand, a person normally resident abroad but temporarily resident in the United Kingdom or a person who is not a United Kingdom citizen but has a residential address here is considered to be subject to s.23. Any United Kingdom resident temporarily travelling abroad is considered to be bound by the requirements of s.23 during his travels. Furthermore a United Kingdom resident employed by a foreign organisation is subject to s.23 irrespective of any term of his employment contract requiring an initial foreign filing of a patent application relating to an invention arising out of such employment. Additionally even when a United Kingdom resident is a joint inventor with a foreign resident or seeks to be a joint applicant therewith in relation to a foreign application, the requirements of s.23 should be complied with.
According to the Interpretation Act 1978, “person” includes a body of persons corporate or unincorporated. Thus the “person” referred to in s.23(1) includes not only the inventor who must be a natural person or persons, but also the applicant which could be a company. The words “file or cause to be filed” mean that this person could also be an agent responsible for preparing a patent application for first filing outside the United Kingdom.
Subsection (1A) was inserted by the Patents Act 2004 and came into force on 1 January 2005. The strictures of s.23(1) only apply to applications that contain information relating to military technology or other information whose publication might be prejudicial to national security or the safety of the public. A UK resident who wishes to file such an application abroad must therefore either file an application at the Office and then wait six weeks (after which, provided no direction has been given under s.22 (see 22.03), applications may be made abroad without further formality) or else must have written permission from the comptroller. Persons wanting such permission should apply direct to Room G.R70, Cardiff Road, Newport, South Wales, NP10 8QQ either by letter or, if more urgent attention is required, personally. A notice drawing attention to these matters appears prominently in every issue of the Patents Journal.
An offence may be committed if, notwithstanding that an application has been filed at the Office which is not the subject of prohibition directions (whether because it did not attract them or they have been revoked), a subsequent application is made abroad based upon but containing matter not disclosed in the application as filed at the Office. It should be ensured, therefore, that any such subsequent application does not contain additional descriptive matter where s.23(1A) applies without written prior authority from the comptroller (see 22.16).
Even when an application is the subject of a prohibition direction it may be permitted to form the basis of applications in foreign countries having reciprocal arrangements with this country. An example of such an arrangement is the NATO “Agreement for the mutual safeguarding of secrecy of inventions relating to defence and for which applications for patents have been made” (Cmnd 1595). Details of the very special procedures for such conversions and foreign filings will be provided after permission has been granted to file abroad. Such requests should be sent directly to Room G.R70, Cardiff Road, Newport, South Wales, NP10 8QQ.
|Subsection (1) above does not apply to an application for a patent for an invention for which an application for a patent has first been filed (whether before or after the appointed day) in a country outside the United Kingdom by a person resident outside the United Kingdom.|
Thus where an application has been filed abroad by a person (see 23.01.1) who is not a UK resident, further applications for the same invention may be filed in other countries by a UK resident without the prior approval of the comptroller.
|A person who files or causes to be filed an application for the grant of a patent in contravention of this section shall be liable -
(a) on summary conviction, to a fine not exceeding the prescribed sum; or
(b) on conviction on indictment, to imprisonment for a term not exceeding two years or a fine, or both.
|A person is liable under subsection (3) above only if -
(a) he knows that filing the application, or causing it to be filed, would contravene this section; or
(b) he is reckless as to whether filing the application, or causing it to be filed,would contravene this section.
It should be noted that a failure to comply with the provisions of s.23(1) (or with a direction given under s.22) is a criminal offence. However, s.23(3A) limits culpability of the offence to where a person knows that filing an application or causing it to be filed would contravene s.23, or where he is reckless as to whether filing the application or causing it to be filed would contravene this section. Therefore, a person acting in good faith who mistakenly believes that the restrictions in s.23 do not apply to a patent application will not be guilty of a criminal offence.
The maximum fine on summary conviction corresponds to that applicable under s.22(9) (see 22.26.1. The reference to “indictment” in (b) is treated as a reference to “information” for the Isle of Man only (S.I. 2003 No. 1249).
|In this section -
(a) any reference to an application for a patent includes a reference to an application for other protection for an invention;
(b) any reference to either kind of application is a reference to an application under this Act, under the law of any country other than the United Kingdom or under any treaty or international convention to which the United Kingdom is a party.
Thus no application for a utility model or any other form of protection of an invention may be sought abroad, either under the laws of another country or under the EPC or the PCT, without first complying with the requirements of s.23(1) (see 23.02). UK residents wishing to file applications under the EPC or PCT without first filing a UK application can meet the requirements of s.23(1) by filing their applications at the Office in its capacity as Receiving Office under these treaties. If, however, they wish to file at any other Receiving Office and s.23(1A) applies to the application, they must seek the prior written approval of the comptroller.