RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q3/GBR/1
7 January 1998
(98-0031)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION IN THE FIELDS OF PATENTS, LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS, PROTECTION OF
UNDISCLOSED INFORMATION AND CONTROL OF
ANTI-COMPETITIVE PRACTICES IN
CONTRACTUAL LICENCES
United Kingdom1
The present document reproduces the questions put to the delegation of the United Kingdom
and the responses given in the review of legislation on patents, layout-designs (topographies) of
integrated circuits, protection of undisclosed information and control of anti-competitive practices in
contractual licence at the Council's meeting of 26-30 May 1997.2
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I. REPLY TO THE GENERAL QUESTION ON PRIORITY RIGHTS3
Does your country recognize a right of priority on the basis of an earlier patent
application filed in any other WTO Member by a national of a WTO Member?
At the end of 1995, the United Kingdom amended its patents legislation to recognize a right
of priority on the basis of an earlier patent application filed in any country which at that time was a
WTO Member.
The relevant legislative provisions providing th is priority right for patent applications are
Sections 5 and 90 of the Patents Act 1977 which provide, inter alia , for a right of priority based on an
application in a convention country.  The countries deemed to be convention countries are specified in
the Patents (Convention Countries) Order 1994.  This particular measure was updated on
24 November 1995 by the Patents (Convention Countrie s) (Amendment) Order 1995 so as to include
all those countries who at that time were Members of the WTO.
Further amending legislation is currently being produced to update the list of convention
countries to take account of those countries who have more recently acceded to the WTO.
                                                     
1As regards laws and regulations relevant to the areas under review as notified by the United Kingdom
under Article 63.2 of the Agreement, reference is made to documents IP/N/1/GBR/1, IP/N/1/GBR/P/1-3,
IP/N/1GBR/L/1 and IP/N/1/GBR/U/1.
2The minutes of the meeting have been circulated in document IP/C/M/13.
3At the meeting of the TRIPS Council of 27 February 1997, Members agreed to respond to this
question in the context of the present review (document IP/C/M/12, paragraph 18).IP/Q3/GBR/1
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II. REPLIES TO QUESTIONS POSED BY JAPAN
1. In your country, are the following subject matters protectable by patent:  (1) plants and
animals, and (2) plant and animal varieties?
Provided that they meet the normal requirements of patentability laid out in Section 1(1) of
the Patents Act 1977, the inventions relating to plants and animals as such are patentable.
Section 3(b) of the Patents Act however excludes plant and animal varieties from patent protectionalthough protection for plant varieties, as required by Article 27.3(b), is provided under the Plant
Varieties & Seeds Act 1964, as amended.
2. In your country, is the act of offering for sale included in the exclusive rights of patent?
Section 60(1)(a) of the Patents Act 1977 provides inter alia  that a person infringes a patent
for a product if, without the consent of the proprietor, he disposes of, or offers to dispose of the
product.  The meaning of the expression "disposes of" was considered by the Patents Court in the case
of Kalman and another v. PCL Packaging (UK) Ltd. and another  ([1982] FSR 406) to include selling.
3. In your country, what kinds of acts are rec ognized as exceptions to the exclusive rights
conferred by a patent right?
Section 60(5) of the Patents Act 1977 prescribes that in the following limited cases, an act
which would constitute an infringement shall not do so if:
(a) it is done privately and for purposes which are not commercial;(b) it is done for experimental purposes relating to the subject-matter of the invention;
(c) it consists of the extemporaneous preparation in a pharmacy of a medicine for an
individual in accordance with a prescriptio n given by a registered medical or dental
practitioner or consists of dealing with a medicine so prepared;
(d) it consists of the use exclusively for the needs of a relevant ship of a product or
process in the body of such a ship or in its machinery, tackle, apparatus or other
accessories in a case where the ship has temporarily or accidentally entered the
internal or territorial waters of the United Kingdom;
(e) it consists of the use of a product or process in the body or operation of a relevant
aircraft, hovercraft or vehicle which has temporarily or accidentally entered or iscrossing the United Kingdom (including the air space above it and its territorial
waters) or the use of accessories for such a relevant aircraft, hovercraft or vehicle;
(f) it consists of the use of an exempted aircraft which has lawfully entered or is lawfully
crossing the United Kingdom as aforesaid or of the importation into the
United Kingdom or the use or storage there of any part or accessory for such anaircraft.
