S T A T U T O R Y  I N S T R U M E N T S  
2017 No. 162 
PATENTS 
The Patents (Isle of Man) (Amendment) Order 2017 
Made  - - - - 15th February 2017 
Laid before Parliament  22nd February 2017 
Coming into force in accordance with Article 1(2) 
 
At the Court at Buckingham Palace, the 15th day of February 2017 
Present, 
The Queen’s Most Excellent Majesty in Council 
Her Majesty, in exercise of the powers conferred up on Her by sections 124(3) and 132(2) of the 
Patents Act 1977( a), is pleased, by and with the advice of Her Privy Council, to make the 
following Order: 
Citation and commencement 
1. —(1) This Order may be cited as the Patents (Isle o f Man) (Amendment) Order 2017. 
(2)  This Order comes into force on the date of entry in to force of the Agreement on a Unified 
Patent Court signed at Brussels on 19th February 20 13( b). 
Amendments of Patents (Isle of Man) Order 2013 
2.  The Schedule to the Patents (Isle of Man) Order 20 13( c) is amended in accordance with the 
Schedule to this Order. 
Transitional Provision 
3. —(1) Any question whether an act done before commen cement infringes a patent is to be 
determined in accordance with the law relating to i nfringement in force at the time the act was 
done. 
(2)  In sub-paragraph (1), “commencement” means, in acco rdance with article 1(2), the date 
upon which this Order comes into force. 
 
 
 Richard Tilbrook  
 Clerk of the Privy Council 
                                                                                                                                            
(a) 1977 c.37.  
(b) Cm 8653. The date on which the treaty enters into  force for the United Kingdom and the Isle of Man m ay be found on the 
relevant page on UK Treaties Online at this link: h ttp://treaties.fco.gov.uk/treaties/treatyrecord.htm ?tid=14651. 
(c) S.I. 2013/2602, amended by the Patents (Isle of M an) (Amendment) Order 2016 (S.I. 2016/559).  2 SCHEDULE Article 2 
Amendments of Schedule to Patents (Isle of Man) Ord er 2013 
1.  For paragraph 18 substitute— 
“18.—(1) In section 58(6)(a) (references of disputes as  to Crown use), after “Act,” insert 
“or, in the case of a European patent (UK), has bee n allowed under any of the provisions in 
the Agreement on a Unified Patent Court,”. 
(2) In section 58(12), after “Wales” insert “, the Isle of Man”.” 
2.  In paragraph 19— 
(a)  in sub-paragraph (1), in the inserted section 60(5) (a) (meaning of infringement), after 
paragraph (i) insert— 
“(j) it consists of a use referred to in Article 27 (c) of the Agreement on a Unified 
Patent Court; 
(k) subject to subsection (6H), it consists of an a ct or use referred to in Article 27(k) of 
the Agreement on a Unified Patent Court.”; 
(b)  after sub-paragraph (2) insert— 
“(2A) After section 60(6G)( b) insert— 
“(6H) Subsection 5(k) applies to an act or use in r elation to a European patent 
(UK) or a European patent with unitary effect, but does not apply to an act or use in 
relation to a patent granted by the comptroller.”.”  
3.  After paragraph 24 insert— 
“24ZA.  In section 77 (effect of European patent (UK))( c)— 
(a) in subsections (4), (4A) and (5A), after “Europ ean Patent Convention” insert “or 
the Agreement on a Unified Patent Court”; 
(b) in subsection (5)(a)— 
 (i) after “European Patent Convention” insert “or the Agreement on a Unified 
Patent Court”; and 
 (ii) at the end after “Enlarged Board of Appeal” i nsert “or is revoked and 
subsequently restored by the Unified Patent Court”;  
(c) after subsection (9), insert— 
“(10) Subsection (1) does not apply and is to be tr eated as never having applied in 
respect of a European patent (UK) whose unitary eff ect is registered by the European 
Patent Office in the Register for unitary patent pr otection (see, in particular, the 
Unitary Patent Regulation).”. 
24ZB.  After section 83, insert— 
“83A European patent with unitary effect and Unifie d Patent Court 
(1) Schedule A3 contains provision about the applic ation of this Act in relation to 
the European patent with unitary effect. 
(2) Schedule A4 contains provision about the jurisd iction of the Unified Patent 
Court in relation to the European patent (UK) and t he European patent with unitary 
effect.”. 
                                                                                                                                            
