CLAUSE 5.—(Power of court in infringement action as regards relief in respect of particular claims in patents.) (Hansard, 24 June 1932)

§ Sir GERALD HURST

I beg to move, in page 5, line 18, to leave out from the beginning to the first word "the," in line 19, and to insert instead thereof the word "unless."

12.30 p.m.

This Amendment and subsequent ancillary Amendments are intended to shift the burden of proving good faith from the patentee to those who challenge the good faith. I am moving these Amendments at the request of certain learned counsel who practise in these patent cases and who are very troubled by the language which is used in Clause 5 of the 1437 Bill. I recognise the need for the Clause in some form or another. It is intended to avoid the abuse which has come into existence since the alteration of the law in 1919 to the disadvantage of industry, patentees relying on the inability of the Court to refuse injunctions if certain specifications are good, even though those specifications are combined with varied and too-wide claims. The Departmental Committee which dealt with the abuse rightly laid great stress on the need to give the court discretion with regard to the granting of an injunction in those cases, so that if the specifications had been framed dishonestly the Court should be able to refuse the injunction even if the specifications included certain good claims. That, special and urgent need of legislation is met by the Amendment which I have also on the Paper giving the court express jurisdiction to grant or to withhold injunctions in those cases. In addition to that remedy, which is the real remedy needed to cure this abuse, it was suggested by a learned and distinguished witness before the Committee that it might be advisable to insert words to the effect that the patentee should furnish proof to the satisfaction of the court that the claim was framed with good faith and reasonable skill and knowledge.

The proposal is already contained in a Section of the Patents and Designs Act which relates to antedating the claim for damages from the date of rectifying the amendment to the date of registration of the patent. So it is not entirely without precedent. There are two grounds on which there is an objection to this tendency. First of all, it is a curious reversal of the ordinary principle that the court has to start with the inference of bad faith and the absence of reasonable skill and knowledge, so as to throw the burden on to the patentee. It is a departure from the ordinary legal principle which requires considerable justification. The second objection is a more practical one. There are many cases where the patentee is dead or the patent agent is dead, and many cases where the patent is only sued on after being 12 or 14 years in existence, and it may be that the assignee in not in touch with the patentee or the original patent agent. You may have an assignee suing after a number of years to establish a patent, and being quite 1438 unable to produce the original patentee or patent agent, because those persons may be dead. In those cases it is almost impossible for the complainant positively to establish to the satisfaction of the court the good faith of the original patentee. It is for that reason it is suggested in the Amendment that the section should read in this way— unless the Court is satisfied that the invalid claim was not framed in good faith and with reasonable skill and knowledge. It is also suggested later on that paragraph (b) should go, because if you give the court discretion with regard to withholding an injunction, that discretion, combined with the taking into consideration of the conduct of the parties, would telescope the two Sub sections. If the Amendment is accepted, it will shift the burden of proof from the plaintiff to the defendant, and avoid what might otherwise be a cause of injustice. That is the view taken by certain members of my profession who practise in these patent cases, and it is really at their request that I bring forward these Amendments. It seems to be a case for consideration, and I hope that the Solicitor-General may perhaps either explain away the difficulty of throwing the burden on the patentee in certain cases, or make some alteration if necessary.

§ The SOLICITOR-GENERAL

I can assure my hon. and learned Friend that I have most carefully considered the question of this Amendment, because representations from the same quarters have been made to me about it but, after that careful consideration, I must ask the House to reject the Amendment. The point is this. Before the amendment of the Patent Law in 1919, if a patentee had obtained a patent which was invalid in part, the whole was invalid and the court could give him no relief. But in 1919, Parliament passed an Act to enable patentees to get the advantage of those claims which were held to be valid, while ignoring those which were held to be invalid. This, as the Sargant Committee found, had the most unfortunate effect of inducing patentees to go through a process, which, I think, is known colloquially as "claiming the moon", in other words, putting the most extravagant claims in their patents in the hope that they would 1439 terrorise opponents, and that something in the end would be found in their favour.

My. hon. and learned Friend said that the Clause now proposed to get rid of that difficulty involves a complete reversal of legal principle. I am afraid that I cannot agree with him. What we are proposing is that patentees shall still be able to get the benefit of that which is found to be valid; at the same time we wish to ensure that the practice of claiming wide shall be stopped. Therefore, we are putting in a condition that before they go to the court, as it were, for mercy, they shall show that they have acted in good faith. So far from that being a reversal of legal principle it is, I should have thought, a primary principle of the law that the plaintiff who goes to the court should make out his case. The patentee in this case who goes to ask relief for infringement is at the mercy of the court, because in part his patent is admittedly invalid, and it is his own excessive claiming which has made it necessary for him to ask for relief. It is said that it will be a great hardship in the case of a patentee who may be a foreigner living abroad and whose patent agent may be dead. Equally in that case it will be a hardship to the defendant that he should not have the advantage of seeing either of these gentlemen in the witness box. The whole object is to make patentees more careful not only in their own interests but in the interests of the public.