Patents (Jersey) Law 1957

Revised Edition

05.575

Showing the law as at 1 January 2017

This is a revised edition of the law



Patents (Jersey) Law 1957

Arrangement

Article

1                 Interpretation. 5

2                 Limitation of powers of Royal Court in relation to registration of patents. 6

3                 Register of patents. 6

4                 Registration of patents. 7

5                 Registration of extension, additions and amendments and of restoration of lapsed patents  8

6                 Registration of assignments, etc. 9

7                 Legal presence in Jersey unnecessary for purpose of making applications. 9

8                 Effect of registration. 9

9                 Power of court to revoke registration. 10

9A             Compulsory licences – applications and grant 10

9B             Other matters relating to compulsory licences. 12

10              Rectification of register 13

11              Power to correct clerical errors. 13

12              Use of inventions of registered patents for the services of the Crown. 14

13              Use of inventions of registered patents for the service of the States. 14

14              Reference of disputes as to use by Crown or States. 15

15              Restrictions on recovery of damages for infringement 16

16              Proceedings by exclusive licensee for infringement of registered patent 16

17              Burden of proof in certain cases. 16

18              Remedy for groundless threats of infringement proceedings. 17

19              Avoidance of certain restrictive conditions. 17

20              Determination of certain contracts. 18

21              Special provisions as to vessels, aircraft and land vehicles. 18

22              Falsification of register, etc. 19

23              Unauthorized claim of patent rights. 19

24              Rules of Court 19

24A           Regulations. 20

25              Powers of States as regards fees. 20

26              Saving of vested rights. 21

26A           Transitional provisions. 21

27              Citation. 21

Supporting Documents

Table of Legislation History. 22

Table of Renumbered Provisions. 22

Table of Endnote References. 23

 


Patents (Jersey) Law 1957[1]

A LAW to provide for the protection in Jersey of inventions the subject of letters patent, and for matters incidental thereto

Commencement [see endnotes]

1        Interpretation

(1)     In this Law, unless the context otherwise requires –

article” includes any substance or material, and any plant, machinery or apparatus, whether affixed to land or not;

Comptroller-General” means the Comptroller-General of Patents, Designs and Trade Marks in the United Kingdom;

date of the grant” means –

(a)     in relation to a patent under the Patents Act 1949 of the United Kingdom, the date of sealing of the patent under section 19 of that Act;

(b)     in relation to a patent under the Patents Act 1977 of the United Kingdom, the date upon which the patent takes effect pursuant to section 25 of that Act; and

(c)     in relation to a European patent (U.K.), the date upon which the patent takes effect in the United Kingdom pursuant to section 77 of the Patents Act 1977 of the United Kingdom;

European Patent Convention” means the Convention on the Grant of European Patents;

European patent (U.K.)” means a patent granted under the European Patent Convention designating the United Kingdom;

Government department” means a department of Her Majesty’s Government in the United Kingdom;

“invention” has the same meaning as in the Patents Act 1977;

patent” means a patent granted under the Patents Act 1949 of the United Kingdom or under the Patents Act 1977 of the United Kingdom and means also a European patent (U.K.) that has effect in the United Kingdom pursuant to section 77 of the Patents Act 1977 of the United Kingdom;

Patents Act 1949” means the Patents Act 1949 of the United Kingdom;

Patents Act 1977” means the Patents Act 1977 of the United Kingdom;

patented article” and “patented process” mean respectively an article and a process which is the subject of a registered patent;

patentee” means the person or persons for the time being entered on the register of patents as the grantee or proprietor of the patent;

priority date” has the meaning assigned to it –

(a)     in the case of a patent under the Patents Act 1949 of the United Kingdom, by section 5 of that Act;

(b)     in the case of a patent under the Patents Act 1977 of the United Kingdom, by section 5 of that Act;

(c)     in the case of a European patent (U.K.), by section 5 of the Patents Act 1977 of the United Kingdom, subject to the incidents and modifications mentioned in section 78 of that Act;

register” means enter in the register of patents;

register of patents” means the register of patents kept in pursuance of Article 3.[2]

(2)     In Articles 3, 4, 6, 9, 10, 11, 14 and 17 of this Law, “court” means the “Samedi” division of the Royal Court.[3]

2        Limitation of powers of Royal Court in relation to registration of patents

As from the coming into force of this Law, no Letters Patent for an invention or other exclusive right in respect of an invention shall be entered in the rolls of the Royal Court otherwise than in accordance with the provisions of this Law. [4]

3        Register of patents

(1)     There shall be kept at the Judicial Greffe a register, to be called “the register of patents”, in which there shall be entered particulars of such patents, of such assignments and transmissions of patents, and notice of all matters which are required by or under this Law to be entered in the register and of such other matters affecting the validity or proprietorship of patents as the court or the Judicial Greffier may think fit.