(a) Section 60(5) is modified in its application to t he Isle of Man by S.I. 2013/2602. 
(b) Section 60(6G) was inserted by S.I. 2014/1997. 
(c) Section 77 was amended by the Copyright, Designs and Patents Act 1988 (c.48), Schedule 5, paragraphs  8 and 21; the 
Patents Act 2004 (c.16), Schedule 1, paragraph 2; S .I. 2005/687; the Intellectual Property Act 2014 (c .18), Schedule, 
paragraph 6.  324ZC.  In section 91 (evidence of conventions and instrum ents under conventions)( a)— 
(a) in subsection (1)(a), after “the Community Pate nt Convention” insert “, the 
Agreement on a Unified Patent Court”; 
(b) in subsection (6), in the definition of “releva nt convention court”, after “party to 
the relevant convention”, insert “but does include the Unified Patent Court;”. 
24ZD.  In section 92 (obtaining evidence for proceedings under the European Patent 
Convention)( b), in subsections (1) and (5), after “European Pate nt Convention” insert “or 
proceedings before the Unified Patent Court”.”. 
4.  In paragraph 35 (which is renumbered as paragraph 35(1))— 
(a)  for sub-paragraph (a) substitute— 
“(a) at the end of the definition of “court” insert — 
“(d) as respects the Isle of Man, the High Court of  Justice of the Isle of Man; 
or the Unified Patent Court, as respects the jurisd iction which it has by virtue of 
Schedule A4;”;” 
(b)  in sub-paragraph (b) insert the following additiona l definitions at the appropriate places— 
““Agreement on a Unified Patent Court” means the Ag reement on a Unified Patent 
Court signed at Brussels on 19th February 2013; 
“European patent with unitary effect” has the same meaning as in Article 2 of the 
Unitary Patent Regulation; 
“Unified Patent Court” means the court established under the Agreement on a Unified 
Patent Court; 
“Unitary Patent Regulation” means Regulation (EU) N o 1257/2012 of the European 
Parliament and of the Council of 17 December 2012 i mplementing enhanced 
cooperation in the area of the creation of unitary patent protection( c).”; 
(c)  at the end insert — 
“(2) In section 130(6), after paragraph (c), insert — 
“(d) The Agreement on a Unified Patent Court;”.” 
5.  In paragraph 36, at the end insert— 
“SCHEDULE A3 
EUROPEAN PATENT WITH UNITARY EFFECT 
Meaning of “relevant statutory provisions” 
1.  In this Schedule “relevant statutory provisions” m eans— 
(a) the provisions of this Act which, by virtue of paragraph 2, apply in relation to the 
European patent with unitary effect, and 
(b) the other provisions of this Act which, by virt ue of the Unitary Patent Regulation, 
are to be treated as applying in relation to the Eu ropean patent with unitary effect 
(see, in particular, Article 7 of that Regulation).  
 
