§ 3.7 p.m.
§ Order of the Day for the House to be put into Committee read.
§ Moved, That the House do now resolve itself into Committee.—(Lord Mancroft.)
§ On Question. Motion agreed to.
§ House in Committee accordingly.
§ [The EARL OF DROGHEDA in the Chair]
§ Clause 1:
§ Time limits under ss. 12 and 13 of Patents Act. 1949
§ (2) The proviso to subsection (1) of section thirteen of the said Act of 1949 (whereby the comptroller is empowered to postpone acceptance of a complete specification up to fifteen months from the date of filing thereof, subject to the payment of a fee where the extension is beyond twelve months from that date) shall have effect subject to the following amendments. that is to say,—
- (a) for the words "fifteen months from the date of filing of the complete specification" there shall be substituted the words "three months from the end of the period allowed under subsection (1) of the last foregoing section"; and
- (b) for the words "twelve months from the date aforesaid" there shall be substituted the words "the end of the period allowed under the said subsection (1)";
(1A) Any reference in the foregoing subsection to the period allowed under subsection (1) of the last foregoing section is a reference to that period apart from any extension thereof.
LORD CAWLEY moved, to insert as a new subsection (1):
(1) In subsection (3) of section seven of the Patents Act, 1949 (whereby the examiner shall make investigation whether the invention has been published before the date of filing of the applicant's complete specification) after the words "unless the applicant" there shall be inserted the words "within such time not exceeding six months as may be prescribed".
§ The noble Lord said: The two Amendments which I shall move this afternoon have been suggested to me by the Council of the Chartered Institute of Patent Agents. I must tell your Lordships straight away that I am not a patent agent by profession, but I am an associate member of that body. These gentlemen are in close contact with those high up in industry, and with industry generally. They feel —and they have convinced me —that this Bill, without amendment, would be very harmful to industry. I think that I might well call this Bill "The Dilatory Applicants' Charter," or even "The Deliberate Delayers' Charter". A number of applicants for patents —a considerable number, I may say —are deliberately delaying the getting of their patents into order for acceptance, and publication shortly thereafter, in order to keep their competitors in suspense. If they know that they are going to have competition, it is much better for them to be able to say that they have a patent on the stocks so that competitors will avoid the area which they think the scope of the patent, as yet unpublished, will cover.
§ To show what this delay might mean, a senior member of the Chartered Institute tells me that he has some clients who have a laboratory where they are making considerable researches on a chemical line. It has been rumoured that their competitors have applied for a patent and they think that this patent may cover the line of research they are doing. They came to this gentleman and asked if he could find out what this was all about. He replied, "No; I am afraid that I cannot find out what it is all about for three or four years. In fact. all I can find out is the title of the application, and that is not very illuminating." The titles are usually very general, such 729 as "Improvements in Electric Motors", or "An Improved Process for Manufacturing Detergents," which tell the general public nothing whatsoever about the applications. So that these unfortunate people may go on working on this line in the laboratory to find, three or four years hence, that the whole of their research is abortive, because their competitors publish a patent which shows that they have been forestalled.
§ At present the Comptroller-General can use his powers under Section 6 of the Act of 1939 to deal with dilatory applicants, though it would seem, from the terms of Clause 3 of this Bill, that the Government are in some doubt as to whether he is, in fact, doing so. At present, at least some sanction can be put on the action of dilatory applicants, but by this Bill the Government take the matter entirely out of the hands of the Comptroller-General. The applicant has carte blanche to delay and fail to deal with the official letter, provided that his specification is accepted within three and a half years; that is, three and a half years from the date of the filing of the complete specification, and four and a half years from the date of filing the provisional specification. The object of this Amendment is to put a period on the answering of official letters. Under Section 7 of the Act of 1949 no prescribed period was allowed for, because t lie period in which a patentee had to get his patent in order was only twelve months, and that was considered too short a period to need any prompting from this section of the Act. This Amendment is proposed so that the whole process of getting a patent accepted shall be accelerated. I am fully aware that the Amendment, as it stands, cannot be accepted by Her Majesty's Government, because other Amendments will be required, particularly to Section 6 of the Act. However, I ask the Government to consider amending this Bill to deal with what I regard as a defect in the Bill. I beg to move.
Page 1, line 5, at beginning insert the said subsection.—(Lord Cawley.)