(2)     Subject to the provisions of this Law and to rules of court, the register of patents shall, at all convenient times, be open to inspection by the public; and certified copies of any entry in the register shall be given to any person requiring them on payment of the appropriate fee.

(3)     The register of patents shall be prima facie evidence of any matters required or authorized by or under this Law to be entered therein.

(4)     No notice of any trust, whether expressed, implied or constructive, shall be entered in the register of patents and the Judicial Greffier shall not be affected by any such notice.

4        Registration of patents

(1)     Any person being the grantee of a patent for the time being in force in the United Kingdom, or any person whose right to the patent derives from such grantee by assignment, transmission or other operation of law, may apply to the Judicial Greffier for the registration of the patent.

(2)     Where any partial assignment or transmission of the patent has been made, every person having any legal interest in the patent shall be joined in the application for registration.

(3)     An application under this Article shall be accompanied by a copy of the specification of the patent as granted or as taking effect in the United Kingdom, certified by such person as may be prescribed by rules of court to be a true copy, together with the drawings (if any) relating to the patent and such application shall in other respects be made in such manner and be accompanied by such documents as may be prescribed by rules of court.[5]

(4)     Within 8 days of making an application under this Article, the applicant shall advertise in such manner as may be prescribed by rules of court the fact that the application has been made and that the documents submitted in support thereof will be open to public inspection at the Judicial Greffe.

(5)     Within 2 months of the date of such advertisement, notice of opposition to the registration of the patent may be given to the Judicial Greffier –

(a)     by the Attorney General or any person interested, on either of the following grounds, that is to say –

(i)      that the applicant is not entitled under this Law to make the application, or

(ii)      that the invention so far as claimed in any claim of the complete specification, has been manufactured, used or sold in Jersey before the date which is the priority date of that claim; or

(b)     by any person on the ground that, 3 years having elapsed since the date of the grant of the patent, the patented invention is being used in Jersey on a commercial scale.[6]

(6)     Where notice of opposition is given by virtue of paragraph (5), or where it appears doubtful to the Judicial Greffier whether the application for registration should be granted or where any question arises in relation to the application, the Judicial Greffier shall present a statement of the matter in question to the Bailiff for the directions of the court, and the court may order such persons to be convened, such evidence to be taken and such enquiries to be made as the court may deem necessary and, subject to the provisions of this Law and to rules of court, shall determine whether the patent should be registered and, if so, subject to what conditions.

(7)     Where no notice of opposition is given in accordance with paragraph (5) and there appears to the Judicial Greffier to be no reason why the application for registration should not be granted, the Judicial Greffier shall register the patent and issue a certificate of registration.

5        Registration of extension, additions and amendments and of restoration of lapsed patents

(1)     Where a patent has been registered and the proper authority in the United Kingdom has either –

(a)     made an order extending the term of the patent;

(b)     granted a patent of addition for the improvement or modification of the patent so registered;

(c)     where the patent has lapsed, made an order restoring the patent; or

(d)     issued a decision or made an order allowing the amendment of the specification or drawings of the patent,

the person in whose name the patent is registered may apply to the Judicial Greffier in such manner as 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.

(2)     The word “patent”  where used in paragraph (1) shall not include a European patent (U.K.). [7]

(3)     Where a European patent (U.K.) has been registered and where such patent is amended in accordance with the European Patent Convention, and the amendment has been treated by the proper authority in the United Kingdom for the purposes of Parts I and III of the Patent Act 1977 of the United Kingdom as if it had been made under that Act, the person in whose name the patent is registered may apply to the Judicial Greffier in such manner as may be prescribed by rules of court for the registration of such amendment and the provisions of this Law shall apply in relation to such an application as if it were an application for the registration of a patent. [8]

(4)     Where a European patent (U.K.) has been registered and where –

(a)     under the European Patent Convention or the Patents Act 1977 of the United Kingdom it has been restored after ceasing to remain in force in the United Kingdom; and

