HC Deb 08 April 1938 vol 334 cc714-30

Order for Second Reading read.

12.25 p.m.

Captain Wallace

I beg to move, "That the Bill be now read a Second time."

The purpose of this Bill is to make a number of amendments in our patents, designs, trade marks, and merchandise marks law, in order to enable His Majesty's Government in this country to give effect to two international Conventions in the forms to which those Con- ventions were revised at the London Conference of the International Union for the Protection of Industrial Property in the year 1934, and to deal with certain matters affected by those Conventions.

The Convention Amendments to which effect is proposed to be given by this Bill were, with one exception, made in the International Convention for the Protection of Industrial Property. The one exception is concerned with merchandise marks and was made in the other Convention, the International Agreement for the Prevention of False Indications of Origin on Goods. The Industrial Property Convention is the general Convention of the Union, which at the present moment comprises 40 countries, and the Agreement regarding false indications of origin is made between 21 of those countries. Both Conventions in their revised form are due for ratification by 1st July this year. The main Convention has in fact already been ratified by three countries, namely, the United States, Germany, and Denmark, and the Agreement regarding false indications of origin by Germany, and the present Bill is intended to prepare the way for ratification on behalf of this country.

The main provision of the Convention is that persons within the jurisdiction of any member country in the Union, are, as regards the protection of their industrial property, to enjoy in all the other countries of the Union the advantages which the laws of those countries grant to their own nationals. It is a reciprocity Convention, but it requires in addition that certain matters shall be provided for in the laws of each particular country if they are not already there. Among these is a provision, which has long been in force here, that where an application for a patent or for the registration of a design or trade mark has been made in any one of the Convention countries, a subsequent application for the same subject matter made in any other of the Convention countries within certain specified periods is to be treated for the purposes of priority—and priority is extremely important in these matters—as if it had been made in that other country on the same date as the application in the first case. This provision is of particular advantage in the case of patents, because it gives an inventor an opportunity without loss of priority of testing his invention and of securing examination by the Patents Office in his own country before he decides whether it is worth while to seek protection for it in foreign countries.

The Bill, as the House will see, deals with a number of matters which have no direct connection with one another except that they are all concerned with industrial property and that they all relate to the Conventions which I have mentioned, and I propose, with the permission of the House, just to say one or two words on each of the Clauses of the Bill. But before I do so, I ought to inform the House that the hon. and learned Gentleman the Member for East Bristol (Sir S. Cripps), who is recognised throughout the country as one of the greatest living authorities on this branch of the law, was kind enough to give me notice yesterday that he intended to raise certain points on the Second Reading of this Bill. When I received his letter and saw what those points were, I was more than ever convinced of the advantages which must accrue to the Parliamentary Secretary of the Board of Trade if he has the good fortune, like my predecessor, to belong to some branch of the legal profession, and I very soon realised that it was quite impossible for a mere soldier turned politician or tradesman to take on the hon. and learned Gentleman in these difficult and abstruse matters. I have, therefore, secured the assistance of the learned Solicitor-General, and I hope that, having outlined the Clauses very briefly in non-technical language, I shall be able to leave these two very learned hon. Members to thrash them out in a little more detail.

Clause 1 of the Bill is to give effect to a new Article which was inserted in the main Convention providing that an inventor shall have the right to be mentioned as such in the patent. Our laws already require that in most cases. Clause 2 deals with the term for which a patent runs. The term is at present 16 years from the date of the patent, provided, of course, that the necessary renewal fees are paid. In cases where a patent is granted in this country with Convention priority, it is our practice to date the patent as of the date of the first application in the foreign country, and so to include the period of priority in the 16 years for which the patent runs. In foreign countries that period is generally excluded. One of the Amendments to the Convention is directed to this point, and it provides that a patent obtained with the benefit of priority shall enjoy in the various countries of the Union—a duration equal to that which it would have enjoyed if the patent had been obtained without the benefit of priority.

