Patents (Jersey)
Law 1957[1]
A LAW to provide for the protection
in Jersey of inventions the subject of letters patent, and for matters
incidental thereto
Commencement [see endnotes]
1 Interpretation
(1) In this Law, unless the
context otherwise requires –
“article” includes any substance or material, and any
plant, machinery or apparatus, whether affixed to land or not;
“Comptroller-General” means the Comptroller-General of
Patents, Designs and Trade Marks in the United Kingdom;
“date of the grant” means –
(a) in
relation to a patent under the Patents Act 1949 of the United Kingdom, the
date of sealing of the patent under section 19 of that Act;
(b) in
relation to a patent under the Patents Act 1977 of the United Kingdom, the
date upon which the patent takes effect pursuant to section 25 of that Act; and
(c) in
relation to a European patent (U.K.), the date upon which the patent takes
effect in the United Kingdom pursuant to section 77 of the Patents
Act 1977 of the United Kingdom;
“European Patent Convention” means the Convention on the
Grant of European Patents;
“European patent (U.K.)” means a patent granted under
the European Patent Convention designating the United Kingdom;
“Government department” means a department of the
Government of the United Kingdom;
“invention” has the same meaning as in the Patents
Act 1977;
“Minister” means
the Minister for External Relations;
“patent” means a patent granted under the Patents
Act 1949 of the United Kingdom or under the Patents Act 1977 of the
United Kingdom and means also a European patent (U.K.) that has effect in the
United Kingdom pursuant to section 77 of the Patents Act 1977 of the
United Kingdom;
“Patents Act 1949” means the Patents Act 1949
of the United Kingdom;
“Patents Act 1977” means the Patents Act 1977
of the United Kingdom;
“patented article” and “patented process”
mean respectively an article and a process which is the subject of a registered
patent;
“patentee” means the person or persons for the time
being entered on the register of patents as the grantee or proprietor of the
patent;
“priority date” has the meaning assigned to it –
(a) in
the case of a patent under the Patents Act 1949 of the United Kingdom, by
section 5 of that Act;
(b) in
the case of a patent under the Patents Act 1977 of the United Kingdom, by
section 5 of that Act;
(c) in
the case of a European patent (U.K.), by section 5 of the Patents Act 1977
of the United Kingdom, subject to the incidents and modifications mentioned in
section 78 of that Act;
“register” means enter in the register of patents;
“register of patents” means the register of patents kept
in pursuance of Article 3.[2]
(2) In Articles 3, 4,
6, 9, 10, 11, 14 and 17 of this Law, “court” means the
“Samedi” division of the Royal Court.[3]
2 Limitation
of powers of Royal Court in relation to registration of patents
As from the coming into force of this Law, no Letters Patent for an
invention or other exclusive right in respect of an invention shall be entered
in the rolls of the Royal Court otherwise than in accordance with the
provisions of this Law. [4]
3 Register
of patents
(1) There shall be kept at
the Judicial Greffe a register, to be called “the register of
patents”, in which there shall be entered particulars of such patents, of
such assignments and transmissions of patents, and notice of all matters which
are required by or under this Law to be entered in the register and of such
other matters affecting the validity or proprietorship of patents as the court
or the Judicial Greffier may think fit.
(2) Subject to the
provisions of this Law and to rules of court, the register of patents shall, at
all convenient times, be open to inspection by the public; and certified copies
of any entry in the register shall be given to any person requiring them on
payment of the appropriate fee.
(3) The register of patents
shall be prima facie evidence of any matters
required or authorized by or under this Law to be entered therein.
(4) No notice of any trust,
whether expressed, implied or constructive, shall be entered in the register of
patents and the Judicial Greffier shall not be affected by any such notice.
4 Registration
of patents
(1) Any person being the
grantee of a patent for the time being in force in the United Kingdom, or any person
whose right to the patent derives from such grantee by assignment, transmission
or other operation of law, may apply to the Judicial Greffier for the
registration of the patent.
(2) Where any partial
assignment or transmission of the patent has been made, every person having any
legal interest in the patent shall be joined in the application for
registration.
