HL Deb 28 April 1977 vol 382 cc696-734

3.34 p.m.

Report of Amendments received.

Clause 1 [Patentable inventions]:

Lord ORAM moved Amendment No. 1: Page 2, line 4, leave out from end to ("mathematical") in line 6 and insert (",scientific theory or")

The noble Lord said: My Lords, I beg to move the first Amendment on the Marshalled List. This Amendment is of a purely drafting nature, the purpose of which is to group discoveries, scientific theories and mathematical methods together in one paragraph, as is done in Article 52(2)(a) of the European Patent Convention. My Lords, I beg to move.

On Question, Amendment agreed to.

Clause 2 [Novelty]:

Lord ORAM moved Amendment No. 2: Page 3, line 1, leave out from ("invention") to ("was") in line 3 and insert ("to which an application for a patent relates shall be taken also to comprise matter contained in another application for a patent which").

The noble Lord said: My Lords, in moving Amendment No. 2 I should also like to speak to Amendment No. 3 which is purely consequential upon No. 2. These Amendments deal with the problem of so called "self-collision" which was raised by noble Lords opposite during the Committee stage and which I promised to look into. Taken together, the Amendments make it clear that the state of the art for the purposes of subsection (3) cannot include the matter contained in the application in suit and so cannot be used to attack an invention to which that application relates; only matter contained in another application may be used. In other words, it will not be possible for an applicant to be defeated by the disclosure in his own application. Since the matter was raised in Committee, I am now persuaded that this is the intention and effect of the corresponding provision in Article 54(3) of the European Patent Convention. My Lords, I beg to move.

Lord BELSTEAD

My Lords, as the noble Lord, Lord Oram, has said, in Committee my noble friends and I tabled Amendments relating to the problem of what is known as "self-collision". The Government have dealt with this, making it clear that the state of the art cannot include matter contained in the application in suit. In addition, in Committee I also moved an Amendment which referred to a case where the application in suit becomes a divided out application. The Government have not met that point, but they have met the first point to which we directed our Amendments, and for that at any rate I am grateful.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 3: Page 3, line 6, after second ("that") insert ("other").

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 4: Page 3, line 14, after ("application") insert ("for the patent").

The noble Lord said: My Lords, this is purely a drafting Amendment, to make it clear that it is the application for the patent already referred to in the subsection to which reference is made in line 14. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 5: Page 3, line 15, leave out ("made possible by") and insert ("due to, or made in consequence of,").

The noble Lord said: My Lords, in moving Amendment No. 5 I should also like to speak to Amendment No. 6, as both deal with the same point. Article 55 of the European Patent Convention specifies that a disclosure of the invention is to be disregarded if it was due to or in consequence of acts of the kind stipulated in that article. Clause 2(4) is intended to parallel Article 55 and, on further reflection of representations which have been made, we are persuaded that Clause 2(4) needs to be amended. The clause deals adequately with the situation where the disclosure was due to a breach of confidence or a display at an international exhibition. However, it is arguable that Clause 2(4)(a) does not clearly deal with a disclosure in consequence of a breach of confidence, and Clause 2(4)(c) omits the possibility of a disclosure in consequence of a display at an exhibition. These two Amendments put matters right.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 6: Page 3, line 33, leave out ("effected by") and insert ("due to, or made in consequence of.").

On Question, Amendment agreed to.

Clause 5 [Priority date]:

Lord ORAM moved Amendments Nos. 7 and 8:

Page 5, line 3, leave out from ("filed") to ("by")

Page 5, line 8, at end insert—

  1. (a) it was filed in or in respect of the same country as the first; and
  2. (b)").

The noble Lord said: My Lords, I should like to move Amendments Nos. 7 and 8 together. Amendment No. 7, is a small but quite important technical Amendment which puts into the correct place in Clause 5(3) the reference to the "same country", which was introduced in Committee. To put it as briefly and simply as possible, the purpose of the general provision of the subsection is that a first priority application renders ineffective a later priority application for the same invention or matter. For this purpose the place of filing of the two applications is not relevant. However, there is an exception to the general provision brought in by the word "unless" in line 8. For the purposes of this exception it is necessary under the Paris Convention that both applications be filed in the same country. The Amendment thus transfers to its rightful place in the subsection the reference to the "same country". I beg to move.

Lord BELSTEAD

My Lords, when this clause was being debated in Committee the noble Lord, Lord Oram, moved a series of Amendments which the noble Lord claimed were to clarify the situation dealt with in Clause 5(3). On that occasion we had also tabled a small Amendment which would have placed very much the same words as are now contained in Amendment No. 8 in exactly the same place as they are to be placed by Amendment No. 8. However, in Committee we could not believe that for once an Amendment of ours might be right and the Government Amendments might be wrong, because the practice which this Bill has given to the Government Front Bench in drafting Amendments has made them experts, so we withdrew our Amendment. I am delighted that on this occasion we were on the right track. I have pleasure in supporting these Amendments.

On Question, Amendments agreed to.

Lord ORAM moved Amendment No. 9: Page 5, line 25, leave out subsection (5).

The noble Lord said: My Lords, this Amendment arises from the recognition that the term "matter" as used in Clause 5 (5) in relation to what is disclosed in a patent application could cause the term "matter" as used elsewhere in the Bill to be given a meaning which is not intended and, in particular, prevent applications and patents from being amended by way of disclaimer and acknowledgment of prior art. The deletion of Clause 5 (5) is offset by Amendment No. 162 to Clause 122 in order to establish what meaning the term "matter" is to have in the Bill. I beg to move.

Lord LYELL

My Lords, we are grateful for the explanation that the noble Lord, Lord Oram, has given over this particular subsection because it was not immediately apparent from the deletion of the subsection why the word "matter" was going to be involved. I had remembered at an earlier stage discussing with the noble and learned Lord, Lord McCluskey, the relevance of the word "matter", but we understand that Amendment No. 162, to which we shall be coming probably at some considerable stage in the future, is intended to rectify the error that the Government seem to believe is existent in this clause.

It seems that when we come to Clause 122 we are dealing more with the definitions, because I see that Amendment No. 162 is of the nature of a defining paragraph. I take what my noble friend Lord Belstead said, that the Government are becoming more expert in these affairs of drafting, but I think that this goes a little beyond drafting. I hope this is relevant. The noble Lord, Lord Oram, has given us an explanation which I think is satisfactory, but we should like to study it. We are coming near the end of the stages when we can continue the discussion, but I think that we are satisfied at this stage and we accept the Amendment.

On Question, Amendment agreed to.

Clause 7 [Determination before grant of questions about entitlement to patents, etc.]:

3.45 p.m.

The SOLICITOR-GENERAL for SCOTLAND (Lord McCluskey) moved Amendment No. 10: Page 6, line 14, leave out ("to which this section applies").

The noble and learned Lord said: My Lords, with your Lordships' permission I should like to speak to Amendments Nos. 12 and 14 at the same time as I speak to Amendment No. 10. The first two Amendments, that is Nos. 10 and 12, are purely paving Amendments for the principal Amendment, which is No. 14. They simply remove the references in Clause 7 to applications other than purely domestic applications. The third and major Amendment seeks to insert a new clause to deal with these applications and I will concentrate upon that clause. The general scheme of the new clause is parallel to that of Clause 7, with appropriate modifications to deal with the issues which will actually arise.

Perhaps I can point to what the principal modifications are. Since subsection (1) of the new clause does not seek to apply Clause 7(1) but stands on its own, it becomes clear that the question to be determined is the question of entitlement under the foreign law or treaty concerned and not under the domestic law. Thus, if the comptroller has to decide a question about a Brazilian patent, for example, he will, if it is relevant and appropriate, hear evidence on Brazilian law and apply that. If he has to decide a question on a European patent, he will apply Article 60 of the European Patent Convention. In this respect the new clause is part of the general move towards making the Bill as European as possible, in response to suggestions made during Committee.

