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1 1992

PATENTS ACT, 1992

PART VI

Property in Patent Applications and Patents Contract Conditions

Nature of patent applications and patents.

79. —Subject to section 80 , the rules of law applicable to the ownership and devolution of personal property shall apply in relation to patent applications and patents as they apply in relation to other choses in action.

Co-ownership of patent applications and patents.

80. —(1) Where a patent is applied for by, or is granted to, two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in common in the patent application or patent, as the case may be.

(2) Subject to the provisions of this section where two or more persons are entered in the register as applicants for or proprietors of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to do in respect of the invention concerned for his own benefit without accounting to the others any act which would, apart from this subsection, amount to an infringement of the patent application or patent concerned.

(3) Subject to any agreement for the time being in force, a licence under a patent or a published patent application shall not be granted, and a share in a patent or in any such application shall not be assigned, except with the consent of all persons, other than the licensor or assignor, who are entered in the register as applicants for or proprietors of the patent.

(4) Subject to the provisions of this section, where two or more persons are entered in the register as applicants for or proprietors of a patent, any other person may supply one of those persons with means, relating to an essential element of the relevant invention, for putting the invention into effect, and the supply of those means by virtue of this section shall not amount to an infringement of the patent application or patent.

(5) Where a product is sold by one of two or more persons who are entered in the register as applicants for or proprietors of a patent in respect of the product, the purchaser and any person claiming through him shall be entitled to deal with it in the same manner as if the product had been sold by a sole applicant for or sole proprietor of a patent relating to the product.

(6) Nothing in subsection (1) or (2) shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

Determination of entitlement to patents, etc.

81. —(1) Any person may refer to the Court the question whether, by operation of law or otherwise, he is entitled (alone or jointly with any other person) to any patent granted or to be granted in the State for an invention, and the Court may make such order (including an order of apportionment) for giving effect to its decision as it considers expedient.

(2) The Court on a reference under this section, or in the exercise of any declaratory or other jurisdiction, shall not determine a question whether a patent was granted to a person not entitled to be granted the patent if the reference was made or the action was commenced after the end of the period of two years beginning on the date of the grant, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer or assignment of the patent to him, that he was not entitled to the patent.

(3) An order under this section shall not be made so as to affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

(4) When the Court finds on a reference under this section, or in the exercise of any declaratory or other jurisdiction, that a patent was granted to a person who was not entitled to be granted that patent (whether alone or with other persons) and on an application made under section 57 the Court or Controller makes an order by reason of the persons not being so entitled for the conditional or unconditional revocation of the patent, the Court or Controller may order that the person by whom the application was made or his successor in title may make a new patent application—

(a) in the case of unconditional revocation, for the whole of the matter comprised in the specification of that patent, and

(b) in the case of conditional revocation, for the matter which in the opinion of the Court or the Controller should be excluded from the specification by amendment under section 38 ,

and when such a new application is made, it shall be treated as having been filed on the date of filing of the application for the patent to which the reference or other proceedings relate and shall have the benefit of any right to priority.

(5) A new patent application shall not be allowed to be filed under subsection (4) in respect of subject-matter which extends beyond the content of the original patent application.

Effect of change of proprietorship.

82. —(1) Where there is a complete change of proprietorship of a patent as a result of an order of the Court transferring the patent to one or more persons none of whom immediately before the transfer had a proprietary interest in the patent (on the ground that the patent was granted to a person who was not entitled to be granted the patent), then, subject to subsection (2), licences and other rights which, as regards the relevant patent, were in force immediately before such transfer shall lapse upon the entry in the register of the name of the person or persons entitled to the patent.

(2) Where an order referred to in subsection (1) is made, the Controller shall notify the person or persons registered as proprietor or proprietors of the relevant patent and their licensees (if any) of whom he is aware, of the making of the order, and where the proprietor or proprietors or such a licensee acting in good faith has, before the commencement of the proceedings in which the order is made, used the invention within the State or made effective and serious preparations to do so, he may continue such use if, but only if, he requests, within the period prescribed, a non-exclusive licence under the patent from the new proprietor whose name is entered in the register.

(3) A licence granted under subsection (2) shall be for a reasonable period and upon reasonable terms and failing agreement between the parties concerned the terms of the licence shall be determined by the Controller.

Avoidance of certain conditions in contracts.

83. —(1) It shall not be lawful to include in any contract in relation to the sale or lease of, or licence to use or work, any product or process which is the subject of a patent application or patent a condition which, directly or indirectly, would—

(a) prevent or restrict a party to the contract from using any product or process, whether or not the subject of a patent application or patent, which in either case is supplied or owned by any person other than a party to the contract or his nominee;

(b) require any such party to acquire from any other such party, or his nominee, any product which is not the subject of a patent application or a patent;

and any such condition, if so included, shall be null and void; provided that this subsection shall not apply if—

(i) the party seeking to rely on the condition proves that at the time the contract was entered into the party which the condition purports to bind had the option of purchasing the relevant product or obtaining a lease or licence in relation thereto on reasonable terms, without the conditions described in paragraphs (a) and (b) of this subsection; and

(ii) the contract entitles the party to the contract which the condition purports to bind to relieve himself of his liability to observe the condition on giving to the other party three months notice in writing and on the payment of compensation for such relief, in the case of a purchase, of such sum, or in the case of a lease or licence, of such rent or royalty for the residue of the term of the contract, as may be fixed by an arbitrator appointed by the Minister.

(2) In any proceedings under this Act no person shall be estopped from applying for or obtaining relief by reason only of any admission made by him as to the reasonableness of the terms offered to him under paragraph (i) of the proviso to subsection (1).

(3) Any contract for or relating to a lease of or a licence to use or work any product or process which, at the time when the contract is made, is the subject of one or more patent applications or one or more patents may, at any time after the patent or all of the patents, as may be appropriate, by which the product or process was protected or the patent or patents, as may be appropriate, resulting from such application or applications, has or have ceased to be in force, be determined by either party to the contract on giving three months notice in writing to the other party to the contract notwithstanding anything to the contrary contained in that or in any other contract.

(4) The inclusion by the proprietor of or applicant for a patent in a contract of any condition which by virtue of this section is null and void shall be available as a defence to an action for infringement of the patent or application to which the contract relates brought while that contract is in force.

(5) Nothing in this section shall—

(a) affect any condition in a contract whereby a person is prohibited from selling any goods other than those of a particular person; or

(b) be construed as validating any contract which would, apart from this section, be invalid; or

(c) affect any right of determining a contract or conditions in a contract exercisable independently of this section; or

(d) affect any condition in a contract for the lease of or licence to use a product which is the subject of a patent application or patent, whereby a party to the contract reserves to himself or his nominees the right to supply such new parts of the product as may be required to put or keep it in repair.