(3) An application under
this Article shall be accompanied by a copy of the specification of the patent
as granted or as taking effect in the United Kingdom, certified by such person
as may be prescribed by rules of court to be a true copy, together with the
drawings (if any) relating to the patent and such application shall in other
respects be made in such manner, and be accompanied by such documents, as the Judicial
Greffier may from time to time specify by publishing a notice, or providing an
online form, on a website maintained by the Judicial Greffier or the States of
Jersey.[5]
(4) Within 8 days of making
an application under this Article, the applicant shall advertise in such manner
as may be prescribed by rules of court the fact that the application has been
made and that the documents submitted in support thereof will be open to public
inspection at the Judicial Greffe.
(5) Within 2 months of the
date of such advertisement, notice of opposition to the registration of the
patent may be given to the Judicial Greffier –
(a) by
the Attorney General or any person interested, on either of the following
grounds, that is to say –
(i) that the
applicant is not entitled under this Law to make the application, or
(ii) that
the invention so far as claimed in any claim of the complete specification, has
been manufactured, used or sold in Jersey before the date which is the priority
date of that claim; or
(b) by
any person on the ground that, 3 years having elapsed since the date of the
grant of the patent, the patented invention is being used in Jersey on a
commercial scale.[6]
(6) Where notice of
opposition is given by virtue of paragraph (5), or where it appears
doubtful to the Judicial Greffier whether the application for registration
should be granted or where any question arises in relation to the application,
the Judicial Greffier shall present a statement of the matter in question to
the Bailiff for the directions of the court, and the court may order such
persons to be convened, such evidence to be taken and such enquiries to be made
as the court may deem necessary and, subject to the provisions of this Law and
to rules of court, shall determine whether the patent should be registered and,
if so, subject to what conditions.
(7) Where no notice of
opposition is given in accordance with paragraph (5) and there appears to
the Judicial Greffier to be no reason why the application for registration
should not be granted, the Judicial Greffier shall register the patent and issue
a certificate of registration.
5 Registration
of extension, additions and amendments and of restoration of lapsed patents
(1) Where a patent has been
registered and the proper authority in the United Kingdom has
either –
(a) made
an order extending the term of the patent;
(b) granted
a patent of addition for the improvement or modification of the patent so
registered;
(c) where
the patent has lapsed, made an order restoring the patent; or
(d) issued
a decision or made an order allowing the amendment of the specification or
drawings of the patent,
the person in whose name the patent is registered may apply to the
Judicial Greffier in such manner as the Judicial Greffier may from time to time
specify by publishing a notice, or providing an online form, on a website
maintained by the Judicial Greffier or the States of Jersey, for the
registration of such order, grant or decision and the provisions of this Law
shall apply in relation to such an application as if it were an application for
the registration of a patent.[7]
(2) The word
“patent” where used in paragraph (1)
shall not include a European patent (U.K.).[8]
(3) Where a European patent
(U.K.) has been registered and where such patent is amended in accordance with
the European Patent Convention, and the amendment has been treated by the
proper authority in the United Kingdom for the purposes of Parts I and III of
the Patent Act 1977 of the United Kingdom as if it had been made under
that Act, the person in whose name the patent is registered may apply to the
Judicial Greffier in such manner as the Judicial Greffier may from time to time
specify by publishing a notice, or providing an online form, on a website
maintained by the Judicial Greffier or the States of Jersey, for the
registration of such amendment and the provisions of this Law shall apply in
relation to such an application as if it were an application for the
registration of a patent. [9]
(4) Where a European patent
(U.K.) has been registered and where –
(a) under
the European Patent Convention or the Patents Act 1977 of the United
Kingdom it has been restored after ceasing to remain in force in the United
Kingdom; and
(b) the
restoration has effect or is treated as having effect under the Patents
Act 1977,
the person in whose name the patent is registered may apply to the
Judicial Greffier in such manner as the Judicial Greffier may from time to time
specify by publishing a notice, or providing an online form, on a website
maintained by the Judicial Greffier or the States of Jersey, for the
registration of the restoration and the provisions of this Law shall apply in
relation to such application as if it were an application for the registration
of a patent. [10]
6 Registration
of assignments, etc.
(1) Where a person becomes
entitled by assignment, transmission, or other operation of law, to a
registered patent, or to a share in such a patent, or to any interest therein,
and has obtained registration in the United Kingdom of such title or interest
in accordance with the law for the time being in force in the United Kingdom, the
person may apply to the Judicial Greffier for the registration of such title or
interest.
