HC Deb 22 July 1949 vol 467 cc1712-20

11.30 a.m.

Mr. Erroll

I beg to move, in page 4, line 20, to leave out from beginning, to end of line 6, on page 5.

The purpose of this Amendment is to enable the Government to rescind certain provisions which have been made for the Comptroller to endorse patents which, by reason of such endorsement, might have their value altered. The Clause seeks to enable the Comptroller to endorse patent applications and specifications with numbers of higher patents which he suspects may infringe, or whose validity may be called into question by, the new patent. This is the practice which I understand is already taking place, and the Comptroller is right within his powers in so carrying on the practice.

The Clause, however, seeks to change a permissive practice into a compulsory practice. That might be quite all right if the Comptroller were able to act comprehensively in every case, because it is not the correctness of what he does that will cause the damage, but the possibility of error. That is very real and very serious. For example, if a patent is incorrectly endorsed it means that it is reduced in value by reason of the erroneous endorsement. If, on the other hand, the patent which should be endorsed is not, in fact, so endorsed, then it leaves a false sense of security on the part of the patentee or of any interested third party. The possibility of error is admitted in later Clauses, because provision is made for correcting any errors which are brought to the notice of the Comptroller.

Furthermore, we know that the Comptroller's office is extremely congested at the present time, and conditions under which a comprehensive search can be carried out are extremely inadequate. There is, therefore, a real possibility of serious errors and omissions occurring. These may have most unfortunate consequences to the individual and the applicant or the interest of a third party. It would surely be very much better if the permissive power only were retained as at present, rather than proceeding with the extension which this Clause seeks to provide. The Amendment, as it stands, enables the comprehensiveness of the Comptroller's new powers to be whittled to permissive powers only.

There is one further undesirable feature of this practice, and that is that it would provide the Comptroller with an opportunity of deciding questions of infringement and validity ex parte instead of as at present inter parte. It means that he has to judge the merits of an application by reference only to the patent applicant, and he will then be called on to decide a difficult argument, that between his own view and the view of the applicant, instead of merely holding a semi-judicial function and deciding between rival claims and rival cases submitted to him. This represents an undesirable development in the Comptroller's department. It will impose upon him considerable additional work, much of which will be of a controversial nature, and which will lead to serious congestion in his department at a time when the department is coping manfully with serious arrears of work.

Mr. W. Shepherd

I beg to second the Amendment.

As my hon. Friend the Member for Altrincham and Sale (Mr. Erroll) says, we have considerable doubt whether this Clause represents an improvement on the present practice. In these circumstances, we hope the Solicitor-General will take note of what we have said and, if he shares our opinion, will accept the Amendment.

The Solicitor-General

The object of the Amendment was somewhat fully canvassed in the Committee stage of this Bill, and we endeavoured to deploy the reasons which actuated the Government in thinking that the provisions of the Clause which this Amendment desires to delete should remain in the Bill. When the Bill was before the Committee, subsection (2) of Clause 6 was not in the Bill. That was moved during the Committee stage, and, if I may, I will deal one by one with the arguments which have been advanced.

It is said that notification can damage the interest of the patentee, but it is well understood under existing practice that the insertion of the reference is by way of warning only. It does not mean that the Comptroller has in any way prejudged the issue. It simply means that the researches, which are in any case carried out, have disclosed something which, in the view of the Comptroller, should be mentioned in the specification in order to warn the public, and for no other purpose.

If I may say so, with due deference to what has already been said, it is not because of any existing practice, and we can see no reason for thinking that it would be the case that the patentee's interests would be damaged. They would not be damaged, because it is understood as meaning no more than that the public should be on their guard. It prejudges nothing, and that is the answer to the argument propounded that this practice that the Comptroller carried out can be an ex parte investigation and prejudges something against the patentee. Investigations take place by the examiners in the search for novelty, and it is part of the ordinary routine. It means that the search is made so that if anything turns up the public should know about it. Nothing is prejudged.

We think the provisions of this Clause, in point of fact, contain a useful machinery for giving warning to the public. We are, in subsection (1), implementing the recommendation which is contained in the Report of the Swan Committee. The recommendation appears in paragraph 180 of the final Report, and we can see no reason for departing from that recommendation, which seems to us to be sound sense.

I would add this. As I have already stated, subsection (2) was not in the Clause when it was before the Committee and was moved into the Clause at that stage. The effect of subsection (2) is that it provides the necessary counter-balance, if counter-balance is desirable, to the insertion of the reference to the specification. In other words, the specification is marked with the reference to the previous patent. Subsection (2) contains a provision enabling the reference to be expunged in the appropriate circumstances set out in paragraphs a, b and c.

