Jersey Law 10/1957
PATENTS (JERSEY) LAW, 1957.
____________
A LAW to
provide for the protection in the Island of inventions the subject of letters
patent, and for matters incidental thereto, sanctioned by Order of Her Majesty
in Council of the
29th day of APRIL, 1957.
(Registered
on the 18th day of May, 1957).
____________
STATES OF JERSEY.
____________
The 22nd day of
January, 1957.
____________
THE STATES, subject to the sanction of
Her Most Excellent Majesty in Council, have adopted the following Law: -
ARTICLE 1
DEFINITIONS
(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 ;
“the Comptroller-General” means the Comptroller-General
of Patents, Designs and Trade Marks in the United Kingdom ;
“Government department” means a department of Her
Majesty’s Government in the United Kingdom ;
“invention” means any manner of new manufacture the
subject of Letters Patent and grant of privilege within section six of the
Statute of Monopolies and any new method or process of testing applicable to
the improvement or control of manufacture ;
“patent” means Letters Patent for an invention ;
“the Patents Act” means the Patents Act, 1949 (12, 13
and 14 Geo. 6, c. 87) ;
“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 ;
“register” means enter in the register of patents ;
“the register of patents” means the register of patents
kept in pursuance of Article 3 of this Law ;
“the Statute of Monopolies” means the Act of the
twenty-first year of the reign of King James the First, chapter three,
intituled “An Act concerning monopolies and dispensations with penal laws
and forfeitures thereof”.
(2) In
Articles 3, 4, 6, 9, 10, 11 and 14 of this Law, “the court” means
the “Samedi” division of the Royal Court.
ARTICLE 2
LIMITATION OF POWERS OF ROYAL COURT IN RELATION TO REGISTRATION OF
PATENTS
As from the coming into force of this Law, no patent 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.
ARTICLE 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.
ARTICLE 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) Every
application under this Article shall be made in such manner as may be
prescribed by rules of court and shall be accompanied by a certified copy of
the specification or specifications (including drawings, if any) of the patent
granted and in force in the United Kingdom and a certificate of the
Comptroller-General setting forth the rights or interests to which the
application relates.
(4) Within
eight 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
two 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 the Island before the date which, in
accordance with section five of the Patents Act, is the priority date of that
claim ; or
(b) by any person on the
ground that, three years having elapsed since the date of the grant of the
patent in the United Kingdom, the patented invention is being used in the
Island on a commercial scale.
(6) Where
notice of opposition is given by virtue of paragraph (5) of this Article, 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) of this
Article and there appears to the Judicial Greffier to be no reason why the
application for registration should not be granted, he shall register the
patent and issue a certificate of registration.
ARTICLE 5
REGISTRATION OF EXTENSION, ADDITIONS AND AMENDMENTS AND OF
RESTORATION OF LAPSED PATENTS
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 ; or
(b) granted
a patent of addition for the improvement or modification of the patent so
registered ; or
(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 may be prescribed by rules of court 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.
ARTICLE 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, he 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 may be prescribed by rules of
court and shall be accompanied by a certificate of the Comptroller-General
relating to the registration in the United Kingdom of such title or interest.
(3) On
the receipt of such an application, the Judicial Greffier shall register the
title or interest unless it appears doubtful to him whether the application
should be granted, or any question arises in relation to the application, in
which event he 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.
ARTICLE 7
LEGAL PRESENCE IN ISLAND UNNECESSARY FOR PURPOSE OF MAKING
APPLICATIONS
An application under Article 4, 5 or 6 of this Law may be made
notwithstanding the fact that the person making the application is not present
in the Island and is not represented by an attorney present in the Island so
long as he has notified the Judicial Greffier of an address in the Island to
which any notice or summons in connexion 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.
ARTICLE 8
EFFECT OF REGISTRATION
(1) Subject
to the provisions of this Law, the registration of a patent or any title or
interest in a patent shall confer on the patentee the same privileges and
rights in the Island as are possessed for the time being by the patentee in the
United Kingdom by virtue of the patent or the title or interest so registered,
but, save as aforesaid, no patent shall have effect as against any person.
(2) Privileges
and rights so conferred shall date from the date of the patent in the United
Kingdom and shall continue in force for so long only as the patent remains in
force in the United Kingdom :
Provided that no action for infringement of the patent shall be
entertained –
(a) in
respect of any manufacture, use or sale of the invention prior to the date of
the registration of the patent ; or
(b) where
an order has been made extending the term of the patent or restoring the
patent, unless such order has been registered.