4. In your country, in which case is use wi thout the authorization of the right holder
permitted, including use by the government or by third parties authorized by the government?
In addition to the exceptions referred to in the answer to question No. 3, use of a patented
invention without the authorization of the right holder can be authorized in accordance withIP/Q3/GBR/1
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Sections 48-59 of the Patents Act 1977.  Further information on Sections 48-59 is provided in the
responses to the specific questions asked to the United Kingdom.
5. In your country, how is the obligation under Articles 34.1 and 34.2 of the TRIPS
Agreement regarding the shift of the burden of proof in civil proceedings for patent
infringement related to a process patent implemented?
The requirement of Article 34 of the TRIPS Agreement is met by Section 100 of the Patents
Act 1977 which provides,  inter alia , that if the invention for which a patent is granted is a process for
obtaining a new product, the same product produced by a person other than the proprietor of the
patent or a licensee of his shall, unless the contrary is proved, be taken in any proceedings to have
been obtained by that process.
6. According to Section 5(5)(b) of the British Patents Act, a citizen of a country specified
by Order in Council can enjoy priority rights based on an application filed in the country
thereof.  Are all the WTO Member countries included in countries specified by the Order?  Ifnot, please explain the consistency with Article 4 of the Paris Convention applied by Article 2.1
of the TRIPS Agreement.
At the end of 1995, the United Kingdom amended its Patents legislation to recognize a right
of priority on the basis of an earlier patent application filed in any country which at that time was a
WTO Member.
The relevant legislative provisions providing th is priority right for patent applications are
Sections 5 and 90 of the Patents Act 1977 which provide, inter alia , for a right of priority based on an
application in a convention country.  The countries deemed to be convention countries are specified in
the Patents (Convention Countries) Order 1994 (SI No. 3220).  This particular measure was updated
on 24 November 1995 by the Patents (Convention C ountries) (Amendment) Order 1995 (SI No. 2990)
so as to include all those countries who at that time were Members of the WTO.
Further amending legislation is currently being produced to update the list of convention
countries to take account of those countries who have more recently acceded to the WTO.
7. Under Section 48 of the British Patents Act, the two grounds upon which a compulsory
licence may be granted are:  (i) the invention is  not being commercially worked at all in the
United Kingdom or is not being commercially worked in the United Kingdom to the fullest
reasonably practicable extent, and (ii) the demand for the patented product in the
United Kingdom is not being met on reasonable terms or is being met to a substantial extent
only by importation.  Please explain whether the compulsory licensing of patents based on the
above grounds in the United Kingdom is compatible with Article 31 of the TRIPS Agreement.
Article 31 of the TRIPS Agreement does not address the issue of the grounds upon which a
compulsory licence can be granted by rather lays down certain requirements which must be respected
where use of the subject matter of patent without the authorization of the right holder is allowed.
Article 27(1) of the TRIPS Agreement however requires that "patent rights shall be enjoyable without
discrimination as to the place of invention, the fi eld of technology and whether products are imported
or locally produced".  The extent to which the grounds specified in Section 48 of the patents Act 1977
are incompatible with Article 27.1 of the TRIPS Agreement is nullified by Section 53(5) whichprovides that no order or entry shall be made in pursuance of an application under Sections 48-51
above (those sections relating to the granting of compulsory licences) which would be at variance
with any treaty or international convention to which the United Kingdom is a party.  By virtue ofIP/Q3/GBR/1
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Section 53(5) the Comptroller of the Patent Office,  when considering an application for a compulsory
licence, shall take into consideration the United Kingdom's obligations under Articles 27 and 31 of the
TRIPS Agreement.
Amendments to Sections 48-54 of the Patents Act 1977 are nevertheless proposed to make
them more clearly compatible with the TRIPS Agreement.
It should also be noted that compulsory licences are rarely issued in the United Kingdom.
Indeed only two have been issued under the Patents Act 1977 and neither of these was issued after the
TRIPS Agreement became known nor is either of them still in force.
