PATENTS BILL [H.L.]

HL Deb 15 February 1977 vol 379 cc1402-91

3.6 p.m.

Lord ORAM

My Lords, I beg to move that the House do now resolve itself into Committee on this Bill.

Moved, that the House do now resolve itself into Committee.—(Lord Oram.)

On Question, Motion agreed to.

House in Committee accordingly.

[The Lord ABERDARE in the Chair.]

Clause 1 [Patentable inventions]:

Lord LYELL

We are now at the start of what I believe will be the most difficult stage of this very long and very complicated but, I hope, non-controversial Bill, and before I move the first Amendment I hope that it will be in order to make one or two brief preliminary comments.

The noble and learned Lord who normally sits upon the Woolsack pointed out, when he was concluding the Second Reading of the Bill, that it deals with a highly complex subject. He pointed put—and I think he was totally right—that the Bill requires consolidation with the 1949 Act, while at the same time attempting to harmonise our domestic law with European legislation. For this reason, we give our support to what I think the entire Committee will agree is a large number of Government Amendments.

We see these Amendments as a major attempt to put the Bill into its proper shape and form. We have worked through all these Amendments; we have gone through the Bill in its original form when we looked at it on Second Reading, and I think the whole Committee would agree that the Amendments which the Government have tabled in order to clarify and amend certain sectors of the Bill will of necessity reduce the speed at which we should like to see the Bill dealt with. I think this is inevitable because we shall have to take further advice and possibly proceed at a slower pace and ask for explanations from the Government. Nevertheless, the Committee would wish to dispose of the Bill speedily. We hope that many of the Amendments which we propose to move, and indeed which the Government and others will be moving, will be merely drafting Amendments. Many of our Amendments are to set the Bill out into an improved and, we hope, more understandable and legible form.

A valuable bonus for many of us on these Benches and elsewhere is that many of the Government Amendments meet a large proportion of our minor drafting and clarifying Amendments. This in itself will accelerate the work of the Committee. In those circumstances, let us hope that the Bill can pass speedily to another place.

Lord LYELL moved Amendment No. 1:

Page 1, line 18, leave out ("(among other things)").

The noble Lord said: The first Amendment stands in my name and in the names of my noble friends Lord Belstead and Lord Cawley. This Amendment seeks to remove some words from the Bill. We also hope that the Amendment will remove a certain amount of doubt and certainly some confusion, because the words which we seek to delete seem to us to be unnecessary and misleading, for two reasons.

The first reason why we believe these word as incorporated in the Bill seem to be misleading is that subsection (2) is designed to give some indication of things, and indeed inventions, which are not patentable. Yet when we look at Article 52 of the European Patent Convention this gives pari passu the same provisions as does Clause 1(2) of the Bill. In the European Patent Convention, Article 53 shows the exceptions which in our Bill are set out in subsections (3) and (4) of Clause 1. We believe that the two Articles of the European Patent Convention could have been put straight into our Bill as we have it today, for the reasons I raised at Second Reading. I seem to remember that at that stage we had a brief skirmish about the words "susceptible" and "capable". We are very grateful for some guidance from the noble Lord, Lord Alexander, who has great experience in clarity of expression, I was pleased to receive support from him.

The second reason why we believe that these particular words are misleading is that the Secretary of State already has power to vary the provisions of subsection (2) should he so wish. We find that he has these powers provided in subsection (5) on page 2. Taking these two reasons into account, would it not be that the Secretary of State would be able to prescribe different criteria, different exceptions, from those in Article 52? We see this to be the case, and if this is indeed so he will require to set out that these inconsistencies with Article 52 of the European Patent Convention do not apply to a European patent. This is the main reason why we seek some clarification on this point. It may appear trifling, but we think that these words are unnecessary and could give rise to some confusion. For that reason, I beg to move.

