PATENTS AND DESIGNS (LIMITS OF TIME) BILL. [H.L.] (Hansard, 7 March 1939)

§ LORD TEMPLEMORE

My Lords, I beg to move that this Bill be now read a second time. Under the Patents and Designs Acts certain acts, mainly in connection with applications for the grant and renewal of patents and for the registration or renewal of the registration of designs, have to be carried out at the Patent Office within certain time limits. In general those time limits can or must be extended by the Comptroller within further limits if application for extension is made and certain conditions, such as payment of fees, are satisfied. It has been the practice of the Patent Office for many years, unless there was a direct pro- 29 vision to the contrary, to allow such extensions of time even if the application were not made until after the period permissible apart from extension had expired. A judgment of the Patents Appeal Tribunal has shown that this practice, in one case at all events—namely, that arising in connection with the acceptance of complete specifications under Section 8A of the Act—is wrong and may have resulted in invalidating patents granted upon applications in connection with which such extensions of time have been so allowed. This Bill is intended to establish for the future and validate for the past what has been the practice in this connection, and to provide for other cases where extensions of time are permissible but there is no express statement as to whether application must be made before the main period has expired or whether it can be made during the period of the permissible extension.

Advantage has also been taken of the opportunity afforded by this Bill to deal with another old-established practice of the Patent Office as to the validity of which doubts have been expressed. When a complete specification has been returned to the applicant for amendment but has been railed only at the last minute of the period allowed for its acceptance, or at any rate too late for a full examination to be made within the period, the practice has been to examine the refiled specification as soon as possible, and, in cases where it has been found to be in order for acceptance, to accept it "as of" the last day of the period allowed. This Bill validates this practice for the past and establishes it in substance for the future. The Bill is merely one of machinery with the sole object of legalising certain practices which have grown up, but which without the Bill might be considered ultra vires.

LORD STRABOLGI

My Lords, we have examined this Bill, and on the whole we think it is a pod Bill and deserves support. There are certain matters concerning the patent law, with which I will not trouble your Lordships on this occasion in view of the other Orders on the Paper, but if I may I would like to send a letter to the noble Lord and he perhaps will be good enough to consult with the Department. With regard to this Bill, 30 the only criticism we have to make is with reference to Clause 2. This clause, we think, is somewhat clumsily drafted, and is apt to give rise to a certain amount of confusion more particularly in view of the use of such words as "completed" and "completing." For a long time now such words have been understood and used to mean the step of filing a complete specification on a patent application. But it appears from Clause 2 of the Bill that they are now to have a somewhat different meaning and will tend to give rise to the assumption—incidentally a wrong one—that an applicant for a patent has a longer period than hitherto for filing a complete specification on a patent application.

We think that the possibility of confusion would be less likely to arise if, instead of the words in question, other words are used in the clause, such as "in condition for acceptance," or their literal equivalent. We are inclined to think that the intentions of Clause 2 of the Bill could have been provided in a much more straightforward way, such as by a simple amendment of Section 8A of the principal Act which Clause 2 of the Bill is intended to replace. If the noble Lord will be good enough to look into that particular point, and see if better words can be found, we think the Bill might be improved.