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This version of this statute is extracted from the UK Statute Law Database (SLD). It is not necessarily in the form in which it was originally enacted but is a revised version, which means that any subsequent amendments to the text and other effects are incorporated with annotations.
Grant, effect and term of patent
An Act to consolidate certain enactments relating to patents.
[16th December 1949]
C1Act restricted (retrospectively) by 1994 c. 26, s. 106(1), Sch. 4 para. 2(4); S.I. 1994/2550, art. 2
C2 Act extended (8.2.1997) by S.I. 1996/3120, reg. 5
C3Act extended (2. 1. 1993) by S.I. 1992/3091, regs. 1(1),5
C4Functions of Board of Trade and of President of Board of Trade now exercisable concurrently by Secretary of State: S.I. 1970/1537, art. 2(1)
C5Act excluded by British Telecommunications Act 1981 (c. 38, SIF 96), s. 88 Sch. 5 para. 3(3)
I1Act not in force at Royal Assent see s. 107(2); Act wholly in force at 1st January 1950.
C1Ss. 1—10, 11(1)(2), 12, 13, 15—17 restricted by Patents Act 1977 (c. 37), s. 127, Sch. 1 para. 1
(1)An application for a patent for an invention may be made by any of the following persons, that is to say:—
(a)by any person claiming to be the true and first inventor of the invention;
(b)by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
and may be made by that person either alone or jointly with any other person.
(2)Without prejudice to the foregoing provisions of this section, an application for a patent for an invention in respect of which protection has been applied for in a convention country may be made by the person by whom the application for protection was made or by the assignee of that person:
Provided that no application shall be made by virtue of this subsection after the expiration of twelve months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application.
(3)An application for a patent may be made under subsection (1) or subsection (2) of this section by the personal representative of any deceased person who, immediately before his death, was entitled to make such an application.
(4)An application for a patent made by virtue of subsection (2) of this section is in this Act referred to as a convention application.
(1)Every application for a patent shall be made in the prescribed form and shall be filed at the Patent Office in the prescribed manner.
(2)If the application (not being a convention application) is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application or within such period as may be prescribed after the filing of the application a declaration, signed by the person claiming to be the true and first inventor or his personal representative, stating that he assents to the making of the application.
(3)Every application (other than a convention application) shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes him to be the true and first inventor.
(4)Every convention application shall specify the date on which and the convention country in which the application for protection, or the first such application, was made, and shall state that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or any person from whom he derives title.
(5)Where applications for protection have been made in one or more convention countries in respect of two or more inventions which are cognate or of which one is a modification of another, a single convention application may, subject to the provisions of section four of this Act, be made in respect of those inventions at any time within twelve months from the date of the earliest of the said applications for protection:
Provided that the fee payable on the making of any such application shall be the same as if separate applications had been made in respect of each of the said inventions; and the requirements of the last foregoing subsection shall in the case of any such application apply separately to the applications for protection in respect of each of the said inventions.
(1)Every application for a patent (other than a convention application) shall be accompanied by either a complete specification or a provisional specification; and every convention application shall be accompanied by a complete specification.
(2)Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application and if the complete specification is not so filed the application shall be deemed to be abandoned:
Provided that the complete specification may be filed at any time after twelve months but within fifteen months from the date aforesaid if a request to that effect is made to the comptroller and the prescribed fee paid on or before the date on which the specification is filed.
(3)Where two or more applications accompanied by provisional specifications have been filed in respect of inventions which are cognate or of which one is a modification of another, a single complete specification may, subject to the provisions of this and the next following section, be filed in pursuance of those applications, or, if more than one complete specification has been filed, may with the leave of the comptroller be proceeded with in respect of those applications.
(4)Where an application for a patent (not being a convention application) is accompanied by a specification purporting to be a complete specification, the comptroller may, if the applicant so requests at any time before the acceptance of the specification, direct that it shall be treated for the purposes of this Act as a provisional specification, and proceed with the application accordingly.
(5)Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under the last foregoing subsection as a provisional specification, the comptroller may, if the applicant so requests at any time before the acceptance of the complete specification, cancel the provisional specification and post-date the application to the date of filing of the complete specification.