Lord ORAM

Before I deal with this Amendment, may I warmly thank the noble Lord, Lord Lyell, for the spirit of his introductory remarks; I think I agreed with every word he uttered. It is indeed a complex Bill, highly technical, and there are a great number of Government Amendments. I am glad he recognised that this was an assiduous attempt on our part to get the Bill into proper shape as early as possible. The noble Lord went on to say that this inevitably means slower progress. Well, of course, these Amendments will have to be explained. I take his point that this Bill is non-controversial; noble Lords on all sides of the House, as was shown at Second Reading, welcome it and want it to proceed to the Statute Book as soon as possible. When he says that a great number of the Amendments are drafting Amendments, I agree with that; there are also a great number of Amendments which are not purely drafting but are small points which I hope I and my noble friends will be able to deal with quite shortly. Therefore, it will not be necessary for us to take a lot of time in dealing with many of the Amendments.

If I may deal with Amendment No. 1, which the noble Lord has moved, I would recall that during the Second Reading he himself emphasised the importance of ensuring harmony between our laws and the European Patent Convention. He has drawn attention this afternoon to Articles of that Convention in support of the Amendments he has moved. I would suggest to him that he has it rather the wrong way round, because the words which this Amendment seeks to delete were included in Clause 1(2) for precisely that reason, to ensure harmony between our laws and those of the European Patent Convention.

The noble Lord referred to Article 52 of the Convention. I would point out that that Article states that the things listed—and I agree that they correspond as between the Convention and Clause 1 of this Bill—are in particular not to be regarded as inventions. I suggest that that makes it clear that the list is not exhaustive and that other things may also not be regarded as inventions. So the words which this Amendment seeks to delete are, I suggest, intended to have exactly the same effect as the words "in particular" in the Convention document. I therefore hope that the noble Lord, having heard that explanation, will not insist upon this Amendment.

3.16 p.m.

Lord LLOYD of KILGERRAN

In view of the large number of Amendments to this Bill put forward by the Government, perhaps I may be permitted to make a few general observations which may be of assistance to the Minister and the Government in processing this Bill more quickly, and to assure the Minister that there is no political aspect in relation to this Bill. We on these Benches will endeavour to assist him in whatever way possible to get it through. I well know the vast amount of work that has been done by men very experienced in patent matters since the publication of this Bill to try to improve it. I know of the work of the Chartered Institute of Patent Agents, the Senate of the Inns, the Law Society, and even the Institute of which I happen to be the President. In those circumstances I shall find myself very much in sympathy with the Amendments which are put forward by the Government to improve this Bill, and very much in sympathy with many of the Amendments being put forward by the noble Lords, Lord Belstead and Lord Lyell, in this Committee.

I should like to indicate that I shall be concerning myself largely with broad, basic Amendments attempting to clarify the position of the employee inventor, and also endeavouring to put forward Amendments which will assist the individual inventor and the small firm to reduce in many respects the cost of the operation of this Bill. I am sure that I shall receive the sympathy of many noble Lords in the attempt that we are sincerely making to reduce the cost to those classes of people who cannot afford the very expensive litigation that is usually associated with patents. I do this with some confidence because the noble and learned Lord the Lord Chancellor indicated to me that in view of my experience as a practitioner in this field it was up to me to put forward such suggestions; therefore, I hope at least to have his sympathy in putting them forward.

May I come very briefly to the Amendment moved by the noble Lord, Lord Lyell. I have listened with great attention to what the noble Lord, Lord Oram, has said, that the reason why the words the noble Lord, Lord Lyell, wishes to delete were put into the Bill was to harmonise the Bill with the European Patent Convention. To leave these few words in the Bill is likely to be misleading because the intention of this clause is to set out a code of those things that cannot be patented. I think that it would have been less misleading if the words were deleted, as is proposed in the Amendment in the name of the noble Lord, Lord Lyell.

Lord CAWLEY

This is an example of a peculiar feeling on the part of draftsmen that they have to alter wording because presumably the official translation of Article 52 uses the words, "in particular". Why on earth could not the draftsmen have included those words in the Bill?—because it immediately suggests that there was some good reason for changing the wording. It may be that "among other things" and "in particular" have exactly the same meaning, but there is certainly a suggestion that they do not.

