Posted on 23/10/2014

UK Patent Law Changes on 1st October 2014

There have been a number of changes to the UK Patent Law, including with regard to Web marking, Experimental use exception, and expansion of the Intellectual Property Office’s Patent Opinions Service.

Web marking

Previously, it was necessary to market a product with the word “patent” or “patented” together with the number of the patent, in order to prevent an infringer claiming to be an “innocent infringer” (someone who can prove that they were not aware of the existence of the patent, and had no reasonable grounds for supposing that the patent existed, at the time of the infringement) and thereby avoiding financial remedies in an infringement action.

As from 1st October 2014, a patent holder has the option to mark their patented product with a web address in order to benefit in the same way.  The web address must be of a webpage which clearly sets out the patent number(s) relevant to that product.

In an infringement action, the courts will decide if the notice provided by the webpage is sufficient.

Full guidance on web marking can be found here.

We can provide further advice on how best to comply with the requirements but in brief the following points should be noted:

  • The webpage should provide clear and accessible information making it easy for the public to ascertain which patents apply to the product
  • The product should be clearly identified, for example by including any relevant model numbers and variants
  • Provding the web address of the home page of a company website is unlikely to suffice – uless the home page includes a clear association between the product and the relevant patent
  • The webpage should be kept up-to-date to reflect changes to the patent details for each product.
  • Use of QR codes by themselves will not provide all members of the public with notice of relevant patent rights, though they can be provided on a product in addition to the patent number(s) or a web address.

This change will reduce the burden and costs for patent holders and will make it easier for others to access up-to-date patent information in relation to a product.

Patents and the Experimental Use Exception – Changes to Section 60(5) of the UK Patents Act

Changes to the experimental use exception, otherwise referred to as the research exception, in section 60(5)(b) of the Patents Act were introduced on 1st October 2014.  These changes are intended to allow companies to use a patented product, when carrying out testing or other activity to provide information to the regulatory authorities who decide whether a drug should be given a marketing authorisation.

These new provisions do not extent to commercial activities and do not apply retrospectivey to actives carries out before 1st October 2014.

Further information on these changes can be found here.

Expansion of the UK Intellectual Property Office Patent Opinions Service

In 2005 the IPO introduced a Patent Opinions Service to provide an alternative and affordable way for businesses to resolve patent disputes.  Previously this service was limited providing opinions on whether or not a patent was infringed by a particular activity and whether or not a patent had the required novelty and inventive step to be a valid patent right.  Now the IPO is able to provide opinions on an additional range of matters, including:

  • whether the invention is capable of industrial application
  • whether the invention relates to matter excluded from patentability
  • whether the specification of the patent discloses the invention clearly and completely enough for it to be performed by a person skilled in the art
  • whether the patent has been amended in an unallowable way to include matter not present in the application as filed
  • whether the protection conferred by the patent has been extended by an amendment which should not have been allowed
  • infringement and validity of a supplementary protection certificate (SPC)

In addition, the IPO will be able to start the process of revoking a patent if they issue an opinion indicating that the patent is not new and inventive.

Further information on the changes to the IPO Patent Opinions Service can be found here.

Contact us today

If you require any further information regarding the changes to patent law and best practice under the new law please contact Simon Church or your usual Wilson Gunn contact.  To contact us click here to complete our contact form and we will come back to you.

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