Subsection (5) is relevant to European cases. It makes Clause 10 apply both to the comptroller's decisions under the proposed new clause and to parallel decisions of other countries where it is they, and not the United Kingdom, who have jurisdiction under Clause 80. Thus, if there is a complete change of proprietorship, licences and the like will lapse subject to safeguards for a licensee who has acted in good faith. This is in line with Article 28 of the CPC.

Subsection (6) is parallel to Clause 7(3). It may appear complicated, but it is included primarily for the benefit of the small inventor. If somebody takes another's invention and applies for a patent for it, it is wrong for the true inventor to be stuck with the applicant's choice of the type of patent to apply for. The true inventor, particularly if he is a small inventor, may not want to go to the additional burden of prosecuting an application before the European Patent Office. Subsection (6) accordingly provides that in analogous cases to those dealt with by Clause 7(3) the true inventor may file a new United Kingdom application. I beg to move.

Lord LLOYD of KILGERRAN

My Lords, now that we have passed through the dangerous seas of invention, novelty and self-collision, may I say that we support this Amendment particularly as the noble and learned Lord referred to the fact that it would be of assistance to a small inventor. In all these Amendments which the Government are putting forward it is necessary to realise that much established patent law and the phraseology associated with patent law have now been changed in view of the desirability of harmonising the national law with Community law. Some of us believe that perhaps the spirit of harmonisation and conformity with EEC law has gone a little too far, but that perhaps is inevitable. Of course it may lead to expensive litigation arising because of the change in phraseology and the construction of these new words.

Nevertheless, with the leave of the House, I should like at this stage to express my gratitude to the noble Lord, Lord Oram, the noble and learned Lord, Lord McCluskey, and the noble and learned Lord the Lord Chancellor, for all the letters they have written to me about the points I raised at Committee stage. I should like to thank them and their advisers for the arduous work they have done on this matter during the Easter Recess.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 11: Page 7, line 25, leave out from ("date") to end of line 26 and insert ("of filing the earlier application").

The noble and learned Lord said: My Lords, this is a drafting Amendment to make it clear that it is not necessarily the actual date of filing of the earlier application which matters for the purpose of Clause 7(3), but the date of filing as determined by Clause 13. The present wording is thought to be ambiguous in this respect and the Amendment is designed to make it clear. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 12: Page 8, line 15, leave out subsection (9).

On Question, Amendment agreed to.

Clause 9 [Handling of application by joint applicants]:

Lord McCLUSKEY moved Amendment No. 13: Page 9, line 31, leave out ("application") and insert ("applicant").

The noble and learned Lord said: My Lords, as noble Lords will see, this corrects a clerical error in the present draft.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 14:

After Clause 10, insert the following new clause:

Determination of questions about entitlement to foreign and convention patents, etc.

  1. .—(1) At any time before a patent under the law of any country other than the United Kingdom or under any treaty or international convention has been granted for an invention (whether or not an application has been made for that patent)—
    1. (a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
    2. (b) any of two or more co-proprietors of an application for such a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person;
    and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination.
    2. 703
  2. (2) If it appears to the comptroller on a reference of a question under this section that the question involves matters which would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the court in Scotland, the court shall have jurisdiction to do so.
  3. (3) Subsection (1) above, in its application to a European patent and an application for any such patent, shall have effect subject to section 80 below.
  4. (4) Section 9 above, except so much of it as enables the comptroller to regulate the manner in which an application is to proceed, shall apply to disputes between joint applicants for any such patent as is mentioned in subsection (1) above as it applies to joint applicants for a patent under this Act.
  5. (5) Section 10 above shall apply in relation to—
    1. (a) any orders made under subsection (1) above and any directions given under section 9 above by virtue of subsection (4) above; and
    2. (b) any orders made and directions given by a court or other competent authority having jurisdiction under the European Patent Convention to decide a question corresponding to any question which may be determines under subsection (1) above;
    as it applies to orders made and directions given apart from this section under section 7 or 9 above.
  6. (6) In the following cases, that is to say—
    1. (a) where an application for a European patent (UK) is refused or withdrawn, or the designation of the United Kingdom in the application is withdrawn, after publication of the application but before a question relating to the right to the patent has been referred to the comptroller under subsection (1) above or before proceedings relating to that right have been begun before any competent authority having jurisdiction with respect to that right under the European Patent Convention:
    2. (b) where an application has been made for a European patent (UK) and on a reference under subsection (1) above or any such proceedings as are mentioned is paragraph (a) above, the comptroller, the court or any other authority having jurisdiction under that convention determines by a final decision (whether before or after publication of the application) that a person other than the applicant has the right to the patent, but that person requests the European Patent Office that the application for the patent should be refused; or
    3. (c) where an international application for a patent (UK) is withdrawn, or the designation of the United Kingdom in the application is withdrawn, whether before or after the making of any reference under subsection (c) above but after publication of the application;
    704 the comptroller may order that any person (other than the applicant) appearing to him to be entitled to be granted a patent under this Act may make an application for such a patent for the whole or part of any matter comprised in the earlier application (subject, however, to section 74 below) and that if the application for a patent under this Act is filed, it shall be treated as having been filed on the date on which the earlier application was filed.
  7. (7) In this section— references to a patent and an application for a patent include respectively references to protection in respect of an invention and an application which, in accordance with the law of any country other than the United Kingdom or any treaty or convention, is equivalent to an application for a patent or for such protection; and
  8. a decision shall be taken to be final for the purposes of this section when the time for appealing from it has expired without an appeal being brought or, where an appeal is brought, when it is finally disposed of.

The noble and learned Lord said: My Lords, I have already spoken to the substance of this Amendment.

On Question, Amendment agreed to.

Clause 12 [Making of application]:

Lord ORAM moved Amendment No. 15: Page 10, line 28, leave out from ("made") to ("and") in line 30 and insert ("in the prescribed form and shall be filed at the Patent Office in the prescribed manner").

The noble Lord said: My Lords, this Amendment is of a mainly drafting nature, the purpose and effect of which is clearly the distinction between "making" an application and "filing" an application. The prescribed form of an application relates to its "making" which, of course, occurs before it is physically "filed" at the Patent Office. The prescribed manner relates to the actual "filing" of the application in the Office.

On Question, Amendment agreed to.

Clause 14 [Publication of application]:

Lord BELSTEAD moved Amendment No. 16: Page 13, line 3, leave out ("as filed").

The noble Lord said: My Lords, I will, with the permission of the House, speak at the same time to Amendments Nos. 17 and 18. The need for these three Amendments arises from Amendments tabled to Clause 67 in Committee. On that occasion my noble friends and I tabled an Amendment to Clause 67 designed to protect the position of someone who infringes a patent because, unknown to the infringer, the patent application published under Clause 14 has subsequently been amended. The Government also tabled an Amendment to Clause 67 and, during the debate which took place on both Amendments, the noble Lord, Lord Oram, undertook to look at the matter again. On 29th March the noble Lord wrote to me saying: Clause 67(1) gives an applicant a right to sue for damages as if a patent had been granted on the date of the publication of the application. Subsection (2) contains some restrictions on the right, the one with which we arc concerned being that set out in paragraph (b), i.e. that the act complained of would have infringed the last specification to be filed which was contained in the application at that date. Thus, any amendments to the specification filed after the date of publication under Clause 13"— which is now Clause 14— will not be taken into account under Clause 67(2)(b)". The noble Lord added: It is our intention to publish the application as filed under Clause 13 together with any amendments filed up to that date, so there will be no question of a person infringing a document about which he cannot reasonably know". I accept that explanation of the effect of Clause 67(2)(b) and I am grateful to the noble Lord for the explanation he gave me and for the other letters he wrote to me. However, it now seems desirable to write the effect of that explanation into Clause 14. The effect of these three Amendments is to do just that.

Amendment No. 16 is a paving Amendment, while Nos. 17 and 18 provide that the comptroller shall publish an application …as filed, together with any amendments to the specification filed up to that date"— either as soon as possible after the period to be prescribed by rule or, if the applicant so requests, during the prescribed period. I might add that although the only debate on this point in Committee related to Clause 67, there is a cross-reference so far as this matter is concerned with Clause 54(2)(b), which puts Government Departments on the same footing as private individuals as regards payment for infringement between the publication of an application and grant of an application. I am therefore trying to write the undertaking which Lord Oram gave me into Clause 14, the clause which deals with the publication of applications.

