S T A T U T O R Y  I N S T R U M E N T S  
2013 No. 2602 
PATENTS 
The Patents (Isle of Man) Order 2013 
Made - - - - 9th October 2013 
Laid before Parliament 16th October 2013 
Coming into force - - 11th November 2013 
 
At the Court at Buckingham Palace, the 9th day of O ctober 2013 
Present, 
The Queen’s Most Excellent Majesty in Council 
 
Her Majesty, in exercise of the powers conferred up on Her by sections 124(3) and 132(2) of the 
Patents Act 1977( a), is pleased, by and with the advice of Her Privy Council, to make the 
following Order: 
Citation and commencement 
1.  This Order may be cited as the Patents (Isle of Ma n) Order 2013 and shall come into force on 
11th November 2013. 
Modification of the Patents Act 1977 in its applica tion to the Isle of Man 
2.  The Patents Act 1977 shall, in its application to the Isle of Man, have effect subject to the 
modifications specified in the Schedule to this Ord er. 
Revocation 
3.  The Patents Act 1977 (Isle of Man) Order 2003( b) is revoked. 
 
 
 
 Richard Tilbrook 
 Clerk of the Privy Council 
                                                                                                                                            
(a) 1977 c.37. 
(b) S.I. 2003/1249.  2  SCHEDULE Article 2 
Modifications of the Patents Act 1977 in its applic ation to the Isle of Man 
1.  References to the Crown shall be construed as incl uding the Crown in right of the 
Government of the Isle of Man. 
2. —(1) References to an Act of Parliament (including the Patents Act 1977) or to a provision of 
such an Act shall be construed as references to tha t Act or provision as it has effect in the Isle of 
Man. 
(2)  References to an Act of Tynwald shall be construed as references to it as amended or 
replaced by or under any other such enactment. 
3.  References to a government department shall be con strued as including references to a 
Department of the Government of the Isle of Man, an d in relation to such a Department as if 
references to the Treasury were references to the T reasury of the Isle of Man. 
4.  For the purposes of any arbitration in pursuance o f the Patents Act 1977, and of the 
application thereto of the Arbitration Act 1976 (an  Act of Tynwald)( a), the Act of 1977 shall be 
treated as an Act of Tynwald. 
5.  In section 1 (patentable inventions), for subsecti ons (3) and (4) substitute— 
“(3) A patent shall not be granted for an invention  the commercial exploitation of which 
would be contrary to public policy or morality. 
(4) For the purposes of subsection (3) above exploi tation shall not be regarded as contrary 
to public policy or morality only because it is pro hibited by any law in force in the United 
Kingdom or any part of it.”. 
6.  In section 5 (priority date), after subsection (5)  insert— 
“(6) References in subsection (5) above to a conven tion country include references to a 
country, other than the United Kingdom, which is a member of the World Trade 
Organisation.”. 
7.  In sections 22(9)(b) (information prejudicial to n ational security) and 23(3)(b) (restrictions on 
applications abroad), for “indictment, to imprisonm ent” substitute “information, to custody”. 
8. —(1) In section 32(9) (register of patents) omit “S ubject to subsection (12) below,”. 
(2)  In section 32(11) omit “, subject to subsection (12 ) below,”. 
9.  In section 40(6) (compensation of employees), in t he definition of “relevant collective 
agreement”, for “Act 1974” substitute “(Consolidati on) Act 1992”. 
10.  In section 41 (amount of compensation), at the end  add the following subsection— 
“(12) In the Isle of Man an order made under sectio n 40 above by the comptroller for the 
payment of any sums may be enforced as if it were a  judgment or order of the court for the 
payment of money.”. 
11.  Omit sections 44 and 45. 
12.  In section 46(3)(c) (licences of right), for “Euro pean Economic Community” substitute 
“European Union”. 
13.  For section 48 substitute— 
                                                                                                                                            