8. Is the condition to make efforts to obtain authorization from the right holder on
reasonable commercial terms and conditions prior to the use without authorization of the right
holder applicable to situations other than that of Section 48(3)(d) of the British Patents Act?  If
not, please explain the consistency with Article 31(d) of the TRIPS Agreement.
As explained in the answer to question No. 2 abov e, by virtue of Section 53(5) of the Patents
Act 1977, the Comptroller of the Patent Office, when considering an application for a compulsory
licence in any of the situations covered by Secti ons 48-51, shall take into consideration the United
Kingdom's obligations under Articles 27 and 31 of the TRIPS Agreement.  This includes the
requirement in Article 31 (b) of the TRIPS Agreement that any unauthorized use of the subject matter
of the patent is permitted only if the proposed user has made efforts to obtain authorization from theright holder on reasonable commercial terms and conditions.
9. Section 49(3) of the British Patents Act pr escribes that where the Comptroller orders
the granting of licence under Section 48, he may give directions so as to (a) deprive the right
holder of the right to work the invention concerned himself or grant licences;  (b) revoke all
existing licences granted. Please explain the consistency with Article 31(d) of the TRIPS
Agreement .
Section 49(3) of the Patent Act 1977 was rep ealed as of 1 August 1989 by paragraph 13 of
Schedule 5 to the Copyright, Designs and Patents Act 1988.
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10. Please explain how the conditions prescribed in Article 31 of the TRIPS Agreement ,
especially paragraphs (b), (d), (e) and (i), are implemented when applying Section 55 of the
British Patents Act, concerning use of patented inventions without auth orization of the right
holder for services of the Crown.
In early 1996, the Ministry of Defence of the United Kingdom amended its procurement
practices to ensure that, prior to any authorization being given under Section 55 of the Patents
Act 1977, the requirements of Article 31 of the TRIPS Agreement are fully considered and actedupon.  This amended practice is considered to satisfy the United Kingdom's obligations under
Article 31 of the TRIPS Agreement.  Nevertheless, for reasons of transparency, amending legislation
is currently being produced to bring Sections 55-59 of the Patents Act 1977 more clearly into line
with this amended practice and consequently with Article 31 of the TRIPS Agreement.
Since the change in practice in 1996, we re not aware of any authorizations being made under
Section 55.
                                                     
4The delegation of the United Kingdom noted that the Copyright, Designs and Patents Act 1988 has
been notified and circulated  as document IP/N/1/GBR/C/1.IP/Q3/GBR/1
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11. Section 60(5)(d)(e) of the British Patents Ac t prescribes that the use of relevant ships,
aircraft, hovercraft or vehicles which have temporarily or accidentally entered the
United Kingdom would not constitute an infringement of a patent for an invention.  Is this
provision applicable to the vessels, aircraft or land vehicles of all the WTO Member countries?
If not, please explain the consistency with the most-favoured-nation clause of Article 4 of the
TRIPS Agreement .
Section 60(5) is currently applicable only in respect of a ship, and an aircraft, hovercraft or
vehicle registered in, or belonging to, any country,  other than the United Kingdom, which is a party to
the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883.
Consideration will be given to extending this privilege to all WTO countries.
III. REPLIES TO QUESTIONS POSED BY UNITED STATES
1. Section 1(2)(c) of the United Kingdom Patents Act (1977) specifies that a program for a
computer is not an invention for the purposes of  that Act.  Please explain whether, under this
provision, inventions within the categories specified below are not eligible to be patented under
UK law, notwithstanding the fact that the invention is novel, involves an inventive step, and is
useful:
(a) process inventions which, in whole or in part, consist of steps that are performed
by a computer and are directed by a computer program;
(b) product inventions consisting of elements of a computer-implemented invention,
including in particular:
(i) machine-readable computer program code stored on a tangible medium
such as a floppy disk, computer ha rd drive or computer memory; and
(ii) a general purpose computer whose novelty over the prior art arises
primarily due to its combination with a specific computer program.
If any of these types of inventions are excluded from eligibility to be patented, please
explain how the UK patent law complies with the obligations of Article 27 of the TRIPS
Agreement, which mandates patent eligibility for all categories of invention without
discrimination.