Lord ORAM

My Lords, I am grateful to the noble Lord, Lord Belstead, for what he said, for raising this point and for drawing attention to this defect in Clause 14. He referred to correspondence between us. That is an indication that, although at this stage we have not ourselves tabled an Amendment, we have been considering the problem along the lines of the letter from which he quoted. However, the Amendments proposed by the noble Lord go too far, since it is only the last filed claims which it is intended to publish under Clause 14 together with the application as filed, these being the claims that will be effective for the purpose of the rights following publication under Clause 67 and payment for Crown use under Clause 54. Moreover, in publishing only the last filed claims, we would be consistent with the European Patent Convention.

I will of course undertake to consider very carefully what Lord Belstead has said, and it seems from his remarks that he agrees that we are both seeking the same end in this matter. At a later stage, when we have further considered the matter, we will table a suitable Amendment to meet his point. I hope that, with that assurance, he will not press the Amendment.

Lord BELSTEAD

My Lords, I am grateful to the noble Lord for that undertaking. I should like to study what he said about the last filed claims and to see whether, from what he said, the Amendment which the Government intend to table achieves the same objective as I have in mind. In the meantime, I am only too happy to wait and I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 15 [Preliminary examination and search]:

3.58 p.m.

Lord ORAM moved Amendment No. 19: Page 14, line 30, leave out subsection (8).

The noble Lord said: My Lords, with the leave of the House, I will speak at the same time to Amendment No. 155. Clause 15(8) makes provision for remission of all or part of the search fee in cases where the applicant discloses the results of an official search. There are, however, other cases where remission of a fee would be appropriate. For example, where the applicant has paid an additional fee, in accordance with Clause 15(6), for a search to be made on a second invention contained in his application and he subsequently files a divisional application for the second invention, it should be possible for a remission of the search fee paid in respect of the divisional application to be made. We consider therefore that remission of fees would be better dealt with in the rules which will, in any case, provide for the fees to be charged. Accordingly, Amendment No. 19 deletes Clause 15(8) and Amendment No. 155 to Clause 116(2) allows rules to be made providing for remission of fees.

Lord LYELL

My Lords, we had intended to ask the noble Lord for a reasonable explanation as to why what we saw as an apparently harmless provision was to be deleted. However, he has given a quite detailed explanation and has explained that the provisions which we thought were admirable are contained in, I think he said, Amendment No. 155. We are grateful to him for his explanation and perhaps I may express my gratitude to the noble Lord and his advisers in the Department for the letters and communications that we received as a result of our deliberations at an earlier stage. They were most welcome and most clear and enabled us to obtain a better understanding of the Bill and of the Government's intentions.

On Question, Amendment agreed to.

Clause 16 [Substantive examination and grant or refusal of patent]:

Lord ORAM moved Amendment No. 20: Page 14, line 40, leave out ("relevant").

The noble Lord said: My Lords, this Amendment is pure drafting. It is intended that there shall be only one prescribed period for requesting examination and paying the fee. The word "relevant" suggests, however, that there may be different periods. The Amendment by removing the word thus clarifies the situation. I beg to move.

On Question, Amendment agreed to.

4.2 p.m.

Clause 20 [Information prejudicial to defence of realm or safely of public]:

The Earl of HALSBURY moved Amendment No. 21: Page 16, line 41, leave out ("from") and insert ("before").

The noble Earl said: My Lords, with the leave of the House, I should like to take together, for the purposes of debate, Amendments Nos. 21, 22, 23, 25, 26 and a manuscript Amendment to leave out Clause 21. Amendment No. 22 and the manuscript Amendment represent the nub of the matter, but the other Amendments would be useful improvements if I am persuaded to withdraw Amendment No. 22 and the manuscript Amendment. I raised these matters on Second Reading and withdrew in Committee, reserving the right to raise them again, and I now want to come back to them at Report stage.

Amendment No. 21 removes the ambiguous word "from" in favour of the more definite "before". It could of course be "after" but this reading could inflict great hardship, as it would appear to prevent the inventor from obtaining a foreign patent if the prescribed period referred to in the subsection coincided with the convention date. Therefore, there should be a period of grace before the expiry of the prescribed period in which the inventor can take action.

Amendment No. 23 deals with an absolutely intolerable situation for a British resident who makes an invention while visiting the United States of America. I have already told, in Committee, of my friend the Nobel Prize winner who committed an offence in this country by patenting an invention in America. He could have been fined £1,000 and sent to prison for two years. Had he patented this invention anywhere else than in America, he would have been committing an offence under United States law and Section 184 of their Patents Act, which requires anyone making an invention in the United States to patent it in the United States if he patents it at all. This unfortunate inventor was in the position that whichever country he patented the invention in he was committing an offence under the laws of the other.

It might have resulted in his not being able to visit the United States again because he would have rendered himself liable to arrest, so he would have had to sacrifice his honorary professorship and his consultancy; or, upon returning to Britain, he might have been in the doghouse here. The Amendment simply confines offences under the clause in question to inventions made in the United Kingdom. It therefore aligns our law with that of the United States. Amendments Nos. 25 and 26, in conformity with my feelings upon this matter, simply reduce the penalties under Section 21 to a simple fine not exceeding £100, and remove the offence from the scope of the criminal law.

I now come to the nub of the matter—Clauses 20 and 21. Historically, these stem from the Patents Act 1907, which made provision for certain rights of the Crown in relation to defence inventions. They survived World War I and the Patents Act 1932, unamended and unused, so far as I can determine. In the mid-1930s, during the arms race leading up to World War II, they were used but, during the war, were felt not to be stiff enough, for which reason the Defence (Patents) Regulation SRO 1941, No. 1780, was authorised to deal with the matter. An extended set of rules was incorporated in the Patents Act 1949.

In Committee, the noble Lord, Lord Cawley, suggested that the origin of these may have related to foreign exchange control. I have searched Hansard and the reports of the debates on the 1949 Act, but I have not found any reference to foreign exchange control. All I have been able to find is a reference to the perpetuation of war-time regulations. If all we can do is to perpetuate war-time regulations, I feel that it is about time that they were abolished.

Taken together, these two clauses are quite unlike any other patent legislation that I have been able to study. No corresponding provisions exist in Australia, Belgium, France, Western Germany, Japan or, I believe, Italy. The French have a provision that the subject matter of a patent shall remain unpublished for five months after filing. At the end of that time it is freed for publication. It may not even be worked industrially for five months after filing. United States law makes it an offence to patent any invention made within the boundaries of the United States by no matter who. There is no question of nationality, residence or domicile: it is the place where the invention was made that is caught under US law for patenting elsewhere.

Why do we need these idiosyncratic provisions other than to bolster our reputation for legal eccentricity? We live in a world of uncensored free publication. If I make a defence invention, I can publish it in the New York Sunday Times, the Daily Express, Nature, the journal of a learned society. I can put it into my sales literature. But why do we want to make a quite exceptional type of treatment for publication in the form of a patent? What is the point of preventing publication through patent action when this can occur through any other action one likes to take? Suppose I was an inventor who took the same view of the patent system as the noble Viscount, Lord Eccles, who thought it an outdated set of provisions and said, "I shall not patent anything. I don't think that they are worth the paper they are written on. I shall simply put this into my sales literature and try to sell these weapons, or whatever they are, to the Shah of Persia. I am perfectly free to do it. So why do I have to be caught in the toils of the criminal law because I make a patent application? "It is complete nonsense.

We now come to the question of who makes defence inventions. Very few categories of people make defence inventions. First, they are made in Government research laboratories, where they are caught by the Official Secrets Act. They are made by industrial consultants to the Government, who are caught by the Official Secrets Act and the terms of the contract. They may possibly be made by university professors who act as consultants to Government Departments and who must preserve security under the terms of their consultancy. The idea that a casual member of the public may make a brilliant new defence invention is extremely unlikely, for he would not have the background of what is going on in the field of defence research to be able to make a contribution unless he were part of the system.