(b)     the restoration has effect or is treated as having effect under the Patents Act 1977,

the person in whose name the patent is registered may apply to the Judicial Greffier in such manner as may be prescribed by rules of court for the registration of the restoration and the provisions of this Law shall apply in relation to such application as if it were an application for the registration of a patent. [9]

6        Registration of assignments, etc.

(1)     Where a person becomes entitled by assignment, transmission, or other operation of law, to a registered patent, or to a share in such a patent, or to any interest therein, and has obtained registration in the United Kingdom of such title or interest in accordance with the law for the time being in force in the United Kingdom, the person may apply to the Judicial Greffier for the registration of such title or interest.

(2)     Every such application shall be made in such manner as 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 the Judicial Greffier whether the application should be granted, or any question arises in relation to the application, in which event the Judicial Greffier shall present a statement of the matter in question to the Bailiff for the directions of the court, and the court may order such persons to be convened, such evidence to be taken and such enquiries to be made as the court may deem necessary and, subject to the provisions of this Law and to rules of court, shall determine whether the application should be granted.

7        Legal presence in Jersey unnecessary for purpose of making applications

An application under Article 4, 5 or 6 may be made notwithstanding the fact that the person making the application is not present in Jersey and is not represented by an attorney present in Jersey so long as the person has notified the Judicial Greffier of an address in Jersey to which any notice or summons in connection with any matter relating to the patent may be sent, and, in such case, any such notice or summons shall be deemed to be sufficiently served if it is sent to that address.

8        Effect of registration[10]

(1)     Subject to the provisions of this Law, the registration of a patent under this Law or of any title or interest in such a patent (including the restoration of the patent) shall give to the patentee, or any other person in whom any title or interest is vested, as the case may be, the same rights and equivalent remedies in Jersey as are possessed by the patentee or such a person in the United Kingdom, but, save as aforesaid, no patent or title or interest in such a patent shall have effect against any person.

(2)     The rights referred to in paragraph (1) shall have effect in Jersey from the same date from which such rights have effect in the United Kingdom and shall subsist only for as long as such rights subsist in the United Kingdom.

(3)     Notwithstanding paragraph (2), no action for infringement of a right referred to in paragraph (1) may be brought –

(a)     subject to paragraph (4), in respect of any act done prior to the date of registration of the patent under this Law; or

(b)     where the term of the patent has been extended or the patent has been restored, unless the order for extension or restoration has been registered under this Law.

(4)     An action for infringement of a patent may be brought in respect of any act done on or after the date which is, or is treated as, the date of publication of the application for registration, extension or registration, as the case may be, under the Patents Act 1977 where –

(a)     the application for registration under this Law was made before the expiration of 6 months after the date of the grant of the patent under that Act;

(b)     the patent has been registered under this Law; and

(c)     the act would, if the patent had been registered under this Law on the date which is, or is treated as, the date of publication of the application under that Act, have infringed not only the patent but also the claims referred to in section 69 of that Act.

9        Power of court to revoke registration

(1)     A petition for the revocation of the registration of a patent may be presented to the court by the Attorney General or by any person who alleges that the person’s interests have been prejudicially affected by such registration on any of the following grounds, that is to say –

(a)     that the patent was registered on the application of a person not entitled under the provisions of this Law to make the application;

(b)     that the invention, so far as claimed in any claim of the complete specification, has been manufactured, used or sold in Jersey before the date which is the priority date of that claim;

(c)     that more than 3 years had elapsed between the date of the grant of the patent and the date of the registration and that, on the latter date, the patented invention was being used in Jersey on a commercial scale,

and the court, after hearing the parties if desirous of being heard, may make an order revoking any such registration or dismissing the petition. [11]

(2)     In proceedings under this Article, the court may determine any question which it may be necessary or expedient to determine in connection with such revocation.

9A     Compulsory licences – applications and grant[12]

(1)     At any time after the expiration of 3 years, or such other period as the Minister may prescribe by Order, from the date of the registration of a patent under this Law, any person may apply to the court for a licence under the patent.