(a) 1976 c.44 (Isle of Man).  3 “Compulsory licences: general 
48. —(1) At any time after the expiration of three year s, or of such other period as may be 
prescribed, from the date of the grant of the paten t, any person may apply to the comptroller 
on one or more of the relevant grounds— 
(a) for a licence under the patent; 
(b) for an entry to be made in the register to the effect that licences under the patent 
are to be available as of right; or 
(c) where the applicant is a government department,  for the grant to any person 
specified in the application of a licence under the  patent. 
(2) Subject to sections 48A and 48B below, if he is  satisfied that any of the relevant 
grounds are established, the comptroller may— 
(a) where the application is under subsection (1)(a ) above, order the grant of a licence 
to the applicant on such terms as the comptroller t hinks fit; 
(b) where the application is under subsection (1)(b ) above, make such an entry as is 
there mentioned; 
(c) where the application is under subsection (1)(c ) above, order the grant of a licence 
to the person specified in the application on such terms as the comptroller thinks 
fit. 
(3) An application may be made under this section i n respect of a patent even though the 
applicant is already the holder of a licence under the patent; and no person shall be estopped 
or barred from alleging any of the matters specifie d in the relevant grounds by reason of 
any admission made by him, whether in such a licenc e or otherwise, or by reason of his 
having accepted a licence. 
(4) In this section “the relevant grounds” means— 
(a) in the case of an application made in respect o f a patent whose proprietor is a 
WTO proprietor, the grounds set out in section 48A( 1) below; 
(b) in any other case, the grounds set out in secti on 48B(1) below. 
(5) A proprietor is a WTO proprietor for the purpos es of this section and sections 48A, 
48B, 50 and 52 below if— 
(a) he is a national of, or is domiciled in, a coun try which is a member of the World 
Trade Organisation; or 
(b) he has a real and effective industrial or comme rcial establishment in such a 
country. 
(6) A rule prescribing any such other period under subsection (1) above shall not be made 
unless a draft of the rule has been laid before, an d approved by a resolution of, each House 
of Parliament. 
Compulsory licences: WTO proprietors 
48A. —(1) In the case of an application made under secti on 48 above in respect of a 
patent whose proprietor is a WTO proprietor, the re levant grounds are— 
(a) where the patented invention is a product, that  a demand in the United Kingdom 
for that product is not being met on reasonable ter ms; 
(b) that by reason of the refusal of the proprietor  of the patent concerned to grant a 
licence or licences on reasonable terms— 
 (i) the exploitation in the United Kingdom of any other patented invention which 
involves an important technical advance of consider able economic 
significance in relation to the invention for which  the patent concerned was 
granted is prevented or hindered, or  4  (ii) the establishment or development of commercia l or industrial activities in the 
United Kingdom is unfairly prejudiced; 
(c) that by reason of conditions imposed by the pro prietor of the patent concerned on 
the grant of licences under the patent, or on the d isposal or use of the patented 
product or on the use of the patented process, the manufacture, use or disposal of 
materials not protected by the patent, or the estab lishment or development of 
commercial or industrial activities in the United K ingdom, is unfairly prejudiced. 
(2) No order or entry shall be made under section 4 8 above in respect of a patent whose 
proprietor is a WTO proprietor unless— 
(a) the applicant has made efforts to obtain a lice nce from the proprietor on reasonable 
commercial terms and conditions; and 
(b) his efforts have not been successful within a r easonable period. 
(3) No order or entry shall be so made if the paten ted invention is in the field of semi-
conductor technology. 
(4) No order or entry shall be made under section 4 8 above in respect of a patent on the 
ground mentioned in subsection (1)(b)(i) above unle ss the comptroller is satisfied that the 
proprietor of the patent for the other invention is  able and willing to grant the proprietor of 
the patent concerned and his licensees a licence un der the patent for the other invention on 
reasonable terms. 
(5) A licence granted in pursuance of an order or e ntry so made shall not be assigned 
except to a person to whom the patent for the other  invention is also assigned. 
(6) A licence granted in pursuance of an order or e ntry made under section 48 above in 
respect of a patent whose proprietor is a WTO propr ietor— 
(a) shall not be exclusive; 
(b) shall not be assigned except to a person to who m there is also assigned the part of 
the enterprise that enjoys the use of the patented invention, or the part of the 
goodwill that belongs to that part; 
(c) shall be predominantly for the supply of the ma rket in the United Kingdom; 
(d) shall include conditions entitling the propriet or of the patent concerned to 
remuneration adequate in the circumstances of the c ase, taking into account the 
economic value of the licence; and 
(e) shall be limited in scope and in duration to th e purpose for which the licence was 
granted. 
Compulsory licences: other cases 
48B. —(1) In the case of an application made under secti on 48 above in respect of a patent 
whose proprietor is not a WTO proprietor, the relev ant grounds are— 
(a) where the patented invention is capable of bein g commercially worked in the 
United Kingdom, that it is not being so worked or i s not being so worked to the 
fullest extent that is reasonably practicable; 
(b) where the patented invention is a product, that  a demand for the product in the 
United Kingdom— 
 (i) is not being met on reasonable terms, or 
 (ii) is being met to a substantial extent by impor tation from a country which is not 
a member State; 
(c) where the patented invention is capable of bein g commercially worked in the 
United Kingdom, that it is being prevented or hinde red from being so worked— 
 (i) where the invention is a product, by the impor tation of the product from a 
country which is not a member State,  5  (ii) where the invention is a process, by the impo rtation from such a country of a 
product obtained directly by means of the process o r to which the process has 
been applied; 
(d) that by reason of the refusal of the proprietor  of the patent to grant a licence or 
licences on reasonable terms— 
 (i) a market for the export of any patented produc t made in the United Kingdom 
is not being supplied, or 
 (ii) the working or efficient working in the Unite d Kingdom of any other patented 
invention which makes a substantial contribution to  the art is prevented or 
hindered, or 
 (iii) the establishment or development of commerci al or industrial activities in the 
United Kingdom is unfairly prejudiced; 
(e) that by reason of conditions imposed by the pro prietor of the patent on the grant of 
licences under the patent, or on the disposal or us e of the patented product or on 
the use of the patented process, the manufacture, u se or disposal of materials not 
protected by the patent, or the establishment or de velopment of commercial or 
industrial activities in the United Kingdom is unfa irly prejudiced. 
(2) Where— 
(a) an application is made on the ground that the p atented invention is not being 
commercially worked in the United Kingdom or is not  being so worked to the 
fullest extent that is reasonably practicable; and 
(b) it appears to the comptroller that the time whi ch has elapsed since the publication 
in the journal of a notice of the grant of the pate nt has for any reason been 
insufficient to enable the invention to be so worke d, 
he may by order adjourn the application for such pe riod as will in his opinion give 
sufficient time for the invention to be so worked. 
(3) No order or entry shall be made under section 4 8 above in respect of a patent on the 
ground mentioned in subsection (1)(a) above if— 
(a) the patented invention is being commercially wo rked in a country which is a 
member State; and 
(b) demand in the United Kingdom is being met by im portation from that country. 
(4) No entry shall be made in the register under se ction 48 above on the ground 
mentioned in subsection (1)(d)(i) above, and any li cence granted under section 48 above on 
that ground shall contain such provisions as appear  to the comptroller to be expedient for 
restricting the countries in which any product conc erned may be disposed of or used by the 
licensee. 
(5) No order or entry shall be made under section 4 8 above in respect of a patent on the 
ground mentioned in subsection (1)(d)(ii) above unl ess the comptroller is satisfied that the 
proprietor of the patent for the other invention is  able and willing to grant to the proprietor 
of the patent concerned and his licensees a licence  under the patent for the other invention 
on reasonable terms.”. 
14. —(1) In section 50(1) (applications under section 4 8), after “in respect of a patent” insert 
“whose proprietor is not a WTO proprietor”. 
(2)  In section 50(2), for “such an application” substit ute “any application under section 48 
above”. 
15.  In the side note to section 51 (powers exercisable  in consequence of a report of the 
Competition Commission) and in sections 51(1) and 5 3(2) (compulsory licences), for 
“Monopolies and Mergers Commission” substitute “Com petition Commission”. 
16.  For section 52 substitute—  6 “Opposition, appeal and arbitration 
52. —(1) The proprietor of the patent concerned or any other person wishing to oppose an 
application under sections 48 to 51 above may, in a ccordance with rules, give to the 
comptroller notice of opposition; and the comptroll er shall consider any opposition in 
deciding whether to grant the application. 
(2) Where an order or entry has been made under sec tion 48 above in respect of a patent 
whose proprietor is a WTO proprietor— 
(a) the proprietor or any other person may, in acco rdance with rules, apply to the 
comptroller to have the order revoked or the entry cancelled on the grounds that 
the circumstances which led to the making of the or der or entry have ceased to 
exist and are unlikely to recur; 
(b) any person wishing to oppose an application und er paragraph (a) above may, in 
accordance with rules, give to the comptroller noti ce of opposition; and 
(c) the comptroller shall consider any opposition i n deciding whether to grant the 
application. 
(3) If it appears to the comptroller on an applicat ion under subsection (2)(a) above that 
the circumstances which led to the making of the or der or entry have ceased to exist and are 
unlikely to recur, he may— 
(a) revoke the order or cancel the entry; and 
(b) terminate any licence granted to a person in pu rsuance of the order or entry subject 
to such terms and conditions as he thinks necessary  for the protection of the 
legitimate interests of that person. 
(4) Where an appeal is brought— 
(a) from an order made by the comptroller in pursua nce of an application under 
sections 48 to 51 above; 
(b) from a decision of his to make an entry in the register in pursuance of such an 
application; 
(c) from a revocation or cancellation made by him u nder subsection (3) above; or 
(d) from a refusal of his to make such an order, en try, revocation or cancellation, 
the Attorney General, the appropriate Law Officer w ithin the meaning of section 4A of the 
Crown Suits (Scotland) Act 1857( a), the Attorney General for Northern Ireland or the  
Attorney General for the Isle of Man or such other counsel as any of them may appoint, 
shall be entitled to appear and be heard. 
(5) Where an application under section 48 to 51 abo ve or subsection (2) above is 
opposed, and either— 
(a) the parties consent, or 
(b) the proceedings require a prolonged examination  of documents or any scientific or 
local investigation which cannot in the opinion of the comptroller conveniently be 
made before him, 
the comptroller may at any time order the whole pro ceedings, or any question or issue of 
fact arising in them, to be referred to an arbitrat or or arbiter agreed on by the parties or, in 
default of agreement, appointed by the comptroller.  
(6) Where the whole proceedings are so referred, un less the parties otherwise agree 
before the award of the arbitrator or arbiter is ma de, and appeal shall lie from the award to 
the court. 
(7) Where a question or issue of fact is so referre d, the arbitrator or arbiter shall report his 
findings to the comptroller.”. 
                                                                                                                                            