Granted that patents are applied for and assigned to the Government: they serve no useful purpose whatsoever—I am sure that the noble Viscount will be very pleased to hear me say so—except to act as a certificate of invention to enable the inventor to make claims on the Departmental Awards Committee. The Government certainly will not licence their enemies, and they will be expected to licence their allies on a royalty-free basis. The royalties that we received from United States industry and the United States Government for the user of Crown patents assigned by the inventor of the cavity magnetron and Commodore Whittle were absolutely derisory. We never really received the value of those inventions at all.

Next, these clauses cut right across European practice on the multinational front. A multinational corporation will run multinational laboratories, but they will not be duplicating each other's work; each one will be specialising in some aspect of technology or another. I know of a case of an inventor, working for a big multinational corporation, who is quite literally doing the rounds of Europe from laboratory to laboratory, making further developments on his inventions as he does the circuit of Europe, using the specialised facilities of those laboratories and the colleagues whom he finds waiting to help him there. From his fertile mind there will originate, with the help of his colleagues, a great linked mass of patents, a most valuable piece of industrial property some of it produced in Britain, some of it in Belgium, and some of it in Western Germany. These clauses are merely an obstructive nuisance from the standpoint of multinational trading by the large corporations.

Lastly, they give an entirely false sense of security—they are labelled "security" and so on. People imagine that if that is complied with, then we are secure. We are nothing of the kind. Look at the fools the Americans made of themselves with all their secrecy over nuclear secrets. Their organisation had been penetrated by Communist maggots before there were any secrets, and your Lordships can be absolutely assured that that would be happening. This false screen of imagined security, which would arise because certain provisions in a Patent Act are being complied with, is to my mind very dangerous. One of the standard ways of suffering a very severe defeat is to seal up your castle, lower the portcullis, raise the drawbridge, and defy the enemy—but meanwhile you leave open a kitchen window at the back. That is how Byzantium fell. Provisions of this type lull us into just that kind of false security. Those are the reasons why I have put down these Amendments. I beg to move.

Lord CAWLEY

My Lords, I cannot say how strongly I support the noble Earl in what he said. But first I must apologise to the House for making remarks about exchange control off the cuff, which I now realise were unjustified. Ever since I started practising at the Bar in patents, I have thought that the predecessors to these clauses were ridiculous. The first reason why they are ridiculous is that a man may file a patent and the next day he is entitled to publish it abroad. He publishes it in a learned journal. When the comptroller first examines the patent he declares it a secret patent, and the actual inventor is not allowed to tell anybody about it, but everybody else in the world knows about it from the learned journal. There cannot be anything more ludicrous than that; and it is something which any inventor would be advised to do if he thought that his invention was likely to become a secret patent. Possibly the company with whom he is employed would then exploit it without any requirement of secrecy.

My second point is that I know one case where this secrecy was taken to the most extraordinary extent. Somebody invented an engine for small ships. The drawing that he supplied showed the engine applied to a landing craft, and the comptroller said that he would not publish the specification until the drawing of the landing craft was obliterated. There cannot be anything more ludicrous than that. I strongly support the noble Earl.

Lord ORAM

My Lords, the noble Earl, Lord Halsbury, always speaks most attractively on this and on other subjects, and by linking together no fewer than six Amendments, two of which seek to delete whole clauses from the Bill, he has given himself a broad canvas upon which to paint, as he did so vividly. But I am afraid that, despite the persuasiveness of his speech, I must advise the House not to accept any of the Amendments to which he has spoken. First, I should like to deal with Amendment No. 21, the first Amendment to which the noble Earl spoke. This Amendment is, it seems, designed to remove what is believed to be an ambiguity in subsection (2) of Clause 20, but I am afraid that I cannot agree that ambiguity exists. A period reckoned from the end of another period is one that comes after that period. It is not one that comes either before or after the end of the first period.

However, even if this were not so, I should still have to resist the Amendment, since the intention of Clause 20(2) is to provide a period up to three months longer than the period prescribed by Clause 14 for the publication of an application, during which time the comptroller may fully consider whether the application contains information prejudicial to the safety of the public. Adoption of the Amendment that the noble Earl has moved would reduce the period for that consideration to an unacceptable degree.

I now wish to turn to what the noble Earl said in respect of his Amendments Nos. 23, 25 and 26. I have indeed some sympathy with his Amendment No. 23, which would ease the position of the United Kingdom resident who made an invention while abroad—for example, in the United States—and then found that he could not file immediately at the Patent Office in London or Washington without breaking the law of the other country. However, the inventor's position would not be impossible in these circumstances, since he could seek and obtain authority from the comptroller to make his first filing for protection in the United States Patent Office. It is true that that would involve some delay, which conceivably could damage the inventor's prospects of eventually obtaining valid protection, but the possibility is fairly remote, and to provide a remedy at the cost of a substantial weakening of the provision which under pins the whole security provisions of the Bill could not, in the Government's view, be justified. For those reasons I must ask the House to reject Amendment No. 23, and indeed Amendments Nos. 25 and 26. As to those two latter Amendments, the effect of them would be to reduce to purely nominal proportions the penalty for contravening the requirements of Clause 21 which, as I have said, underpin the security provisions of the Bill. Therefore, I must also resist these Amendments.

With regard to the two Amendments to which the noble Earl spoke in which it is proposed to delete Clauses 20 and 21, I should point out that Clause 20 provides for the treatment of patent application containing information, the publication of which might be prejudicial to the defence of the Realm or the safety of the public. There can be no question of deleting this clause from the Bill. Without it, it would be impossible to control the publication of information affecting national security, or to provide protection for inventions made in the field of defence, including inventions made in allied countries with which we have agreements for the exchange of classified information.

Clause 21 prohibits residents of the United Kingdom seeking protection abroad for their inventions, unless they have first received authority to do so from the comptroller or have filed an application for a patent, containing the same information, at the Patent Office. The noble Earl, Lord Halsbury, criticised this provision in Committee, when he moved Amendment No. 94 (I think it was), for the difficulty, to which he has again referred today, that it could cause to United Kingdom residents when travelling abroad. For example, a United Kingdom resident who makes an invention while visiting the United States cannot file for protection in either country without having first obtained permission from the authorities in the other, this entailing, as I have already indicated, some delay.

However, Clause 21 is the essential underpinning to the security provisions of Clause 20, and there can therefore be no question of its withdrawal. In rare circumstances, I would agree, the operation of Clause 21 might cause real hardship to an inventor, but in my view it would be quite unreasonable to eliminate that possibility at the cost of the security provisions of the Bill. I therefore hope that the House will resist the series of Amendments to which the noble Earl spoke.

Lord LLOYD of KILGERRAN

My Lords, I should like to speak briefly to the Amendment with which I have the privilege of being associated with the noble Earl, Lord Halsbury, and that is Amendment No. 22, to leave out Clause 20; and I shall confine my remarks to Clause 20. The reply of the noble Lord, Lord Oram, to the mover of this Amendment was that we really must have these clauses in the Bill for security reasons. I want to say quite frankly that it seems to me that this is security in peacetime gone mad. The noble Lord, Lord Cawley, gave one instance of it, and as the noble Earl, Lord Halsbury, spoke about Clause 20, and particularly subsection (1), I received his remarks with a certain amount of nostalgia, because when these emergency regulations for prohibiting the publication of patent applications filed in the Patent Office were made during the war it was part of my duty as a very junior scientific officer in the department of scientific research of the Ministry of Aircraft Production to advise the Comptroller General of Patents as to why certain inventions in patent applications should or should not be published.

The reason why I had been given this task was that prior to my being appointed to this position a very senior professor of physics from a well-known university had had the job and all the patent applications dealing with aircraft and ships were sent to him. He looked at them and said, "This is something in pneumatics", for instance. "It might be associated with that very important aspect of aircraft, the undercarriages of aircraft. I am not going to take any chances; I shall say that this is secret." The rooms of the Patent Office were filled with masses of documents as to which this learned professor of physics had said, "I am not going to take a chance on this; it may or may not be secret". It was part of my duty, knowing a little more, perhaps, about the immediate research work going on in the Air Ministry, to diminish the quantity of paper which was slowly clogging up the works of that part of the Patent Office.

