HC Deb 20 April 1939 vol 346 cc641-4

Order for Second Reading read.

10.12 p.m.

The Parliamentary Secretary to the Board of Trade (Mr. Cross)

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

This Bill deals with the times within which certain acts must be performed at the Patent Office, mainly in connection with applications for grants and renewals of patents for inventions. Where a time limit is laid down by the Patents and Designs Acts or Rules there is generally also provision for the extension of the time by the Comptroller within further limits, usually on payment of some prescribed fee. Where no express provision to the contrary exists, the Patent Office have in practice allowed such extension of time even where application for the extension has not been made until after the period permissible apart from extension has expired. A judgment of the Patents Appeal Tribunal has shown that in one case this practice is wrong and may have resulted in the invalidating of patents granted in such circumstances. However, the Patent Office practice in this respect, which has been followed for many years and has become well established, has been found very convenient to applicants for patents, because, in the first place, it gives them more time to decide whether it is worth while to pay extension fees and otherwise proceed with an application for a patent to which some objection has been made and, in the second place, since the application for extension need only be made if and when the complete specification is refiled, it avoids the necessity for making an additional approach to the Patent Office and thus the danger of omitting to do so. We therefore propose in Clause 2 of the Bill to establish this practice as correct for the future. At the same time, the Bill deals with other cases under the Patents and Designs Acts where extensions of time are permissible and where there is no express statement as to whether application for extension must be made while the main period is still running or whether the application can be made within the period of the permissible extension.

Clause 2 also deals with another old-established practice at the Patent Office concerning acceptance of complete specifications. Where a complete specification has been returned to the applicant for amendment, but has been refiled only at the very end of the period allowed for its acceptance, that is to say, without leaving sufficient time within the period for the examination of the specification, the practice has been to examine the refiled specification as soon as possible, and, if it is found in order, to accept it "as of" the last day of the period allowed. Doubts have been expressed as to the validity of this practice, which is, however, very convenient for applicants and is very well established. Applicants thus can utilise to the full the statutory acceptance period for amending their specifications. Therefore, the Bill redrafts the present Section 8A so as to conserve these advantages.

Let me go briefly into a little more detail on the Clauses. Clause 1 redrafts Section 5 of the Acts and makes it clear that the month's extension of time beyond the 12 months which are allowed for leaving complete specifications may be asked for at any time before the end of that month. Clause 2 amends and entirely redrafts Section 8A of the Acts relating to the time for acceptance of a complete specification. According to Section 8A as it stands, unless the complete specification is accepted within 18 months from the date of the application the application becomes void except in certain circumstances connected with appeals. There is, however, a proviso that the time for acceptance shall be extended by a period not exceeding three months if application there for is made and certain fees are paid. As I have mentioned, it has been the practice of the Patent Office for many years to allow extensions of time to applicants for refiling specifications even where the extensions have not been asked for until after the period of permissible extension has begun to run. This is an established practice which has been found convenient to applicants and the Clause adopts it under proviso (a) to Subsection (5), read in conjunction with Sub-sections (1) and (2).

This Clause next deals with the case where an amended complete specification is refiled within the period allowed, but too late for examination within that period. Under the Section as redrafted the period allowable is not, as in the present Act, stated to be for acceptance of the complete specification, an act which must be performed by the Comptroller, but for putting the application in order, which must be done by the applicant. Subsection (3) makes it clear that, if the applicant has put his application in order within the period, even at the last moment, acceptance may be made by the Comptroller as soon as may be thereafter. Sub-section (5) removes doubts as to the time when the extended period allowed for putting an application in order actually terminates in a case where an appeal from a decision of the Comptroller is pending or possible and the time for having the application in order would otherwise expire. Sub-section (4) preserves the existing power to allow, at the request of the applicant, a limited postponement of acceptance of the specification even where the application is in order.

Clause 3 makes it clear, in connection with a number of cases in which extensions of time can be allowed, whether the application for such extensions must be made before, or can be made after, the period of permissible extension has begun to run. Clause 4 contains provisions as to failure to comply with certain time limits in the past. Sub-section (1) is intended to prevent patents and extensions of the registration of designs from being held to be invalid merely because some act was done in the past at a time which might under existing Acts and Rules be held to have been too late; in other words, it validates the past. Sub-section (2) validates the present. It validates existing applications when it might otherwise be held that the Patent Office practice in regard to time limits rendered those applications void.

It will be seen that the main purpose of the Bill is to validate long-established practices of the Patent Office in regard to time limits. One of these practices which I have already mentioned as one very convenient to applicants has been shown by a recent Judgment to be wrong. By this Bill we establish that practice as correct in future. We also take the opportunity in this Bill of putting beyond doubt other practices of the Patent Office in regard to time limits. The Measure is a necessary one in order to ensure the validity of many existing patents, and it it also in my submission a desirable one so as to put beyond any doubt the validity of patents which may be granted in the future which may be affected by questions concerned with time limits. It is not, I hope, a controversial Bill and I trust that the House will be willing readily to give it a Second Reading.

10.22 p.m.

Mr. Arthur Hendersons

The provisions of this Bill are of a highly technical character and, as the Minister has just said, deal with points of procedure in applying for patents and extensions of time, with which patent agents are, perhaps, more familiar than lawyers. The general effect of the Amendments contained in the Bill, so far as I can understand them, is to specify the duty of the applicant for the patent with greater clarity and precision, and to give a greater degree of latitude in point of time to the performance of the duties of the examiners in the Patent Office which, as the learned Solicitor-General knows very well, are extremely onerous. So far as I can gather, the Bill embodies no departure in policy, it is in no sense controversial, and should be allowed to have a Second Reading.