(a) 1857 c.44.  7 17.  In section 54(2) (where patented invention is bein g worked abroad), after “means a country 
other than a member State” insert “or a member of t he World Trade Organisation”. 
18.  In section 58(12) (references of disputes as to Cr own use), after “Wales” insert “, the Isle of 
Man”. 
19. —(1) In section 60(5) (meaning of infringement), af ter paragraph (f) insert— 
“(g) it consists of the use by a farmer of the prod uct of his harvest for propagation or 
multiplication by him on his own holding, where the re has been a sale of plant 
propagating material to the farmer by the proprieto r of the patent or with his 
consent for agricultural use; 
(h) it consists of the use of an animal or animal r eproductive material by a farmer for 
an agricultural purpose following a sale to the far mer, by the proprietor of the 
patent or with his consent, of breeding stock or ot her animal reproductive material 
which constitutes or contains the patented inventio n; 
(i) it consists of— 
 (i) an act done in conducting a study, test or tri al which is necessary for and is 
conducted with a view to the application of paragra phs 1 to 5 of article 13 of 
Directive 2001/82/EC or paragraphs 1 to 4 of articl e 10 of Directive 
2001/83/EC, or 
 (ii) any other act which is required for the purpo se of the application of those 
paragraphs.”. 
(2)  After section 60(6) insert— 
“(6A) Schedule A1 contains— 
(a) provisions restricting the circumstances in whi ch subsection (5)(g) applies; and 
(b) provisions which apply where an act would const itute an infringement of a patent 
but for subsection (5)(g). 
(6B) For the purposes of subsection (5)(h), use for  an agricultural purpose— 
(a) includes making an animal or animal reproductiv e material available for the 
purposes of pursuing the farmer’s agricultural acti vity; but 
(b) does not include sale within the framework, or for the purposes, of a commercial 
reproduction activity. 
(6C) In paragraphs (g) and (h) of subsection (5) “s ale” includes any other form of 
commercialisation.”. 
(3)  In section 60(7)— 
(a)  in the definitions of “relevant ship” and “relevant  aircraft, hovercraft or vehicle”, after 
“1983” insert “or which is a member of the World Tr ade Organisation”; 
(b)  in the definition of “exempted aircraft”, for “sect ion 53 of the Civil Aviation Act 1949” 
substitute “section 89 of the Civil Aviation Act 19 82(a)”; 
(c)  at the end insert ― 
““Directive 2001/82/EC” means Directive 2001/82/EC of the European Parliament and 
of the Council on the Community code relating to ve terinary medicinal products as 
amended by Directive 2004/28 of the European Parlia ment and of the Council( b); 
“Directive 2001/83/EC” means Directive 2001/83/EC o f the European Parliament and 
of the Council on the Community code relating to me dicinal products for human use, as 
amended by Directive 2002/98/EC of the European Par liament and of the Council, by 
                                                                                                                                            
