Further provisions of the Patents Act 2004 in force

As of 1 October 2005 non-binding opinions as to validity or infringement of a UK patent may be requested from the UK patent controller.

The Patents Act 2004 (Commencement No 3 and Transitional Provisions) Order 2005 came into force on 1 October 2005.  It brings into force a number of provisions of the Patents Act 2004, following the first two commencement orders.  Those provisions amend a number of sections of the Patents Act 1977.

Certain prescribed time periods in sections 25, 28 and 46 (renewal fees, restoration and licences of right) are amended so that they always end at the end of a month.

In section 36(3), in addition to being forbidden from granting licences or entering into assignments without the consent of the other co-owners, a co-owner may not amend the specification of the patent, apply for such an amendment to be allowed, or for the patent to be revoked.

Non-binding opinions as to validity or infringement may be requested from the comptroller by the proprietor of the patent or by any other person.  Rules will provide for the proprietor or an exclusive licensee to be able to apply for a review of either type of opinion.  The opinions of the comptroller may be made publicly available.

The provision enabling the comptroller to make an order for security for costs in section 107(4) has been amended, such that the order may be made against any party to proceedings before him if the prescribed conditions are met and he is satisfied that it is just to do so, having regard to all the circumstances of the case.

A number of minor and consequential amendments are brought into force by Schedule 2, and Schedule 3 repeals a number of sections.

Edward Vickers

Taylor Wessing London