Commentary Schedule: minor amendments to the Patents Act 1977 Paragraph 1: Patent applications in or for WTO members
75.This provision removes uncertainty created when the 1977 Act was amended in 1999. It does not affect substantive patent law.
76.Section 5 of the 1977 Act concerns the international system for establishing a “priority date” of an invention for which patent protection is sought. The date that a patent application is filed in a first country establishes that invention’s “priority date”, and later patent applications (for the same invention) filed in other countries can then be treated as having been filed on that same priority date. Generally speaking, those later applications must be filed within 12 months of the first filing. This system was established by the Paris Convention of 1883, and each country to which it applies is called a “convention country” in section 5 of the 1977 Act.
77.The amendment made in 1999 (by SI 1999/1899) was intended to allow a country who joined the World Trade Organisation (“WTO”) to be treated automatically as a convention country for the purposes of section 5. However, this objective was not achieved by the insertion of section 5(6) of the 1977 Act, and it has remained necessary for an Order in Council to be made when a country joins the WTO. To remove this necessity, new section 5(5)(aa) provides that a patent application filed in a WTO country is of the same status, for priority purposes, as a patent application filed in the UK or any other convention country.