(a) 1982 c.16. 
(b) OJ No. L311, 28.11.2001, p.1.  8 Commission Directive 2003/63/EC and by Directives 2 004/24/EC and 2004/27/EC of 
the European Parliament and of the Council( a).”. 
20.  In section 61(7) (proceedings for infringement of patent)( b), at the end insert ― 
“(d) in the Isle of Man, payment of the sum may be enforced as if it were a judgment or 
order of the court for the payment of money.”. 
21. —(1) In the side note to section 62 (damages for in fringement), for “Restrictions on recovery 
of” substitute “Further provisions as to”. 
(2)  In section 62(3), for the words from “no damages” o nwards substitute— 
“the court or the comptroller shall, when awarding damages or making an order for an 
account of profits in proceedings for an infringeme nt of the patent committed before the 
decision to allow the amendment, take into account the following— 
(a) whether at the date of infringement the defenda nt or defender knew, or had 
reasonable grounds to know, that he was infringing the patent; 
(b) whether the specification of the patent as publ ished was framed in good faith and 
with reasonable skill and knowledge; 
(c) whether the proceedings are brought in good fai th.”. 
(3)  After section 62(3) insert— 
“(3A) Where in an action for infringement of a pate nt it is shown that the defendant 
knew, or had reason to believe, that he was committ ing an infringement, the damages 
awarded to the claimant shall be appropriate to the  actual prejudice he suffered as a result of 
the infringement. 
(3B) The court— 
(a) in awarding such damages shall take into accoun t all appropriate aspects, including 
in particular— 
 (i) the negative economic consequences, including any lost profits, which the 
claimant has suffered; 
 (ii) any unfair profits made by the defendant; and  
 (iii) elements other than economic factors, includ ing the moral prejudice caused to 
the claimant by the infringement; or 
(b) may where appropriate award such damages on the  basis of the royalties or fees 
which would have been due had the defendant obtaine d a licence.”. 
22.  In section 63(2) (relief for infringement of parti ally valid patent), for the words from “not 
grant relief” onwards substitute— 
“, when awarding damages, costs or expenses or maki ng an order for an account of profits, 
take into account the following— 
(a) whether at the date of the infringement the def endant or defender knew, or had 
reasonable grounds to know, that he was infringing the patent; 
(b) whether the specification of the patent was fra med in good faith and with 
reasonable skill and knowledge; 
(c) whether the proceedings are brought in good fai th; 
and any relief granted shall be subject to the disc retion of the court or the comptroller as to 
costs or expenses and as to the date from which dam ages or an account should be 
reckoned. ”. 
23.  In section 68 (effect of non-registration on infri ngement proceedings) ― 
                                                                                                                                            
(a) OJ No, L136, 30.4.2004, p.58. 
(b) Section 61(7) was inserted by section 11 of the P atents Act 2004 (c.16).  9 (a)  omit the words from “, the court or comptroller sha ll” to “occurring”; and 
(b)  before “unless” insert “, in proceedings for such a n infringement, the court or comptroller 
shall not award him costs or expenses”. 
24.  After section 76 insert— 
“Biotechnological inventions 
76A. —(1) Any provision of, or made under, this Act is t o have effect in relation to a 
patent or an application for a patent which concern s a biotechnological invention, subject to 
the provisions of Schedule A2. 
(2) Nothing in this section or Schedule A2 is to be  read as affecting the application of any 
provision in relation to any other kind of patent o r application for a patent.”. 
25.  In section 93 (enforcement of orders for costs), a t the end insert— 
“(d) in the Isle of Man, the order may be enforced as if it were a judgment or order of 
the court for the payment of money.”. 
26.  Omit section 96. 
27.  In section 97(2) (appeals from the comptroller), o mit the words from “and the Patents Court” 
onwards. 
28.  In section 107 (costs and expenses in proceedings before the comptroller), at the end 
insert— 
“(6) In the Isle of Man, any order under this secti on for the payments of costs may be 
enforced as if it were a judgment or order of the c ourt for the payment of money.”. 
29.  In section 109 (falsification of register), for “i ndictment, to imprisonment” substitute 
“information, to custody”. 
30.  After section 118 (information about patent applic ations) insert ― 
“Copyright in documents made available electronicall y for inspection under section 
118(1) 
118A. —(1) This section applies to documents made availab le for inspection under 
section 118(1). 
(2) Any copyright in the documents is not infringed  by— 
(a) the making available to the public of the docum ents by electronic transmission in 
such a way that members of the public may access th e documents from a place and 
at a time individually chosen by them; or 
(b) copying the documents for the purpose of facili tating the making available to the 
public of the documents as mentioned in paragraph ( a). 
(3) Nothing in this section is to be read as affect ing the generality of any provision made 
by Part III of the Copyright Act 1991 (an Act of Ty nwald)(a).”. 
31.  After section 124 (rules, regulations and orders; supplementary) insert— 
“Use of electronic communications 
124A. —(1) The comptroller may give directions as to the form and manner in which 
documents to be delivered to the comptroller— 
(a) in electronic form; or 
                                                                                                                                            