Interpretation of the Patents Act 1977 is ultimately a matter for the British courts but insofar
as it is possible to apply the criteria used by the courts when deciding whether the exclusion of
Section 1(2)(c) of the Act applies to the categories of matter set out in your question 1, paragraphs (a)
and (b)(ii), these categories of matter would not of themselves be excluded by Section 1(2)(c) of the
Patents Act 1997.  Insofar as category 1(b)(i) relates to a known tangible medium characterised solelyby the machine-readable computer program code stored thereon, then such a medium would be likely
to be regarded as not patentable by virtue of Section 1(2)(c) of the 1977 Act.
As the questions acknowledges, a program for a computer is not considered to be, in itself, an
invention and consequently is not eligible for protection under a system for patenting inventions.  this
is considered to be entirely consistent with Article 27 of the TRIPS Agreement.  Protection for
computer programs as such is provided under copyright in line with Article 10.1 of the TRIPS
Agreement.IP/Q3/GBR/1
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[Follow-up question from the US]
In its answer to question 1b(i), the UK  indi cated that insofar as the [invention] relates to
a known tangible medium characterised solely by the machine-readable computer program
code stored thereon, then such a medium will be likely to be regarded as not patentable byvirtue of Section I(2)(c) of the 1977 Act.  The answer provided for this question suggests that
there was some ambiguity in the formulation of  the hypothetical invention and based on the
answer, the United States would like to obtain  a more precise understanding of how this rule of
law either exists today or is likely to develop in the United Kingdom.
The basis for the hypothetical is the recognition that the "hardware" aspects of
computer-implemented inventions tend to consist of subject matter that is well known in the art.Despite this, it is generally accepted that a "general purpose computer" that has been
reconfigured through software is considered to be patentable subject matter, provided the
computer, as reconfigured, in toto constitutes an invention that is new, involves an inventive step
and is capable of industrial application.  The evolution of computer technology and computer
networks in particular, has led to the situation where less emphasis is being placed on hardware
elements, whether in the form of computer systems or computer networks, and more
significance of computer-related innovation be ing dependent on the "software" aspects of the
computer-implemented invention.
In view of these considerations, could the UK respond to the following questions:(a) Has any case, either before a court or the UK Patents Office addressed the
question of whether a claim defines patentable subject matter if it is presented in
the form of a tangible medium in co mbination with computer executable code
and where the code, when used in a computer system, would render the overall
system patentable?
(b) If it is clear that the patentable distinction of a computer system over the prior
art is based on computer program code, does the UK Patents Office in its
examination of the application for patent evaluate the program code (e.g. eitherdirectly or by consideration of the processes embodied in the code)?
(c) If it can be demonstrated that (a) the physical structure of a computer readable
medium is altered through the act of storing computer program code on its
surface, and (b) by that act, the en coded computer readable medium becomes an
integral element of a computer system  that satisfies all the criteria of
patentability, what basis would be relied upon by the UK Patents Office indenying the patentability of the modified computer readable medium?
(a) We are not aware of any case that has addressed the situation detailed in part (a) of
the question.
(b) The situation described here has not arisen within the memory of those currently
working in the area.  In only a handful of cases which have arisen in the past few
years has any program code at all been included, and in all those cases there has also
been sufficient functional description for the purpose of deciding all questions of
patentability.
(c) Clearly, if the computer system satisfies all the criteria of patentability then the
computer system per se   will be patentable.  A claim to the modified computer
readable medium itself is however still likely to be excluded by virtue of
Section 1(2)(c) of the Patents Act 1977.  In fact, such a situation was considered inIP/Q3/GBR/1
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Gale's Application  [1991] RPC 305 where the Court of Appeal held that putting an
excluded computer program into a store (in fact a ROM) whose physical structure
was thereby altered did not of itself affect the result and refused the application.
2. A compulsory licensing system for patents is established by Sections 46 to 54 of the
United Kingdom Patents Act.  Under proposed legislation, these provisions would no longer be
applicable to nationals of WTO Members, and in  the place of this system a new system that
appears to be based on Article 31 of the TRIPS Agreement would apply.  Please respond to the
following questions concerning this situation:
(a) Please explain how the current UK law co mplies with the obligations specified in
Article 27.1, which prohibits discrimination in the enjoyment of patent rights
based on whether products are produced locally or imported.
