Section 66: Proceedings for infringement by a co-owner

Sections (66.01-66.04) last updated April 2007.

66.01

This section lays down the way in which references to the proprietor of a patent should be construed in applying s.60 where there are two or more joint proprietors. It also provides, in subsection (2), for the bringing of infringement proceedings by one of the joint proprietors.

66.02

In accordance with s.69, references in inter alia ss.60 and 66 to a patent and the proprietor of a patent are to be respectively construed as including references to an application which has been published but not yet granted and the applicant. Section 66 thus also relates mutatis mutandis to the position of joint applicants with regard to infringement.

66.03

For the applicability of s.66 in relation to European patents, see 60.02.

Section 66(1)

In the application of section 60 above to a patent of which there are two or more joint proprietors the reference to the proprietor shall be construed - (a) in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of section 36 above or any agreement referred to in that section, is or are entitled to do that act without its amounting to an infringement; and (b) in relation to any consent, as a reference to that proprietor or those proprietors who, by virtue of section 36 above or any such agreement, is or are the proper person.

66.04

s.36(1), s.36(2) and s.36(3) are also available.

Section 36 provides that joint proprietors of a patent are each (subject to any agreement to the contrary) entitled to an equal undivided share in the patent and also entitled to independently do an act which would otherwise amount to an infringement, but not to grant a licence or assignment etc without the consent of the others. In applying s.60, the proprietor means that proprietor or those proprietors entitled under s.36 or under any such agreement to do such an act or give such a consent, as the case may be.

Section 66(2)

One of two or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but shall not do so unless the others are made parties to the proceedings; but any of the others made a defendant or defender shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.