(a) 1991 c.8 (Isle of Man).  10  (b) using electronic communications, 
are to be delivered to him. 
(2) A direction under subsection (1) may provide th at in order for a document to be 
delivered in compliance with the direction it shall  be accompanied by one or more 
additional documents specified in the direction. 
(3) Subject to subsections (14) and (15), if a docu ment to which a direction under 
subsection (1) or (2) applies is delivered to the c omptroller in a form or manner which does 
not comply with the direction the comptroller may t reat the document as not having been 
delivered. 
(4) Subsection (5) applies in relation to a case wh ere— 
(a) a document is delivered using electronic commun ications, and 
(b) there is a requirement for a fee to accompany t he document. 
(5) The comptroller may give directions specifying—  
(a) how the fee shall be paid; and 
(b) when the fee shall be deemed to have been paid.  
(6) The comptroller may give directions specifying that a person who delivers a document 
to the comptroller in electronic form or using elec tronic communications cannot treat the 
document as having been delivered unless its delive ry has been acknowledged. 
(7) The comptroller may give directions specifying how a time of delivery is to be 
accorded to a document delivered to him in electron ic form or using electronic 
communications. 
(8) A direction under this section may be given— 
(a) generally; 
(b) in relation to a description of cases specified  in the direction; 
(c) in relation to a particular person or persons. 
(11) A direction under this section may be varied o r revoked by a subsequent direction 
under this section. 
(13) The delivery using electronic communications t o any person by the comptroller of 
any document is deemed to be effected, unless the c omptroller has otherwise specified, by 
transmitting an electronic communication containing  the document to an address provided 
or made available to the comptroller by that person  as an address of his for the receipt of 
electronic communications; and unless the contrary is proved such delivery is deemed to be 
effected immediately upon the transmission of the c ommunication. 
(14) A requirement of this Act that something must be done in the prescribed manner is 
satisfied in the case of something that is done— 
(a) using a document in electronic form, or 
(b) using electronic communications, 
only if the directions under this section that appl y to the manner in which it is done are 
complied with. 
(15) In the case of an application made as mentione d in subsection (14)(a) or (b) above, a 
reference in this Act to the application not having  been made in compliance with rules or 
requirements of this Act includes a reference to it s not having been made in compliance 
with any applicable directions under this section. 
(16) This section applies— 
(a) to delivery at, in, with or to the Patent Offic e as it applies to delivery to the 
comptroller; and 
(b) to delivery by the Patent Office as it applies to delivery by the comptroller.”.  11  32.  In section 125A (disclosure of invention( a)— 
(a)  in the side note, for “micro-organisms” substitute “biological material”; 
(b)  in subsection (1), for “requires for its performanc e the use of a micro-organism” 
substitute “involves the use of or concerns biologi cal material”; 
(c)  in subsection (2)(a), for “micro-organism” substitu te “biological material”. 
33.  Omit section 126. 
34.  After section 128 insert ― 
“EU compulsory licences 
128A. —(1) In this Act an “EU compulsory licence” means a  compulsory licence granted 
under Regulation (EC) No 816/2006 of the European P arliament and of the Council of 17 
May 2006 on compulsory licensing of patents relatin g to the manufacture of pharmaceutical 
products for export to countries with public health  problems( b) (referred to in this Act as 
“the Compulsory Licensing Regulation”). 
(2) In the application to EU compulsory licences of  the provisions of this Act listed in 
subsection (3)— 
(a) references to a licence under a patent, 
(b) references to a right under a patent, and 
(c) references to a proprietary interest under a pa tent, 
include an EU compulsory licence. 
(3) The provisions referred to in subsection (2) ar e— 
sections 32 and 33 (registration of patents etc); 
section 37 (determination of right to patent after grant); 
section 38 (effect of transfer etc of patent under section 37), apart from subsection 
(2) and subsections (3) to (5) so far as relating t o subsection (2); 
section 41 (amount of compensation); 
section 46(2) (notice of application for entry that  licences are available as of right); 
section 57(1) and (2) (rights of third parties in r espect of Crown use). 
(4) In the following provisions references to this Act include the Compulsory Licensing 
Regulation— 
sections 97 to 99B, 101 to 103, 105 and 107 (legal proceedings); 
section 119 (service by post); 
section 120 (hours of business and excluded days); 
section 121 (comptroller’s annual report); 
section 123 (rules); 
section 124A (use of electronic communications); 
section 130(8) (disapplication of Part 1 of Arbitra tion Act 1996( c)). 
(5) In section 108 (licences granted by order of co mptroller) the reference to a licence 
under section 11, 38, 48 or 49 includes an EU compu lsory licence. 
(6) References in this Act to the Compulsory Licens ing Regulation are to that Regulation 
as amended from time to time. 
                                                                                                                                            