                                                                                                                                            
(a) Section 91 was amended by the Patents Act 2004 (c .16), Schedule 2, paragraph 20. 
(b) Section 92 was modified in its application to the  Isle of Man by S.I. 2013/2602 as amended by S.I. 2 016/559. 
(c) OJ No L 361, 31.12.2012, p1.  4Provisions applied by this Schedule to the European  patent with unitary effect 
2.  The following provisions of this Act apply in rela tion to a European patent with unitary 
effect, subject to paragraphs 3 and 4— 
section 48 (compulsory licences: general); 
section 48A (compulsory licences: WTO proprietors);  
section 48B (compulsory licences: other cases); 
section 49 (provisions about licences under section  48); 
section 50 (exercise of powers on applications unde r section 48); 
section 50A (powers exercisable following merger an d market investigations); 
section 51 (powers exercisable in consequence of re port of Competition and Markets 
Authority); 
section 52 (opposition, appeal and arbitration); 
section 53 (compulsory licences; supplementary prov isions); 
section 54 (special provisions where patented inven tion is being worked abroad); 
section 55 (use of patented inventions for services  of the Crown); 
section 56 (interpretation, etc., of provisions abo ut Crown use); 
section 57 (rights of third parties in respect of C rown use); 
section 57A (compensation for loss of profit); 
section 58(1) to (6) and (9A) to (13) (references o f disputes as to Crown use); 
section 59 (special provisions as to Crown use duri ng emergency); 
section 60 (meaning of infringement); 
section 64 (right to continue use begun before prio rity date); 
section 73(2) to (4) (Comptroller’s power to revoke  patents on his own initiative); 
section 74A (opinions on matters prescribed in the rules); 
section 74B (reviews of opinions under section 74A) ; 
section 76A (biotechnological inventions); 
section 77(4) to (5A) (effect of European patent (U K)); 
section 80(1) (authentic text of European patents a nd patent applications); 
sections 97 to 100 (legal proceedings) so far as th ey relate to proceedings which do not fall 
within the exclusive jurisdiction of the Unified Pa tent Court as set out in paragraph 1 of 
Schedule A4; 
section 101 (exercise of comptroller’s discretionar y powers); 
section 102 (right of audience, &c in proceedings b efore comptroller); 
sections 103 (extension of privilege for communicat ions with solicitors relating to patent 
proceedings) and 105 (extension of privilege in Sco tland for communications relating to 
patent proceedings) so far as they relate to procee dings before the comptroller; 
section 107 (costs and expenses in proceedings befo re the comptroller);  5section 108 (licences granted by order of comptroll er); 
section 110 (unauthorised claim of patent rights); 
section 116 (immunity of department as regards offi cial acts); 
section 118 (information about patent applications and patents, and inspection of 
documents); 
section 123 (rules); 
section 124 (rules, regulations and orders; supplem entary); 
section 125 (extent of invention); 
section 128A (EU compulsory licences); 
section 128B (supplementary protection certificates ). 
 
Manner of application of relevant statutory provisi ons 
3.  The relevant statutory provisions apply in relatio n to a European patent with unitary 
effect in the same way as they apply in relation to  a European patent (UK). 
 
Modifications of relevant statutory provisions 
4. —(1) In their application in relation to the Europe an patent with unitary effect, the 
relevant statutory provisions which are referred to  in this paragraph have effect subject to 
the modifications set out in this paragraph. 
(2) In section 7(2)(b), the reference to the United  Kingdom is a reference to any of the 
Participating Member States. 
(3) In sections 30(7) and 31(7), references to proc eedings by virtue of section 61 or 69 are 
references to equivalent proceedings in the Unified  Patent Court. 
(4) In sections 33(1)(a), 33(4), 37(2), 37(7), 38(2 ) and 38(3), the reference to registration 
is a reference to registration in the Register for unitary patent protection. 
(5) In sections 48(1)(b), 48B(4), 50A(4), 51(3), 53 (3), and 53(4), the reference to the 
register is a reference to the Register for unitary  patent protection. 
(6) In sections 48(2)(b), 50A(4), 51(3), 53(3), 53( 4) and 53(5), the reference to making an 
entry is a reference to directing the making of an entry. 
(7) In sections 48B(2)(b) and 50(2)(a), the referen ce to the journal is a reference to the 
European Patent Bulletin. 
(8) In section 55(5)(b), the reference to the Paten t Office is a reference to the European 
Patent Office. 
(9) In section 59(2), the reference to section 69 i ncludes a reference to Article 67 of the 
European Patent Convention. 
(10) In section 60— 
(a) in subsections (1), (2), and (5)(d), (e) and (f ), the references to the United 
Kingdom are references to the territory of a Contra cting Member State in which 
the European patent with unitary effect has effect;  
(b) in subsection (7)— 
 (i) in the definition of “relevant ship” and “rele vant aircraft, hovercraft or 
vehicle”, the reference to the United Kingdom is a reference to a Contracting 
Member State in which the European patent with unit ary effect has effect; and  6 (ii) in the definition of “exempted aircraft”, the  reference to an aircraft to which 
section 89 of the Civil Aviation Act 1982( a) applies is a reference to an 
aircraft other than an aircraft of a Contracting Me mber State in which the 
European patent with unitary effect has effect. 
 