(2) Every such application
shall be made in such manner as the Judicial Greffier may from time to time
specify by publishing a notice, or providing an online form, on a website
maintained by the Judicial Greffier or the States of Jersey, and shall be
accompanied by a certificate of the Comptroller-General relating to the
registration in the United Kingdom of such title or interest.[11]
(3) On the receipt of such
an application, the Judicial Greffier shall register the title or interest
unless it appears doubtful to the Judicial Greffier whether the application
should be granted, or any question arises in relation to the application, in
which event the Judicial Greffier shall present a statement of the matter in
question to the Bailiff for the directions of the court, and the court may order
such persons to be convened, such evidence to be taken and such enquiries to be
made as the court may deem necessary and, subject to the provisions of this Law
and to rules of court, shall determine whether the application should be
granted.
7 Legal
presence in Jersey unnecessary for purpose of making applications
An application under Article 4, 5 or 6 may be made
notwithstanding the fact that the person making the application is not present
in Jersey and is not represented by an attorney present in Jersey so long as the
person has notified the Judicial Greffier of an address in Jersey to which any
notice or summons in connection with any matter relating to the patent may be
sent, and, in such case, any such notice or summons shall be deemed to be
sufficiently served if it is sent to that address.
8 Effect
of registration[12]
(1) Subject to the
provisions of this Law, the registration of a patent under this Law or of any
title or interest in such a patent (including the restoration of the patent)
shall give to the patentee, or any other person in whom any title or interest
is vested, as the case may be, the same rights and equivalent remedies in
Jersey as are possessed by the patentee or such a person in the United Kingdom,
but, save as aforesaid, no patent or title or interest in such a patent shall
have effect against any person.
(2) The rights referred to
in paragraph (1) shall have effect in Jersey from the same date from which
such rights have effect in the United Kingdom and shall subsist only for as
long as such rights subsist in the United Kingdom.
(3) Notwithstanding
paragraph (2), no action for infringement of a right referred to in
paragraph (1) may be brought –
(a) subject
to paragraph (4), in respect of any act done prior to the date of
registration of the patent under this Law; or
(b) where
the term of the patent has been extended or the patent has been restored,
unless the order for extension or restoration has been registered under this
Law.
(4) An action for
infringement of a patent may be brought in respect of any act done on or after
the date which is, or is treated as, the date of publication of the application
for registration, extension or registration, as the case may be, under the Patents
Act 1977 where –
(a) the
application for registration under this Law was made before the expiration of
6 months after the date of the grant of the patent under that Act;
(b) the
patent has been registered under this Law; and
(c) the
act would, if the patent had been registered under this Law on the date which
is, or is treated as, the date of publication of the application under that
Act, have infringed not only the patent but also the claims referred to in
section 69 of that Act.
9 Power
of court to revoke registration
(1) A petition for the
revocation of the registration of a patent may be presented to the court by the
Attorney General or by any person who alleges that the person’s interests
have been prejudicially affected by such registration on any of the following
grounds, that is to say –
(a) that
the patent was registered on the application of a person not entitled under the
provisions of this Law to make the application;
(b) that
the invention, so far as claimed in any claim of the complete specification,
has been manufactured, used or sold in Jersey before the date which is the
priority date of that claim;
(c) that
more than 3 years had elapsed between the date of the grant of the patent and
the date of the registration and that, on the latter date, the patented
invention was being used in Jersey on a commercial scale,
and the court, after hearing the parties if desirous of being heard,
may make an order revoking any such registration or dismissing the petition. [13]
(2) In proceedings under
this Article, the court may determine any question which it may be necessary or
expedient to determine in connection with such revocation.
9A Compulsory
licences – applications and grant[14]
(1) At any time after the
expiration of 3 years, or such other period as the Minister may prescribe
by Order, from the date of the registration of a patent under this Law, any
person may apply to the court for a licence under the patent.
