PATENT RULES (Hansard, 17 December 1968)

§ Mr. Patrick Jenkin (Wanstead and Woodford)
I beg to move, That the Patents (Amendment) Rules 1968 (S.I., 1968, No. 1702), dated 25th October 1968, a copy of which was laid before this House on 31st October, be withdrawn. I apologise to the Minister of State for having kept him here late at night on what is by any standard a fairly minor matter. I shall not detain the House for long, but I hope that, having heard me, the Minister and the House will agree that the debate is not without point.
This Order embodies, on the face of it, nothing more than a very minor amendment of the Patent Rules, 1968. Perhaps I may refer, by way of brief explanation of the Order, to these rules, which are in Statutory Instrument No. 1389 of 1968. They were, in large measure, a consolidation of a substantial number of pre-existing rules in a number of Statutory Instruments going back for more than ten years. As such, the 1968 rules were very welcome.
Nearly two years ago, on 23rd March, 1967, I asked the President of the Board of Trade whether he would consolidate these rules, and he replied that he was taking steps to initiate the required procedure to do so—perhaps rather like the Constitutional Commission. I was grateful, as was the profession, when the consolidated Rules appeared and were laid before Parliament on 12th September last.
1333 I have said that they were primarily consolidating but in two respects they went beyond consolidation and effected changes. It is necessary for the purposes of this Order to refer to only one of those changes. They were embodied in what is now Rule 146 of the 1968 Rules and it is Rule 146 that the Order seeks to amend.
Rule 146 achieves two things. First, it regularises the existing Patent Office practice of including in the Public File—the file open for public inspection—relating to a patent or patent application a limited range of documents. These documents were then, and had been for some time, available to be examined by the public.
Secondly, Rule 146 greatly extends the range of documents to be made available to the public inspection in this way. They now include, as they did not before, such things as the pleadings in a case—the statement of a case and the counter-statement. Where there is written evidence in inter-parts proceedings, this can now appear on the Public File, and those proceedings include such things as oppositions to an application, applications for revocation, applications for compulsory licences and applications for extension of the term.
We on this side very much welcome the general intent behind Rule 146. It will be bound to lead to a much greater openness in the patent proceedings and will be a significant development of Patent Office procedure. I believe that it is an extension which for some time has been advocated by the Chartered Institute of Patent Agents and is a matter about which, on principle, the Board of Trade and the Patent Office will have consulted the Institute before tabling the new Rules.
The Order is to take effect from the same date as the Patent Rules—1st November—because very soon after the Patent Rules had been tabled it was apparent that Rule 146, although eminently desirable in principle, was defective in form—at any rate, to the extent that it was open to varying interpretations. The Rules were expressed to come into operation on 1st November, but immediate doubt arose, as a result of its wording, as to whether Rule 146 was intended to operate retrospectively. In other words, did it impose on the Comptroller General a 1334 duty to include in the Public File documents filed before 1st November? This obviously had to be clarified, and the present Order was made a little more than a month after the original, adding a new sub-paragraph (4), presumably making it clear that Rule 146 was not to operate retrospectively.
But, even with the amendment, the Rule is not clear. It has been put in a negative form. It reads: Nothing in this Rule shall be construed as imposing upon the Comptroller the duty of making available for public inspection any documents filed with or sent to the Office before 1st November 1968. It says not that only documents filed after 1st November must be made public but that the Patent Office is not bound to make public documents filed before 1st November.
As amended, Rule 146 appears to give the Patent Office a very wide discretion whether or not to publish the extended range of documents notwithstanding that they are filed before 1st November. This is not a very satisfactory state of affairs. It leaves the public and the patentees or applicants in some doubt as to their rights in the matter, and particularly in doubt as to whether any given document on the file will or will not be made public.
That is a matter of detail on the actual interpretation of the Order, but the matter of principle goes wider. We now have the position that the Rules were laid before Parliament in September to take effect from 1st November. Before they ever came into effect they were already amended, and the amendment was published, and the Order that we now have before us is also to take effect from 1st November. But I submit that, even now, it is not wholly clear and satisfactory.
I suggest that this is a matter for some concern. I have already welcomed the fact that consultations took place with the profession, and particularly with the Chartered Institute, on the principle of Rule 146, but was there no consultation on the detailed drafting of the Rule—either on the original Rule 146, which the Board of Trade has obviously now admitted to be defective, or even on the amending Order?
It is not the case that there has been any pressure of time or any undue haste. As I indicated, the previous President 1335 of the Board of Trade, now the right hon. Gentleman the Member for Batter-sea, North (Mr. Jay), initiated this redrafting nearly two years ago, so there was ample time to consult the profession in order to make sure that this new rule appeared in the Statutory Instrument in an acceptable form.
I suggest to the Minister of State that it would have been wiser, and might have saved time and expenditure, if there had been proper consultation on the details as well as on the principle. I go further: I am prepared to hazard a guess that this is not the last amendment we shall see to the rule, but that further amendments will be necessary. For instance, one of the things already causing doubt in the profession relates to the duplicate forms 2 and 3 which are submitted when an application for a patent is filed. The question is: do both copies have to appear on the file?
This is not an academic question, as the Minister will know. The first copy is that which is dealt with by the Examiner, and it may well be substantially amended as a result of his representations to the applicants. If both the original and the amended document have to appear on the file, there are likely to be considerable misgivings on the part of applicants for patents, yet the Rule does not make clear whether it relates only to the document which the Examiner has approved or to the other as well.
Another point on which there is some doubt is that Rule 146 (3) (a) entitles the Controller to keep off the public file a document which the person filing it requests shall be treated as confidential. Suppose a document—for instance, a statement of evidence—is followed by a counter-statement of evidence which repeats in some detail whole passages from the excluded document, and the person filing that does not request that it should be kept off the file. The whole purpose of the original exclusion will have been defeated.
These are points of actual practical importance in the operation of Rule 146. I dare say that if I went further I should be straying beyond the rules of order. I hope that I have said enough to show the Minister of State that I am not too 1336 wide of the mark in suggesting that we shall have further amendments to this rule. I am prepared to give an undertaking that, if the Minister considers these and other points, I will resist the temptation to say "I told you so". I will not reiterate complaints about lack of consultation, but will do my best to speed these changes through with as fair a wind as possible. I do not want to say anything tonight which could inhibit the authorities in bringing forward desirable amendments. On the contrary, I am anxious to ensure that the system is as satisfactory as it can be made.
The profession outside the Patent Office can offer valuable assistance to those who have to draw up these rules. They are on the other side of the table and perhaps see matters in a different light from those in the Department and in no less a relevant light than that of officers of the Patent Office. My plea for more consultation on the detail of the changes is in no way intended as a reflection on the competence of the able and immensely hard-working men who staff the Patent Office. I am concerned solely to achieve the best results. It is only because I am not entirely satisfied that Rule 146, even with this amendment, will operate in the most satisfactory way that I have thought it right to move this Motion and give the Minister of State an opportunity to explain what the rule is intended to do.