Lord ORAM

I thank the noble Lord, Lord Lloyd of Kilgerran, for the tone of his introductory remarks. If we continue like this we shall make friends, if not progress. I also acknowledge that the noble Lord wrote to me and to the noble and learned Lord the Lord Chancellor indicating the main areas of his interest in this matter. That information has been of help to us in looking to our future work. I acknowledge, as he does, not only the work that has been done in this Chamber but the vast amount of work that has been done by all sides on drawing up the detailed Amendments. I am sure that we shall be able to reach the right consensus because, as he rightly said, there is no political significance in the vast number of Amendments that we shall deal with.

Nevertheless, the noble Lord gave some support to the view expressed by the noble Lord, Lord Lyell, as did the noble Lord, Lord Cawley. The noble Lord, Lord Cawley, reverted somewhat to the point that was raised in several quarters on Second Reading about the differing wording between the Bill and the European Convention. Although I agree that we do not want to have different words for different words' sake, I assure the noble Lord that that has not been the approach in drafting the Bill. We must bear in mind that although we are, so to speak, harmonising with the Convention, in particular we are legislating law for this country and therefore the wording must be exact in terms of what is required by the law of this country. I have no doubt that the draftsmen had this point in mind when choosing the particular words which are being criticised. Nevertheless, I have noted the points that have been made. I shall make inquiries. I do not thank that there is sufficient difference between us for us to make very much more of this matter—I hope not.

Lord LYELL

First, I should like to thank the noble Lords, Lord Oram and Lord Lloyd of Kilgerran, and my noble friend Lord Cawley for their support and for the interesting remarks that they have made on this Amendment. The noble Lord, Lord Oram, pointed out that in Article 52 there is mention of the two words, "in particular". I go some way to agreeing with him that these words seem to be restrictive. Yet I believe that the phrase "among other things"—the phrase we seek to delete—is too liberal and allows too wide a concept for inventiveness. Therefore, I wonder why we could not reach the mid-position? If we deleted these words, we would reach the middle position which would not be too restrictive—there may be grounds for believing, as the noble Lord, Lord Oram, has suggested, that we are indeed legislating for the United Kingdom—and we would remove this wide-ranging concept. We should like to reach the mid-position. Nevertheless, we are grateful to the noble Lord for saying that he will examine the matter and I hope we can resolve it. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

3.26 p.m.

Lord ORAM moved Amendment No. 2:

Page 2, line 4, leave out (" business; (f) a") and insert ("business, or a").

The noble Lord said: This Amendment arises from a point raised by the noble Earl, Lord Halsbury, during the Second Reading debate. It removes the phrase "a program for a computer" which is at present a separate item in those things which are excluded from patentability under Clause 1(2) and it includes it among the schemes, rules and methods mentioned in subsection 2(e). This is to ensure that computer programmes are construed together with other schemes and methods so that—and I think this was the noble Lord's point—the exclusion will bite only on so-called computer softwear and not on programmes which may be embodied in the hardwear. I see that the noble Lord is nodding his head. I hope that means that he agrees that we have met the point he raised. I beg to move.

The Earl of HALSBURY

I am obliged to the noble Lord, Lord Oram, for having studied what I said on Second Reading. I am very glad that the Amendment that he proposes gives effect to my remarks, in which case I shall support it. However, I take it that he has taken notice of Amendment No. 358 on page 43 of the Marshalled List which is in the names of my noble friend Lord Ironside and myself. In it we define a computer programme as meaning: One or more recorded symbols or signals representing a sequence of instructions which is capable of causing a computer to perform a useful function. I shall not anticipate things by withdrawing Amendment No. 358 because my noble friend Lord Ironside does not happen to be in the House at present and I have not consulted him upon it. If I support the Amendment in the name of the noble Lord, Lord Oram, I shall reserve my position on the definition contained in Amendment No. 358.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 3:

Page 2, line 25, after ("technology") insert ("and may prescribe different criteria for patents under this Act and European Patents (UK)").