(a) Section 125A was inserted by paragraph 30 of Sche dule 5 to the Copyright, Designs and Patents Act 19 88 (c.48). 
(b) OJ No. L 157, 9.6.2006, p.1. 
(c) 1996 c.23.  12  Supplementary protection certificates 
128B. —(1) Schedule 4A contains provision about the appli cation of this Act in relation to 
supplementary protection certificates and other pro vision about such certificates. 
(2) In this Act a “supplementary protection certifi cate” means a certificate issued under— 
(a) Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of 
a supplementary protection certificate for medicina l products( a), or 
(b) Regulation (EC) No 1610/96 of the European Parl iament and of the Council of 23 
July 1996 concerning the creation of a supplementar y protection certificate for 
plant protection products( b).”. 
35.  In section 130(1) (interpretation)— 
(a)  at the end of the definition of “court” insert— 
“(d) as respects the Isle of Man, the High Court of  Justice of the Isle of Man;”; 
(b)  at the appropriate places insert— 
““biological material” means any material containin g genetic information and capable 
of reproducing itself or being reproduced in a biol ogical system;”; 
““biotechnological invention” means an invention wh ich concerns a product consisting 
of or containing biological material or a process b y means of which biological material 
is produced, processed or used;”; 
““electronic communication” has the same meaning as  in the Electronic 
Communications Act 2000( c);”; 
““enactment” includes an Act of Tynwald;”; 
(c)  in the definition of “formal requirements” for “sec tion 17” substitute “section 15A”. 
36.  Before Schedule 1 insert— 
 “SCHEDULE A1 Section 60(5)(g)  
Derogation from patent protection in respect of bio technological 
inventions 
 
Interpretation 
1.  In this Schedule— 
“the Council Regulation” means Council Regulation ( EC) No. 2100/94 of 27th July 
1994 on Community plant variety rights( d); 
“farmer’s own holding” means any land which a farme r actually exploits for plant 
growing, whether as his property or otherwise manag ed under his own responsibility 
and on his own account; 
“the gazette” means the gazette published under sec tion 34 of the Plant Varieties and 
Seeds Act 1964( e); 
“protected material” means plant propagating materi al which incorporates material 
subject to a patent; 
                                                                                                                                            
(a) OJ No. L 182, 2.7.1992, p.1. 
(b) OJ No. L 198, 8.8.1996, p.30. 
(c) 2000 c.7. 
(d) OJ No. L 227, 1.9.1994, p.1. 
(e) 1964 c.14.  13  “relevant activity” means the use by a farmer of th e product of his harvest for 
propagation or multiplication by him on his own hol ding, where the product of the 
harvest constitutes or contains protected material;  
“relevant rights holder” means the proprietor of a patent to which protected material is 
subject; 
“seed” includes seed potatoes; 
“seed year” means the period from 1st July in one y ear to 30th June in the following 
year, both dates inclusive. 
 
Specified species 
2.  Section 60(5)(g) applies only to varieties of the following plant species and groups: 
 
Name Common Name 
Fodder plants   
Cicer arietinum L. Chickpea milkvetch 
Lupinus luteus L. Yellow lupin 
Medicago sativa L. Lucerne 
Pisum sativum L. (partim) Field pea 
Trifolium alexandrinum L. Berseem/Egyptian clover 
Trifolium resupinatum L. Persian clover 
Vicia faba Field bean 
Vicia sativa L Common vetch 
Cereals   
Avena sativa Oats 
Hordeum vulgare L. Barley 
Oryza sativa L. Rice 
Phalaris canariensis L. Canary grass 
Secale cereale L. Rye 
X Triticosecale Wittm. Triticale 
Triticum aestivum L. emend. Fiori et Paol. Wheat 
Triticum durum Desf. Durum wheat 
Triticum spelta L. Spelt wheat 
Potatoes   
Solanum tuberosum Potatoes 
Oil and fibre plants   
Brassica napus L. (partim) Swede rape 
Brassica rapa L. (partim) Turnip rape 
Linum usitatissimum Linseed with the exclusion of f lax 
 
Liability to pay equitable remuneration 
3. —(1) If a farmer’s use of protected material is aut horised by section 60(5)(g), he shall, 
at the time of the use, become liable to pay the re levant rights holder equitable 
remuneration. 
(2) That remuneration must be sensibly lower than t he amount charged for the production 
of protected material of the same variety in the sa me area with the holder’s authority. 
(3) Remuneration is to be taken to be sensibly lowe r if it would be taken to be sensibly 
lower within the meaning of Article 14(3) fourth in dent of the Council Regulation. 
 
Exemption for small farmers 
4. —(1) Paragraph 3 does not apply to a farmer who is considered to be a small farmer for 
the purposes of Article 14(3) third indent of the C ouncil Regulation.  14  (2) It is for a farmer who claims to be a small far mer to prove that he is such a farmer. 
 
Information to be supplied by farmer 
5. —(1) At the request of a relevant rights holder (“H ”), a farmer must tell H— 
(a) his name and address; 
(b) whether he has performed a relevant activity; a nd 
(c) if he has performed such an activity, the addre ss of the holding on which he 
performed it. 
(2) If the farmer has performed such an activity, h e must tell H whether he is— 
(a) liable to pay remuneration as a result of parag raph 3; or 
(b) not liable because he is a small farmer. 
(3) If the farmer has told H that he is liable to p ay remuneration as a result of paragraph 3, 
he must tell H— 
(a) the amount of the protected material used; 
(b) whether the protected material has been process ed for planting; and 
(c) if it has, the name and address of the person w ho processed it. 
(4) The farmer must comply with sub-paragraphs (2) and (3) when complying with sub-
paragraph (1). 
(5) If the farmer has told H that he is liable to p ay remuneration as a result of paragraph 3, 
he must (if H asks him to do so) tell H— 
(a) whether he used any protected material with the  authority of H within the same 
seed year; and 
(b) if he did, the amount used and the name and add ress of the person who supplied it. 
 
Information to be supplied by seed processor 
6. —(1) On the request of a relevant rights holder, a seed processor shall supply the 
following information— 
(a) the name and address of the seed processor; 
(b) the address of the seed processor’s principal p lace of business; and 
(c) whether the seed processor has processed seed o f a species specified in paragraph 
2 above. 
(2) If the seed processor has processed seed of a s pecies specified in paragraph 2 above 
he shall also supply the following information with  the information referred to in sub-
paragraph (1)— 
(a) the name and address of the person for whom the  processing was carried out; 
(b) the amount of seed resulting from the processin g; 
(c) the date processing commenced; 
(d) the date processing was completed; 
(e) the place where processing was carried out. 
 