(2) An application under
paragraph (1) shall be on one or more of the following
grounds –
(a) where
the patented invention is a product, that a demand in Jersey for that product
is not being met on reasonable terms;
(b) that
by reason of the refusal of the patentee (“first patentee”) to
grant a licence or licences on reasonable terms –
(i) there is
prevented or hindered the exploitation in Jersey of any other invention for
which another patent has been registered under this Law, such other invention
involving an important technical advance of considerable economic significance
in relation to the first patentee’s invention, or
(ii) the
establishment or development of commercial or industrial activities in Jersey
is unfairly prejudiced;
(c) that
by reason of conditions imposed by the person in whose name the patent is
registered on –
(i) the grant of
licences under the patent,
(ii) the
disposal or use of the patented product, or
(iii) the
use of the patented process,
there is unfairly prejudiced the manufacture, use or disposal of
materials not protected by the patent or the establishment of commercial or
industrial activities in Jersey; or
(d) that
the grant of a licence is necessary to comply with any treaty or international
convention which has effect in Jersey.
(3) The court, after
hearing any party with an interest in the matter who is desirous of being
heard, may –
(a) grant
such a licence if satisfied of any of the grounds described in paragraph (2);
or
(b) dismiss
the application.
(4) Where the court grants
a licence on the ground described in paragraph (2)(c), the court may grant
a licence to customers of the applicant as well as to the applicant for the
licence.
(5) An application may be
made under paragraph (1) even if the applicant is already the holder of a
licence under the patent.
(6) No person shall be
estopped or barred from alleging any of the grounds specified in paragraph (2)
by reason of any admission made by him or her, whether in respect of a licence
held by that person or otherwise.
(7) Where an application
under paragraph (1) is made in respect of a patent by a person who holds a
licence under the patent, the court –
(a) may,
if it orders the grant of a licence to the applicant under this Article, order
the existing licence to be cancelled; or
(b) may,
instead of ordering the grant of a licence to the applicant, order the existing
licence to be amended.
(8) A licence must not be
granted under this Article unless –
(a) the
applicant has made efforts to obtain a licence from the person in whose name
the patent is registered on reasonable commercial terms and conditions; and
(b) such
efforts have not been successful within a reasonable period.
(9) A licence must not be
granted under this Article if the patent in respect of which the application is
made is in the field of semi-conductor technology.
(10) A licence must not be granted
under this Article if such grant would be contrary to any treaty or
international convention which has effect in Jersey.
(11) A licence must not be granted
on the ground described in paragraph (2)(b) unless the court is satisfied
that the person in whose name the other patent is registered is able and
willing to grant a licence under that other patent on reasonable terms
to –
(a) the
first patentee; and
(b) any
licensees of the first patentee.
(12) A licence granted on the
ground described in paragraph (2)(b) must not be assigned except to a
person to whom a patent for the other invention is also assigned.
(13) A licence granted under this
Article –
(a) must
not be exclusive;
(b) must
not be assigned except to a person to whom there is also assigned the part of
the enterprise or goodwill that enjoys the use of the patented invention;
(c) must
be predominately for the supply of a market in Jersey;
(d) must
include conditions entitling the patentee to remuneration adequate in the
circumstances of the case, taking into account the economic value of the
licence; and
(e) must
be limited in scope and duration to the purpose for which the licence was
granted,
except to the extent that, in the case of a licence granted on the
ground described in paragraph (2)(d), such a licence would be inconsistent
with, or contravene, the treaty or international convention to which the
licence gives effect.
9B Other
matters relating to compulsory licences[15]
(1) In this Article “patented
invention” means the invention which is the subject of an application
under Article 9A and “patentee” shall be construed
accordingly.
(2) In determining whether
to grant a licence under Article 9A, the court shall take into
account –
(a) the
nature of the patented invention;
(b) the
time which has elapsed since the grant of a patent for the invention in the
United Kingdom;
(c) any
measures taken by the patentee or any licensee of the patentee to make full use
of the patented invention;
(d) the
ability of the person to whom the compulsory licence would be granted to work
the patented invention to the public advantage; and
(e) the
risks to be undertaken by the person to whom the compulsory licence would be
granted in providing capital and working the patented invention.
(3) In determining whether
to grant a licence under Article 9A, the court shall not be required to
take into account any matters subsequent to the date of the application for the
licence.
(4) Where a licence has
been granted under Article 9A the patentee or any other person may apply
to the court to have the licence cancelled on the ground that the circumstances
which led to the grant of the licence have ceased to exist and are unlikely to
recur.
(5) Following an
application under paragraph (4), the court, after hearing any party with
an interest in the matter who is desirous of being heard, may –
(a) terminate
the licence subject to such terms and conditions as the court thinks are
necessary for the protection of legitimate interests of the licensee; or
(b) dismiss
the application.