Therefore, although I can assure hon. Gentlemen opposite and the House that we have carefully considered what has been said, and in particular the argument that the interests of a patentee might be damaged if we did not waive this requirement, we feel that we ought to retain these provisions, particularly modified as they are by subsection (2). It is, after all, not only the patentee's interests that have to be kept in mind but the interests of other inventors who have claims to operate patents, and the interests of everyone else who might be affected if the patentee used a patent which infringed a previous patent. All those interests have had to be weighed one against the other. It is no doubt what the Swan Committee would have had in mind, and what we would have had in mind, in giving arguments against cumstances set out in paragraphs a, b and c.

For all those reasons I hope that hon. Gentlemen opposite will agree that we have come down on the right side of the line, and that the Bill is better with these subsections in. I think that the interests of all will be better protected if there is warning machinery, and that the interests of the patentee cannot be said to be prejudiced in any sense whatever.

Amendment negatived.

Sir D. Maxwell Fyfe

I beg to move, in page 4, line 21, after "eight," to insert: or of proceedings under sections eleven and twenty-six. The purpose of the Amendment is to narrow the grounds upon which the Comptroller can base his reasons for deciding that an application involves risk of infringement of another claim. We have considered the matter and have come to the conclusion that the words "or otherwise" are too wide. We think that the grounds should be kept within the bounds of the principal Act. We looked at the Act, and we came to the conclusion that the reference to Sections 11 and 26 should be introduced here. Broadly, they deal with opposition to the grant of a patent and with the Comptroller's powers of revocation over a patent.

The effect would be to limit the proceedings to those which are inter parte. The Solicitor-General ought to look favourably upon such limitation for historical grounds. It was the practice up to a few years ago that the Law Officers had a special jurisdiction in dealing with patent matters. I am credibly informed by predecessors of the right hon. and learned Gentleman and myself that there was an invariable practice as soon as a new Solicitor-General was appointed for the Attorney-General of the day to call him, and to say: "Recognising as I do your great qualities and powers, there is one piece of work of the Law Officers which I am immediately going to commit to your hands, and that is the section dealing with patent matters." Therefore, every Solicitor-General has this historical appreciation of patents which he gets from his predecessors, and the very clear inducement to have the matters limited to the narrowest possible extent.

11.45 a.m.

The Solicitor-General

We feel very much impressed by the arguments to which we have just listened, particularly the concluding part of the forceful address which the right hon. and learned Gentleman has given to the House. We are delighted to accept this Amendment and the consequential Amendments which follow it. We think that the words which we have employed go too wide and that the Clause would be better with the words "or otherwise" in line 21 limited in the sense in which the right hon. and learned Gentleman seeks to limit them by the Amendment which he has moved in line 21. We are much obliged to the right hon. and learned Gentleman for having called attention to the improvement, which will be made in the text of the Bill.

Amendment agreed to.

Further Amendments made: In page 4, line 21, leave out "or otherwise."

In line 38, after "revoked," insert: or otherwise ceases to be in force."—[Sir D. Maxwell Fyfe.]

Sir D. Maxwell Fyfe

I beg to move, in page 4, line 45, to leave out "may," and to insert "shall."

It is clear that the object of the Amendment is to make it obligatory on the Comptroller to delete the reference to another patent if the provisions of Subsection (2) are fulfilled. The Parliamentary Secretary will note with approval that we are merely following out the words which he let fall in the Committee stage. In answer to my hon. Friend the Member for Ashford (Mr. E. P. Smith) who raised this point the Parliamentary Secretary said: I see no reason at the moment why we should not do what the hon. Member … wants.—[OFFICIAL REPORT, Standing Committee D, 7th July, 1949; c. 21.]

Mr. J. Edwards

I am afraid that my first thoughts are not my second thoughts. While I still feel that there is no real difference between us, if we are talking about the conditions (a) and (b) of the Subsection, there are difficulties in respect of (c), which refers to any working of the applicant's invention. I am advised that in infringement proceedings before a court or the Comptroller, a decision will be given on the question whether a specific working of the invention was an infringement of a prior patent. Although this decision might be in the applicant's favour, it would not necessarily mean in all cases that the prior patent would not be infringed by any other working of the applicant's invention.

In other words, if the word "any" in paragraph (c) is read as meaning "any possible" working, this would not correspond to the issue before the court or the Comptroller in infringement proceedings, while if the word "any" refers to any one specified working, this would correspond to such issue, but the decision would not then necessarily be conclusive on the question whether the reference by way of warning to the public was unnecessary, and the Comptroller would decide in the light of the decision whether the reference ought to be cancelled. It is for this reason, I am advised, that it is considered to be appropriate that we should retain the word "may". I have gone into the matter as carefully as I can and I can assure the right hon. and learned Gentleman that, as I am advised, it would be necessary for us to keep the word "may" in these circumstances.