(b) Please explain how the current UK law complies with each of the provisions
concerning compulsory licences that are contained in paragraphs (a) to (l) of
Article 31 of the TRIPS Agreement.
(c) Please indicate when the new legislatio n is anticipated to come into force within
the United Kingdom, and explain the schedule  of activity that must to be taken
incident to its enactment.
(d) Please explain whether the new legislation will govern any compulsory licences
that were (i) granted on or after 20 December 1993, or (ii) were in force on
1 January 1996.
(e) Please indicate whether, in proposed Article 47B(3) of the new legislation,
importation of a product will be considered to be a satisfactory basis for meeting
demand for a patented product in the United Kingdom, and that importationshall not be viewed as being a basis for asserting that commercial or industrial
activities are being unfairly prejudiced within the United Kingdom.  If this is not
the intent of the legislation, please explain how these provisions comply with
Article 27.1 of the TRIPS Agreement.
(a) Section 53(5) of the Patents Act 1977 provides that no order or entry shall be made in
pursuance of an application under Sections 48-51 (those sections relating to the
granting of compulsory licences) which would be at variance with any treaty or
international convention to which the United Kingdom is a party.  By virtue of
Section 53(5) the Comptroller of the Patent Office, when considering an application
for a compulsory licence, shall take into consideration the United Kingdom'sobligations under the TRIPS Agreement, in particular the requirement of
Article 27(1) that "patent right rights shall be enjoyable without discrimination as to
the place of invention, the field of technology and whether products are imported or
locally produced":
It should be noted that compulsory licences are rarely issued in the United Kingdom.
Indeed only two have been issued under the Patents Act 1977 and neither of these
was issued after the TRIPS Agreement became known nor is either of them still inforce.
(b) As explained in the answer  to part (a) above, Section 53(5) of the Patents Act
requires that the Comptroller of the Patent  Office, when considering an application
for a compulsory licence, shall take into consideration the United Kingdom's
obligations under the TRIPS Agreement, including the requirements of Article 31.IP/Q3/GBR/1
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(c) A draft Statutory Instrument detailing proposed amendments to Sections 48-54 of the
Patents Act 1977 to show more clearly their compatibility with the TRIPS Agreement
was circulated to interested parties for comment at the end of 1996.  Consideration is
currently being given to comments received during this consultation exercise and it is
expected that the amending instrument will be layed before Parliament before the
summer recess at the end of July and will come into force approximately 21 daysafter being laid.
(d) No compulsory licences have been granted since 20 December 1993 nor were any in
force on 1 January 1996.  Furthermore, were a compulsory licence to be issued before
the new legislation comes into force then Section 53(5) would have an equivalent
effect to the provisions in the new legislation.
(e) The grounds specified in Article 47B(3) [(a); (b)(ii);(c)] are intended to apply
irrespective of whether products are imported or locally worked and as such are incompliance with Article 27(1) of the TRIPS Agreement.  Further consideration will
however be given to more clearly bringing this out in the proposed new legislation.
3. Articles 55 to 59 of the 1977 Patents Act authorizes the Government of the United
Kingdom to use without a consequence of infringement a patented invention without the consent
of the patent owner.  Article 57A of the 1988 Act clarifies that the patent owner in cases of such
"Crown use" is entitled to compensation for us e of the patented invention.  With respect to
these provisions concerning Crown use, please:
(a) clarify whether the application of Article 56(2) results in distinct treatment of
patent rights for inventions in th e fields of technology specified in
subparagraphs (a) to (c) (i.e., supply of anything for foreign defence purposes,for production or supply of pharmaceuticals, and related to atomic energy), and,
if so, how this provision complies with Article 27 of the TRIPS Agreement,
which prohibits discrimination in the availability of patents and enjoyment of
patent rights based on the technological field of the invention; and
(b) explain how the provisions concerning Crown use are applied in practice, and in
particular whether authorizations provided under the authority of Crown use
comply with the provisions of paragraphs (b ), (c), (d), (e), and (g) of Article 31 of
the TRIPS Agreement.