The third Clause of the Bill arises from the way in which one of the provisions of our law affects patents granted with Convention priority. According to our law, a complete specification filed in connection with an application for a patent must, if a valid patent is to be secured, disclose the best method of performance of the invention known to the applicant when he left his specification at the Patent Office; but in the case of an application made with a claim to Convention priority the invention must be the same as that applied for in the convention country on the prior date claimed. That is a Clause to which the hon. and learned Gentleman opposite draws particular attention, and I will say no more about it at the moment. Clause 4 relates to measures for preventing the abuse of monopoly rights under a patent, as, for example, by nonworking of the invention in the United Kingdom. As a check on this particular form of abuse our present law provides that at any time after the expiration of three years from the grant of a patent application may be made to the Comptroller of the Patent Office alleging abuse of monopoly rights, and asking, among other things, for the grant of a compulsory licence to work the patent or even for the revocation of the patent altogether. Before the Comptroller can revoke a patent for this reason he has to be satisfied that any abuse of monopoly rights which has been shown to him to exist cannot be met by the exercise of some powers falling short of complete revocation, as, for instance, the giving of a compulsory licence to somebody else to work it. An amendment to the Convention provides that no proceedings for the revocation of a patent for abuse of monopoly rights shall be instituted less than two years from the granting of the first compulsory licence, and Clause 4 amends our law correspondingly.

Under our existing law, where the same applicant has made two or more applications for a patent in a Convention country and the whole of the subject matter of these applications is only a single invention, he may on certain conditions obtain a single patent covering the subject matter of both or of all the applications. Clause 5 extends this privilege of being able, so to speak, to consolidate the applications if they are made for the same thing to a case in which the original applications in the Convention country were made by different applicants but the rights in these applications have become vested in the same person. Clause 6 provides that in determining whether an invention for which priority is claimed in this country is the same as that for which an earlier application was made in the Convention country, regard has to be had not only to what was formally claimed in the documents officially filed in that Convention country, but to the invention as disclosed in the whole of the documents.

Clause 7 deals with the subject of appeals against refusal by the Comptroller of the Patent Office to accept an application or a specification. In most cases that is subject to appeal to the appeal tribunal, which for this purpose consists of a judge of the High Court, but no provision for such an appeal is given at present under Section 91 of the Act against any such refusal on the part of the Comptroller on the ground of noncompliance with any requirement of that Section. This Clause proposes to give such a right of appeal. Clause 8 repeals a proviso to Sub-section 4 of Section 91 which is considered to be redundant, as indeed a case actually decided in the courts has proved it to be so. Clause 9 deals with what I can best describe as a sort of convention within a convention and of which I might give an example. Certain nations, parties to the Arrangement for the International Registration of Designs, which has its headquarters at Berne, have agreed that applications lodged at Berne shall be treated as equivalent to applications made directly to the countries themselves. Clause 9, following a new provision in the Convention, provides that we should treat an application made at Berne as if it were made in a Convention country if the Convention country itself so regards the application. Clause 10 is a machinery clause which clarifies the position with regard to the making of Orders in Council concerning these subjects.

Clause 11 gives effect to the one Amendment, which I mentioned earlier, in the International Agreement as distinct from the International Convention. That agreement before its latest revision referred only to goods bearing a false indication of origin. By the new requirements inserted in 1934 the agreement is extended to cover the use of all indications in the nature of publicity capable of deceiving the public as to the origin of the goods, and appearing not only on the goods themselves but also on signs, advertisements, invoices, wine lists, business letters or papers, or any other commercial communications. The House will agree that there are plenty of ways of misrepresenting goods, either in regard to what they are made of or in regard to where they come from, other than by the simple method of putting a false description on them and I think this provision will be very generally welcomed. Clauses 12 and 13 and the Schedule relate only to consequential and minor Amendments.

I apologise to the House for taking up a considerable time in dealing with a very technical subject. Hon. Members who have tried to follow what I have said, and especially those who have succeeded will appreciate why I am so glad that the Amendments which the hon. and learned Gentleman the Member for East Bristol would like to propose to this Bill will be dealt with by a member of the legal profession.

12.42 p.m.

Sir Stafford Cripps

We have no objection to the Bill as a whole. It is one that obviously should be passed in order to put into operation the agreements which have been arrived at in international Conventions. There are, however, one or two observations which would perhaps be appropriate at this stage in order that the Government may have an opportunity of considering them before a further stage is reached. Clause 1 is designed to carry out a clause in the International Convention that the inventor has a right to be mentioned as such in the patent. There has been a good deal of complaint in the past that the man who has really been responsible for the ingenuity of the invention has not received the credit for it. This is not a question of financial credit, but a question of real credit scientifically for having made the invention. Patents often become associated with the names of the patentees that appear on them. It is obviously highly desirable that people who carry through the research and exercise the ingenuity should have their names associated with the results of their research, even though they may have no financial interest in the patent.