The noble Lord said: This Amendment follows from the previous Amendment in my name. It seeks to include in subsection (5) some small provisions that will allow the Secretary of State not merely to use his powers by order to vary the provisions of subsection (2), but also to vary the criteria for United Kingdom patents as opposed to European patents which were granted for the United Kingdom. This may fly in the face of everything that I mentioned on Second Reading and indeed today as regards our wish to harmonise our patent laws with the laws and provisions of the European Patent Convention.

I understand that there is a possibility at this stage that something, indeed an invention, could in the future become patentable in the United Kingdom as a result of technology in this country. One example that has been suggested to me, as was mentioned in the last Amendment by the noble Lord, Lord Oram, and by the noble Earl, Lord Halsbury, is that of computer softwear. I think that the Committee will agree that the United Kingdom is in the forefront of research into computer programming and technology.

The Amendment is not necessary just for computer programming, but so that we allow the Secretary of State to take account of developments in technology in this country which may not have been reached in the Member States which have signed and agreed the European Patent Convention, or ratified it. We want to broaden his powers so that he may be allowed to vary the criteria for United Kingdom patents; and they may also be different from the criteria for European patents. When we were discussing the first Amendment in my name the noble Lord, Lord Oram, mentioned that in this Bill we were legislating for the United Kingdom. Would not this particular Amendment be doing that? I beg to move.

Lord ORAM

On the last Amendment the noble Earl, Lord Halsbury, asked us to make a sudden leap towards the end of the Bill, to Clause 118. I am just about to do the same thing in connection with this Amendment, and would ask the noble Lord, Lord Lyell, to realise that Clause 118(5) makes it clear that Clause 1, among other things, is to be equalled in its effect with the corresponding provisions of the European Patent Convention. It is therefore most unlikely that in practice the two systems will diverge. If any serious divergence occurs this will be dealt with not by acknowledging different standards of criteria which the noble Lord's Amendment would seek to establish, but by endeavouring to bring the two systems back into line. I therefore suggest that the Amendment is not necessary. Moreover, I believe it to be undesirable because it invites the Secretary of State to break the basic obligation of the European Patent Convention, that is to treat European patents in the same way as British patents. That is one of the basic principles. As the noble Lord acknowledged in his opening remarks, the policy of the Bill is to give effect to that obligation to bring the two systems into line. I think he will acknowledge that the Amendment that he has put forward does not help the Bill to do that; rather the reverse.

Lord LYELL

I take the noble Lord's point that the Amendment does not necessarily help the Bill. I would add as a rider that possibly it does not help it in a restrictive sense. All the Amendment is seeking to do is to allow the Secretary of State to take account of further technology so that, far from diverging forever, we could in this country declare that some particular concept or invention should be patentable, and we would then be able to discuss with the European Patent Office our reasons as to why we thought that concept or invention should be patentable.

The possibly rather narrow example I was quoting, and the possibly narrow concept I was considering, only regarded technology and a technological breakthrough which may, and we hope would, occur in this country but not in the other Member States which had signed and were members of the European Patent Convention. Nevertheless, I take the noble Lord's points. I think that they bear considerable merit. There is a great deal to be said for the fact that at this stage in the Bill we should not seek to give the Secretary of State power to diverge too much, particularly since the noble Lord, Lord Oram, referred me to Clause 118—although I did not see necessarily that Clause 118(5) precluded anything from the criteria. It was more restrictive. What I was seeking to put forward was that we should be allowed to fly an inviting kite, and to put it to the European Patent Convention that we might think this a useful kite to which we could attach patentability. I do not think that we should argue or discuss this at greater length now, and for that reason I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 1, as amended, agreed to.

Clause 2 [Novelty]:

The CHAIRMAN of COMMITTEES (Lord Aberdare)

I should point out that if Amendment No. 4 is agreed to I cannot call Amendment No. 5.

3.35 p.m.

Lord ORAM moved Amendment No. 4:

Page 2, line 30, leave out from ("art") to end of line 31.

