COSTS AND EXPENSES IN PROCEEDINGS BEFORE THE COURT UNDER S. 40 (Hansard, 22 July 1977)

§ The Under-Secretary of State for Trade (Mr. Clinton Davis)
I beg to move, That the clause be read a Second time.
In Committee the hon. Member for Colne Valley (Mr. Wainwright) moved an amendment that would have had the effect of preventing the award of costs against employees in proceedings pursuant to Clause 40. I indicated at that time that I had a good deal of sympathy with the proposal and that I wanted to consider the matter further, without commitment. I was very much concerned that an employee with a substantial case should not be deprived of the opportunity or be deterred from seeking relief simply because of the costs that he might face at the end of the day.
On the other hand, I think I was right also to make the point that it was necessary to try to avoid giving any encouragement to people to bring forward cases which, although they might not be classified as vexatious or frivolous, might come near to being included in that category. It was in the light of what I said that the hon. Member withdrew his amendment. Since then I have consulted my noble Friend the Lord Chancellor, and the clause is the result of our conclusions.
Perhaps I may now explain the clause. Under subsection (1) the court is enjoined, when awarding costs—or, to use 2061 the Scottish expression, "expenses"—to have regard to all the relevant circumstances, including the financial position of the parties. By virtue of the word "court" in Clause 128(1) this provision will apply to the High Court, the Court of Session, and the High Court in Northern Ireland, As a result, all these courts will be required to have regard to all the relevant circumstances, including the financial position of all the parties, concerning the bringing of the application.
Hon. Members will observe that the subsection could operate in favour of an employer just as it could in favour of an employee, because it is right that all the relevant circumstances should be considered. In fact, in practice it is unlikely to work that way. It is one of the facts of life that employees in this field are almost always economically weaker than their employers. That was the point made in Committee by the hon. Member for Colne Valley, and the clause constitutes an attempt to diminish an unjustifiable deterrent facing a worthy claimant.
Subsection (1) does not refer to the Comptroller. It is unnecessary to do so because, under Clause 106(1), the Comptroller may, in proceedings before him under the Bill, award to any party such costs—or, in Scotland, expenses—as he considers reasonable, and he can direct how and by what parties they are to be paid. It is therefore not necessary to include him in that reference.
Subsection (2) applies only to the Patents Court, and empowers that court, when directing that the costs of one party shall be paid by another party, to settle the amount by fixing a lump sum or, alternatively, to direct that the costs shall be taxed on one of the scales of costs prescribed by the Rules of the Supreme Court or by the County Court Rules. There are, I understand, three such scales in the High Court and five in the county courts. The Patent Court will be able to limit any award of costs in proceedings under Clause 40 by awarding either a lump sum or costs to be taxed on any of the eight scales. In that way the court will be able to effect a moderation in the amount that the unsuccessful party will have to pay, if the circumstances require it.

§ Mr. Richard Wainwright (Colne Valley)
The Liberal Party supports the 2062 clause, and 1 am obliged to the Minister for taking the spirit of the amendment that I moved in Committee and clothing it with all the necessary provisions—some thing which, in most cases, only the Government can draft.
I am advised that the clause meets the points that were first put forcefully in the other place by Lord Lloyd of Kilgerran, and that I moved briefly in Committee. The purpose is to ensure not only that the employee inventor shall have the rights that he now has under the Bill, but that those rights shall be enforceable at no extraordinary expense. It is public knowledge that patent legislation can on some occasions be riotously expensive and way above anything that workers or any of the unions could possibly finance.
It is important that this safeguard should be available, so that employee inventors know that they stand a good chance of getting their rights without running appalling financial hazards. Because the clause appears to encapsulate that important point, I am happy to speak in support of it.

§ Mr. John Nott (St. Ives)
The clause is perfectly acceptable to us. We recognise that there is a problem if substantial costs are incurred by employees, and we are therefore happy with the Government's proposal.