(2)     An application under paragraph (1) shall be on one or more of the following grounds –

(a)     where the patented invention is a product, that a demand in Jersey for that product is not being met on reasonable terms;

(b)     that by reason of the refusal of the patentee (“first patentee”) to grant a licence or licences on reasonable terms –

(i)      there is prevented or hindered the exploitation in Jersey of any other invention for which another patent has been registered under this Law, such other invention involving an important technical advance of considerable economic significance in relation to the first patentee’s invention, or

(ii)      the establishment or development of commercial or industrial activities in Jersey is unfairly prejudiced;

(c)     that by reason of conditions imposed by the person in whose name the patent is registered on –

(i)      the grant of licences under the patent,

(ii)      the disposal or use of the patented product, or

(iii)     the use of the patented process,

there is unfairly prejudiced the manufacture, use or disposal of materials not protected by the patent or the establishment of commercial or industrial activities in Jersey; or

(d)     that the grant of a licence is necessary to comply with any treaty or international convention which has effect in Jersey.

(3)     The court, after hearing any party with an interest in the matter who is desirous of being heard, may –

(a)     grant such a licence if satisfied of any of the grounds described in paragraph (2); or

(b)     dismiss the application.

(4)     Where the court grants a licence on the ground described in paragraph (2)(c), the court may grant a licence to customers of the applicant as well as to the applicant for the licence.

(5)     An application may be made under paragraph (1) even if the applicant is already the holder of a licence under the patent.

(6)     No person shall be estopped or barred from alleging any of the grounds specified in paragraph (2) by reason of any admission made by him or her, whether in respect of a licence held by that person or otherwise.

(7)     Where an application under paragraph (1) is made in respect of a patent by a person who holds a licence under the patent, the court –

(a)     may, if it orders the grant of a licence to the applicant under this Article, order the existing licence to be cancelled; or

(b)     may, instead of ordering the grant of a licence to the applicant, order the existing licence to be amended.

(8)     A licence must not be granted under this Article unless –

(a)     the applicant has made efforts to obtain a licence from the person in whose name the patent is registered on reasonable commercial terms and conditions; and

(b)     such efforts have not been successful within a reasonable period.

(9)     A licence must not be granted under this Article if the patent in respect of which the application is made is in the field of semi-conductor technology.

(10)    A licence must not be granted under this Article if such grant would be contrary to any treaty or international convention which has effect in Jersey.

(11)    A licence must not be granted on the ground described in paragraph (2)(b) unless the court is satisfied that the person in whose name the other patent is registered is able and willing to grant a licence under that other patent on reasonable terms to –

(a)     the first patentee; and

(b)     any licensees of the first patentee.

(12)    A licence granted on the ground described in paragraph (2)(b) must not be assigned except to a person to whom a patent for the other invention is also assigned.

(13)    A licence granted under this Article –

(a)     must not be exclusive;

(b)     must not be assigned except to a person to whom there is also assigned the part of the enterprise or goodwill that enjoys the use of the patented invention;

(c)     must be predominately for the supply of a market in Jersey;

(d)     must include conditions entitling the patentee to remuneration adequate in the circumstances of the case, taking into account the economic value of the licence; and

(e)     must be limited in scope and duration to the purpose for which the licence was granted,

except to the extent that, in the case of a licence granted on the ground described in paragraph (2)(d), such a licence would be inconsistent with, or contravene, the treaty or international convention to which the licence gives effect.

9B     Other matters relating to compulsory licences[13]

(1)     In this Article “patented invention” means the invention which is the subject of an application under Article 9A and “patentee” shall be construed accordingly.

(2)     In determining whether to grant a licence under Article 9A, the court shall take into account –

(a)     the nature of the patented invention;

(b)     the time which has elapsed since the grant of a patent for the invention in the United Kingdom;

(c)     any measures taken by the patentee or any licensee of the patentee to make full use of the patented invention;

(d)     the ability of the person to whom the compulsory licence would be granted to work the patented invention to the public advantage; and

(e)     the risks to be undertaken by the person to whom the compulsory licence would be granted in providing capital and working the patented invention.

(3)     In determining whether to grant a licence under Article 9A, the court shall not be required to take into account any matters subsequent to the date of the application for the licence.

(4)     Where a licence has been granted under Article 9A the patentee or any other person may apply to the court to have the licence cancelled on the ground that the circumstances which led to the grant of the licence have ceased to exist and are unlikely to recur.