10 Rectification
of register
(1) The court may, on the
application of the Attorney General or of any person aggrieved, order the
register of patents to be rectified by the making of any entry therein or the
variation or deletion of any such entry.
(2) In proceedings under
this Article, the court may determine any question which it may be necessary or
expedient to determine in connection with the rectification of the register.
11 Power
to correct clerical errors
(1) The Judicial Greffier
may, in accordance with the provisions of this Article, correct any clerical
error in the register of patents.
(2) A correction may be
made in pursuance of this Article either upon a request in writing made by any person
interested, or without such a request.
(3) Where the Judicial
Greffier proposes to make any such correction as aforesaid otherwise than in
pursuance of a request made under this Article, the Judicial Greffier shall
give notice of the proposal to the patentee and to any other person who appears
to the Judicial Greffier to be concerned, and shall give them an opportunity to
be heard before making the correction.
(4) Where a request is made
under this Article for the making of any such correction as aforesaid and it
appears to the Judicial Greffier that the correction would materially affect
the rights and equivalent remedies conferred by the registration of the patent,
the Judicial Greffier shall require the person by whom the request was made to
apply to the court for the rectification of the register of patents in accordance
with the provisions of Article 10.[16]
12 Use
of inventions of registered patents for the services of the Crown
(1) Subject to the
provisions of this Law, the registration of a patent shall have the same effect
against the Crown as it has against a subject:
Provided that any Government department, and any person authorized
in writing by any such department, may make, use and exercise any invention the
subject of a registered patent, for the services of the Crown in the like
manner, to the like extent and subject to the like conditions as it might be
made, used or exercised in the United Kingdom by any such department or by any person
so authorized.
(2) For the purposes of
this Article, any use of such an invention for the supply to the Government of
any country outside the United Kingdom, in pursuance of any agreement or
arrangement between the Government of the United Kingdom and the government of
that country, of articles required for the defence of that country, shall be
deemed to be a use of the invention for the services of the Crown; and the
power of a Government department or a person authorized by a Government
department under this Article to make, use and exercise an invention shall
include power –
(a) to
sell such articles to the Government of any country in pursuance of any such
agreement or arrangement as aforesaid; and
(b) to
sell to any person any articles made in the exercise of the powers conferred by
this Article which are no longer required for the purpose for which they were
made.[17]
(3) The purchaser of any articles
sold in the exercise of powers conferred by this Article, and any person
claiming through the purchaser, shall have power to deal with them in the same
manner as if the patent were held on behalf of His Majesty.[18]
13 Use
of inventions of registered patents for the service of the States
(1) Notwithstanding
anything in this Law, the States, and any person authorized by the States, may
make, use and exercise for the public service of Jersey any invention the
subject of a registered patent, upon such terms as may be agreed either before
or after the use, between the States and the patentee, or as may in default of
agreement be determined by the court on a reference under Article 14.
(2) The authority of the
States in respect of such an invention may be given under this Article either
before or after the patent for the invention is registered and either before or
after the acts in respect of which the authority is given are done, and may be
given to any person whether or not the person is authorized directly or
indirectly by the patentee to make, use, exercise or vend the invention.
(3) Where any use of an
invention is made by or with the authority of the States under this Article,
then, unless it appears to the States that it would be contrary to the public
interest so to do, the States shall notify the patentee as soon as practicable
after the use is begun, and furnish the patentee with such information as to
the extent of the use as the patentee may from time to time require.
(4) The power of the States
or of a person authorized by the States under this Article to make, use and
exercise an invention shall include power to sell to any person any articles
made in the exercise of the powers conferred by this Article which are no
longer required for the purpose for which they were made.
(5) The purchaser of any articles
sold in the exercise of powers conferred by this Article, and any person
claiming through the purchaser, shall have power to deal with them in the same
manner as if the patent were held on behalf of the States.
(6) The States may, by Act,
delegate the exercise of all or any of its powers under this Article to the Minister.[19]
14 Reference
of disputes as to use by Crown or States
(1) Any dispute as to the
exercise by a Government department or by the States, or by a person authorized
by a Government department or by the States, of the powers conferred by Article 12
or 13, or as to terms for the use of an invention for the services of the Crown
or of the States thereunder, or as to the right of any person to receive any part
of a payment in respect of those services, may be referred to the court by
either party to the dispute in such manner as may be prescribed by rules of
court.