§ THE JOINT PARLIAMENTARY UNDER-SECRETARY OF STATE FOR THE. HOME DEPARTMENT (LORD MANCROFT)
I am sorry that my noble friend Lord Cawley should regard this 730 Bill as a "Deliberate Delayers' Charter". I can assure him that it is nothing of the sort, and that it is far from the intention of Her Majesty's Government to give support to the point of view that he has rightly attacked. I share with my noble friend, as I hope I made clear during my observations on the Second Reading, the desire to speed up, so far as is possible, the patent procedure. If I thought that the Amendment he has put down would achieve that, I should ce7tainly give it wholehearted commendation. However, 1 am afraid that I cannot agree with my noble friend that it would achieve the object he has in mind. I do not think it would do anything to speed up the patent procedure, which we all desire to see accelerated.
As my noble friend has said, Section 7 of the Patents Act, 1949 (the measure which the noble Lord. Lord Lucas of Chilworth, introduced into your Lordships' House), provides that if the Comptroller considers that the invention claimed has previously been published in the United Kingdom the applicant must either satisfy the Comptroller that his claim has priority over the publication in question or he must amend his complete specification to the satisfaction of the Comptroller. The effect of my noble friend's Amendment would be to require the applicant to do this within six months or less. His intention, I gather, that the applicant should have six months from the date of a letter from the Patent Office notifying the objection. The result of failure to comply would be that the Comptroller might refuse to accept the specification. By Section 81 of the Act of 1949 the Comptroller must, before he exercises his discretion adversely to any person, give that person an opportunity to be heard. Section 7 itself, as your Lordships may remember, gives a right of appeal to the Patents Appeal Tribunal from a decision of the Comptroller under that section.
The result would therefore be that, in each case in which the applicant has not complied within the six months, the Comptroller would have to offer him the opportunity of a hearing. Even if the applicant did not avail himself of the opportunity (which I should have thought was unlikely), the Comptroller, before taking the serious step of refusing a patent, would obviously have the case reconsidered by a senior member of the 731 examining staff, in order to satisfy himself that the original objections were well taken. I am sure that your Lordships will agree that this would mean a great increase in the work of the staff of the Patent Office —and this at a time when that staff, as I pointed out in some detail a few days ago, is both under-strength and overloaded. It is interesting to note that a somewhat comparable provision was found in the legislation before the Act of 1949. It gave a great deal of work for no useful result, and the noble Lord, Lord Lucas of Chilworth, dropped it out of the 1949 Act when he introduced it to Parliament. I have been looking at the figures, and they are quite interesting. The Comptroller's Annual Report shows that in 1938 7,500 hearings were appointed, the vast majority being occasioned by the existence of this sort of time limit for meeting objections which cited prior publication. But in the year 1955 —that is to say, after the 1949 Act there were a total of only 235 hearings. That is a great contrast: 7.500 before the war, and 235 under the present legislation. That, I think, bearing in mind the enormous pressure under which both the Patent Office and the patent agents and their clients are working, is something that we must take into careful consideration.
There is another objection to the Amendment: in practice. it is very seldom that the only objection taken to a specification is under Section 7 —that is, the "prior publication" section. In the great majority of cases, the examiner also raises objection on other grounds, such as insufficiency of description, ambiguity of claims, or claims for a greater monopoly than is justified by the invention described, all of which are equally fatal to validity. The effect of my noble friend's Amendment would, therefore, be that, although the applicant has only six months to answer Section 7 objections, he would have the remainder of the three-and-a-half years statutory period in which to answer others.
Another objection is that the Amendment would result in the lodging with the Patent Office of many ill-considered amendments to the specification, put in more with a view to complying with the time limit than with a view seriously to meeting the objections raised by the 732 examiner. This, in turn, would considerably add to the work of the Patent Office. Her Majesty's Government consider it wrong in principle to tie down applicants, on pain of losing their patents, to narrow time-limits at a time when they are legislating, in this Bill, to meet a situation created, in part at least, by delays in the Patent Office itself. I think we must work on the assumption that an applicant for a patent will normally seek to have his patent granted to him without prodding from authority. It is the applicant who should be doing the prodding, not the authority. The Amendment would do little to speed the publication of inventions and might, by increasing the burden on the Patent Office, as I hope I have shown it must inevitably do, greatly add to the delays.
