HC Deb 25 July 1988 vol 138 cc210-3
Mr. Butcher

I beg to move amendment No. 106, in page 116, line 19, leave out from 'design' to 'if in line 28 and insert— (2) The period for which the right subsists may be extended for a second, third, fourth and fifth period of five years, by applying to the registrar for an extension and paying the prescribed renewal fee. (3) If the first, second, third or fourth period expires without such application and payment being made, the right shall cease to have effect; and the registrar shall, in accordance with rules made by the Secretary of State, notify the proprietor of that fact. (3A)'.

Madam Deputy Speaker

With this it will be convenient to take the following Government amendments: Nos. 107, 151 to 153, 295 and 154.

Mr. Blair

I would be grateful if the Minister could confirm that nothing in this group or the next group of amendments is inconsistent with our discussions in Committee, because they follow the pattern of points raised in Committee and concerns expressed to the Minister then.

Mr. Butcher

The amendments follow up the amendments that the hon. Member for Sedgefield (Mr. Blair) and his hon. Friends tabled in Committee and which I agreed to consider. They will require the design registry to send reminders when renewals are overdue and will allow registered designs that have inadvertently been allowed to lapse to be restored. We are also taking the opportunity to revise and update the corresponding provisions of the Patents Act 1977.

3 am

Mr. Rowlands

The amendments are important because they touch on the duration of rights in registered design. Do the amendments have any effect upon existing design rights? Under clause 259(2), existing design rights will be unable to qualify for the extra period.

When the patent law was changed, a concession was given. Do the amendments offer any hope that some extension will be granted to those holding existing design rights? If people enjoy design rights under the existing 15-year rule, surely there is no harm in offering a transitional extension to that right as we move over to the 25-year term. Such an extension was offered during the transitional period when the patent law was changed.

Mr. Butcher

Hon. Members will notice that we are also proposing some changes to the existing patent restoration provision. Our examination of registered designs has revealed that there are a few problems with the existing patent provision, which concern the way in which restoration is backdated and the protection given to those who take steps to work an invention that is the subject of a lapsed right, before an application for restoration is published.

The amendments deal with those matters, which are also embodied in the new registered design provisions. Amendment No. 154 also makes corresponding changes to section 64 of the Patents Act 1977 because, although it concerns a different subject, its drafting is similar to that in the restoration provisions.

It is clear from all this that I have reason to be particularly grateful to the Opposition. Not only have they suggested a worthwhile addition to the registered design provisions, but they have enabled us to attend to some necessary remedial work in the patents provisions. In reply to the hon. Member for Merthyr Tydfil and Rhymney (Mr. Rowlands), a number of the amendments that I have moved formally are amendments that I believe he would have welcomed in response to questions asked in Committee.

Mr. Rowlands

In clause 259(2), none of the extensions to 25 years applies to the existing 15-year registered design right. Will the amendments help those who enjoy an existing registered design right? That right will last for 15 years under the existing provisions, but could be 25-year design right under the new terms. Under subsection (2), none of the existing registered design rights would enjoy any additional years, as provided for during the changeover in patent law.

Mr. Butcher

We contemplated whether the amendment to the Registered Designs Act 1949 should contain transitional provisions, since no such provisions presently exist. Present registration can be renewed, at most, twice only. The complexity of any amendment seems to outweigh any benefit.

Amendment agreed to.

Amendment made: No. 107, in page 117, line 11, at end insert—

'Restoration of lapsed right in design

8A.—(1) Where the right in a registered design has expired by reason of a failure to extend, in accordance with section 8(2) or (3A), the period for which the right subsists, an application for the restoration of the right in the design may be made to the registrar within the prescribed period.

(2) The application may be made by the person who was the registered proprietor of the design or by any other person who would have been entitled to the right in the design if it had not expired; and where the design was held by two or more persons jointly, the application may, with the leave of the registrar, be made by one or more of them without joining the others.

(3) Notice of the application shall be published by the registrar in the prescribed manner.

(4) If the registrar is satisfied that the proprietor took reasonable care to see that the period for which the right subsisted was extended in accordance with section 8(2) or (3A), he shall, on payment of any unpaid renewal fee and any prescribed additional fee, order the restoration of the right in the design.

(5) The order may be made subject to such conditions as the registrar thinks fit, and if the proprietor of the design does not comply with any condition the registrar may revoke the order and give such consequential directions as he thinks fit.

(6) Rules altering the period prescribed for the purposes of subsection (1) may contain such transitional provisions and savings as appear to the Secretary of State to be necessary or expedient.

Effect of order for restoration of right

8B.—(1) The effect of an order under section 8A for the restoration of the right in a registered design is as follows.

(2) Anything done under or in relation to the right during the period between expiry and restoration shall be treated as valid.

(3) Anything done during that period which would have constituted an infringement if the right had not expired shall be treated as an infringement—

  1. (a)if done at a time when it was possible for an application for extension to be made under section 8(3A); or
  2. (b)if it was a continuation or repetition of an earlier infringing act.

(4) if after it was no longer possible for such an application for extension to be made, and before publication of notice of the application for restoration, a person—

  1. (a)began in good faith to do an act which would have constituted an infringement of the right in the design if it had not expired, or
  2. (b)made in good faith effective and serious preparations to do such an act,
he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the right in the design; but this does not extend to granting a licence to another person to do the act.

(5) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (4) may—

  1. (a)authorise the doing of that act by any partners of his for the time being in that business, and
  2. (b)assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

(6) Where an article is disposed of to another in exercise of the rights conferred by subsection (4) or subsection (5), that other and any person claiming through him may deal with the article in the same way as if it had been disposed of by the registered proprietor of the design.

(7) The above provisions apply in relation to the use of a registered design for the services of the Crown as they apply in relation to infringement of the right in the design.'.—[Mr. Butcher.]

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