That is the object of this Clause. It proposes that the inventor or, as he is called, the actual deviser of the invention, should be entitled to be mentioned as the inventor in the patent. It is useless to mention him in the patent for that is the one document that nobody sees. The registered owner is the only person who sees it. The document which everybody sees is the specification of the patent, and that is where the name should be mentioned in order that the public may associate the patent with the inventor. Therefore, I suggest that this should be altered. It was clearly the intention of the Convention when it spoke of the patent that it meant the public document which everybody sees and which contains the information. I suggest that the extremely elaborate procedure laid down in the Clause for proof and opposition and all the rest of it is unnecessarily complicated, and is liable to lead to a great deal of dispute and discussion, which is an undesirable waste of everybody's time and money.

It would be much easier if on the ordinary application form for a patent which has to be signed by every applicant there were a space which he should be required to fill in giving the name of the person who is the actual deviser of the invention. The liability then rests upon him to fill it in correctly, and if he does not do so his patent may subsequently be revoked because of the false statement on the application form. He could at the same time, if he wished, file a statement from the actual deviser disclaiming the right to have his name on the application, and if that were done the actual deviser's name would not appear. Apart from such a disclaimer being filed the actual deviser's name always appears on the specification. It may appear at the top in the statement "Invention by William Smith," or whatever the name is, or it may appear in whatever place it is thought right to put it in. That simple procedure requiring the information to be entered upon the application form will, it seems to me, do away with the whole of the complicated procedure which is laid down in Clause 1, and I ask the hon. and learned Gentleman to consider whether it would not be a better and more efficient way.

A point of some little difficulty, perhaps, arises on Clause 3. That Clause is designed to get over a difficulty which arises under paragraph (2, j) of Section 25 of the Act of 1907 which is the revocation Section. One of the reasons for revocation is that the complete specification does not disclose: the best method of performance of the invention known to the applicant for the patent at the time when the specification was left at the Patent Office. Under the law of disconformity it is necessary, in the case of a British specification, not to have between the provisional and the complete specification a difference in the invention disclosed, but it is permissible to have a legitimate expansion of the invention which has been disclosed in the provisional specification. That is to say, that if the provisional specification shows some crude mechanism it is possible to perfect it and to show the completed mechanism in the completed specification and to attach the claim to such completed mechanism. In the case, however, of Section 91, where an application is made in a country abroad, it has recently been held, contrary to an earlier decision, that there is no such permitted legitimate expansion, with the result that the complete specification in such a case as I have mentioned could not do anything more than claim protection for the crude mechanism. If it did there would be a possibility of disconformity arising, because ex hypothesi the complete specification in such a case could not disclose the best method known to the person when he filed it; he would not have been allowed to put it in, but could only put in the crude mechanism.

This Clause says that the failure to disclose the best method shall not apply in the case of a Section 91 application, because the man cannot disclose the best method known. The right hon. and gallant Gentleman explained that it was intended to put the foreigner in the same position as the Englishman. The Englishman is entitled to introduce a legitimate expansion of his provisional specification, and it is highly desirable that he should be allowed to do so. We do not want to sterilise his invention at the moment when the provisional specification is presented because we want him to go on developing it and perfecting it and finally to publish it in the complete specification. In precisely the same way it is thought desirable and necessary to permit the same expansion between the document originally deposited by the foreign inventor in the foreign country, which is equivalent to a provisional specification, and the document which he deposits in this country as the complete specification.

The hon. and learned Member will find in the Patents Reports a decision of one who was once a Solicitor-General explaining why that is consistent with the Act as it stands. Unfortunately other people have taken other views, and this does appear to be a very good opportunity for clearing up this point. There can be no doubt that consistently with the underlying ideas of the Convention itself there should be such an opportunity for expansion, nor can there be any doubt that it is to the advantage of this country to get that disclosed in the complete specification, which adds to what may have been in the original document the development which has taken place since. Any other system of dealing with those two documents leads to the sort of anomalies which we are trying to cure in Clause 3. I suggest to the hon. and learned Gentleman that he will find that in the profession it is considered that the best way of curing the anomalies is to put a Section 91 application upon the same basis as an ordinary application.

