Schedule 4A (section 128B): Supplementary protection certificates

10th August 2018

References to patent, etc

1.

(1) In the application to supplementary protection certificates of the provisions of this Act listed in sub-paragraph (2);

(a) references to a patent are to a supplementary protection certificate;
(b) references to an application or the applicant for a patent are to an application or the applicant;

(i) for a supplementary protection certificate, or

(ii) for an extension of the duration of a supplementary protection certificate;

(c) references to the proprietor of a patent are to the holder of a supplementary protection certificate;
(d) references to the specification of a patent are to the text of a supplementary protection certificate;
(e) references to a patented product or an invention (including a patented invention) are to a product for which a
supplementary protection certificate has effect;
(f) references to a patent having expired or having been revoked are to a supplementary protection certificate
having lapsed or having been declared invalid;
(g) references to proceedings for the revocation of a patent are to proceedings;

(i) for a decision that a supplementary protection certificate has lapsed, or

(ii) for a declaration that a supplementary protection certificate is invalid;

(h) references to the issue of the validity of a patent include the issue of whether a supplementary protection certificate has lapsed or is invalid.

(2) The provisions referred to in sub-paragraph (1) are;

section 14(1), (9) and (10) (making of application);
section 19(1) (general power to amend application before grant);
sections 20A and 20B (reinstatement of applications);
section 21 (observations by third party on patentability);
section 27 (general power to amend specification after grant);
section 29 (surrender of patents);
sections 30 to 36, 37(1) to (3) and (5) to (9) and 38 (property in patents and applications, and registration);
sections 39 to 59 (employees’ inventions, licences of right and compulsory licences and use of patented inventions for services of the Crown);
sections 60 to 71 (infringement); section 74(1) and (7) (proceedings in which validity of patent may be put in
issue);
sections 74A and 74B (opinions by the Patent Office);
section 75 (amendment of patent in infringement or revocation proceedings);
sections 103 and 105 (privilege for communications relating to patent proceedings);
section 108 (licences granted by order of comptroller);
sections 110 and 111 (unauthorised claim of patent rights or that patent has been applied for);
section 116 (immunity of department as regards official acts);
sections 117 to 118 (administrative provisions);
section 123 (rules);
section 130 (interpretation).

2.

(1) In the case of the provisions of this Act listed in sub-paragraph (2), paragraph 1 applies in relation to an application for a supplementary protection certificate only if the basic patent expires before the certificate is granted.

(2) The provisions referred to in sub-paragraph (1) are;

section 20B(3) to (6A) (effect of reinstatement under section 20A);
section 55(5) and (7) (use of patented inventions for services of the Crown);
section 58(10) (disputes as to Crown use);
section 69 (infringement of rights conferred by publication of application);
section 117A(3) to (7) (effect of resuscitating a withdrawn application under section 117).

References to this Act etc

3.

(1) In the provisions of this Act listed in subparagraph (2);

(a) references to this Act include the Medicinal Products Regulation and the Plant Protection Products Regulation,

and

(b) references to a provision of this Act include any equivalent provision of the Medicinal Products Regulation and the Plant Protection Products Regulation.

(2) The provisions referred to in sub-paragraph (1) are;

sections 20A and 20B (reinstatement of applications);
section 21 (observations by third party on patentability);
section 69 (infringement of rights conferred by publication of application);
section 74(1) and (7) (proceedings in which validity of patent may be put in issue);
sections 97 to 99B, 101 to 103, 105 and 107 (legal proceedings);
section 116 (immunity of department as regards official acts);
sections 117 and 118 to 121 (administrative provisions);
section 122 (Crown’s right to sell forfeited articles);
section 123 (rules);
section 124A (use of electronic communications);
section 130 (interpretation).

Other references

4.

(1) In the application of section 21(1) (observations by third party on patentability) to supplementary protection certificates, the reference to the question whether the invention is a patentable invention is to the question whether the product is one for which a supplementary protection certificate may have effect.

(2) In the application of section 69(2) (conditions for infringement of rights conferred by publication of application) to supplementary protection certificates, the condition in paragraph (b) is that the act would, if the certificate had been granted on the date of the publication of the application, have infringed not only the certificate as granted but also the certificate for which the application was made.

Fees

5

A supplementary protection certificate does not take effect unless;

(a) the prescribed fee is paid before the end of the prescribed period, or
(b) the prescribed fee and any prescribed additional fee are paid before the end of the period of six months beginning immediately after the prescribed period.

Interpretation

6.

(1) Expressions used in this Act that are defined in the Medicinal Products Regulation or the Plant Protection Products Regulation have the same meaning as in that Regulation.

(2) References in this Act to, or to a provision of, the Medicinal Products Regulation or the Plant Protection
Products Regulation are to that Regulation or that provision as amended from time to time.

7.

In this Act;

(a) “the Medicinal Products Regulation” means Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6th May 2009 concerning the supplementary protection certificate for medicinal products, and
(b) “the Plant Protection Products Regulation” means Regulation (EC) No 1610/96 of the European Parliament

and

of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products.

Transitional provision

8.

(1) A reference (express or implied) in this Act to the Medicinal Products Regulation, or a provision of it, is to be read as being or (subject to context) including a reference to the old Regulation, or the corresponding provision of the old Regulation, in relation to times, circumstances or purposes in relation to which the old Regulation, or that provision, had effect.

(2) Other than in relation to times, circumstances or purposes referred to in subparagraph (1), anything
done, or having effect as if done, under (or for the purposes of or in reliance on) the old Regulation or a provision of the old Regulation and in force or effective immediately before 1st October 2014 (the day on which the Patents (Supplementary Protection Certificates) Regulations 2014 came into force) has effect on or after that date for the
purposes of this Act as if done under (or for the purpose of or in reliance on) the Medicinal Products Regulation or the corresponding provision of it.

(3) In this paragraph “the old Regulation” means Council Regulation (EEC) No 1768/92 of 18th June 1992 concerning the creation of a supplementary protection certificate for medicinal products.

https://www.gov.uk/guidance/the-patent-act-1977/schedule-4a-section-128b-supplementary-protection-certificates-references-to-this-act-etc
Content Reproduced verbatim from the Website of the United Kingdom Intellectual Property Office (UKIPO) as permitted under their Terms of Use.