OPINIONS BY PATENT OFFICE AS TO VALIDITY OR INFRINGEMENT (Hansard, 14 July 2004)

§ Mr. Sutcliffe

I beg to move amendment No. 1, in page 8, leave out lines 3 to 5 and insert— (6)In relation to a decision of the comptroller whether to issue an opinion under this section—

for the purposes of section 101 below, only the person making the request under subsection (1) above shall be regarded as a party to a proceeding before the comptroller; and
no appeal shall lie at the instance of any other person.'

Hon. Members who attended our debate on clause 13 in Committee will recall that I undertook to reflect further on whether we should make amendments on a right of appeal in relation to opinions. We considered the matter carefully and the amendment relates to a technical point—whether there is a need, in relation to the opinion procedure, to include an exemption to the general right of appeal from all decisions of the comptroller under section 97 of the 1977 Act.

Our concern is to ensure that no person other than the requester of an opinion can appeal against a decision by the Patent Office as to whether or not to grant the request. That is to ensure that the issuing of an opinion is not subject to unnecessary delay while also safeguarding the requester's right to be heard before a request is refused. That right arises under section 101 of the 1977 Act, which gives a party the right to be heard before a discretion is exercised against him. However, there could be even more serious delays if a person who had no right to be heard on the original decision could none the less exercise a right to appeal the decision to the patents court under section 97. The current wording of the new section 74A(6) may, by implication, already 1425 exclude such a right of appeal. However, I am advised that it would be better to put the matter beyond doubt, so I have tabled the amendment to achieve that.

I commend the amendment to the House.