PA 64 – Right to continue use begun before priority date

Question 1

What does S64 concern

Answer 1

Prior use

Question 2

What does prior use mean

Answer 2

S64(1)
A person in the UK , who BEFORE the PRIORITY DATE of an application
a) in good faith did an act that would infringe the patent if it had been in force, or
b) in good faith made serious and effective preparations to do so,

may CONTINUE to do so but CANNOT licence others to do so

Question 3

If prior use was performed in the course of business, what does the right to continue give

Answer 3

S64(2)
the right to continue may
a) be used to authorise partners IN the business, and
b) be assigned or bequeathed as PART of the business or the relevant part thereof

Question 4

What can be done with products resulting from prior use

Answer 4

S64(3)
resulting products of the prior use act can be dealt in feely

Question 5

What is considered as continuing the act under prior use

Answer 5

• the act includes reasonable variation, but continue is intended only to enable continuing in substance what they were doing before
• cannot significantly expand or diverge from the original act
• the right is a personal right, so cannot be licensed
• preparations should be ongoing, so any pause or shelving may suggest preparations are no longer serious or effective.

Question 6

What should you consider if your client has a prior use defence

Answer 6

whether their prior use would also be prior art, or whether the use was SECRET