(2) In any proceedings
under this Article to which a Government department or the States are a party,
the department or the States, as the case may be, may –
(a) if
the patentee is a party to the proceedings, apply for revocation of the
registration of the patent upon any ground upon which a patent may be revoked
under Article 9;
(b) in
any case, put in issue the validity of the patent or the registration thereof
without applying for the revocation of the registration.
(3) In determining under
this Article any dispute between a Government department or the States and any person
as to terms for the use of an invention for the services of the Crown or the
States respectively, the court shall have regard to any benefit or compensation
which that person or any person from whom that person derives title may have
received, or may be entitled to receive, directly or indirectly, from any
Government department or from the States, as the case may be, in respect of the
invention in question.
(4) In any proceedings under
this Article, the court may at any time order the whole proceedings or any
question or issue of fact arising therein to be referred to a special or
official referee or an arbitrator on such terms as the court may direct; and
references to the court in the foregoing provisions of this Article shall be
construed accordingly.
15 Restrictions
on recovery of damages for infringement
(1) Damages shall not be
awarded in proceedings for the infringement of a registered patent against a
defendant who proves that at the date of the infringement the defendant was not
aware, and had no reasonable ground for supposing, that the patent was
registered, and a person shall not be deemed to have been aware or to have had
reasonable grounds for supposing as aforesaid by reason only of the application
to an article of the word “patent”, “patented”, or any
word or words expressing or implying that a patent has been obtained for the article,
unless the number of the patent and the word “Jersey” or the words
“Registered in Jersey” accompanied the word or words in question.
(2) Where an amendment of a
specification has been registered after the first registration of the patent,
no damages shall be awarded in any proceeding in respect of the use of the
invention before the date of registration of the amendment, unless the court is
satisfied that the specification as originally published was framed in good
faith and with reasonable skill and knowledge.
(3) Nothing in this Article
shall affect the power of the court to grant an injunction in any proceedings
for infringement of a registered patent.
16 Proceedings
by exclusive licensee for infringement of registered patent
(1) Subject to the
provisions of this Article, the holder of an exclusive licence under a
registered patent shall have the like right as the patentee to take proceedings
in respect of any infringement of such patent committed after the date of the
licence, and in awarding damages or granting any other relief in any such
proceedings, the court shall take into consideration any loss suffered or
likely to be suffered by the exclusive licensee as such or, as the case may be,
the profits earned by means of the infringement so far as it constitutes an
infringement of the rights of the exclusive licensee as such.[20]
(2) In any proceedings
taken by the holder of an exclusive licence by virtue of this Article, the
patentee shall, unless the patentee is joined as plaintiff in the proceedings,
be added as defendant:
Provided that a patentee so added as defendant shall not be liable
for any costs unless the patentee appears and takes part in the proceedings.
17 Burden of proof in certain cases[21]
(1) Where –
(a) a
patent is granted for an invention which is a process for obtaining a new
product; and
(b) that
product is produced by a person other than the patentee of that patent or the
patentee’s licensee,
that product shall, unless the contrary is proved, be taken in any
proceedings to have been obtained by the same process as that in respect of
which the patent was granted.
(2) In considering whether
a party has discharged the burden imposed on the party by this Article, the
court shall not require the party to disclose any manufacturing or commercial
secrets if it appears to the court that it would be unreasonable to do so.
18 Remedy
for groundless threats of infringement proceedings
(1) Where any person
(whether or not entitled to or interested in a registered patent) by circulars,
advertisements or otherwise threatens any other person with proceedings for
infringement of a patent, any person aggrieved thereby may bring an action
against the person for any such relief as is mentioned in paragraph (2).
(2) Unless in any action
brought by virtue of this Article the defendant proves that the acts in respect
of which proceedings were threatened constitute or, if done, would constitute,
an infringement of a registered patent, the plaintiff shall be entitled to the
following relief, that is to say –
(a) a
declaration to the effect that the threats are unjustifiable;
(b) an
injunction against the continuance of the threats; and
(c) such
damages, if any, as the plaintiff has sustained thereby.
(3) For the avoidance of
doubt, it is hereby declared that a mere notification of the existence of a
registered patent does not constitute a threat of proceedings within the
meaning of this Article.