I should therefore like to ask the noble Lord, Lord Oram, how subsection (1) of Clause 20 is to be administered. It says that if, …it appears to the comptroller that the application contains information of a description notified to him by the Secretary of State as being information the publication of which might be prejudicial to the defence of the realm… How is the comptroller going to decide that question without surrounding himself with gentlemen from the Ministry of Defence or from other defence Ministries? I can quite understand that the Secretary of State may wish to notify the Comptroller General that certain inventions in specific fields should not be published. It may be—and there is, I believe, special legislation in this matter—that in the field of atomic energy no disclosure should be made of information in patent applications, and many of these applications have remained secret.

It seems to me that, in a time of peace, the United Kingdom should not, in its Patent Act, have a provision of the nature of subsection (1) of Clause 20. As the noble Earl, Lord Halsbury, has indicated, this kind of legislation is not to be found in most of the countries of the European Community. I believe, as he told your Lordships, France has some regulations to this effect. I should like to ask the noble Lord, Lord Oram, whether or not he would consider, if not deletion of the whole of Clause 20, some serious Amendment to reduce the burden on the Government in deciding whether or not the publication of information in a patent application would be prejudicial to the security of the nation.

Lord ORAM

My Lords, with the leave of the House perhaps I may reply briefly to what the noble Lord, Lord Lloyd, has said. While he was speaking I was reading again the subsection to which he referred, and it seems to me that it is fully possible of reasonable administration, which is the question that he asked. I think it is the case that this carries forward provisions that are in the existing patent legislation, and I have heard of no difficulties or absurdities, other than the odd one which the noble Lord, Lord Cawley, referred to this afternoon, in connection with its administration. But, as I said in my earlier remarks, I am advised that this provision and the related provisions of Clause 21 are indeed essential for security reasons, and I do not think that, even though we hope to be living in a world where wars are less likely, we can rest too much on that hope. The noble Lord, Lord Lloyd, seemed to draw a distinction between the situation today and that in wartime which I do not think is as black and white in our troubled world as he was trying to pretend.

I have listened to what noble Lords have said, but nothing that I have heard has made me change my mind on the matter. I said that I thought that Clause 20 was carrying forward provisions in the existing legislation. I am now advised that it is the equivalent of Section 18 of the 1949 Act, to which I referred earlier in my remarks.

The Earl of HALSBURY

My Lords, the position seems to be that the noble Lord, Lord Oram, is not prepared to make any concession to my noble friend Lord Lloyd of Kilgerran, and since my Amendment has had support from two very knowledgeable Members of your Lordships' House, the noble Lord, Lord Cawley, and the noble Lord, Lord Lloyd, I feel that I should test the opinion of the House, unless anybody wants to intervene and speak against it in support

of the Government, and allow matters to proceed. If the noble Lord, Lord Oram, had made any sort of concession or had asked for more time, or anything like that, then I would have been willing to consider withdrawing for the time being; but, being obdurate, I feel that, since I am going to stand by Amendment No. 22, there would be no point in putting Amendment No. 21, and I therefore beg leave to withdraw Amendment No. 21, which stands in my name.

Amendment, by leave, withdrawn.

The Earl of HALSBURY moved Amendment No. 22:

Leave out Clause 20.

The noble Earl said: My Lords, I beg to move Amendment No. 22.

4.29 p.m.

On Question, Whether the said Amendment (No. 22) shall be agreed to?

Their Lordships divided: Contents, 98; Not-Contents, 44.

CONTENTS
Airedale, L. Eccles, V. Marley, L.
Alexander of Tunis, E. Effingham, E. Merrivale, L.
Alport, L. Elliot of Harwood, B. Mowbray and Stourton, L.
Amherst, E. Elton, L. Newall, L.
Amherst of Hackney, L. Emmet of Amberley, B. Northchurch, B.
Amory, V. Falkland, V. O'Neill of the Maine, L.
Ampthill, L. Forbes, L. Rankeillour, L.
Arran, E. Fraser of Kilmorack, L. Rathcavan, L.
Atholl, D. Gainford, L. Reigate, L.
Auckland, L. Glenkinglas, L. Roberthall, L.
Balfour of Inchrye, L. Greenway, L. Romney, E.
Barrington, V. Gridley, L. Ruthven of Freeland, Ly.
Belstead, L. Halsbury, E. [Teller.] St. Davids, V.
Berkeley, B. Hanworth, V. Sandys, L.
Bourne, L. Hatherton, L. Selkirk, E.
Campbell of Croy, L. Hawke, L. Sempill, Ly.
Cathcart, E. Hayter, L. Sharples, B.
Cawley, L. Henley, L. Sligo, M.
Chesham, L. Home of the Hirsel, L. Spens, L.
Clwyd, L. Ilchester, E. Stamp, L.
Colville of Culross, V. Inglewood, L. Strathclyde, L.
Cork and Orrery, E. Jessel, L. Strathspey, L.
Cottesloe, L. Killearn, L. Suffield, L.
Craigton, L. Kilmarnock, L. Swansea, L.
Cranbrook, E. Kimberley, E. Teviot, L.
Cromartie, E. Kinnaird, L. Teynham, L.
Cullen of Ashbourne, L. Lauderdale, E. Trefgarne, L.
Daventry, V. Lloyd of Kilgerran, L. [Teller.] Vivian, L.
de Clifford, L. Long, V. Wakefield of Kendal, L.
Denham, L. Lyell, L. Ward of North Tyneside, B.
Derwent, L. Macleod of Borve, B. Westwood, L.
Drumalbyn, L. Mancroft, L. Wigoder, L.
Ebbisham, L. Mansfield, E.
NOT-CONTENTS
Aylestone, L. Kagan, L. Segal, L.
Boston of Faversham, L. Kirkhill, L. Shepherd, L.
Collison, L. Leatherland, L. Stedman, B. [Teller.]
Cooper of Stockton Heath, L. Listowel, E. Stewart of Alvechurch, B.
Davies of Leek, L. Llewelyn-Davies of Hastoe, B. Stone, L.
Donaldson of Kingsbridge, L. Lloyd of Hampstead, L. Strabolgi, L.
Douglas of Barloch, L. Lovell-Davis, L. Taylor of Gryfe, L.
Elwyn-Jones, L. (L. Chancellor.) McCluskey, L. Thomson of Monifieth, L.
Gaitskell, B. Oram, L. Wallace of Coslany, L.
Gordon-Walker, L. Pannell, L. Wells-Pestell, L.
Greenwood of Rossendale, L. Pargiter, L. Wigg, L.
Hale, L. Peart, L. (L. Privy Seal.) Winterbottom, L. [Teller.]
Henderson, L. Phillips, B. Wootton of Abinger, B.
Houghton of Sowerby, L. Rusholme, L. Wynne-Jones, L.
Janner, L. Sainsbury, L.

On Question, Amendment agreed to.

Resolved in the affirmative, and Amendment agreed to accordingly.

Clause 21 [Restrictions on applications abroad by United Kingdom residents]:

4.38 p.m.

Lord ORAM moved Amendment No. 24: Page 20, line 1, leave out ("makes or causes to be made") and insert ("files or causes to be filed").

The noble Lord said: My Lords, this minor drafting change is consequential upon Amendment No. 15. In addition, it makes the language of subsection (3) consistent with that of subsection (1). No change in effect results from the Amendment. I beg to move.

Lord ORAM moved Amendment No. 27: Page 20, line 12, leave out first ("or") and insert ("under the law of any country other than the United Kingdom or under").

The noble Lord said: My Lords, this is a drafting change to fill an unintended gap in the present text of the Bill. Subsection (4)(b) at present specifies that Clause 21 bites on an application made outside the United Kingdom only if it is an application under a convention or treaty to which the United Kingdom is a party. Clearly, however, Clause 21 should also bite on an application made outside the United Kingdom under the national law of any foreign country. The Amendment makes clear that the case is also covered. I beg to move.