I agree with my noble friend in what he is trying to do —namely, to speed up the whole patent procedure, which, after all, is the main purpose of our Bill: but I am afraid that his Amendment will not achieve that object and might even have the reverse effect. That, I think, is good reason for not accepting this Amendment. There is a bad reason for not accepting it. which I will give my noble friend to cheer him up: I do not think the Amendment comes within the Long Title of the Bill.
§ LORD LUCAS OF CHILWORTH
Before the noble Lord, Lord Cawley, withdraws the Amendment, I should like to say a word or two. A discussion on the Patents Bill has a rather nostalgic attraction to me, and although in seven years, from 1949 up to now, a merciful Providence has wiped a lot of it out of my mind, I could not let this opportunity go without saying a word or two on the Amendment. I am grateful to my noble friend Lord Silkin, who stepped into the breach when I was unavoidably unable to be present on the Second Reading of this Bill. He made an excellent point on the subject under discussion to-day, and I think the noble Lord, Lord Mancroft, answered it. The thing that worries me— not about the Amendment, which I submitted to your Lordships during the discussions on the 1949 Act, and which I thought was a good one; and my opinion has not altered —is that we are now going through difficult times, because we are on the verge of one of 733 the greatest periods of competition in trade and industry that we have ever experienced. Does the noble Lord not think that the delay he proposes is too long?
The noble Lord who moved the Amendment did not press it, because he anticipated the noble Lord, Lord Mancroft, by admitting that the drafting was all wrong. That, of course, is common form. Could the noble Lord, Lord Mancroft, think of an Amendment to overcome the objection that I have to this particular clause? There arc three types of delay. There is the genuine delay; there is the deliberate offender, and there is also the delay which is brought about by difficulties. Are we serving the public interest in shutting out for four years anybody who wants to use one of these patents? There is the man who is anxious to have his invention patented. He wants to have that done as soon as possible, and he should be able to get over delay. But there is the other person, who knows very well that as soon as this invention is patented he may be subjected to demands for a patent of right. That is one safeguard that ran through the previous Bill that I feel more or less looked after the public interest —that of having these inventions open to them, with proper safeguards to the patentee, as early as possible. Does the noble Lord think that, on reflection, between now and the next stage of the Bill he could think of an Amendment that would lessen the gap between what the noble Lord who moved the Amendment wants and what is in this Bill?
That is my only point. If the noble Lord thinks it cannot be done, I quite understand the reasons he has put forward. But leaving the Amendment and accepting the principle that he has supported —that he does not want, and neither do the Government want, undue delay and that it is against the public interest to have undue delay —would the noble Lord tell me whether he thinks he could do anything upon mature consideration?
§ LORD MANCROFT
I wonder whether I might delay replying to that question until after I have heard what the noble Lord, Lord Cawley, has to say on his next Amendment, because I think the observations of the noble Lord, Lord Lucas of Chilworth, are just as pertinent 734 to the second Amendment as they are to the first. Perhaps I could try to answer both points together.
§ LORD CAWLEY
I am much obliged to the noble Lord, Lord Mancroft, and I beg leave to withdraw my Amendment.
§ Amendment, by leave, withdrawn.
§ 3.24 p.m.
§ LORD CAWLEY moved to omit subsection (2). The noble Lord said: This is a most curious subsection, and I do not know whether many noble Lords at the present moment know what it means. If I may have the indulgence of the House, I should like to explain it. Under Section 12 of the Act of 1949, the applicant for a patent had one year from the date of the filing of his complete specification to get it into order for acceptance for publication, and he could have a further period of three months. Under the proviso to Section 13, the same privilege was accorded to persons who had got their patents into order for acceptance before the lapse of twelve months. The point of this, so I am told, was to prevent the persons who got their patents into order in good time from being prejudiced by the publication of their patents, which would in fact prejudice independent overseas applications—that is to say, overseas applications not under international convention. This subsection extends the period of twelve months in Section 13 to three and a half years, or whatever other period is prescribed by the Board of Trade.
§ I am told that at the present moment, the average period from the filing of the complete specification to acceptance is about two to two and a half years. This morning I picked up four patents that happened to be on my desk, and I found that two filed in this country had taken one year and six months, and two filed overseas had taken two years and two months and four years and four months respectively. Under this subsection anybody who gets his patent into order in one year and six months wall be allowed to go to the Comptroller and say: "Will you delay publishing my patent, delay telling the public about it, for another two years? And if I pay an extra fee I shall be allowed not to tell the public about it for two years and three months. Of course, at the beginning of that period I should know what it contained, and I will watch my competitor building up his 735 business, producing the things which I know will infringe, and then, when he has really got going I can publish my patent and bring him toppling down." Of course, that is not done by reputable business men, but it is done by certain men who have no repute. This Amendment is designed —and there would have to be consequential Amendments —to prevent this abuse from taking place. I beg to move.