(5)     Following an application under paragraph (4), the court, after hearing any party with an interest in the matter who is desirous of being heard, may –

(a)     terminate the licence subject to such terms and conditions as the court thinks are necessary for the protection of legitimate interests of the licensee; or

(b)     dismiss the application.

10      Rectification of register

(1)     The court may, on the application of the Attorney General or of any person aggrieved, order the register of patents to be rectified by the making of any entry therein or the variation or deletion of any such entry.

(2)     In proceedings under this Article, the court may determine any question which it may be necessary or expedient to determine in connection with the rectification of the register.

11      Power to correct clerical errors

(1)     The Judicial Greffier may, in accordance with the provisions of this Article, correct any clerical error in the register of patents.

(2)     A correction may be made in pursuance of this Article either upon a request in writing made by any person interested, or without such a request.

(3)     Where the Judicial Greffier proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this Article, the Judicial Greffier shall give notice of the proposal to the patentee and to any other person who appears to the Judicial Greffier to be concerned, and shall give them an opportunity to be heard before making the correction.

(4)     Where a request is made under this Article for the making of any such correction as aforesaid and it appears to the Judicial Greffier that the correction would materially affect the rights and equivalent remedies conferred by the registration of the patent, the Judicial Greffier shall require the person by whom the request was made to apply to the court for the rectification of the register of patents in accordance with the provisions of Article 10.[14]

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 the purchaser, shall have power to deal with them in the same manner as if the patent were held on behalf of Her Majesty.

13      Use of inventions of registered patents for the service of the States

(1)     Notwithstanding anything in this Law, the States, and any person authorized by the States, may make, use and exercise for the public service of Jersey any invention the subject of a registered patent, upon such terms as may be agreed either before or after the use, between the States and the patentee, or as may in default of agreement be determined by the court on a reference under Article 14.

(2)     The authority of the States in respect of such an invention may be given under this Article either before or after the patent for the invention is registered and either before or after the acts in respect of which the authority is given are done, and may be given to any person whether or not the person is authorized directly or indirectly by the patentee to make, use, exercise or vend the invention.

(3)     Where any use of an invention is made by or with the authority of the States under this Article, then, unless it appears to the States that it would be contrary to the public interest so to do, the States shall notify the patentee as soon as practicable after the use is begun, and furnish the patentee with such information as to the extent of the use as the patentee may from time to time require.

(4)     The power of the States or of a person authorized by the States under this Article to make, use and exercise an invention shall include power to sell to any person any articles made in the exercise of the powers conferred by this Article which are no longer required for the purpose for which they were made.

(5)     The purchaser of any articles sold in the exercise of powers conferred by this Article, and any person claiming through the purchaser, shall have power to deal with them in the same manner as if the patent were held on behalf of the States.

(6)     The States may, by Act, delegate the exercise of all or any of its powers under this Article to the Chief Minister.[15]

14      Reference of disputes as to use by Crown or States

(1)     Any dispute as to the exercise by a Government department or by the States, or by a person authorized by a Government department or by the States, of the powers conferred by Article 12 or 13, or as to terms for the use of an invention for the services of the Crown or of the States thereunder, or as to the right of any person to receive any part of a payment in respect of those services, may be referred to the court by either party to the dispute in such manner as may be prescribed by rules of court.

(2)     In any proceedings under this Article to which a Government department or the States are a party, the department or the States, as the case may be, may –

(a)     if the patentee is a party to the proceedings, apply for revocation of the registration of the patent upon any ground upon which a patent may be revoked under Article 9;

(b)     in any case, put in issue the validity of the patent or the registration thereof without applying for the revocation of the registration.

(3)     In determining under this Article any dispute between a Government department or the States and any person as to terms for the use of an invention for the services of the Crown or the States respectively, the court shall have regard to any benefit or compensation which that person or any person from whom that person derives title may have received, or may be entitled to receive, directly or indirectly, from any Government department or from the States, as the case may be, in respect of the invention in question.

(4)     In any proceedings under this Article, the court may at any time order the whole proceedings or any question or issue of fact arising therein to be referred to a special or official referee or an arbitrator on such terms as the court may direct; and references to the court in the foregoing provisions of this Article shall be construed accordingly.

15      Restrictions on recovery of damages for infringement

(1)     Damages shall not be awarded in proceedings for the infringement of a registered patent against a defendant who proves that at the date of the infringement the defendant was not aware, and had no reasonable ground for supposing, that the patent was registered, and a person shall not be deemed to have been aware or to have had reasonable grounds for supposing as aforesaid by reason only of the application to an article of the word “patent”, “patented”, or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent and the word “Jersey” or the words “Registered in Jersey” accompanied the word or words in question.