Lord BELSTEAD

My Lords, with respect to the Government, perhaps they need a comma at the beginning of their Amendment. If there is not a comma, as I understand it, this will read: In this section … any reference to either kind of application is a reference to an application under this Act under the law of any country other than the United Kingdom or under any convention or treaty to which the United Kingdom is a party. It will therefore put together an application under this Bill under the law of any country other than the United Kingdom. I think that those are two self-contradictory statements. Unless a comma comes at the beginning of this Amendment, it is almost meaningless.

Lord ORAM

My Lords, I know that the noble Lord, Lord Belstead, diligently watches these potentially important matters. It is not easy to check these things immediately; it may well be that it is a printing error. If so, that will be dealt with. If it is more than that, I will ensure that the noble Lord's point is taken care of in due course. I think that the noble Lord will find that it is a printing error.

The Earl of HALSBURY moved manuscript Amendment No. 27A: Leave out Clause 21.

The noble Earl said: My Lords, I beg to move.

4.44 p.m.

On Question, Whether the said manuscript Amendment (No. 27A) shall be agreed to?

Their Lordships divided: Contents, 92; Not-Contents, 35.

CONTENTS
Alexander of Tunis, E. Emmet of Amberley, B. Newall, L.
Alport, L. Falkland, V. Northchurch, B.
Amherst, E. Forbes, L. Norwich, V.
Amherst of Hackney, L. Fraser of Kilmorack, L. Nugent of Guildford, L.
Amory, V. Gainford, L. O'Neill of the Maine, L.
Ampthill, L. Geoffrey-Lloyd, L. Orr-Ewing, L.
Atholl, D. Greenway, L. Rankeillour, L.
Auckland, L. Gridley, L. Reigate, L.
Balfour of Inchrye, L. Halsbury, E. [Teller.] Roberthall, L.
Barrington, V. Hanworth, V. Romney, E.
Belstead, L. Hatherton, L. Ruthven of Freeland, Ly.
Berkeley, B. Hawke, L. Sackville, L.
Boothby, L. Hayter, L. St. Aldwyn, E.
Cawley, L. Henley, L. St. Davids, V.
Chesham, L. Home of the Hirsel, L. Sandys, L.
Clwyd, L. Hylton-Foster, B. Sempill, Ly.
Colville of Culross, V. Ilchester, E. Sligo, M.
Cork and Orrery, E. Inglewood, L. Spens, L.
Cottesloe, L. Killearn, L. Stamp, L.
Craigton, L. Kilmarnock, L. Strathcarron, L.
Cranbrook, E. Kinnaird, L. Strathclyde, L.
Cromartie, E. Lauderdale, E. Strathcona and Mount Royal, L.
Cullen of Ashbourne, L. Lloyd of Kilgerran, L, [Teller.] Strathspey, L.
Daventry, V. Long, V. Suffield, L.
de Clifford, L. Lyell, L. Teviot, L.
Denham, L. Mancroft, L. Teynham, L.
Derwent, L. Mansfield, E. Trefgarne, L.
Drumalbyn, L. Marley, L. Vivian, L.
Ebbisham, L. Massereene and Ferrard, V. Ward of North Tynesidc, B.
Eccles, V. Merrivale, L. Wigoder, L.
Elton, L. Mowbray and Stourton, L.
NOT-CONTENTS
Aylestone, L. Hall, V. Shepherd, L.
Collison, L. Henderson, L. Stedman, B.
Cooper of Stockton Heath, L. Kagan, L. Stewart of Alvechurch, B.
Cudlipp, L. Leatherland, L. Stone, L.
Davies of Leek, L. Llewelyn-Davies of Hastoe, B. Strabolgi, L. [Teller.]
Donaldson of Kingsbridge, L. Lloyd of Hamsptead, L. Wallace of Coslany, L.
Douglas of Barloch, L. Lovell-Davis, L. Wells-Pestell, L.
Elwyn-Jones, L. (L. Chancellor.) McCluskey, L. Wigg, L.
Gaitskell, B. Oram, L. Winterbottom, L. [Teller.]
Gordon-Walker, L. Pannell, L. Wootton of Abinger, B.
Greenwood of Rossendale, L. Phillips, B. Wynne-Jones, L.
Hale, L. Sainsbury, L.

Resolved in the affirmative, and Amendment agreed to accordingly.

4.52 p.m.

Clause 23 [Term of patent]:

Lord ORAM moved Amendment No. 28: Page 21, line 5, leave out ("and").

The noble Lord said: My Lords, this is purely a drafting Amendment to pave the way to Amendment No. 30, to which I should also like to speak. It is logical that liability for infringement and liability of the Crown to pay compensation should be treated in the same way. Under Clause 53(5) the proprietor of a patent is entitled to payment in respect of Crown use of the invention to which that patent relates. The Amendment makes it clear that this liability does not cease during the grace period of six months for the payment of renewal fees. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 29: Page 21, line 6, leave out from beginning to ("an").

The noble Lord said: My Lords, in moving Amendment No. 29 I should like also to speak to Amendment No. 36 relating to Clause 26, since the two go together. They are intended to correct a defect in the Bill. Clause 22(3) provides that a patent ceases to have effect if a renewal fee is not paid on the due date. However, Clause 22(4) provides for a grace period of up to six months for paying the renewal fee and, if it is so paid within that period, the patent is treated as if it had never expired. But during the grace period a third party may have commercially exploited the invention, and therefore the Bill needs to specify whether or not such exploitation is an infringement. Since the third party knows full well that the renewal fee may be paid during the grace period and that, if it is, the patent is treated as never having expired, the Government consider that such exploitation should be treated as an infringement.

That is the purpose of paragraph (b) of subsection (4) of Clause 23. However, inadvertently, that paragraph has been made subject to subsections (5) and (6) of Clause 26, which is clearly wrong since those subsections are concerned with a different situation in which the renewal fee is not paid during the grace period. In that case the patent expires but is later restored to full life. The first Amendment therefore corrects Clause 23(4) and makes it clear that a third party who operates during the grace period is liable for infringement. The Amendment to Clause 26(5) is consequential on the Amendment to Clause 23(4). It makes it clear that the rights conferred by subsection (6) arise only if the infringeing Act or the preparations for it began after expiry of the grace period. I beg to move.

Lord LYELL

My Lords, we are most grateful for the explanation given by the noble Lord, Lord Oram, on this point. We had one or two queries in our minds concerning this matter but the noble Lord has gone a long way towards clearing up our doubts and queries. Possibly he would permit us to read, digest and, we hope, learn from his remarks. Subject to that, we are very pleased that the doubts we had entertained have been cleared up for the moment.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 30:

Page 21, line 8, at end insert ("and (c) an act which would constitute the use of the patented invention for the services of the Crown if the patent had not expired shall constitute that use.").

The noble Lord said: My Lords, I have already spoken to this Amendment. I beg to move.

On Question, Amendment agreed to.

4.58 p.m.

Lord LYELL moved Amendment No. 31:

Page 21, line 8, at end insert— (5) Rules shall provide for the Comptroller to issue notices that a renewal fee has not been paid, one such notice to be issued during the period referred to in section 23(4) above, and the other during the two months following the expiry of the said period.

The noble Lord said: My Lords, I beg to move Amendment No. 31. The purpose of the Amendment follows upon comments which I made at an earlier stage of our proceedings—I believe, on the first day of the Committee stage. At that time I welcomed the news given by the noble Lord, Lord Oram, that the Patent Office, as he has told us, are now able and willing to send out reminders to various organisations regarding the payment of their annual fees. We are very grateful for the counsel and the comments given by the noble Lord. I was happy to accept the assurance that such notices were to be issued by the Patent Office, because I had earlier understood that that is not the present custom.

