Patents Act, 1992

FIRST SCHEDULE

Transitional Provisions

Section 5 .

1. Subject to the provisions of this Schedule, any order, regulation, rule, patent, requirement, certificate, notice, decision, direction, authorization, consent, application, request or thing made, granted, issued, given or done under any enactment repealed by this Act shall, if in force immediately before the commencement of this Act, and insofar as it could have been made, granted, issued, given or done under this Act, continue in force and have effect as if made, granted, issued, given or done under the corresponding provision of this Act. A patent of addition granted under the Act of 1964 shall remain in force only for so long as the patent for the main invention remains in force.

2. (1) The term of any patent granted under the Act of 1964 and in force at the commencement of this Act shall be extended to 20 years, subject to the payment of the prescribed renewal fees, within the period prescribed, in respect of each year of the additional term.

(2) This paragraph does not apply to a patent the term of which was extended, prior to the commencement of this Act, following presentation of a petition under section 27 of the Act of 1964.

(3) No petition for an extension of the term of any patent granted under the Act of 1964 shall be presented under section 27 of that Act after the commencement of this Act.

3. (1) Where a patent expired before the commencement of this Act and a petition under the Act of 1964 for the extension of its term was pending immediately before such commencement, the following provisions shall apply:

(a) if no notice of objection to the extension has been given within the time prescribed in that behalf by rules under the Act of 1964 or by rules of court (as the case may be) or if, having been so given, such notice has been withdrawn the proprietor of the patent may withdraw the petition and the term of the patent shall thereupon stand extended for a period of 4 years from the date of its expiry;

(b) if notice as aforesaid has been given within the time prescribed and has not been withdrawn or if the petition is not withdrawn the provisions of the Act of 1964 shall continue to apply in respect of that petition.

(2) Where, immediately before the commencement of this Act, an appeal was pending against a decision on a petition presented under section 27 of the Act of 1964, the provisions of that Act shall continue to apply in respect of that appeal until the appeal is determined.

4. In the case of a patent the term of which has been extended under paragraph 2 (1) or 3 (1) of this Schedule, proceedings for infringement of such a patent may not be instituted against a person who, during the final 2 years of the term of that patent, as extended under those provisions, makes any such preparations (other than the importation or placing on the market of a product protected by such patent) as would enable that person to put the invention into effect commercially after the term of the patent expires.

5. Applications for restoration of lapsed patents which were pending at the commencement of this Act shall be decided under the provisions of the Act of 1964.

6. Where, before the commencement of this Act, a complete specification had been filed under the Act of 1964 but had not been accepted, the provisions of Part II of this Act shall apply to the application to which such specification relates and to any patent granted on the application as they apply to applications under that Part, subject to the modifications specified in paragraph 7 of this Schedule.

7. The modifications referred to in paragraph 6 of this Schedule are as follows:

(a) the date of filing of the application shall be the date on which the complete specification was filed and references in Part II to the description, claims and drawings shall be construed as referring to this complete specification,

(b) sections 18 (2) (c), 19 (2) and 35 shall not have effect as regards the application, and sections 29 (1) and 30 (1) shall not have effect except as specified in subparagraph (k),

(c) any provisional specification filed shall give rise to the same right of priority for the application as if a valid claim to priority had been made under section 26 to the extent, and only to the extent, that the matter disclosed in the provisional specification forms a fair basis for the invention the subject of the complete specification,

(d) where the application was made as a Convention application within the meaning of the Act of 1964, then, provided the requirements for Convention applications within such meaning are met, the application shall enjoy the same right of priority as if a valid claim to priority had been made under section 26 ,

(e) where a complete specification was laid open to public inspection under section 69 of the Act of 1964 before the commencement of this Act, the laying open to public inspection shall be regarded as being publication under section 28 and the date on which it was so laid open shall be regarded as being the date of such publication; other documents accompanying the application (including any provisional specification filed in relation to the application) shall be laid open to public inspection as soon as practicable after the commencement of this Act,