(1)Every specification, whether complete or provisional, shall describe the invention, and shall begin with a title indicating the subject to which the invention relates.
(2)Subject to any rules made by the Board of Trade under this Act, drawings may, and shall if the comptroller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the comptroller otherwise directs, be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3)Every complete specification—
(a)shall particularly describe the invention and the method by which it is to be performed;
(b)shall disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c)shall end with a claim or claims defining the scope of the invention claimed.
(4)The claim or claims of a complete specification must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification.
(5)Rules made by the Board of Trade under this Act may require that in such cases as may be prescribed by the rules, a declaration as to the inventorship of the invention, in such form as may be so prescribed, shall be furnished with the complete specification or within such period as may be so prescribed after the filing of that specification.
(6)Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a convention application, may include claims in respect of developments of or additions to the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a convention country, being developments or additions in respect of which the applicant would be entitled under the provisions of section one of this Act to make a separate application for a patent.
(7)Where a complete specification claims a new substance, the claim shall be construed as not extending to that substance when found in nature.
(1)Every claim of a complete specification shall have effect from the date prescribed by this section in relation to that claim (in this Act referred to as the priority date); and a patent shall not be invalidated by reason only of the publication or use of the invention, so far as claimed in any claim of the complete specification, on or after the priority date of that claim, or by the grant of another patent upon a specification claiming the same invention in a claim of the same or later priority date.
(2)Where the complete specification is filed in pursuance of a single application accompanied by a provisional specification or by a specification which is treated by virtue of a direction under subsection (4) of section three of this Act as a provisional specification, and the claim is fairly based on the matter disclosed in that specification, the priority date of that claim shall be the date of filing of the application.
(3)Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by such specifications as are mentioned in the last foregoing subsection, and the claim is fairly based on the matter disclosed in one of those specifications, the priority date of that claim shall be the date of filing of the application accompanied by that specification.
(4)Where the complete specification is filed in pursuance of a convention application and the claim is fairly based on the matter disclosed in the application for protection in a convention country or, where the convention application is founded upon more than one such application for protection, in one of those applications, the priority date of that claim shall be the date of the relevant application for protection.
(5)Where, under the foregoing provisions of this section, any claim of a complete specification would, but for this provision, have two or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.
(6)In any case to which subsections (2) to (5) of this section do not apply, the priority date of a claim shall be the date of filing of the complete specification.
(1)When the complete specification has been filed in respect of an application for a patent, the application and specification or specifications shall be referred by the comptroller to an examiner.
(2)If the examiner reports that the application or any specification filed in pursuance thereof does not comply with the requirements of this Act or of any rules made by the Board of Trade thereunder, or that there is lawful ground of objection to the grant of a patent in pursuance of the application, the comptroller may either—
(a)refuse to proceed with the application; or
(b)require the application or any such specification as aforesaid to be amended before he proceeds with the application.
(3)At any time after an application has been filed under this Act and before acceptance of the complete specification, the comptroller may, at the request of the applicant and upon payment of the prescribed fee, direct that the application shall be post-dated to such date as may be specified in the request:
Provided that—
(a)no application shall be post-dated under this subsection to a date later than six months from the date on which it was actually made or would, but for this subsection, be deemed to have been made; and
(b)a convention application shall not be post-dated under this subsection to a date later than the last date on which, under the foregoing provisions of this Act, the application could have been made; [F1and—
(c)no application shall, on or after the appointed day, be post-dated under this subsection to a date which is that of the appointed day or which falls after it].
(4)Where an application or specification filed under this Act is amended before acceptance of the complete specification, the comptroller may direct that the application or specification shall be post-dated to the date on which it is amended or, if it has been returned to the applicant, to the date on which it is refiled [F2; but no application shall on or after the appointed day be post-dated under this subsection to a date which is that of the appointed day or which falls after it].
(5)Rules made by the Board of Trade under this Act may make provision for securing that where, at any time after an application or specification has been filed under this Act and before acceptance of the complete specification, a fresh application or specification is filed in respect of any part of the subject matter of the first-mentioned application or specification, the comptroller may direct that the fresh application or specification shall be ante-dated to a date not earlier than the date of filing of the first-mentioned application or specification [F3; but a fresh application or specification may not be filed on or after the appointed day in accordance with this subsection and those rules unless the comptroller agrees that he will direct that the application or specification shall be ante-dated to a date which falls before the appointed day].