However, when we look at the Bill as reprinted, I am afraid that we cannot find anything which states that the Patent Office should take positive action in this respect. We submit that the inclusion of the new subsection (5) will ensure that renewal reminders are sent out by the Patent Office. The noble Lord, Lord Lloyd of Kilgerran, pointed out that there is a great risk of patent agents being liable for considerable sums in damages when a patent is not renewed owing to the late payment of the fee. Of course, we regard the noble Lord's comments as of great relevance, because he has great practical experience in this field. For this and other reasons, we consider that the clause should contain evidence that the Patent Office will carry out the intention which was so admirably expressed on behalf of the Government by the noble Lord, Lord Oram, at the earlier stage. My Lords, I beg to move.

Lord ORAM

My Lords, as the noble Lord, Lord Lyell, has said, this Amendment relates to a discussion that we had at Committee stage on what is now Clause 27. When we were considering Amendments which noble Lords opposite put down in connection with that clause, I said, in resisting them—as the noble Lord, Lord Lyell, has now reminded us—that the Patent Office are prepared to issue reminders about payment of renewal fees. However, I made it clear that I thought that any solution to the problem raised by noble Lords opposite would be taken on an administrative level. I am pleased to see that the idea of reminders has been taken up in this further Amendment, but I am afraid that I must resist it, because it seeks to raise what is in my view a purely administrative matter for the Patent Office, to a statutory obligation upon the comptroller. Indeed, I think that the noble Lord, Lord Lyell, almost expressed it in those terms. I am very confident that the Patent Office will not resile from any undertaking that it gives to issue reminders. As I said, it is a purely administrative matter, upon which I think it is desirable to retain the greatest flexibility. Therefore, I hope that the noble Lord will acknowledge what I have said, and will not see fit to press this Amendment.

Lord LLOYD of KILGERRAN

My Lords, as the noble Lord, Lord Lyell, indicated, I spoke to this matter at the Committee stage and indicated its importance to patent agents, as practitioners. Not only can patent agents be sued for a form of negligence, as the noble Lord, Lord Cawley, pointed out in Committee—they can insure against that—but something more serious often happens, in that an agent's professional integrity or professional status may be impaired, if it gets around that, through some accident of a junior clerk or something like that, he forgets to pay the fee.

I do not understand the reply of the noble Lord, Lord Oram. If he feels that the Patent Office are proposing to send these reminders, why cannot something be put in statutory form? I understand that the rules of the Patent Office have the force of Statute. May I therefore ask the noble Lord, Lord Oram, whether he would support the inclusion of a clause similar to this Amendment No. 31 in the rules of the Patent Office.

Lord BELSTEAD

My Lords, before the noble Lord replies, may I say this. We entirely accept the undertaking which the noble Lord gave on 15th February, that it is the intention of Ministers at the moment, and the intention of the Patent Office at the moment, that reminders will be sent out. That goes a great deal of the way to meet the difficulty which has been put forward, both this afternoon and at the Committee stage. But the reason why my noble friend Lord Lyell is pressing to have something written into the Bill is that if, subsequently, the Patent Office were to cease to carry out the undertaking, then presumably, unless this was done—and I look to noble Lords with legal training on this—the Patent Office could not be sued for breach of a statutory duty, whereas, of course, the patent agent could be sued for negligence. As the noble Lord, Lord Lloyd, rightly reminded us, although the patent agent can insure against that, there is the question of his professional integrity, and presumably the patent is then lost.

In addition to that, may I put one other point to the noble Lord. I understand from our last debate, and from discussing this matter outside the Chamber since, that the Patent Office used to issue reminders before the renewal fee was due, and then that practice was changed and reminders were sent out after the due date; in other words, during the grace period. Because so much depends upon not allowing a patent to lapse, we feel that it would be right for two reminders to be issued, one before the expiration of the six months' grace period and the other during the two months immediately following that period. We are not absolutely wedded to those two provisions. If those exact provisions for the sending out of reminders are not acceptable to the Government or to the Patent Office, of course we shall be perfectly ready to be guided as to how those two provisions could be changed. But what we on this side of the House feel is that, as a matter of principle, the issuing of reminders is a matter which should be written into the Bill.

Lord CAWLEY

My Lords, I think I should say something about the fact that these reminders are fairly costly, and I wonder how the Accountant-General would feel about the comptroller operating merely under an assurance given in Parliament. I should have thought it would be better to have it written either into the Act or into the rules, so that if the Accountant-General challenged what the comptroller was doing the comptroller could point to either the Act or the rules to show that he was doing something which he was obliged to do.

Lord ORAM

My Lords, if I may speak with the leave of the House, as I indicated earlier I am not anxious to advise the House to accept this Amendment. But I have listened with interest to the points that have been made by the noble Lords, Lord Lloyd and Lord Cawley, and, in particular, to the suggestion about the rules of the Patent Office having the force of law. It seems to me that that, at least, is a point worth looking at and, although we are towards the end of the consideration of this Bill in this House, there will be other opportunities at later stages. I am sure noble Lords will recognise that I am not giving an undertaking. All I am saying is that I believe that sufficient has been said by noble Lords opposite to warrant a closer look at this point, and I give that undertaking.

Lord LYELL

My Lords, as the noble Lord, Lord Oram, resumed his seat, I noted what I thought were noises of assent from these Benches. Certainly, I would not wish to upset the harmony of the discussion on this segment of the Bill. However, I think I remember that the noble Lord, Lord Oram, mentioned this point when we considered this Amendment earlier, and I believe that he made great play of the fact that he regarded these reminders as being a matter of administration. I take that point, and that may appear to be the case to the noble Lord and to the Patent Office. But as the noble Lord, Lord Lloyd, and my noble friend Lord Cawley pointed out, it is more than a matter of administration to a practitioner. Furthermore, as my noble friend Lord Belstead has pointed out, there is no indication whether the Patent Office will issue reminders, or in what form. I am confident that the Patent Office can keep in touch with the practitioners, the patent agents and industry by various formal and informal means. Nevertheless, I wonder whether the noble Lord, Lord Oram, might ponder over the point that there seems to me to be an element of liberty, not to say licence, in allowing the Patent Office freedom to alter the procedure whereby reminders or renewal notices are sent out.

The noble Lord, Lord Oram, mentioned that renewal reminders were sent out in the past. When I moved the Amendment at the Committee stage, I believe that the lay Members of the House, those of us who are not involved with patents as practitioners, were not aware that reminders were sent out. The noble Lord, Lord Oram, said that the Patent Office were prepared to send out reminders. We were very pleased and grateful to receive this information, but we received it only as a result of putting down an Amendment and fairly lengthy questioning in Committee. It is this possible obfuscation and clouding of the issue that we wish to avoid.

It is for that reason that we have put down this Amendment. However, we are receiving ever sweeter assurances from the noble Lord, Lord Oram. I think that the assurances he gave us at the last stage, particularly on this Amendment, have been more or less met. Nevertheless, the noble Lord has told us that he will look further into the matter and we hope that rules may be evolved whereby reminders can be issued. Above all, the practitioners, and possibly the lay Members of your Lordships' House and others who may be involved with patents in a less professional capacity than such advisers and practitioners as my noble friend Lord Cawley and the noble Lord, Lord Lloyd of Kilgerran, may have a greater knowledge of what is required. Certainly I do not wish to disturb the harmony, nor do I wish to provoke any further discussion, annoyance or trouble for the noble Lord, Lord Oram. For that reason, at this stage I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 24 [Patent not to be impugned for lack of unity]:

5.12 p.m.

Lord LYELL moved Amendment No. 32: Page 21, line 9, after ("patent") insert ("or to an amendment of a specification of a patent").

The noble Lord said: My Lords, I should like to speak to Amendments Nos. 32 and 34. They appear to follow on from our discussions and deliberations at the Committee stage, particularly when dealing with Clause 24 and the concept of the unity of a patent. At an earlier stage the noble Lord, Lord Oram, made the point very clearly that the Government accept our contention. The contention is that the Amendment of a specification in what are known as post-grant proceedings should not be allowed as grounds for revocation, on the basis that the original claims in the invention are to be taken as invalid. This aspect of revocation is spelled out very clearly in Clause 70, under the title "Revocation of patents". Where a specific claim is revoked on perfectly good, legal and valid grounds, it could be an example of a much broader inventive concept.