The noble Lord said: With the leave of the Committee may I deal with Amendments Nos. 4, 6, and 7 together. As I shall make clear, Lord Lyell's Amendment No. 5 covers a similar point. Clause 2 defines the state of the art for the purposes of testing whether an invention is new as required by Clause 1(1)(a). The time at which the newness of the invention is to be tested is its priority date. Any matter entering the state of the art on or after that date is to be disregarded. The present drafting of the Bill makes no reference to this time. Amendments Nos. 6 and 7 bring into subsection (2) a time reference in relation to the invention being considered, and this makes such a reference unnecessary in subsection (1). Moreover, the new drafting follows more closely that of the European Patent Convention, and makes no change in effect.

As a consequence of these Amendments, it has been possible to avoid the use of the word "immediately", which I see from the noble Lord's Amendment concerns him, as it has concerned others, as being ambiguous and likely to cause undesired effects. Therefore, I hope that the Committee will agree to the three Amendments, and that the noble Lord, Lord Lyell, will recognise that consequently his proposed deletion of the word "immediately" will not be necessary. I beg to move.

On Question, Amendment agreed to.

3.38 p.m.

Lord ORAM moved Amendment No. 6:

Page 2, line 32, after ("art") insert ("in the case of an invention").

Lord DOUGLAS of BARLOCH

I should be grateful if my noble friend would explain the purpose of this Amendment. It seems to be totally superfluous.

Lord ORAM

I think not. It is necessary to make it clear that it is in relation to an invention that the state of the art is being defined. I think that my noble friend will accept that this has been carefully looked at, and that this phrase "in the case of an invention" ought to be inserted.

Lord DOUGLAS of BARLOCH

I am sorry; I do not follow it. This whole Bill deals with inventions. Surely we do not need to put words like this into it every now and then.

Lord ORAM

I am afraid it is necessary to put words in every now and then. It is true, of course, that the whole Bill is dealing with inventions, but when one examines the form of an application for a patent there are such sections as the disclosure of matter within which an invention has to be seen, there are sections where a specific claim is to be made, and there needs to be clear definition of the particular inventions in respect of which a claim is made. Therefore, I assure my noble friend, although I fully accept that these things are difficult to comprehend, that it is necessary to insert this word at this point.

The Earl of HALSBURY

Pursuing a little further the point made by the noble Lord, Lord Douglas of Barloch, may I ask the Minister to explain how the state of the art would differ in the case of an invention from what it would be in the case of something that was not an invention?

Lord ORAM

I said at the outset—and noble Lords agreed—that it was a highly technical matter. The state of the art is a description of the knowledge which exists when an application is made for a patent and it concerns the question whether or not the invention is new. The question of dates is very much involved in this matter. Thus, one has to be very careful, as we are careful here, to make sure that the definition of the state of the art is properly drafted.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 7:

Page 2, line 34, after ("has") insert ("at any time before the priority date of that invention").

On Question, Amendment agreed to.

3.43 p.m.

Lord BELSTEAD moved Amendment No. 8:

Page 2, line 37, after ("invention") insert ("to which an application for a patent or a patent relates (the application or patent in suit)").

The noble Lord said: In moving Amendment No. 8 I will, with the permission of the Committee, speak at the same time to Amendment No. 9. They are together designed to solve the following problem. Let us suppose that an inventor discovers a new way of joining the uppers of a pair of shoes to the soles and he describes the machinery necessary for doing this in a first patent application. Then, a few months later, the same inventor realises that the same basic principle can be used for attaching roller blinds to their rollers or canvas hoods to the roofs of cars and, in a second application, that same inventor includes a broader description of his invention as it applies to shoes, roller blinds and car hoods.