(2)     Where an amendment of a specification has been registered after the first registration of the patent, no damages shall be awarded in any proceeding in respect of the use of the invention before the date of registration of the amendment, unless the court is satisfied that the specification as originally published was framed in good faith and with reasonable skill and knowledge.

(3)     Nothing in this Article shall affect the power of the court to grant an injunction in any proceedings for infringement of a registered patent.

16      Proceedings by exclusive licensee for infringement of registered patent

(1)     Subject to the provisions of this Article, the holder of an exclusive licence under a registered patent shall have the like right as the patentee to take proceedings in respect of any infringement of such patent committed after the date of the licence, and in awarding damages or granting any other relief in any such proceedings, the court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such or, as the case may be, the profits earned by means of the infringement so far as it constitutes an infringement of the rights of the exclusive licensee as such.[16]

(2)     In any proceedings taken by the holder of an exclusive licence by virtue of this Article, the patentee shall, unless the patentee is joined as plaintiff in the proceedings, be added as defendant:

Provided that a patentee so added as defendant shall not be liable for any costs unless the patentee appears and takes part in the proceedings.

17      Burden of proof in certain cases[17]

(1)     Where –

(a)     a patent is granted for an invention which is a process for obtaining a new product; and

(b)     that product is produced by a person other than the patentee of that patent or the patentee’s licensee,

that product shall, unless the contrary is proved, be taken in any proceedings to have been obtained by the same process as that in respect of which the patent was granted.

(2)     In considering whether a party has discharged the burden imposed on the party by this Article, the court shall not require the party to disclose any manufacturing or commercial secrets if it appears to the court that it would be unreasonable to do so.

18      Remedy for groundless threats of infringement proceedings

(1)     Where any person (whether or not entitled to or interested in a registered patent) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a patent, any person aggrieved thereby may bring an action against the person for any such relief as is mentioned in paragraph (2).

(2)     Unless in any action brought by virtue of this Article the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of a registered patent, the plaintiff shall be entitled to the following relief, that is to say –

(a)     a declaration to the effect that the threats are unjustifiable;

(b)     an injunction against the continuance of the threats; and

(c)     such damages, if any, as the plaintiff has sustained thereby.

(3)     For the avoidance of doubt, it is hereby declared that a mere notification of the existence of a registered patent does not constitute a threat of proceedings within the meaning of this Article.

19      Avoidance of certain restrictive conditions

(1)     Subject to the provisions of this Article, any condition of a contract for the sale or lease of a patented article or of an article made by a patented process or for licence to use or work a patented article or process, or relating to any such sale, lease or licence, shall be void in so far as it purports –

(a)     to require the purchaser, lessee or licensee to acquire from the vendor, lessor or licensor, or the vendor, lessor or licensor’s nominees, or prohibit the purchaser, lessee or licensee from acquiring except from the vendor, lessor or licensor, or the vendor, lessor or licensor’s nominees, any articles other than the patented article or an article made by the patented process;

(b)     to prohibit the purchaser, lessee or licensee from using articles (whether patented or not) which are not supplied by, or any patented process which does not belong to, the vendor, lessor or licensor, or the vendor, lessor or licensor’s nominees, or to restrict the right of the purchaser, lessee or licensee to use any such articles or process.

(2)     In proceedings against any person for infringement of a registered patent, it shall be a defence to prove that at the time of the infringement there was in force a contract relating to the patent made by or with the consent of the plaintiff and containing a condition void by virtue of this Article.

(3)     A condition of a contract shall not be void by virtue of this Article if –

(a)     at the time of the making of the contract, the vendor, lessor or licensor was willing to sell or lease the article, or grant a licence to use or work the article or process, as the case may be, to the purchaser, lessee or licensee, on reasonable terms specified in the contract and without any such condition as is mentioned in paragraph (1); and

(b)     the purchaser, lessee or licensee is entitled under the contract to relieve himself or herself of the purchaser, lessee or licensee’s liability to observe the condition upon giving to the other party 3 months’ notice in writing and subject to payment to the other party of such compensation (being, in the case of a purchase a lump sum, and in the case of a lease or licence a rent or royalty for the residue of the term of the contract) as may be specified in the contract or as may be deemed reasonable by the court.