(6)An appeal shall lie from any decision of the comptroller under subsection (2) or subsection (4) of this section.
F1S. 6(3)proviso (c) inserted by Patents Act 1977 (c. 37), s. 127, Sch. 1 para. 2(1)
F2Words inserted by Patents Act 1977 (c. 37), s. 127, Sch. 1 para. 2(1)
F3Words inserted by Patents Act 1977 (c. 37), s. 127, Sch. 1 para. 2(2)
(1)Subject to the provisions of the last foregoing section, the examiner to whom an application for a patent is referred under this Act shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published before the date of filing of the applicant’s complete specification in any specification filed in pursuance of an application for a patent made in the United Kingdom and dated within fifty years next before that date.
(2)The examiner shall, in addition, make such investigation as the comptroller may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published in the United Kingdom before the date of filing of the applicant’s complete specification in any other document (not being a document of any class described in subsection (1) of section fifty of this Act).
(3)If it appears to the comptroller that the invention, so far as claimed in any claim of the complete specification, has been published as aforesaid, he may refuse to accept the specification unless the applicant either—
(a)shows to the satisfaction of the comptroller that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or
(b)amends his complete specification to the satisfaction of the comptroller.
(4)An appeal shall lie from any decision of the comptroller under this section.
(1)In addition to the investigation required by the last foregoing section, the examiner shall make the investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed—
(a)in pursuance of an application for a patent made in the United Kingdom and dated before that date; or
(b)in pursuance of a convention application founded upon an application for protection made in a convention country before that date.
(2)If it appears to the comptroller that the said invention is claimed in a claim of any such other specification as aforesaid, he may, subject to the provisions of this section, direct that a reference to that other specification shall be inserted by way of notice to the public in the applicant’s complete specification unless within such time as may be prescribed either—
(a)the applicant shows to the satisfaction of the comptroller that the priority date of his claim is not later than the priority date of the claim of the said other specification; or
(b)the complete specification is amended to the satisfaction of the comptroller.
(3)If in consequence of the investigation under section seven of this Act or otherwise it appears to the comptroller—
(a)that the invention, so far as claimed in any claim of the applicant’s complete specification, has been claimed in any such specification as is mentioned in subsection (1) of that section; and
(b)that the other specification was published on or after the priority date of the applicant’s claim,
then unless it has been shown to the satisfaction of the comptroller under that section that the priority date of the applicant’s claim is not later than the priority date of the claim of that other specification, the provisions of subsection (2) of this section shall apply as they apply in relation to a specification published on or after the date of filing of the applicant’s complete specification.
(4)The powers of the comptroller under this section to direct the insertion of a reference to another specification may be exercised either before or after a patent has been granted for the invention claimed in that other specification, but any direction given before the grant of such a patent shall be of no effect unless and until such a patent is granted.
(5)An appeal shall lie from any direction of the comptroller under this section.
C1S. 8(1)(2)(4) amended by Patents Act 1977 (c. 37), s. 128(3)(5)
(1)If, in consequence of the investigations required by the foregoing provisions of this Act or of proceedings under section fourteen or section thirty-three of this Act, it appears to the comptroller that an invention in respect of which application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant’s complete specification by way of notice to the public unless within such time as may be prescribed either—
(a)the applicant shows to the satisfaction of the comptroller that there are reasonable grounds for contesting the validity of the said claim of the other patent; or
(b)the complete specification is amended to the satisfaction of the comptroller.
(2)Where, after a reference to another patent has been inserted in a complete specification in pursuance of a direction under the foregoing subsection,—
(a)that other patent is revoked or otherwise ceases to be in force; or
(b)the specification of that other patent is amended by the deletion of the relevant claim; or
(c)it is found, in proceedings before the court or the comptroller, that the relevant claim of that other patent is invalid or is not infringed by any working of the applicant’s invention,
the comptroller may, on the application of the applicant, delete the reference to that other patent.
(3)An appeal shall lie from any decision or direction of the comptroller under this section.
Patents Act 1949