As I understand Clause 2, the claim in that second application will contain matter referring to shoes which has a priority date earlier than that of the invention, so the second application will have been anticipated and, by the provisions of Clause 3(2)(a) and (b), the application will be invalidated unless an Amendment to this subsection is made. It is for this reason that the Amendment to line 37, Amendment No. 8, has been tabled and the word "another" has been included at the beginning of the second Amendment, No. 9. As I hope the Government will accept, the effect of the first Amendment and the inclusion of the word "another" in the second Amendment is to ensure that when examining the second such application—the wider application which the inventor has put forward—for novelty, the examiner shall not take into account the publication of that application itself. My Amendment is also requiring the examiner to exclude from his examination any other applications which under Clause 5, because they contain that same matter, may claim the same priority date.

The second Amendment, which is quite long, also refers to Clause 12(4) and here the problem is a little different in that if an inventor puts forward a first application which contains two inventions, the applicant who is wanting to broaden his claims in the way I explained earlier may either file two second applications, both claiming the priority date of the first application, or choose to file a single second application with claims covering the broader inventions which he is now choosing to import into his second application.

If an inventor chooses the latter course, as I understand Clause 12(4) the examiner will require what I believe is called a divisional application and any such divided out application is also bound to contain matter which has already been disclosed. Therefore, the last part of my second Amendment also needs to provide that such divisional applications claiming the same earlier priority date should be excluded from the effect of Clause 2(3). I apologise for this rather lengthy explanation. I hope that the matter is clear and that the Government will accept the Amendment.

Lord ORAM

The noble Lord, Lord Belstead, did not make reference to what I think would be one other effect of Amendment No. 8; namely, to bring patents granted under the Patent Act 1949 within the ambit of Clause 2(3). He may not have had this principally in mind in tabling his Amendment, but it is, I am advised, one effect of his proposal and I will deal with that first. I am grateful to the noble Lord for drawing attention to the fact that there should be provision for dealing with conflicts between existing patents—that is, those granted under the existing Act—and applications made under; the Bill. This problem is not without difficulty, but fortunately it is not one that can exist for long and we feel that the best course is to deal with it in the transitional provisions of the Bill, and we propose to do that.

As the noble Lord indicated, the main purpose of his two Amendments deals with a different matter, that which I think is technically called "self collision" and that, as he rightly said, is much more difficult to grasp. As I understand it, it is intended to cope with the problem of self collision which might arise from the application of Clause 2(3) as it now stands. We recognise that there may be some problem but we believe that in most cases this can be avoided by the careful drafting of patent specifications and that, if it does arise, it can in many cases be resolved without much difficulty by appro- priate amendment of the patent specification. However, given that there may in some cases be a problem that the noble Lord is seeking to meet, in our view his Amendment goes too far in seeking to overcome it and could, if adopted, create an obscure and confusing situation which would be contrary to the general public interest. Indeed, the Amendment could result in a multiplicity of patents for the same or overlapping monopolies, since there would be no obvious way of preventing an applicant from pursuing to the point of grant several applications derived from the same first filing of an application.

As the noble Lord, Lord Lyell, made plain during the Second Reading debate—and I have referred to this previously—we need to ensure that the provisions of the Bill do not depart from the European Patent Convention, and the Government are very conscious of this, as the Lord Chancellor said in his opening speech on Second Reading. In our view, Clause 2(3) of the Bill gives effect to Articles 54(2) and (3) of the European Patent Convention. We can find nothing in the Convention which clearly and specifically excludes from consideration in this context certain other applications. The Amendment deliberately provides for such exclusions and, if we adopted it, we would be taking a definite step away from the terms of the Convention, and most certainly be running the risk of being found to be in breach of Convention obligations.

It is for these reasons that I fear that I must resist this Amendment, although I recognise that it points to a real problem and makes a real attempt to meet it. Therefore, I want to make it clear to noble Lords that I am very willing to discuss the difficulty which they have foreseen, and to see whether some other way around this difficulty can be found, without—I must stress this—offending against the terms of the Convention. I might add that the terms of the Convention result from very lengthy negotiations during which the problem of self-collision was much discussed. Therefore our approach to this has come only after a great deal of careful thought. I give the assurance that if the noble Lord agrees not to press the Amendment we can still look at the problem together. I think that no Amendment will be found to be necessary, but certainly we can look at the problem afresh.