(4)     If in any proceeding it is alleged that any condition of a contract is void by virtue of this Article, it shall lie on the vendor, lessor or licensor to prove the matters set out in paragraph (3)(a).

(5)     A condition of a contract shall not be void by virtue of this Article by reason only that it prohibits any person from selling goods other than those supplied by a specified person, or, in the case of a contract for the lease of or licence to use a patented article, that it reserves to the lessor or licensor or the lessor or licensor’s nominees the right to supply such new parts of the patented article as may be required to put or keep it in repair.

20      Determination of certain contracts

(1)     Any contract for the sale or lease of a patented article or for licence to manufacture, use or work a patented article or process, or relating to any such sale, lease or licence, whether made before or after the coming into force of this Law, may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything to the contrary in the contract or in any other contract, be determined by either party on giving 3 months’ notice in writing to the other party.

(2)     The provisions of this Article shall be without prejudice to any right of determining a contract exercisable apart from this Article.

21      Special provisions as to vessels, aircraft and land vehicles

(1)     Where a vessel or aircraft registered in a convention country, or a land vehicle owned by a person ordinarily resident in such a country, comes into Jersey (including the territorial waters thereof) temporarily or accidentally only, the rights conferred by a registered patent for an invention shall not be deemed to be infringed by the use of the invention –

(a)     in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or

(b)     in the construction or working of the aircraft or land vehicle or of the accessories thereof,

as the case may be.

(2)     This Article shall not affect the provisions of section 53 of the Civil Aviation Act 1949 of the United Kingdom, as extended to Jersey by the Civil Aviation Act (Channel Islands) Order 1953.[18]

(3)     In this Article, “convention country” means –

(a)     any country which is bound by the Convention for the Protection of Industrial Property signed at Paris on 20th March 1883 (such Convention also being known as the Paris Convention); and

(b)     any other country which is a member of the World Trade Organisation.[19]

22      Falsification of register, etc.

If any person makes or causes to be made a false entry in the register of patents, or a writing falsely purporting to be a copy of an entry in that register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, the person shall be liable to imprisonment for a term of 2 years and to a fine.[20]

23      Unauthorized claim of patent rights

If any person falsely represents that any article sold by the person is a patented article, the person shall be liable to a fine; and for the purposes of this provision a person who sells an article having stamped, engraved or impressed thereon or otherwise applied thereto the word “patent” or “patented”, and the word “Jersey” or the words “Registered in Jersey”, or any other word expressing or implying that the article is a patented article, shall be deemed to represent that the article is a patented article. [21]

24      Rules of Court

(1)     The power to make rules of court under the Royal Court (Jersey) Law 1948,[22] 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)     [23]

24A   Regulations[24]

(1)     The States by Regulations may make such provision with respect to patents as they think fit, including amendment of this Law or any other enactment, in relation to any of the following –

(a)     in so far as any such provision is, in the opinion of the States, consistent with any international treaty or agreement which applies to Jersey relating to patents –

(i)      the grant or registration of a patent in Jersey (whether by way of first grant, registration or re-registration), and

(ii)      the exercise and enforcement of any title or interest in a patent, including giving effect to any title or interest in a patent granted or registered in a country or territory otherwise than Jersey;

(b)     giving effect in Jersey to any international treaty or agreement ratified by or on behalf of Jersey or which extends to Jersey, or for the purpose of enabling the ratification or extension of any international treaty or agreement;

(c)     implementing, in Jersey, any obligation of the United Kingdom under the EU Treaties, as defined in the European Union (Jersey) Law 1973[25], whether or not that obligation applies to Jersey;

(d)     giving effect in Jersey to any provision that applies in the United Kingdom.

(2)     Regulations under paragraph (1) may, without prejudice to the generality of that paragraph, do any of the following –

(a)     confer rights on any person or body with regard to the administration of, and decisions relating to, any title or interest in a patent, including allowing the Minister to make provision for such matters by Order;

(b)     make provision for appeals;

(c)     make provision for enforcement including civil remedies or criminal penalties for infringement of any title or interest in a patent;

(d)     make provision for fees, including allowing the Minister to prescribe fees by Order;

(e)     make provision for such supplementary, transitional and incidental matters as the States consider to be necessary or expedient.

