Third Party Rights Flashcards
Section 64
Right to continue use begun before priority date
(1) Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention -
(a) does in good faith an act which would constitute an infringement of the patent if it were in force, or
(b) makes in good faith effective and serious preparations to do such an act,
has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act.
(2) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (1) may -
(a) authorise the doing of that act by any partners of his for the time being in that business, and
(b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.
Lubrizol v Esso Petroleum [1998]
‘The word “effective” qualifies the word “preparations”. It follows that there must be something more than preparations to do an infringing act. What more will depend upon the nature of the product and all the surrounding circumstances, but in all cases the preparations must be so advanced as to be about to result in the infringing act being done’.
‘The primary meanings of the word “effective” are “having an effect” or “powerful in effect”. It will of course be a matter for a court to determine in any given case whether the serious preparations in question properly warrant the additional epithet “effective”. I reject …[the] submission that it is sufficient to show that the serious preparations, if pursued to finality, will have the requisite effect. Their effectiveness must be measured immediately before the priority date …’
Key terms: effective and serious preparations
Helitune Ltd v Stewart Hughes Ltd [1991]
Producing prototypes, but not having sold any by the priority date, was not sufficient preparation as the defendant was actually trying to produce a different non-infringing product.
Key terms: effective and serious preparations
Forticrete Ltd v Lafarge Roofing Ltd [2005]
Where there have been full scale trials and a company was preparing to go into full scale commercial production then this is probably sufficient to be serious and effective preparation.
Key terms: effective and serious preparations
Helitune Ltd v Stewart Hughes Ltd [1991]
It only extends to the act that you were doing before the priority date (so if importing cannot make).
Key terms: Right of prior use
Forticrete Ltd v Lafarge Roofing Ltd [2005]
Previous acts of importing to not extend to disposal unless there was serious and effective preparations to do so.
Key terms: Right of prior use
Lubrizol Corpn v Esso Petroleum Co Ltd [1998]
The right probably does not extend to making improvements to the patented products.
Key terms: Right of prior use