Interpretation 
5.  In this Schedule— 
(a) “Contracting Member State” has the same meaning  as in Article 2(c) of the 
Agreement on a Unified Patent Court; 
(b) the following expressions have the same meaning s as in Article 2 of the Unitary 
Patent Regulation— 
Participating Member State; 
Register for unitary patent protection; and 
(c) in relation to the United Kingdom, references t o a Contracting Member State or a 
Participating Member State are to be construed in a ccordance with section 132(2). 
SCHEDULE A4 
THE UNIFIED PATENT COURT 
Jurisdiction 
1.  The Unified Patent Court has exclusive jurisdictio n in respect of an Article 32(1) action 
which relates to— 
(a) a European patent with unitary effect, or 
(b) a supplementary protection certificate( b) for which the basic patent is a European 
patent with unitary effect, 
(c) subject to paragraph 2— 
 (i) a European patent (UK), or 
 (ii) a supplementary protection certificate for wh ich the basic patent is a European 
patent (UK). 
 
Transitional provisions 
2.—(1) The transitional provisions in Article 83 appl y in relation to an action referred to 
in Article 83(1). 
(2) An opt out referred to in Article 83(3) may be exercised in accordance with that 
provision and any relevant Rules of Procedure. 
(3) Such opt out may be withdrawn in accordance wit h Article 83(4) and any relevant 
Rules of Procedure. 
(4) For the purposes of this paragraph, a reference  to Article 83 is a reference to Article 
83 of the Agreement on a Unified Patent Court. 
 
Modifications of law applicable where UPC has juris diction 
3.—(1) In the case of an Article 32(1) action relatin g to— 
(a) a European patent with unitary effect, or 
                                                                                                                                            
(a) 1982 c.16. 
(b) Section 128B(2) of the Patents Act 1977 (c.37), w hich was inserted into that Act in its application to the Isle of Man by S.I. 
2013/2602 as amended by S.I. 2016/559, defines “sup plementary protection certificate”.  7(b) a European patent (UK), 
the provisions of this Act listed in sub-paragraph (2) do not apply in relation to the action 
where the Unified Patent Court has jurisdiction in accordance with paragraph 1. 
(2) The provisions referred to in sub-paragraph (1)  are— 
section 58(7) to (9) (references of disputes as to Crown use); 
section 61 (proceedings for infringement of patent) ; 
section 62 (restrictions on recovery of damages for  infringement); 
section 63 (relief for infringement of partially va lid patent); 
section 65 (certificate of contested validity of pa tent); 
section 66 (proceedings for infringement by a co-ow ner); 
section 67 (proceedings for infringement by exclusi ve licensee); 
section 68 (effect of non-registration on infringem ent proceedings); 
section 69 (infringement of rights conferred by pub lication of application); 
section 71 (declaration or declarator as to non-inf ringement); 
section 72 (power to revoke patents on application) ; 
section 73(1) to (1C) (comptroller’s power to revok e patents on his own initiative); 
section 74 (proceedings in which validity of patent  may be put in issue); 
section 75 (amendment of patent in infringement or revocation proceedings); 
section 77(3) (effect of European patent (UK)). 
(3) In the case of an Article 32(1) action relating  to a supplementary protection certificate 
for which the basic patent is— 
(a) a European patent with unitary effect, or 
(b) a European patent (UK), 
the provisions of this Act listed in sub-paragraph (4) do not apply in relation to the action 
where the Unified Patent Court has jurisdiction in accordance with paragraph 1. 
(4) The provisions referred to in sub-paragraph (3)  are— 
section 58(7) to (9) (references of disputes as to Crown use); 
section 61 (proceedings for infringement of a paten t); 
section 62 (restrictions on recovery of damages for  infringement); 
section 63 (relief for infringement of partially va lid patent); 
section 65 (certificate of contested validity of pa tent); 
section 66 (proceedings for infringement by a co-ow ner); 
section 67 (proceedings for infringement by exclusi ve licensee); 
section 68 (effect of non-registration on infringem ent proceedings); 
section 69 (infringement of rights conferred by pub lication of application); 
section 71 (declaration or declarator as to non-inf ringement); 
section 74 (proceedings in which validity of patent  may be put in issue); 
section 75 (amendment of a patent in infringement o r revocation proceedings). 
 