19 Avoidance
of certain restrictive conditions
(1) Subject to the
provisions of this Article, any condition of a contract for the sale or lease
of a patented article or of an article made by a patented process or for
licence to use or work a patented article or process, or relating to any such
sale, lease or licence, shall be void in so far as it purports –
(a) to
require the purchaser, lessee or licensee to acquire from the vendor, lessor or
licensor, or the vendor, lessor or licensor’s nominees, or prohibit the
purchaser, lessee or licensee from acquiring except from the vendor, lessor or
licensor, or the vendor, lessor or licensor’s nominees, any articles
other than the patented article or an article made by the patented process;
(b) to
prohibit the purchaser, lessee or licensee from using articles (whether
patented or not) which are not supplied by, or any patented process which does
not belong to, the vendor, lessor or licensor, or the vendor, lessor or
licensor’s nominees, or to restrict the right of the purchaser, lessee or
licensee to use any such articles or process.
(2) In proceedings against
any person for infringement of a registered patent, it shall be a defence to
prove that at the time of the infringement there was in force a contract
relating to the patent made by or with the consent of the plaintiff and
containing a condition void by virtue of this Article.
(3) A condition of a
contract shall not be void by virtue of this Article if –
(a) at
the time of the making of the contract, the vendor, lessor or licensor was
willing to sell or lease the article, or grant a licence to use or work the article
or process, as the case may be, to the purchaser, lessee or licensee, on
reasonable terms specified in the contract and without any such condition as is
mentioned in paragraph (1); and
(b) the
purchaser, lessee or licensee is entitled under the contract to relieve himself
or herself of the purchaser, lessee or licensee’s liability to observe
the condition upon giving to the other party 3 months’ notice in writing
and subject to payment to the other party of such compensation (being, in the
case of a purchase a lump sum, and in the case of a lease or licence a rent or
royalty for the residue of the term of the contract) as may be specified in the
contract or as may be deemed reasonable by the court.
(4) If in any proceeding it
is alleged that any condition of a contract is void by virtue of this Article,
it shall lie on the vendor, lessor or licensor to prove the matters set out in paragraph (3)(a).
(5) A condition of a
contract shall not be void by virtue of this Article by reason only that it
prohibits any person from selling goods other than those supplied by a
specified person, or, in the case of a contract for the lease of or licence to
use a patented article, that it reserves to the lessor or licensor or the
lessor or licensor’s nominees the right to supply such new parts of the
patented article as may be required to put or keep it in repair.
20 Determination
of certain contracts
(1) Any contract for the
sale or lease of a patented article or for licence to manufacture, use or work
a patented article or process, or relating to any such sale, lease or licence,
whether made before or after the coming into force of this Law, may at any time
after the patent or all the patents by which the article or process was
protected at the time of the making of the contract has or have ceased to be in
force, and notwithstanding anything to the contrary in the contract or in any other
contract, be determined by either party on giving 3 months’ notice in
writing to the other party.
(2) The provisions of this Article
shall be without prejudice to any right of determining a contract exercisable
apart from this Article.
21 Special
provisions as to vessels, aircraft and land vehicles
(1) Where a vessel or
aircraft registered in a convention country, or a land vehicle owned by a person
ordinarily resident in such a country, comes into Jersey (including the
territorial waters thereof) temporarily or accidentally only, the rights
conferred by a registered patent for an invention shall not be deemed to be
infringed by the use of the invention –
(a) in
the body of the vessel or in the machinery, tackle, apparatus or other
accessories thereof, so far as the invention is used on board the vessel and
for its actual needs only; or
(b) in
the construction or working of the aircraft or land vehicle or of the
accessories thereof,
as the case may be.
(2) This Article shall not
affect the provisions of section 53 of the Civil Aviation Act 1949 of the
United Kingdom, as extended to Jersey by the Civil Aviation Act (Channel
Islands) Order 1953.
(3) In this Article,
“convention country” means –
(a) any
country which is bound by the Convention for the Protection of Industrial
Property signed at Paris on 20th March 1883 (such Convention also being
known as the Paris Convention); and
(b) any
other country which is a member of the World Trade Organisation.[22]
22 Falsification
of register, etc.