(f) a declaration as to inventorship made in respect of an application filed or deemed to have been filed before the commencement of this Act shall be deemed to satisfy the requirements of section 17 (2),

(g) the time limit for doing any act or filing any document under this Act shall not expire before the expiry of the corresponding time limit under the Act of 1964,

(h) an application under section 11 (5) of the Act of 1964 shall be treated as a divisional application within the meaning of section 24 ,

(i) an application for a patent of addition under section 28 of the Act of 1964 shall be considered as being an application for an independent patent,

(j) notwithstanding anything contained in this Act, an application may proceed in the name of a person who was entitled to apply under the Act of 1964,

(k) an applicant who furnishes the evidence specified under section 8 (6) (a) or (b) of the Act of 1964 within the time prescribed in the Patents Rules, 1965 for so doing shall be deemed to have satisfied the requirements of section 30 (1) of this Act; where such evidence is furnished after the commencement of this Act, it shall be accompanied by the fee prescribed for the purpose of section 30 (3); and where, in the case of any application, the evidence is not furnished within the time prescribed by the said Rules, the application shall be deemed to have been withdrawn unless the applicant complies with the provisions of section 29 (1) or 30 (1), as appropriate,

(l) any amendments to an application submitted before the commencement of this Act which correspond to amendments which could be submitted under the provisions of section 29 (4), 30 (4) or 30 (5) as appropriate shall be deemed to have been submitted under these provisions provided they have been submitted by a duly authorized patent agent where such an agent acts on behalf of the applicant,

(m) in the case of any application in respect of which the applicant had been notified of any requirements under the Act of 1964 (or the Rules made thereunder) with which he was required to comply and the applicant had not, before the commencement of this Act, complied with these requirements or satisfied the Controller that the requirements were complied with, the provisions of the Act of 1964 (and the relevant Rules made thereunder) shall continue to apply until the matters at issue are finally decided.

8. (1) In the case of any application the acceptance of the complete specification of which had been advertised under section 18 of the Act of 1964 and in respect of which the period specified in subsection (1) of section 19 of that Act had not expired at the commencement of this Act, a patent shall not be granted under this Act on such application before the expiry of that period or, where opposition is notified during that period, before the relevant proceedings are concluded under the provisions of the Act of 1964 and a determination that a patent may be granted has been made.

(2) In any case in which opposition to the grant of a patent had been notified under section 19 of the Act of 1964 and the case had not been decided before the commencement of this Act, a patent shall not be granted under this Act before the relevant proceedings have been concluded under the Act of 1964 and a determination that a patent may be granted has been made.

9. The power to make rules under section 114 shall include power to make rules for any purpose mentioned in section 96 of the Act of 1964.

10. A patent application (the original application) which is made before the commencement of this Act, but in respect of which a complete specification is not filed before such commencement, shall be taken to have been abandoned immediately before that commencement but, notwithstanding anything in subsection (1) or (4) of section 25 , the original application may nevertheless serve to establish a claim to priority under section 26 in relation to a later patent application under this Act if the date of filing of the original application falls within the period of fifteen months ending on the day immediately preceding the date of filing of the later application, and in relation to such later application the following provisions shall apply, namely:

(a) publication of the application, which shall take place as soon as practicable after the expiry of a period of eighteen months beginning on the date of filing of the original application, shall include the provisional specification which accompanied the original application, and

(b) where for a purpose of this Act a period is prescribed as being twelve months from the date of priority of an application, then such period shall for such purpose in relation to such later application be taken to be a period of fifteen months beginning on the date of filing of the original application.

11. Where there is in any document a reference to an enactment repealed by this Act, the reference shall be construed as a reference to the provision of this Act which corresponds to such enactment.

12. A patent granted under the Act of 1964 to which paragraph 1, 2 or 3 of this Schedule applies shall be revocable only in accordance with the provisions of that Act.

13. Any application for a licence under section 42 of the Act of 1964 which was pending at the commencement of this Act shall be decided under the provisions of the Act of 1964.