Schedule 1paragraph 9, sub-paragraph (4) Section 6 – Remedies in entitlement proceedings
47.In proceedings under existing section 8 of the 1977 Act concerning entitlement to a patent application, one possibility is that the patent application in question will have been withdrawn, or refused under another provision of the 1977 Act, before entitlement has been finally determined. In these circumstances, the comptroller may allow the successful party (if they are not the original patent applicant) to file a new patent application, replacing the original one. The new application will be treated as if it were filed on the filing date of the original application – but only if the original application was published under section 16 before it was refused or withdrawn. If the original application was never published under section 16, the new application must take its own date of filing.
48.Subsection (1) amends section 8(3)(c) to allow the new application to be back-dated, regardless of whether the original application was published or not. Thus, where the original application was never published, but the original applicant chose to disclose the contents of that application, this no longer destroys the novelty of the successful party’s later application. (Paragraph 5 of Schedule 2 makes an equivalent change to section 12, which concerns entitlement disputes over European and international patent applications).
49.Subsection (2) amends section 11 to extend the protection available to the original applicant and licensees in the circumstances where a new application has been filed by an applicant who has taken advantage of the rights given by section 8(3). The original applicant and any licensees who have begun to work the invention in good faith are entitled, under existing section 11, to a licence from the successful party to continue to do so. The amendment to section 11 permits them to obtain a licence from the new applicant in respect of the new application.
50.Subsections (3) and (4) ensure that any such licence is granted for a reasonable period and on reasonable terms, which in the case of dispute may on request be settled by the comptroller.
51.These amendments also ensure consistency with the remedies available in proceedings concerning entitlement to granted patents under sections 37 and 38. (Paragraph 10 of Schedule 2 makes an amendment to section 38(3) and (5) to clarify that those provisions apply both when the successful party has opted to continue with the existing patent and when they have chosen to file a fresh application.)