Those are the two main points with which I want to deal, but in conclusion I should like to mention two others. One arises under Clause 5. As the right hon. and gallant Gentleman said, this Clause is introduced to do away with an anamolous position which might arise, but I would point out that there are many other anomalous positions, of which I have sent him details, and therefore I feel that the Clause must be made rather broader if it is to be included at all. It may be that what the Clause does is sufficient to satisfy the Convention, but it is not sufficient to satisfy common sense, and if we are to satisfy the Convention we should also satisfy common sense at the same time.

On Clause 6 an important if minor question arises over the drafting. It is a Clause intended to get over a difficulty as regards interpreting what the invention is for which protection has been applied for in a foreign country, because that forms the basis, under Section 91, of an invention that can be obtained in this country, and this Clause might very desirably make it clear that one can refer to the whole of the documents put forward at the time of the application in order to find out what the invention is. Unfortunately the Clause repeats the words "the invention disclosed" which have always presented a difficulty. I suggest that we might make the Clause say that "regard would be had to the whole of the documents put forward at the time" or to "the disclosure contained in the whole of the documents." Either of those phrases would be very suitable phrases, and would get over "the invention disclosed" objection, which will only raise again the very difficulty which this Clause is seeking to get over. With those observations we here can support the Second Reading.

12.53 p.m.

Sir A. Wilson

As a humble layman who has some practical interest in the Patents and Designs Act from the point of view of designs may I draw the attention of the right hon. Gentleman to "the prescribed fees"? There is a general feeling in commercial circles, particularly in regard to textiles, that the fees charged are too high. The Patents Office is running at a profit and has a considerable margin to play with, and I am not by any means clear from the text of the Convention or this Bill whether the whole intention of the Bill and, indeed, of the Convention, might not, so far as textile designs are concerned, be largely nullified by the charging of excessive fees. I am credibly informed that for some time past there has been a tendency for textile designers, and other than textile designers, not to register their designs in this country simply because the number of designs to be registered is so large and the cost is so high that it is simply not worth while. To register them involves disclosure. Copies can be obtained from the Patent Office. They can be sent by air to distant countries and they can be in foreign countries long before anybody has had time to trace them and take the requisite steps. I hope the Government will seriously consider whether the fees are not at present excessive and should be scaled down; otherwise whether it is possible or probable for the various governments principally concerned under the Bill to nullify its intention.

There are excessive fees, particularly in regard to textiles and other industries which are in the habit of registering large numbers of patterns and would be very glad of the protection afforded by the Bill. I refer to embroideries, textiles, and the innumerable small designs which have a transient interest in the trade, and of which one may have to register 300 or 400 in the name of a single firm in the course of 12 months. The actual fees are not prescribed by the Bill. They will be prescribed in due course by the Board of Trade. I hope that when the Bill goes through the Government will give further consideration to this matter, which, from the purely commercial point of view, is of considerably greater interest than some of the technicalities which have been referred to and which deal largely with the heavy and mechanical industries.

12.57 p.m.

The Solicitor-General (Sir Terence O'Connor)

May I also express my gratitude to the hon. and learned Member for East Bristol (Sir S. Cripps) for his courtesy in giving notice of points among which he ranges with a much greater facility than any Member of this House can hope to command. I am rather in the position of the blind leading the blind, because I do not pretend to any detailed or specific knowledge of this branch of the law comparable to that which is possessed by the hon. and learned Gentleman. He has been good enough to put his suggestions in this form, and I think it was clear to the House when he addressed it that they fall for consideration between now and the remaining stages of the Bill. It would be appropriate that they should receive a more detailed examination during that interval than I propose to give them now, but they deserve some immediate observations upon one or two points.