If any person makes or causes to be made a false entry in the
register of patents, or a writing falsely purporting to be a copy of an entry
in that register, or produces or tenders or causes to be produced or tendered
in evidence any such writing, knowing the entry or writing to be false, the person
shall be liable to imprisonment for a term of 2 years and to a fine.[23]
23 Unauthorized
claim of patent rights
If any person falsely represents that any article sold by the person
is a patented article, the person shall be liable to a fine; and for the
purposes of this provision a person who sells an article having stamped,
engraved or impressed thereon or otherwise applied thereto the word
“patent” or “patented”, and the word “Jersey”
or the words “Registered in Jersey”, or any other word expressing
or implying that the article is a patented article, shall be deemed to
represent that the article is a patented article. [24]
24 Rules
of Court
(1) The power to make rules
of court under the Royal Court (Jersey)
Law 1948, shall include a power to make rules for the purposes of this Law
and proceedings thereunder, and such rules may make provision –
(a) for
the appointment of advisers to assist the court in proceedings for infringement
of patents and proceedings under this Law, and for regulating the functions of
such advisers;
(b) for
enabling persons to take proceedings under this Law in forma pauperis;
(c) for
the hearing by the court in vacation of all such matters under this Law as may
require to be immediately or promptly heard.
(2) [25]
24A Regulations[26]
(1) The States by
Regulations may make such provision with respect to patents as they think fit,
including amendment of this Law or any other enactment, in relation to any of
the following –
(a) in so
far as any such provision is, in the opinion of the States, consistent with any
international treaty or agreement which applies to Jersey relating to
patents –
(i) the grant or
registration of a patent in Jersey (whether by way of first grant, registration
or re-registration), and
(ii) the
exercise and enforcement of any title or interest in a patent, including giving
effect to any title or interest in a patent granted or registered in a country
or territory otherwise than Jersey;
(b) giving
effect in Jersey to any international treaty or agreement ratified by or on
behalf of Jersey or which extends to Jersey, or for the purpose of enabling the
ratification or extension of any international treaty or agreement;
(c) implementing,
in Jersey, any obligation of the United Kingdom under the EU Treaties, as
defined in the European Union (Jersey)
Law 1973, whether or not that obligation applies to Jersey;
(d) giving
effect in Jersey to any provision that applies in the United Kingdom.
(2) Regulations under
paragraph (1) may, without prejudice to the generality of that paragraph,
do any of the following –
(a) confer
rights on any person or body with regard to the administration of, and
decisions relating to, any title or interest in a patent, including allowing
the Minister to make provision for such matters by Order;
(b) make
provision for appeals;
(c) make
provision for enforcement including civil remedies or criminal penalties for
infringement of any title or interest in a patent;
(d) make
provision for fees, including allowing the Minister to prescribe fees by Order;
(e) make
provision for such supplementary, transitional and incidental matters as the
States consider to be necessary or expedient.
25 Powers
of States as regards fees
For the avoidance of doubt, it is declared that the power to fix
fees conferred upon the States by –
(a) La Loi (1930) constituant le Département du Vicomte;
(b) La Loi (1930) constituant le Département des Officiers de la
Couronne;
(c) La Loi (1931) constituant le Département du Greffe Judiciaire;
(d) La Loi (1936) touchant la Rétribution de la charge de Bailli,
or by any Law, whether passed before or after the commencement of
this Law, amending the said Laws, shall include a power to fix fees in respect
of the registration of patents and applications therefor, and in respect of all
other matters relating to patents under this Law.
26 Saving
of vested rights
Nothing in this Law shall be deemed to derogate from such right as
may be possessed by any person by virtue of the registration in the rolls of
the Royal Court before the coming into force of this Law of any document
relating to an invention.
26A Transitional
provisions[27]
(1) Any act done on or
after the date that the Intellectual Property (Registered Rights)
(Miscellaneous Provisions) (Jersey) Law 2015 enters into force pursuant to
any agreement or arrangement made before that date shall not constitute
infringement of a registered patent if it would not have constituted an
infringement before that date.
(2) For the avoidance of
doubt, any act done before the date that the Intellectual Property (Registered
Rights) (Miscellaneous Provisions) (Jersey) Law 2015 came into force shall
not be treated as infringing a patent from that date if the act did not
infringe a patent before that date.
27 Citation
This Law may be cited as the Patents (Jersey) Law 1957.