(a) Section 56(2) does not discriminate between technical fields in a manner contrary to
Article 27(1) of the TRIPS Agreement but instead merely illustrates activities whichmight constitute "Crown Use" for the purposes of the Act.
(b) In early 1996, the Ministry of Defence of the United Kingdom amended its
procurement practices to ensure that, prior to any authorization being given under
Section 55 of the Patents Act 1977, the requirements of Article 31 of the TRIPS
Agreement are fully considered and acted upon.  This amended practice is considered
to satisfy the United Kingdom's obligations under Article 31 of the TRIPS
Agreement.  Nevertheless, for reasons of transparency, amending legislation iscurrently being produced to bring Sections 55-59 of the Patents Act 1977 more
clearly into line with this amended practice and consequently with Article 31 of the
TRIPS Agreement.IP/Q3/GBR/1
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4. Please indicate how many compulsory licen ces on a yearly basis have been granted in
the United Kingdom, and how many times Crown use has been invoked by the Government of
the United Kingdom to enable use of a patent ed invention without the consent of the patent
owner since 1 January 1993.
Since 1 January 1993, there have been no compulsory licences granted.  it is difficult to
determine how many times Crown Use has been invoked since 1 January 1993, however since the
change in practice in 1996, we are not aware of any authorizations being made under Section 55.
5. Please indicate how the United Kingdom, in accordance with Article 39.3 of the TRIPS
Agreement:
- protects test data submitted to an UK regulatory agency to support a request for
marketing approval of a pharmaceutical or agricultural chemical product
against disclosure, and
- protects such data against unfair commercial use, including by preventing later
applicants from relying directly or indire ctly on the data provided by the first
applicant to support their application for marketing approval.
All data submitted in support of applications for marketing authorizations for medicinal
products for human use in the United Kingdom is protected from disclosure by Section 118 of the
Medicines Act 1968 which makes it a criminal offence for any person to disclose such informationunless the disclosure is made in "performance of his duty".  Additionally, we apply the "Code of
Practice on Access to Government Information" which exempts commercially confidential material
from the presumption in favour of disclosure and such material will only be disclosed where there is a
clear public interest favouring disclosure against confidentiality.
Data submitted in support of applications for marketing authorizations for medicinal products
utilising new chemical entities is protected (including against later applicants relying directly or
indirectly on the data originally supplied) by Article 4.8(a)(iii) of European Directive 65/65/EEC
(which applies in the United Kingdom by virtue of the Medicines for Human Use (Marketing
Authorizations etc.)  Regulations 1994) which specifies that later applicants cannot rely on the data
supplied unless they can show that there is an essentially similar product which has been authorized inthe European Community for 10 years and is marketed in the Member State concerned.
In the case of veterinary medicinal products, authorization to place such products on the
market are issued under the Marketing Authorizations for Veterinary Medicinal Products Regulations
1994.  Regulation 14 of these regulations provide that, except in the performance of his duty, no
person shall disclose:
(a) any information in respect of any manufacturing process or trade secret obtained by
him in premises which he has entered by virtue of these Regulations, or
(b) any information obtained by him or furnished to him in pursuance of the Regulations.
Furthermore, Regulations 4(8) and 4(9) of the 1994 Regulations provide, in accordance with
European Directive 81/851/EEC, that an applicant for a new marketing authorization for a veterinary
medicinal product may only rely on data submitted in support of another (essentially similar) product
authorized in the United Kingdom, either with the agreement of the holder of the marketing
authorization for the reference product or, where the reference product has been authorized within the
European Community for 10 years.IP/Q3/GBR/1
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In the case of plant protection products, authorization to place such products on the market
are issued under the Control of Pesticides Regulations 1986 (as amended) or, European Directive
91/414/EEC (which applies in the United Kingdom  by virtue of the Plant Protection Products
Regulations 1995 as amended).  Data submitted in support of applications for marketing
authorizations for plant protection products utilising new chemical entities is protected (including
against later applicants relying directly or indirectly on the data originally supplied) for 10 years underthe Control of Pesticides Regulations 1986 and 10 years from the date of first marketing in the
European Union under the Plant Protection Products Regulations 1995 as amended.
In light of the above, the United Kingdom is satisfied that it fully meets the requirements of
Article 39.3 of the TRIPS Agreement.
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