It is right that the House should know what exactly Clause 1 is devised to do. It is devised pursuant to the recommendations of the proposed Convention that the inventor has the right to be mentioned as such in the patent. According to our law he normally is, but there are one or two cases in which he is not. What is proposed in this Clause is merely something which will give personal gratification to the inventor and enable him to take personal credit, but it does not affect rights or interests of a pecuniary or a financial kind. These improvements relate to only a very few cases. The argument put forward by the hon. and learned Gentleman rather assumed that sanctions should be applied of a more stringent character, which I think would be appropriate in cases where the public interest was concerned, but not quite so appropriate or necessary in cases where it was desired to insist upon mention of the name of the inventor for personal gratification. The proposal that the hon. and learned Gentleman made was a stringent one and, at any rate as at present advised, we do not think it would be right to apply the stringent sanctions which he suggests to cases in which the only desire is to include the name in the patent for the personal gratification of the inventor.

Sir S. Cripps

It is not a question of stringent sanctions. The sanction is that an applicant must not make a false statement when he applies. If you ask him to say who was the deviser of the invention he must tell the truth. There is no stringent sanction about that.

The Solicitor-General

He is under considerable penalty if he makes a false statement.

Sir S. Cripps

He does it, anyway.

The Solicitor-General

We think the suggestion goes farther than we can go under the present Convention or than is necessary for this comparatively small modification of the law. On one point I agree entirely with the hon. and learned Gentleman. In so far as the Clause provides that the inventor and deviser is entitled to be mentioned in the patent, it does not set out what we intend to do. As the hon. and learned Gentleman said, it is not a public document, and the Government will be willing on the Committee stage to accept an Amendment to provide that it should appear in the register. I am told that that would be a better way of achieving the object. The register is open to public inspection.

Sir S. Cripps

Surely the document which everybody buys at the Patent Office and which everybody sees, is the specification. People do not see the register unless they go for some particular purpose to inspect it.

The Solicitor-General

We recognise the force of the point but, as I am at present advised, the better way would be to include it in the register. Our desire is to give effect to the point. As for including a Clause which would enable the true inventor to obtain all the glory there is from this matter, we should be willing to see that one is put forward in the Committee stage on behalf of the Government. The hon. and learned Gentleman made some observations about the cumbrous nature of the Clause, but that is more apparent than real. Subsections (2) to (8) of the Clause are little more than machinery. It would be equally possible to have put in some formula such as "according to rules to be made by the Board of Trade, who have ample power to make rules dealing with all these matters. We think that we are entitled to take the credit for having put the machinery into the Bill rather than driving people, because of a provision in the law, to look at the rules made by the Board of Trade.

What the hon. and learned Gentleman said about Clause 3 will be given careful consideration between now and the remaining stages of the Bill. I do not think it would be fair to him, as he has given notice to me of the points and as he developed them here, that I should leave him under the impression that, as at present advised, we think that the alteration which he proposes is desirable. One of the more beneficent changes which have occurred from the point of view of the Law Officer at the moment was made during the occupancy of that office by the hon. and learned Gentleman. It is that Law Officers are not now called upon to adjudicate in patent cases, and no one is more grateful for that than the present holder of the office of Solicitor-General. Looking over the then powers of the hon. and learned Gentleman, I find that there was one thing in regard to which I envy him, and that was that he apparently possessed a power to overrule a tribunal of equal jurisdiction with himself. The decision of a Law Officer to which he referred must, I think, have been his decision, and it overruled a decision which was given by my right hon. Friend the Chancellor of the Exchequer, who was a Law Officer at the time, and which had been acted upon as being the law ever since the Act of 1901. The then existing view of the law had a considerable historical background, dating back to the Fry Commission of 1901 and the Amendments subsequently embodied in the Act of 1901 relating to the period of 12 months and so on.

The hon. and learned Gentleman's argument was, I think, based upon a premise that was not entirely sound. He assumed for the purposes of his argument that there was in foreign countries, speaking generally, the same kind of procedure with the same stages that exist in this country, namely, that there was something akin to an application for provisional protection in a foreign country, which was subsequently amplified by a more complete specification. I am informed, as a result of the investigations that have been made into this matter in the limited time we have had, that that is not so except in the case of Australia and possibly one other country; although there is in Germany, for example, a procedure which may be said to be somewhat analogous, by way of amendment of the original specification. I am aware of that because I have read the decision to which the hon. and learned Gentleman was referring, in which he treated such Amendments as being analogous to our procedure between the provisional and the complete specification. That view did not commend itself to Mr. Justice Luxmoore when, on similar facts, he arrived at conclusions which were different from those of the hon. and learned Gentleman.