Sir D. Maxwell Fyfe

In view of what the Parliamentary Secretary has said, I do not press the Amendment. I beg to ask leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Sir D. Maxwell Fyfe

I beg to move, in page 4, line 46, at the end, to insert: (3) The presence or absence in or from a complete specification of any reference to another patent shall not be deemed to warrant that any patent to which reference has been inserted is valid, or that the invention disclosed in that specification can be performed without infringement of any other patent, and no liability shall be incurred by the Board of Trade or any officer thereof by reason of any connection with the presence or absence of any such reference. The purpose of this Amendment is to insert in this Clause a warning similar to that inserted in Section 8 of the principal Act in respect of the investigation of specifications published after application. This matter has been carefully discussed between the technical people concerned, and we in turn have examined it and have put forward this proposal for the acceptance, we hope, of the Government. The Amendment would make it quite clear that the insertion of a reference does not prejudge the issues of validity and infringement or put a legal responsibility on the Comptroller or the Board of Trade. Those who wish to refer to the warning contained in Section 8 which I mentioned will find it in page 39, subsection (8); it is in practically the same words.

Mr. Erroll

I hope that the Government will accept this Amendment in view of what they said earlier today about Clause 6. There is considerable scope for error, which we hope will be kept down to a minimum, but scope remains. There is inevitably a good deal of ignorance on the part of the many and varied people who for one reason or another study patent specifications, and we think that this warning notice should be inserted. While we understand that the position of the chartered patent agent is to be slightly strengthened, there are also a large number of unqualified practitioners and numerous lay readers of patent material. This Amendment should be made to place the issue beyond all doubt.

The Solicitor-General

I am sorry to say that we do not feel that this new subsection would improve the Clause. We have carefully considered this matter which, as the right hon. and learned Gentleman said, is one which would be, and has been, discussed by experts. It is really the weight of their opinion which should largely count in a matter of this sort. We think that this new subsection should not be inserted because we feel—I do not say this with any disrespect—that it is more appropriate to the textbook than to the text of the Bill. Our view is that as a matter of legal construction no one looking at Clause 6 (1) could possibly think that there was any such warranty. In those circumstances it becomes otiose to say that anyone looking at subsection (1) could say that there was. Therefore, why insert this proposed subsection to say that there shall not be any such warranty?

If it is asked what harm could be done by making this Amendment, our view is that as a matter of drafting it would do a considerable amount of harm. We have this point raised in the discussion of the provisions of various Bills and the answer is that once we begin putting into a Bill something which apparently cannot have any conceivable purpose except to be purely explanatory, and which one would expect to find in a textbook on the subject instead of in the framework of the enactment, we begin to introduce uncertainty. The lawyer and the expert, looking at subsection (1), and then seeing the same specific provision in this proposed subsection (3), would begin to wonder why subsection (1) should be read in any sense other than that in which it would normally be read. If one looks at this Clause, one cannot think that there could be such a warranty, and we feel that it is not merely otiose but bad drafting to put into the Clause something which there is no conceivable reason for putting there. It would simply introduce doubt and give rise to argument, not only on this Clause but on other parts of the Bill.

That is my objection to the first part of the Amendment. The second part corresponds very largely to what is in Section 8 (8) of the principal Act, which now appears in the First Schedule, in page 39, line 16. We do not really think that it is necessary. Our main objection to the proposed Amendment, however, is the one which I advanced at the outset of my argument. We think, and the right hon. and learned Gentleman will probably agree with me as a result of his great experience in these matters, that as a matter of drafting it is undesirable to do what the proposed subsection seeks to do. There can be mistakes and always will be, but, as I said when answering an earlier Amendment, a reference which is read largely in the patent world and is understood by it, will be clearly defined. It is known that it is merely by way of warning and no more. It is accepted practice and has become ingrained in patent procedure. In those circumstances, I hope that the right hon. and learned Gentleman will take the view that this Amendment will not improve the Clause. We are grateful to him and to the other Members for having put down this Amendment, but having considered it we feel that the Clause is better without it.

Sir D. Maxwell Fyfe

Perhaps I might, before asking the leave of the House to withdraw the Amendment, be allowed to say that if there is an intention eventually to bring forward a consolidating Bill, and if, contrary to the expectation of the Solicitor-General, any difficulty does arise, this is exactly the sort of minor point which under our new procedure might be dealt with without violating the principle which we discussed a few weeks ago. I throw that out for consideration in case experience teaches us that there are difficulties. I beg to ask leave to withdraw the Amendment.

Amendment, by leave, withdrawn.