Leave out subsection (2). —(Lord Cawley.)
§ LORD MANCROFT
This is, I suppose, about as abstruse a matter as we can think of discussing; but there are two points we need to get quite clear in our minds. One is the point which the noble Lord. Lord Lucas of Chilworth, has made —namely, the desire for speeding up the procedure available to the bona fide applicant who wants to get his invention patented as soon as he possibly can; and the next point is the one raised by my noble friend Lord Cawley in his Amendment, which is the case of the man who wants to delay acceptance of his patent as long as possible in order that he may see what his competitors are up to and in order that his competitors may not see what he is up to. Let us try to see whether we can reconcile both of those within one provision of the Bill.
Let me deal first with the point of the noble Lord, Lord Cawley. As he has told us, the subsection which his Amendment seeks to delete amends the proviso to subsection (1) of Section 13 of the 1949 Act. May I just remind your Lordships, in as simple language as I can muster, of what that proviso does? It permits an applicant for a patent to request that the Comptroller postpone acceptance of his application —that means, of course, refrain from publishing it —until the latest date allowed by Section 12 of the Act for putting an application in order for acceptance. Since we are, by amending Section 12, increasing the period allowed under that section from a maximum of fifteen months to a maximum of three and a half or three and three-quarter years, we feel that Section 13 must be similarly amended so that the period specified in the two sections continues to coincide.
Let me try to simplify that a little. The effect of the Amendment would be to 736 allow the applicant to request that acceptance be postponed for fifteen months from the filing of his complete specification, but not longer. Since, given our present delays, it is extremely unlikely that any application will be in order in as little as fifteen months, the result would be that Section 13 of the 1949 Act would become a dead letter and would so remain until the delays were radically decreased.
A provision permitting an applicant to request postponement of acceptance of his application has been part of our patent law since 1939. Even then, it made statutory only a long-standing practice (which was not barred by the earlier Acts) of allowing this postponement if the applicant wished it. As the noble Lord, LordCawley, has pointed out, many years before the war firms who were interested more in concealing the results of their researches than in getting their patents granted quickly made a practice of asking for the maximum possible delay. The Departmental Committee (the Swan Committee) whose Report formed the basis of Lord Lucas of Chilworth's Patents Act. 1949, recommended retention of this right of the applicant to request postponement. The long and the short of it is that the Government feel that they would not be justified in changing the law on this point without a full inquiry amongst interested parties.
Although the withdrawal of the right to request postponement of acceptance may seem at first sight an attractive proposition, I do not think it would in most cases achieve the early publication of inventions, and for this reason. The applicant who wished the early grant of his patent would not in any case make use of his right; whereas the applicant who wished to delay publication would, if deprived of the right, as Lord Cawley's Amendment suggests, fail to take the necessary steps to put his application in order, by failing, for instance, to sign it until near the end of the statutory period. He would thus achieve exactly the same result by a different means.
We must go on allowing those who wish to postpone the publication of their patent to their competitors or the world at large to do so if they so wish. I find no very strong evidence that the moment has come to change the law. The noble Lord, Lord Lucas of Chilworth, must have had the 737 same problem before him when he considered the 1949 Act, because the problem did not begin yesterday. I agree with him and with the noble Lord, Lord Cawley, that we must do everything we can to speed up the time available to those who do not want to postpone publication. I will not repeat all the arguments that I advanced on Second Reading, and particularly when I was answering the noble Lord, Lord Silkin. He asked very naturally what steps we were taking to speed up the procedure applicable to bona Me applicants. There have been suggestions, I know—I am surprised that the noble Lord, Lord Lucas of Chilworth, did not put down an Amendment: I thought he would —that we should cut down the period from four years to two years. This, I think, was what the noble Lord. Lord Silkin had in mind at one time. A result of that would be either a flood of imperfectly examined patents of doubtful validity or the becoming void of the majority of applications, because they could not be put in order in the time allowed.