If the House will permit me to do so, may I carry on the possibly by now well-known example, so aptly used and explained by my noble friend Lord Belstead, of the new method of sticking a sole to the upper of a shoe. Not only will your Lordships soon be expert practitioners in the law of patents but some of us might be attempting to branch out into other areas of skill. This seems to be one example of an inventive concept whereby what I might call a soft and flexible covering is fixed or attached to a stiff or rigid base. If in times past a process was found to be equally useful and applicable to various other processes —let us suggest, even in fairly modern times, the attachment of window blinds to a roller or the attachment of a hood to the chassis and framework of a horseless carriage—but any one of the processes is found to be invalid (again on perfectly good grounds, as we found in Clause 70) and that in the revocation proceedings the patent is revoked, our understanding is that the broad, inventive concept would also be revoked. Once this common link has disappeared, the other examples would lose their validity as patents, on the ground that the unity of the concept had disappeared. Although I have made it as clear as I can, this may not be entirely clear; I have adapted an example to the best of my ability. Nevertheless, what concerns us is that we find that proceedings are taking place not necessarily over the revocation of the main patent but over the amendment of a patent.

At an earlier stage the noble Lord, Lord Oram, said that he hoped that the Government Amendments would cover the questions we had raised. Indeed, he made a very short and brief comment and said that he hoped that any Amendments he put down would cover our points. I think that Amendment No. 33, which stands in the name of the noble Lord, Lord Oram, meets our Amendment No. 34. However, we are not entirely satisfied that the point where proceedings are taking place in respect of an Amendment is covered by that same Amendment.

Let us consider again the examples I gave earlier of the hood of a carriage and the roller blind. We believe that these examples could come into the category of proceedings taking place where the amendment of a patent is under discussion. This could be the case when the shoe stitching had been perfectly fairly revoked and, consequently, the general concept. We take the point that the noble Lord's Amendment No. 33 covers our second Amendment, but we are not entirely convinced that the Amendment which has been put down by the noble Lord—possibly he thought that it covered both of the Amendments that we moved at an earlier stage and that we have put down today—covers the first Amendment. However, we look forward to hearing what the noble Lord has to say. For that reason, I beg to move Amendment No. 32.

Lord ORAM

My Lords, I can be quite brief in my reply to the noble Lord, Lord Lyell. Perhaps I need not follow him in his interesting dissertation on shoes, horseless carriages and other technologies of that kind. As the noble Lord said, I gave certain undertakings at the Committee stage. In relation to the Amendment which he has now moved, Amendment No. 32, I can say straight away that I fully agree and can advise the House to accept it. I noted also that the noble Lord recognised that my Amendment No. 33 to which he referred covers his Amendment No. 34, but he went on to say that the further points are not covered, presumably by his Amendment or by mine. Therefore, if the noble Lord will agree, I think the most satisfactory way of meeting this situation is for the House in due time to pass Amendments Nos. 32 and 33 and I will give an undertaking to read carefully what the noble Lord, Lord Lyell, said about the further point that he wants covered and I will take advice on it. Then if we feel that he has raised a point of importance we can arrange for it to be covered at a later stage.

Lord LYELL

My Lords, I should like to thank the noble Lord, Lord Oram, for having listened so carefully. He was most attentive as I attempted to go through the procedures and the technologies. I think several times the noble Lord mentioned Amendment No. 32 and I wonder whether he meant Amendment No. 34. The point I was making was that Amendment No. 33 met our Amendment No. 34. Probably the noble Lord thought I was making too much of a point in connection with Amendment No. 32, but I understood him to say that he would examine it further and that he felt I had made a valid point.

Lord ORAM

My Lords, I may have added to any confusion that was already there. I think the position is that there is nothing between us at all on Amendment No. 32, and we can accept that without any reservation. As I understand it, the noble Lord, Lord Lyell, recognises that Amendment No. 33 deals with the same matter as his Amendment No. 34 and he would find it satisfactory to accept Amendment No. 33 in place of Amendment No. 34, but there is a further point which he explained and which I have given an undertaking to look into and to take up at a later stage, if need be.

Lord LYELL

My Lords, I am grateful to the noble Lord, particularly for the fact that he finds there is nothing between us on Amendment No. 32, which was the point I was seeking to make.

On Question, Amendment agreed to.

5.22 p.m.

Lord ORAM moved Amendment No. 33: Page 21, line 11, after ("patent") insert (",as they stand or, as the case may be, as proposed to be amended,").

The noble Lord said: My Lords, I have already spoken to Amendment No. 33. I beg to move.

On Question, Amendment agreed to.

Clause 25 [General power to amend specification after grant]:

Lord ORAM moved Amendment No. 35: Page 21, line 33, leave out ("determine the question") and insert ("consider the opposition in deciding whether to grant the application").

The noble Lord said: My Lords, this is a small drafting change which makes it clear that the comptroller's function is to consider any opposition to the application to amend the patent specification when deciding whether or not to allow the amendment which is the subject of the application. I beg to move.

On Question, Amendment agreed to.

Clause 26 [Restoration of lapsed patents]:

Lord ORAM moved Amendment No. 36: Page 22, line 27, after ("force") insert ("but subject to section 23(4)(b) above").

The noble Lord said: My Lords, I spoke to this Amendment when we were dealing with Amendment No. 29. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 37:

Page 23, line 5, at end insert— ("(9) Subsections (5) to (7) above shall apply in relation to an act which would constitute the use of a patented invention for the services of the Crown if the patent had been in force as they apply in relation to an act which would constitute an infringement of the patent if it had been in force, and subsection (8) above shall apply accordingly to the disposal of a patented product in the exercise of a right conferred by subsection (6) above as applied by the foregoing provision.")

The noble Lord said: My Lords, Clause 26 provides that where a patent has lapsed it may be restored, but subject to the right of use by third parties set out in subsection (6). Further, subsection (8) protects from infringement a person claiming through anyone exercising a right of use under subsection (6). It is logical, therefore, that where use is made of an invention by the Crown in similar circumstances that use should not give rise to liability on the part of the Crown to make any payment to the proprietor of the patent if it is restored, and that a person claiming through the Crown should have the protection conferred by subsection (8). I beg to move.

On Question, Amendment agreed to.

Clause 27 [Surrender of patents]:

Lord ORAM moved Amendment No. 38: Page 23, line 16, at end insert ("and no right to compensation shall accrue for any use of the patented invention before that date for the services of the Crown.")

The noble Lord said: My Lords, subsection (3) of Clause 27 provides that where a patent is surrendered by the proprietor no action for infringement shall lie in respect of any act done before the date of notice of the surrender. This Amendment removes the liability of the Crown to make payments to the proprietor in respect of any Crown use before that date. I beg to move.

Lord LLOYD of KILGERRAN

My Lords, I hesitate to intervene, but there are now two clauses which we are considering and where Crown use has been specifically introduced. I do not remember these matters being raised at the Committee stage, although I may be wrong. I wonder why it is now necessary to introduce questions about Crown use. Have there been difficulties arising in this matter so that it is necessary to introduce these specific Amendments?

Lord ORAM

My Lords, if I may speak with the leave of the House, I think what the noble Lord, Lord Lloyd of Kilgerran, has said is true. These particular points were not discussed because Crown use arose at a later stage, but it has been discovered that these three provisions regarding Crown use to which the Amendments I have moved refer, are necessary to protect the Crown use in connection with infringement. I think when the noble Lord studies what has been said he will find that it is all in good order.

Lord LLOYD of KILGERRAN

My Lords, I am grateful to the noble Lord for that explanation. I will study what he has said when I receive Hansard tomorrow.

On Question, Amendment agreed to.

Lord STRABOLGI

My Lords, I think this may be a good moment to halt the Report stage of this Bill and to take other business, if that is to the convenience of your Lordships. Therefore I beg to move that further consideration on Report be postponed.

Moved accordingly, and, on Question, Motion agreed to.