25      Powers of States as regards fees

For the avoidance of doubt, it is declared that the power to fix fees conferred upon the States by –

(a)     La Loi (1930) constituant le Département du Vicomte;

(b)     La Loi (1930) constituant le Département des Officiers de la Couronne;

(c)     La Loi (1931) constituant le Département du Greffe Judiciaire;

(d)     La Loi (1936) touchant la Rétribution de la charge de Bailli,

or by any Law, whether passed before or after the commencement of this Law, amending the said Laws, shall include a power to fix fees in respect of the registration of patents and applications therefor, and in respect of all other matters relating to patents under this Law.

26      Saving of vested rights

Nothing in this Law shall be deemed to derogate from such right as may be possessed by any person by virtue of the registration in the rolls of the Royal Court before the coming into force of this Law of any document relating to an invention.

26A   Transitional provisions[26]

(1)     Any act done on or after the date that the Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015[27] enters into force pursuant to any agreement or arrangement made before that date shall not constitute infringement of a registered patent if it would not have constituted an infringement before that date.

(2)     For the avoidance of doubt, any act done before the date that the Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015 came into force shall not be treated as infringing a patent from that date if the act did not infringe a patent before that date.

27      Citation

This Law may be cited as the Patents (Jersey) Law 1957.


Endnotes

Table of Legislation History

Legislation

Year and No

Commencement

Patents (Jersey) Law 1957

L.10/1957

1 March 1958 (R&O.3872)

Patents (Amendment) (Jersey) Law 1981

L.13/1981

14 May 1982 (R&O.7041)

Patents (Amendment No. 2) (Jersey) Law 1997

L.37/1997

1 December 1997 (R&O.9173)

States of Jersey (Amendments and Construction Provisions No. 4) (Jersey) Regulations 2005

R&O.44/2005

9 December 2005

Public Finances (Consequential Amendments) (Jersey) Regulations 2005

R&O.126/2005

9 December 2005

Intellectual Property (Registered Rights) (Miscellaneous Provisions) (Jersey) Law 2015

L.15/2015

27 November 2015

States of Jersey (Transfer of Functions No. 8) (Miscellaneous Transfers) (Jersey) Regulations 2015

R&O.158/2015

1 January 2016

Criminal Justice (Miscellaneous Provisions) (Jersey) Law 2016

L.1/2016

20 September 2016

(R&O.98/2016)

Table of Renumbered Provisions

Original

Current

16A

17

17

18

18

19

19

20

20

21

21

22

22

23

23

24

24

25

25

26

26

27

26(1)

27

    (2)

spent, omitted from this revised edition

 


Table of Endnote References



[1]                                    This Law has been amended by the States of Jersey (Amendments and Construction Provisions No. 4) (Jersey) Regulations 2005. The amendments replace all references to a Committee of the States of Jersey with a reference to a Minister of the States of Jersey, and remove and add defined terms appropriately, consequentially upon the move from a committee system of government to a ministerial system of government

[2] Article 1(1)              amended by L.13/1981, L.15/2015

[3] Article 1(2)              amended by L.37/1997

[4] Article 2                    amended by L.13/1981

[5] Article 4(3)              substituted by L.13/1981

[6] Article 4(5)              amended by L.13/1981

[7] Article 5(2)              inserted by L.13/1981

[8] Article 5(3)              inserted by L.13/1981

[9] Article 5(4)              inserted by L.13/1981

[10] Article 8                  substituted by L.15/2015

[11] Article 9(1)             amended by L.13/1981, L.15/2015

[12] Article 9A                inserted by L.15/2015

[13] Article 9B                inserted by L.15/2015

[14] Article 11(4)          amended by L.15/2015

[15] Article 13(6)          amended by R&O.158/2015

[16] Article 16(1)          amended by L.13/1981

[17] Article 17                inserted by L.37/1997

[18]                                   chapter 03.665

[19] Article 21(3)          substituted by L.15/2015

[20] Article 22                amended by L.1/2016

[21] Article 23                amended by L.13/1981

[22]                                   chapter 07.770

[23] Article 24(2)          repealed by R&O.126/2005

[24] Article 24A             inserted by L.15/2015

[25]                                   chapter 17.210

[26] Article 26A             inserted by L.15/2015

[27]                                   L.15/2015


Page Last Updated: 30 Apr 2019