§ The Minister of State, Board of Trade (Mr. Edmund Dell)
I thank the hon. Member for Wanstead and Woodford (Mr. Patrick Jenkin) for the moderate way in which he stated his case and for the interesting arguments that he adduced. I shall certainly consider all he has said. If in my reply I do not adequately cover any of the points he made, I shall communicate with him to cover the matter in more detail. I propose now to take the points that he made and answer them, I believe correctly, but if there is anything to add I will write to him.
The hon. Gentleman made a point about consultation and suggested that it would have been better if in consolidating these rules we had consulted the interested institutes and others not only on the substance but on the detailed drafting. We consulted, and got agreement, on the substance, but we did not consult 1337 on the detailed drafting. It may be that the hon. Member has a point there and that we should have consulted on the detailed drafting. That is something that I am prepared to consider. I hope that amendments will not be necessary in the full flood which the hon. Member appears to expect.
The second point made by the hon. Gentleman is that even now the matter of retrospectiveness is not clear because of the negative wording of the amendment. I will make the position clear as I understand it. In our view—this is the legal advice that I have—as the rule stands it is not open to the interpretation that it is retrospective. However, interested parties, when they saw the wording, raised the possibility that it might be understood to operate retrospectively. I understand that there are sometimes doubts about the interpretation of laws and rules, and so we decided that, despite our view that it was not open to this interpretation, it would be better to clarify it. Therefore, we have clarified the matter in the amendment.
The amendment states: Nothing in this Rule shall be construed as imposing upon the Comptroller the duty of making available for public inspection any documents filed with or sent to the Office before 1st November, 1968. Subject to further legal advice, it seems to me that it must be in that form, because even before 1st November, 1968, the Comptroller had a discretion to reveal such documents. He would be deprived of this discretion if we did not put it in this form. The rule says that he does not have to, but he has, and has had—this was established in a case—discretion. Therefore, it seems to me that the amendment is in the right form.

§ Mr. Jenkin
It may be my fault, but it seems that the Minister of State has not taken the point about the distinction between regularising for the limited range of documents, which is clearly covered by the point that he has made, and the extension to the new range of documents—the statement of claim, the counterclaim, and so on. The question is whether, if the Order has retrospective effect—I appreciate the Minister's argument—it extends retrospectively in relation to the wider range of documents.

§ Mr. Dell
I understand that the discretion relates to documents filed in pro- 1338 ceedings. I am prepared to have a further look at the point and consider whether I should write to the hon. Gentleman to extend the explanation that I am giving. However, I understand that this is the correct position.
The hon. Gentleman also said that it was possible for somebody to have something revealed by including in his counter pleadings matters which another party in other pleadings had asked to be kept confidential and not then asking the Comptroller that they should be confidential. The hon. Gentleman suggested that by that course the matter would be revealed and that this would defeat the purpose of the exercise. In our judgment, this is unlikely to happen. If we are wrong in that judgment, that might indeed produce one of the amendments which the hon. Gentleman thinks would be necessary. However, our present view is that that is unlikely to happen.
I think that I have dealt with the points raised by the hon. Gentleman. I repeat my promise that if, on further examination and consultation, I find that any of his points have been inadequately dealt with in my remarks, I will write to him.

§ Mr. Jenkin
I am grateful to the Minister of State for the explanation that he has given and for the offer to deal with the matter more fully, if he considers it necessary, in correspondence. Therefore, I beg to ask leave to withdraw the Motion.