Patents Act · 2023 Revised Edition · Part · Contracts as to Patented Products
53. Avoidance of certain restrictive conditions
Official textFrom Attorney General's Chambers, unchanged
Subject to this section, any condition or term of a contract for the supply of a patented product or of a licence to work a patented invention, or of a contract relating to any such supply or licence, shall be void in so far as it purports —
patented product
“patented product” means a product which is a patented invention or, in relation to a patented process, a product obtained directly by means of the process or to which the process has been applied;
in the case of a contract for supply, to require the person supplied to acquire from the supplier, or his nominee, or prohibit him from acquiring from any specified person, or from acquiring except from the supplier or his nominee, anything other than the patented product;
in the case of a licence to work a patented invention, to require the licensee to acquire from the licensor or his nominee, or prohibit him from acquiring from any specified person, or from acquiring except from the licensor or his nominee, anything other than the product which is the patented invention or (if it is a process)
other than any product obtained directly by means of the process or to which the process has been applied; or
in either case, to prohibit the person supplied or the licensee from using articles (whether patented products or not) which are not supplied by, or any patented process which does not belong to, the supplier or licensor, or his nominee, or to restrict the right of the person supplied or the licensee to use any such articles or process.
In proceedings against any person for infringement of a 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 or a licence under the patent granted by him or with his consent and containing in either case a condition or term void by virtue of this section.
A condition or term of a contract or licence shall not be void by virtue of this section if —
at the time of the making of the contract or granting of the licence, the supplier or licensor was willing to supply the product, or grant a licence to work the invention, as the case may be, to the person supplied or the licensee, on reasonable terms specified in the
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contract or licence and without any such condition or term as is mentioned in subsection (1); and
the person supplied or the licensee is entitled under the contract or licence to relieve himself of his liability to observe the condition or term on giving to the other party 3 months’ notice in writing, and subject to payment to that other party of such compensation (being, in the case of a contract to supply, a lump sum or rent for the residue of the term of the contract and, in the case of a licence, a royalty for the residue of the term of the licence) as may be determined by an arbitrator appointed by the Attorney General.
If in any proceedings it is alleged that any condition or term of a contract or licence is void by virtue of this section, it shall lie on the supplier or licensor to prove the matters set out in subsection (3)(a).
A condition or term of a contract or licence shall not be void by virtue of this section by reason only that it prohibits any person from selling goods other than those supplied by a specific person or, in the case of a contract for the hiring of or licence to use a patented product, that it reserves to the bailor or licensor, or his nominee, the right to supply such new parts of the patented product as may be required to put or keep it in repair.
right
“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;
Terms defined in s 2
patent
Defined · s 2“patent” means a patent under this Act and includes a patent in force by virtue of section 114(4);
patented invention
Defined · s 2“patented invention” means an invention for which a patent is granted and “patented process” shall be construed accordingly;
patented product
Defined · s 2“patented product” means a product which is a patented invention or, in relation to a patented process, a product obtained directly by means of the process or to which the process has been applied;
right
Defined · s 2“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;
Part
Licences of Right and Compulsory Licences
Part
Use of Patented Inventions for Services of Government
Part
Infringement of Patents
Part
Revocation of Patents and Validity Proceedings
Part
Amendments of Patents and Applications
Part
International Applications for Patents
Part
Legal Proceedings
Part
Offences
Part
Patent Agents
Part