Information to be supplied by relevant rights holde r 
7.  On the request of a farmer or a seed processor a r elevant rights holder shall supply the 
following information— 
(a) his name and address; and 
(b) the amount of royalty charged for certified see d of the lowest certification category 
for seed containing that protected material.  15   
Period in respect of which inquiry may be made 
8.  A request may be made under paragraph 5, 6, and 7 in respect of the current seed year 
and the three preceding seed years. 
 
Restriction on movement for processing from the hol ding 
9.  No person shall remove or cause to be removed from  a holding protected material in 
order to process it unless— 
(a) he has the permission of the relevant rights ho lder in respect of that protected 
material; 
(b) he has taken measures to ensure that the same p rotected material is returned from 
processing as is sent for processing and the proces sor has undertaken to him that 
the processor has taken measures to ensure that the  same protected material is 
returned from processing as is sent for processing;  or 
(c) he has the protected material processed by a se ed processor on the list of 
processors referred to in the gazette as being perm itted to process seed away from 
a holding. 
 
Confidentiality 
10. —(1) A person who obtains information pursuant to t his Schedule shall owe an 
obligation of confidence in respect of the informat ion to the person who supplied it. 
(2) Sub-paragraph (1) shall not have effect to rest rict disclosure of information— 
(a) for the purposes of, or in connection with, est ablishing the amount to be paid to the 
holder of rights pursuant to paragraph 3 and obtain ing payment of that amount, 
(b) for the purposes of, or in connection with, est ablishing whether a patent has been 
infringed, or 
(c) for the purposes of, or in connection with, any  proceedings for the infringement of 
a patent. 
 
Formalities 
11. —(1) A request for information under this Schedule,  and any information given in 
response to such a request, must be in writing. 
(2) Information requested under this Schedule must be given— 
(a) within 28 days; or 
(b) if the request specifies a longer period, withi n the specified period. 
 
Remedies 
12. —(1) If, in response to a request under this Schedu le, a person— 
(a) knowingly fails to provide information which he  is required by this Schedule to 
give, or 
(b) refuses to provide any such information, 
the court may order him to provide it. 
(2) Sub-paragraph (1) does not affect any of the co urt’s other powers to make orders. 
(3) A person who knowingly provides false informati on in response to a request under 
this Schedule is liable in damages to the person wh o made the request. 
(4) In any action for damages under sub-paragraph ( 3) the court must have regard, in 
particular to—  16  (a) how flagrant the defendant was in providing the  false information, and 
(b) any benefit which accrued to him as a result of  his providing false information, 
and shall award such additional damages as the just ice of the case may require. 
 SCHEDULE A2 Section 76A  
Biotechnological Inventions 
1.  An invention shall not be considered unpatentable solely on the ground that it 
concerns— 
(a) a product consisting of or containing biologica l material; or 
(b) a process by which biological material is produ ced, processed or used. 
2.  Biological material which is isolated from its nat ural environment or produced by 
means of a technical process may be the subject of an invention even if it previously 
occurred in nature. 
3.  The following are not patentable inventions— 
(a) the human body, at the various stages of its fo rmation and development, and the 
simple discovery of one of its elements, including the sequence or partial sequence 
of a gene; 
(b) processes for cloning human beings; 
(c) processes for modifying the germ line genetic i dentity of human beings; 
(d) uses of human embryos for industrial or commerc ial purposes; 
(e) processes for modifying the genetic identity of  animals which are likely to cause 
them suffering without any substantial medical bene fit to man or animal, and also 
animals resulting from such processes; 
(f) any variety of animal or plant or any essential ly biological process for the 
production of animals or plants, not being a microb iological or other technical 
process or the product of such a process. 
4.  Inventions which concern plants or animals may be patentable if the technical 
feasibility of the invention is not confined to a p articular plant or animal variety. 
5.  An element isolated from the human body or otherwi se produced by means of a 
technical process, including the sequence or partia l sequence of a gene, may constitute a 
patentable invention, even if the structure of that  element is identical to that of a natural 
element. 
6.  The industrial application of a sequence or partia l sequence of a gene must be disclosed 
in the patent application as filed. 
7.  The protection conferred by a patent on a biologic al material possessing specific 
characteristics as a result of the invention shall extend to any biological material derived 
from that biological material through propagation o r multiplication in an identical or 
divergent form and possessing those same characteri stics. 
8.  The protection conferred by a patent on a process that enables a biological material to 
be produced possessing specific characteristics as a result of the invention shall extend to 
biological material directly obtained through that process and to any other biological 
material derived from the directly obtained biologi cal material through propagation or 
multiplication in an identical or divergent form an d possessing those same characteristics. 
9.  The protection conferred by a patent on a product containing or consisting of genetic 
information shall extend to all material, save as p rovided for in paragraph 3(a) above, in  17  which the product is incorporated and in which the genetic information is contained and 
performs its function. 
10.  The protection referred to in paragraphs 7, 8 and 9 above shall not extend to 
biological material obtained from the propagation o r multiplication of biological material 
placed on the market by the proprietor of the paten t or with his consent, where the 
multiplication or propagation necessarily results f rom the application for which the 
biological material was marketed, provided that the  material obtained is not subsequently 
used for other propagation or multiplication. 
11.  In this Schedule— 
“essentially biological process” means a process fo r the production of animals and 
plants which consists entirely of natural phenomena  such as crossing and selection; 
“microbiological process” means any process involvi ng or performed upon or resulting 
in microbiological material; 
“plant variety” means a plant grouping within a sin gle botanical taxon of the lowest 
known rank, which grouping can be— 
(a) defined by the expression of the characteristic s that results from a given genotype 
or combination of genotypes; and 
(b) distinguished from any other plant grouping by the expression of at least one of the 
said characteristics; and 
(c) considered as a unit with regard to its suitabi lity for being propagated unchanged.”. 
37.  After Schedule 4 insert ― 
 “SCHEDULE 4A Section 128B(1)  
SUPPLEMENTARY PROTECTION CERTIFICATES 
 