Enforcement 
4.—(1) For the purposes of enforcement of a decision or order of the Unified Patent 
Court— 
(a) the decision or order has the same force and ef fect,  8(b) proceedings for or with respect to enforcement of the decision or order may be 
taken, and 
(c) the enforcing court, or in a relevant Northern Ireland case the Enforcement of 
Judgments Office, has the same powers in relation t o the enforcement of the 
decision or order, 
as if the decision or order had originally been mad e by the enforcing court. 
(2) The enforcing court, or in a relevant Northern Ireland case the Enforcement of 
Judgments Office, may enforce a mediation settlemen t in the same manner as a judgment or 
order of the enforcing court. 
(3) In this paragraph— 
“enforcing court” means— 
(a) as respects England and Wales, the High Court, 
(b) as respects Scotland, the Court of Session, 
(c) as respects Northern Ireland, the High Court in  Northern Ireland, 
(d) as respects the Isle of Man, the High Court of Justice of the Isle of Man; 
“mediation settlement” means a settlement reached t hrough mediation using the 
facilities of the patent mediation and arbitration centre established under Article 35 of 
the Agreement on a Unified Patent Court; 
“relevant Northern Ireland case” means a case where — 
(a) the decision or order of the Unified Patent Cou rt would, if it had been given by the 
High Court in Northern Ireland, or 
(b) the mediation settlement would, if enforced in the same manner as a judgment or 
order of the High Court in Northern Ireland, 
be enforced by the Enforcement of Judgments Office under the Judgments Enforcement 
(Northern Ireland) Order 1981( a). 
 
Interpretation 
5.  In this Schedule— 
(a) “Article 32(1) action” means an action listed i n Article 32(1) of the Agreement on 
a Unified Patent Court; 
(b) “basic patent” has the same meaning as in Artic le 1(c) of Regulation (EC) No 
469/2009 of the European Parliament and of the Coun cil of 6th May 2009 
concerning the supplementary protection certificate  for medicinal products( b); and 
(c) “Rules of Procedure” has the same meaning as in  the Agreement on a Unified 
Patent Court.” 
 
 
 
EXPLANATORY NOTE 
(This note is not part of the Order) 
This Order amends the Patents (Isle of Man) Order 2 013 (S.I. 2013/2602) to make further 
modifications to the Patents Act 1977 (c.37) in its  application to the Isle of Man. 
The Order comes into force on the date of entry int o force of the Agreement on the Unified Patent 
Court (Article 1(2)). The date may be found on the relevant page on UK Treaties Online. A link is 
set out in the footnote to Article 1(2) of the Orde r. 
                                                                                                                                            
(a) S.I. 1981/226 (N.I. 6). 
(b) OJ No L152, 16.6.2009, p.1.  9The Order gives effect to European Union legislatio n in relation to the European patent with 
unitary effect and to an international agreement on  the Unified Patent Court, by making equivalent 
provision for the Isle of Man to that which was mad e for the United Kingdom by the Patents 
(European Patent with Unitary Effect and Unified Pa tent Court) Order 2016 (S.I. 2016/388). 
A full impact assessment of the effect that Order h as on the costs of business, the voluntary sector 
and the public sector is available from the Intelle ctual Property Office, Patents Legal Section, 
Concept House, Cardiff Road, Newport NP10 8QQ and i s annexed to the Explanatory 
Memorandum which is available alongside this instru ment on the Legislation UK website at 
www.legislation.gov.uk. 
  
  
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