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Patents and Designs Act 1932

As Enacted Cited authorities 2 Cited in Amendments 3 Related
Vincent
JurisdictionUK Non-devolved
Citation1932 c. 32


Patents and Designs Act, 1932

(22 & 23 Geo. 5.) CHAPTER 32.

An Act to amend the Patents and Designs Acts, 1907 to 1928.

[12th July 1932]

Be it enacted by the King's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:—

S-1 Provisional protection.

1 Provisional protection.

1. For section four of the Patents and Designs Act, 1907(hereinafter referred to as ‘the principal Act’), the following section shall be substituted:—

S-4

‘4. An invention may, during the period between the date of an application for a patent therefor and the date of sealing a patent on that application, be used and published without prejudice to that patent, and such protection from the consequences of use and publication is in this Act referred to as provisional protection.

In this section the expression 'date of an application for a patent' means, as respects an application which is post-dated or ante-dated under this Act, the date to which the application is so post-dated or ante-dated, and means, as respects any other application, the date on which it is actually made.’

S-2 Amendments of s. 7 of principal Act and provision as to anticipation in documents other than British specifications.

2 Amendments of s. 7 of principal Act and provision as to anticipation in documents other than British specifications.

(1) In the proviso to subsection (4) of section seven of the principal Act there shall be inserted after the word ‘claimed’ where that word occurs for the second time the words ‘or wholly and specifically described,’; and after that subsection the following subsection shall be inserted:—

(5) If it is within the knowledge of the comptroller that the invention claimed has been made available to the public by publication in the United Kingdom, before the date which the patent applied for would bear if granted, in any document (other than a United Kingdom specification or a specification describing the invention for the purposes of an application for protection made in any country outside the United Kingdom more than fifty years next before that date, or any abridgment of, or extract from, any such specification published under the authority of the comptroller or of the Government of any country outside the United Kingdom), the provisions of subsections (2), (3) and (4) of this section shall apply in relation to a claim or description of the invention in that document in like manner as those provisions apply in relation to a description thereof in a prior specification to which the investigation has extended.’

(2) In subsection (5) of the said section, for the words ‘law officer’ there shall be substituted the words ‘Appeal Tribunal.’

S-3 Grounds for revocation of patent.

3 Grounds for revocation of patent.

3. In section twenty-five of the principal Act the following subsections shall be substituted for subsection (2):—

(2) A patent may be revoked upon any of the following grounds,—

(a ) that the invention was the subject of a valid prior grant;

(b ) that the true and first inventor was not the applicant or one of the applicants for the patent;

(c ) that the patent was obtained in fraud of rights of the person applying for the order or of any person under or through whom he claims;

(d ) that the invention is not a manner of new manufacture the subject of letters patent and grant of privilege within section six of the Statute of Monopolies ;

(e ) subject as in this subsection provided, that the invention is not new;

(f ) that the invention is obvious and does not involve any inventive step having regard to what was known or used prior to the date of the patent;

(g ) that the invention is not useful;

(h ) that the complete specification does not sufficiently and fairly describe and ascertain the nature of the invention and the manner in which the invention is to be performed;

(i ) that the complete specification does not sufficiently and clearly ascertain the scope of the monopoly claimed;

(j ) that the complete specification does not disclose the best method of performance of the invention known to the applicant for the patent at the time when the specification was left at the Patent Office:

(k ) that the patent was obtained on a false suggestion or representation;

(l ) that the invention claimed in the complete specification is not the same as that contained in the provisional specification, and that the invention claimed, so far as it is not contained in the provisional specification was not new at the date when the complete specification was filed, or the true and first inventor was not the applicant, or one of the applicants, for the patent, or, in the case of an application made under section ninety-one of this Act, that the invention claimed in the complete specification is not the same as that for which protection has been applied for in the foreign state, or part of His Majesty's dominions outside the United Kingdom;

(m ) that the primary or intended use or exercise of the invention is contrary to law;

(n ) that the patentee has contravened or has not complied with the conditions contained in the patent;

(o ) that prior to the date of the patent the invention was secretly worked on a commercial scale and not merely by way of reasonable trial or experiment in the United Kingdom by the patentee or others, not being a Government department or the agents or contractors of, or other person authorised in that behalf by, a Government department;

(p ) that in the case of inventions relating to substances prepared or produced by chemical processes or intended for food or medicine the specification includes claims which under section thirty-eight A of this Act cannot lawfully be made; or

upon any other ground upon which a patent might, immediately before the first day of January one thousand eight hundred and eighty-four, have been repealed by scire facias:

Provided that this subsection shall have effect, as respects the ground of revocation specified in paragraph (e ) thereof, subject to the provisions of subsection (1) of section fifteen, subsection (12) of section thirty, section forty-one and section forty-five of this Act.

(3) Every ground on which a patent may be revoked shall be available as a ground of defence in an action for infringement of a patent.’

S-4 Provisions as to unfair exercise of process patent.

4 Provisions as to unfair exercise of process patent.

4. In section twenty-seven of the principal Act there shall be inserted:

a ) In subsection (2), after paragraph (e ), the following paragraph:—

‘(f ) If it is shown that the existence of the patent, being a patent for an invention relating to a process involving the use of materials not protected by the patent or for an invention relating to a substance produced by such a process, has been utilised by the patentee so as unfairly to prejudice in the United Kingdom the manufacture, use or sale of any such materials;’

and

b ) In subsection (3), after paragraph (c ), the following paragraph

‘(d ) If the comptroller is satisfied that the monopoly rights have been abused in the circumstances specified in paragraph (f ) of the last foregoing subsection, he may order the grant of licences to the applicant and to such of his customers and containing such terms as the comptroller may think expedient.’

S-5 Power of court in infringement action as regards relief in respect of particular claims in patents.

5 Power of court in infringement action as regards relief in respect of particular claims in patents.

(1) In section thirty-two of the principal Act the words ‘if entitled to present a petition to the court for the revocation of the patent’ and the word ‘such’ shall be omitted.

(2) For section thirty-two A of the principal Act, the following section shall be substituted:—

S-32A

32A

‘32a . Where the court in any action for infringement of a patent finds that any claim in claim in the specification, in respect of which infringement is alleged, is valid, but that any other claim therein is invalid, then, notwithstanding anything in section twenty-three of this Act—

a ) if the patentee furnishes proof to the satisfaction of the court that the invalid claim was framed in good faith and with reasonable skill and knowledge, or if the patent is dated before the commencement of the Patents and Designs Act, 1932, the court shall, subject to its discretion as to costs and as to the date from which damages should be reckoned, and to such terms as to amendment of the specification as it may deem desirable, grant relief in respect of any valid claim which is infringed without regard to the invalidity of any other claim in the specification and in exercising such discretion the court may take into consideration the conduct of the parties in inserting the invalid claim in the specification or permitting that claim to remain there;
b ) if the patentee does not furnish proof as aforesaid, and the patent, is dated after the commencement of the Patents and Designs Act, 1932, the court shall not grant any relief by way of damages or costs, but may grant such other relief in respect of any valid claim which is infringed as to the court seems just, and may impose such terms as to amendment of the specification as a condition of granting any such relief as it may deem desirable
c ) if a counter-claim for revocation of the patent has been made in the action on the ground of the invalidity of any claim in the specification, the court may postpone the operation of any order made thereon during such time as may be requisite for enabling the patentee to effect any amendment of the specification pursuant to terms imposed upon him and may attach any such other condition to any order to be made on the counter-claim as the court may deem desirable.’
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