References to patents 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 p rotection certificate; 
(b) references to an application or the applicant f or 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 supplem entary 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 inventio n (including a patented invention) 
are to a product for which a supplementary protecti on 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 protec tion certificate is invalid; 
(h) references to the issue of the validity of a pa tent include the issue of whether a 
supplementary protection certificate has lapsed or is invalid.  18  (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 b efore grant); 
sections 20A and 20B (reinstatement of applications ); 
section 21 (observations by third party on patentab ility); 
section 27 (general power to amend specification af ter 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 service s of the Crown); 
sections 60 to 71 (infringement); 
section 74(1) and (7) (proceedings in which validit y of patent may be put in issue); 
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 comptroll er); 
sections 110 and 111 (unauthorised claim of patent rights or that patent has been 
applied for); 
section 116 (immunity of department as regards offi cial acts); 
sections 117 to 118 (administrative provisions); 
section 123 (rules); 
section 130 (interpretation). 
2. —(1) In the case of the provisions of this Act list ed in sub-paragraph (2), paragraph 1 
applies in relation to an application for a supplem entary protection certificate only if the 
basic patent expires before the certificate is gran ted. 
(2) The provisions referred to in sub-paragraph (1)  are— 
section 20B(3) to (6A) (effect of reinstatement und er section 20A); 
section 55(5) and (7) (use of patented inventions f or services of the Crown); 
section 58(10) (disputes as to Crown use); 
section 69 (infringement of rights conferred by pub lication of application); 
section 117A(3) to (7) (effect of resuscitating a w ithdrawn application under 
section 117). 
 
References to this Act etc 
3. —(1) In the provisions of this Act listed in sub-pa ragraph (2)— 
(a) references to this Act include the Medicinal Pr oducts Regulation and the Plant 
Protection Products Regulation, and 
(b) references to a provision of this Act include a ny equivalent provision of the 
Medicinal Products Regulation and the Plant Protect ion 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 patentab ility); 
section 69 (infringement of rights conferred by pub lication of application); 
section 74(1) and (7) (proceedings in which validit y of patent may be put in issue);  19  sections 97 to 99B, 101 to 103, 105 and 107 (legal proceedings); 
section 116 (immunity of department as regards offi cial acts); 
sections 117 and 118 to 121 (administrative provisi ons); 
section 122 (Crown’s right to sell forfeited articl es); 
section 123 (rules); 
section 124A (use of electronic communications); 
section 130 (interpretation). 
 
Other references 
4. —(1) In the application of section 21(1) (observati ons by third party on patentability) to 
supplementary protection certificates, the referenc e to the question whether the invention is 
a patentable invention is to the question whether t he product is one for which a 
supplementary protection certificate may have effec t. 
(2) In the application of section 69(2) (conditions  for infringement of rights conferred by 
publication of application) to supplementary protec tion certificates, the condition in 
paragraph (b) is that the act would, if the certifi cate 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. —(1) A supplementary protection certificate does no t take effect unless— 
(a) the prescribed fee is paid before the end of th e prescribed period, or 
(b) the prescribed fee and any prescribed additiona l fee are paid before the end of the 
period of six months beginning immediately after th e prescribed period. 
 
Interpretation 
6. —(1) Expressions used in this Act that are defined in the Medicinal Products 
Regulation or the Plant Protection Products Regulat ion 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 tha t Regulation or that provision as 
amended from time to time. 
7.  In this Act— 
(a) “the Medicinal Products Regulation” means Counc il Regulation (EEC) No 
1768/92 of 18 June 1992 concerning the creation of a supplementary protection 
certificate for medicinal products( a), and 
(b) “the Plant Protection Products Regulation” mean s Regulation (EC) No 1610/96 of 
the European Parliament and of the Council of 23 Ju ly 1996 concerning the 
creation of a supplementary protection certificate for plant protection 
products( b). ”. 
 
 
 
                                                                                                                                            
(a) OJ No. L 182, 2.7.1992, p.1. 
(b) OJ No. L 198, 8.8.1996, p.30.  20  £5.75 
UK2013101014   10/2013   19585 
http://www.legislation.gov.uk/id/uksi/2013/2602 EXPLANATORY NOTE 
(This note is not part of the Order) 
This Order modifies the Patents Act 1977 in its app lication to the Isle of Man. It replaces the 
Patents Act 1977 (Isle of Man) Order 2003 (SI 2003/ 1249), and makes additional modifications to 
correspond to the amendments made to the Act (as it  has effect in the United Kingdom) by the 
Medicines (Marketing Authorisations Etc.) Amendment  Regulations 2005 (SI 2005/2759), the 
Intellectual Property (Enforcement, etc.) Regulatio ns 2006 (SI 2006/1028), the Registered Designs 
Act 1949 and Patents Act 1977 (Electronic Communica tions) Order 2006 (SI 2006/1229), the 
Patents (Compulsory Licensing and Supplementary Pro tection Certificates) Regulations 2007 (SI 
2007/3293) and the Patents Act 1977 (Amendment) Reg ulations 2011 (SI 2011/2059). 
  
  
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