We considered this matter carefully at the time. We discussed it with patent agents. We consulted the Federation of British Industries, the National Union of Manufacturers, The Association of British Clambers of Commerce and the Chartered Institute of Patent Agents and Trade Marks, Patents and Designs Federation. We came to the conclusion that a reduction would not achieve what the noble Lord has in mind; and the procedure already decided en now in this Bill (that is, four years maximum), seems to us to be the practical answer. The actual period initially will he three and a half years and we think that this is the shortest time we can adopt at the moment, if we arc to do the work efficiently. To reduce the time to two years will not achieve it, nor will Lord Cawley's Amendment achieve it. The result of our negotiations has been to produce what is admittedly a compromise, but one which I think will work to the best interests of the person who wants his patent as quickly as possible and the other man who legitimately wants to keep his patent hidden from his competitors for as long as possible. I hope that with that rather wordy explanation the noble Lord will see fit to withdraw his Amendment.
§ LORD LUCAS OF CHILW ORTH
I do not think the noble Lord need have apologised for his wordy explanation. I think it was most interesting. The noble Lord, Lord Silkin, suggested to me that we put down an Amendment, but I am afraid that the stress of other events over the last week has been rather harassing for the Opposition, with their small numbers. That is why the Amendment was not put down. I see the noble Lord's point. I think it boils down to this: that in order to catch the delinquent, the man who is seeking to delay for an improper purpose, a purpose which we should regard as being against the public interest—
§ LORD LUCAS OF CHILWORTH
I know it has; but has the time arrived when that should be checked? Have the Board of Trade machinery to detect such a delay? Does the noble Lord think that it would be worth while detecting, or would the procedure be so cumbersome that many others would be penalised for the sake of checking the delinquent few? If the noble Lord can tell me that, then as we have now aired the subject I am willing to let it go. I must say that I think four years is a long time. The mesh is too wide. If the noble Lord cal tell me that after you have watched this machinery and seen its result, the Government will, if they think it necessary, introduce amending legislation for the safeguarding of the public interest. I am perfectly happy.
Weald the noble Lord, Lord Mancroft, tell me one thing? If there is an application for a patent which has not yet been published, and a similar application for a similar patent is lodged, does the one that is already lodged take precedence, or what happens?
§ LORD MANCROFT
The noble Lord has asked about as difficult a question as there is in patent law, namely the problem of priority. I could not possibly give an answer in under three quarters of on hour, and I should get it wrong then. It is a complicated question. All I can say is that much trouble is taken to sec that the proper application does, in point of fact, get priority. If I may now- answer the noble Lord, Lord Lucas 739 of Chilworth, I can give him this assurance. I will look again at the procedure and consider this rather technical point. I will see whether it is clear that the man who wants his patent quickly is not unnecessarily held up by those who do not want their patents in a hurry. That is a matter of procedure in the Comptroller's office which I will discuss with him. I will look at that point and endeavour to give the noble Lord an assurance in due course.
§ LORD LUCAS OF CHILWORTH
And would the noble Lord also look at the case where the Board of Trade or the Comptroller is quite satisfied that there is no legitimate reason against the publication of the patent? Because immediately it is published, it is open for anyone who so desires to apply for a licence under that patent, or, if the patentee refuses to grant that licence, to apply for a licence of right. That is my main burden of complaint. Surely, if the noble Lord can find out the one thing he can find out the other. As he rightly says, there may be plenty of cases where the application for delay is quite genuine There may be others where it is manifestly against the public interest. That is the thing I want to safeguard. as well as the first.
§ LORD MANCROFT
Yes I take that point, but I must sound this note of warning. In 1956 the intake into the Patent Office is likely to be something like 29,000 patents. If carrying out the investigations which the noble Lord suggests is going materially to add to the time and delay the work, we shall have to think again. I will certainly consider the matter in the light of what the noble Lord has said and see whether we cannot separate the sheep from the goats.
§ LORD LUCAS OF CHILWORTH
I am grateful to the noble Lord. The noble Lord, Lord Cawley, will then have served a useful purpose in putting down this Amendment.
§ LORD CAWLEY
My Lords, in withdrawing my Amendment may I say that it was my intention that Section 13 should become temporarily a "dead letter," and I feel that the noble Lord, Lord Mancroft, is taking rather a jaundiced view of human nature by saying "Well, if we cannot prevent 740 people from delaying, then let us invite them to delay by Statute." However, I now beg to withdraw my Amendment.
§ Amendment, by leave, withdrawn.
§ Clause 1 agreed to.
§ Remaining clauses agreed to.
§ House resumed. Bill reported without Amendment.