Sir S. Cripps

The Solicitor-General will appreciate that my argument just now was not on the basis that that was the law already, but that it ought to be put into that position, and that this is the opportunity for doing so.

The Solicitor-General

I am sure the hon. and learned Gentleman realises that it is not an easy matter for one comparatively unskilled in these matters to explain, and the practice of inviting people outside the House to do so is one which is not to be followed, because it leads sometimes to consequences which are not desirable. Perhaps I may attempt, so that the House may be seized of the point we are discussing, to summarise what in my view is the present position, and the reasons why we should alter the law as we are doing in Clause 3 of the Bill. Normally, according to Section 25 of the existing Patents 'Act, revocation of a patent may be obtained on the ground that the complete specification does not disclose the best method of performance of the invention known to the applicant for the patent at the time when the specification was left at the Patent Office. We are dividing that up, leaving that state of the law still applicable as regards applications for patents which originate in this country, but, as regards applications for patents which were first made in a foreign country, we propose to provide that the relevant moment at which the applicant's knowledge must be tested is the time when the application was made in the Convention country. The hon. and learned Gentleman says, as I understand it, that between the time when the application is made first in the Convention country and the end of the 12 months within which it may be made in this country, the invention may have been expanded or amplified, corresponding with the difference between the provisional and the complete specification here, and, as I understand the hon. and learned Gentleman's argument, the advantage of the—I do not quite know how to describe it, but may I say the ampler development—

Sir S. Cripps

Legitimate development.

The Solicitor-General

—of that legitimate development of the process should be taken into account in fixing the moment of knowledge which is relevant. The view that we are disposed to hold at the moment is that that is based upon a false conception of the methods according to which these applications are made in other countries, and that in fact there is no analogy between the procedure here and the procedure in other countries of the kind that the hon. and learned Gentleman suggests. When the application falls to be made in another country, it falls to be made on the same basis on which application with a complete specification will be made here. That is the view that we hold at the present time. If it be right, then the test that we propose in the Bill would be an appropriate test. I am not, however, entirely closing the door on the matter; I am only saying to the hon. and learned Gentleman that that is the view which at the present time we are inclined to take on this proposal.

The hon. and learned Gentleman made a point with regard to Clause 5. I do not pretend that at the moment it is a very logical structure, and, if he puts down Amendments to it, we will consider them. It is, however, as far as we are required to go by the Convention. With regard to Clause 6, he raised what I think was an important point, that there should be some modification of the words following line 5 on page 6, which refer in terms to the invention disclosed in the documents. I think he is entitled to expect us to consider that point during the Committee stage. For these reasons, recognising that we shall perhaps have to give close attention to one or two of these points, but that no attack in principle has been made on the various provisions of the Bill—[Interruption.] I am told that the question of Designs fees does not come under the Bill at all, so I hope my hon. Friend will forgive me if I do not reply specifically to the points he has raised about them, although they enter into the consciousness of the Government and, no doubt, will be considered by the Treasury.

Sir A. Wilson

Who prescribes the fee that the Bill says will be prescribed?

The Solicitor-General

I presume the Board of Trade, in conjunction with the Treasury. For those reasons, I hope the Bill will now have a Second Reading.

Question, "That the Bill be now read a Second time," put, and agreed to.

Bill read a Second time, and committed to a Standing Committee.



Resolved, That an humble Address be presented to His Majesty, praying His Majesty to make three Orders in Council under the Military Manoeuvres Acts, 1897 and 1911, drafts of which were presented to this House on the 1st day of February last."—[Sir V. Warrender.]

To be presented by Privy Councillors or Members of His Majesty's Household.


Sir Edmund Findlay, Mr. MacLaren, Mr. Mander, and Mr. Rowlands nominated Members of the Select Committee on the Post Office (Sites) Bill.—[Mr. Furness.]

The remaining Orders were read, and postponed.

Whereupon Mr. DEPUTY-SPEAKER adjourned the House without Question put, pursuant to Standing Order No. 2.

Adjourned accordingly at Seventeen Minutes after One o' Clock, until Monday next, 11th April.