Commentary Schedule: minor amendments to the Patents Act 1977 Paragraph 2: Assertion of third party rights where application terminated
78.In the event that a patent application is terminated and then subsequently reinstated, the 1977 Act makes it clear that, if a third party started to exploit the invention covered by the patent application in good faith in the period between termination and reinstatement, they may continue to exploit that invention without infringing the provisional rights which are conferred on the patent applicant once a patent application has been published. This is commonly referred to as having “third party rights”.
79.There appear to be two conflicting positions in the 1977 Act on the starting point for these third party rights. Under section 20B(3) of the 1977 Act, someone would be infringing the provisional rights of the patent applicant if they started to work the invention in the period after an application is terminated when it was possible for the patent applicant to request an extension of time to the period the applicant had failed to meet. However, section 20B(4) of the 1977 Act provides third party rights to anyone who started to work the invention in good faith in the period between the patent application being terminated and the reinstatement request being published.
80.This has resulted in an overlap in the period when third party rights are available and the period when working the invention would be considered to infringe the provisional rights of the applicant. A party could be simultaneously liable to infringement under one part of the Act (section 20B(3)) and at the same time entitled to work the invention under another (section 20B(4)), if they started to work the invention in the period when an extension of time was possible.
81.Paragraph 2 clarifies that third party rights do not begin until the end of the period during which the patent applicant can request under the 1977 Act or under the Patents Rules (S.I. 2007/3291) an extension of time to the period the applicant had failed to meet.