ARTICLE 9
POWER OF COURT TO REVOKE REGISTRATION
(1) A
petiton 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 his
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 ; or
(b) that
the invention, so far as claimed in any claim of the complete specification,
has been manufactured, used or sold in the Island before the date which, in
accordance with section five of the Patents Act, is the priority date of that
claim ; or
(c) that
more than three years had elapsed between the date of the grant of the patent
in the United Kingdom and the date of the registration and that, on the latter
date, the patented invention was being used in the Island on a commercial scale
; or
(d) that,
three years having elapsed since the date of the registration, the patented
invention (being one capable of being used in the Island) is not, at the time
of the presentation of the petition, being used in the Island on a commercial
scale ; or
(e) that,
three years having elapsed since the date of the registration, the demand in
the Island for the patented article is not being met to an adequate extent and
on reasonable terms ;
and the court, after hearing the parties if desirous of being
heard, may make an order revoking any such registration or dismissing the
petition.
(2) In
proceedings under this Article, the court may determine any question which it
may be necessary or expedient to determine in connexion with such revocation.
ARTICLE 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 connexion with the rectification
of the register.
ARTICLE 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, he shall give
notice of the proposal to the patentee and to any other person who appears to
him 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 privileges and rights conferred by the registration of
the patent, he 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 of this Law.
ARTICLE 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 Her Majesty’s Government in 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.
(3) The
purchaser of any articles sold in the exercise of powers conferred by this
Article, and any person claiming through him, shall have power to deal with
them in the same manner as if the patent were held on behalf of Her Majesty.
ARTICLE 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 the Island 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 of this
Law.
(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 he 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 him with such information as
to the extent of the use as he 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 him, 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 any Committee of the States.
ARTICLE 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 of this Law, 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 of this Law ;
(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 he
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.
ARTICLE 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 he 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.
ARTICLE 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
registration of the patent or after the date of the licence, whichever is the
later, 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.
(2) In
any proceedings taken by the holder of an exclusive licence by virtue of this
Article, the patentee shall, unless he 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 he appears and takes part in the proceedings.
ARTICLE 17
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 him for any such relief as is mentioned in paragraph
(2) of this Article.
(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 he 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.
ARTICLE 18
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 his nominees, or prohibit him from acquiring except from the vendor, lessor
or licensor, or his 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 his 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) of this Article ; and
(b) the purchaser, lessee
or licensee is entitled under the contract to relieve himself of his liability
to observe the condition upon giving to the other party three months’
notice in writing and subject to payment to him 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 sub-paragraph (a)
of paragraph (3) of this Article.
(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 his nominees the right to supply such new parts of the patented article as
may be required to put or keep it in repair.
ARTICLE 19
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
three 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.
ARTICLE 20
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 the Island
(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 fifty-three of the Civil
Aviation Act, 1949, as extended to the Island by the Civil Aviation Act
(Channel Islands) Order, 1953 (which
exempts certain aircraft from seizure on patent claims).
(3) In
this Article, “convention country” means a country declared by an
Order in Council made under section sixty-eight of the Patents Act, and
registered by the Royal Court, to be a convention country for the purposes of
section seventy of that Act.
ARTICLE 21
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, he
shall be liable to imprisonment for a term not exceeding two years or to a fine
not exceeding one hundred pounds or to both such imprisonment and fine.
ARTICLE 22
UNAUTHORIZED CLAIM OF PATENT RIGHTS
If any person falsely represents that any article sold by him is a
patented article, he shall be liable to a fine not exceeding five pounds ; 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.
ARTICLE 23
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) The
remuneration of any adviser appointed under rules made in pursuance of this
Article shall be defrayed out of the General Revenues of the States.
ARTICLE 24
POWERS OF STATES AS REGARDS FEES
For the avoidance of doubt, it is hereby 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.
ARTICLE 25
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.
ARTICLE 26
SHORT TITLE AND COMMENCEMENT
(1) This
Law may be cited as the Patents (Jersey) Law, 1957.
(2) This
Law shall come into force on such day or days as the States may by Act appoint,
and different days may be fixed for different purposes and different provisions
of this Law.
To be printed, published and posted.
F. DE L. BOIS,
Greffier of the States.