Lord HARMAR-NICHOLLS

The noble Lord said that one of my noble friend's problems could be easily overcome—I think that was the term he used—by amending the original applications. If there is a time lag it is not very easy to get an original application amended. Is the noble Lord suggesting that under the new rules it will be easier to have an amendment accepted than it is at present, because if the position is as now it would not be as easy as the noble Lord seemed to imply in his reply to my noble friend.

Lord ORAM

I think that the word, "easy" which I used referred rather to the drafting, the drawing up, than to the procedure which is what I think the noble Lord is referring to. Of course, the Bill deals with opportunities of making amendment to the specifications, but my reference to "easy" was more in drafting terms.

Lord LLOYD of KILGERRAN

I hope that it will not be considered that I am being disrespectful if I say with the greatest respect that I had some difficulty in appreciating the arguments of the noble Lord, Lord Belstead, and the reply given in this matter by the noble Lord, Lord Oram. I appreciate the fact that the noble Lord, Lord Oram, is going to reconsider this position. I wonder whether he can say, either now or at a later date, whether the purpose of subsection (3) of the clause is to replace the prior claiming provisions of the present Act. The noble Lord referred to self-collision. That is a term with which I am not very familiar, but I am very familiar with the difficulties arising from the term "prior claiming" in practice in relation to patent applications.

Lord CAWLEY

The noble Lord suggested that applications under the 1949 Act might be brought in, but Clause 2(3) refers to application for a patent, and Clause 118 says: 'patent' means a patent under this Act; So presumably Clause 2(3) has nothing to do with applications under the 1949 Act.

Lord ORAM

I thank the noble Lord for drawing my attention to that point. I confess that it might be a point which has been overlooked. I will look into it and return to it, if need be. With regard to the intervention of the noble Lord, Lord Lloyd of Kilgerran, yes, he is right. This subsection brings in a new concept. The existing concept is that of prior claim. The new concept is of whole contents of the state of the art. It was this point that the Banks Committee dealt with at some length in, I think, chapter 10 of their report, where they had received evidence on these two philosophies (I think they call them this), and they came down quite firmly in a recommendation of the whole content philosophy, rather than the prior claim philosophy.

Lord BELSTEAD

I am grateful to the noble Lord for his reply, which I must admit was a great deal more illuminating than was my moving of the Amendment. As we go through this Committee stage I find myself trying to learn, and I certainly have no intention of pressing anything. I do not think that I have the temerity to do so. I wish to thank my noble friend Lord Cawley for what he pointed out, in relation to this Amendment, and with respect to the Government it does not have the effect of referring in any way to 1949 Act applications.

I was surprised that in his reply the noble Lord referred me to the European Convention. I should have thought that these two Amendments are necessary in order to conform with the EPC. My reading of the EPC is that the examiner in European patent cases may not hold that the publication of an application which he is examining is itself anticipatory, which I suppose is the meaning of self-collision. In the same way, the examiner in Europe must exclude any divided case or other case claiming the same priority. I base that upon my reading of Article 54(3), which corresponds with Clause 2(3) of the Bill. If one reads Article 54(3) in conjunction with Article 89 of the EPC, then so far as I can see it is provided that the examiner may look only at publications resulting from patent applications of which their dates of filing are prior to the date of filing of the application which he is examining.

In simple language the European patent examiner may therefore consider neither the publication of the specification which he is examining nor the publications of any divided out or other case which claims the same priority date for the same material and come up with the answer that there is novelty, and therefore that particular application must fall. I hesitate to say that I may be right and that the noble Lord may have overlooked something; but for the record that is the way I understand Article 54(3) of the EPC.

With regard to adding to the Amendment references to Clauses 5 and 12, I should be grateful if the noble Lord, in looking at these two Amendments again, would look at the inclusion which I have made of references to Clauses 5 and 12(4) to see whether they ought to be imported into the particular subsection we are talking about. If the noble Lord takes a different view from the one which he has given me on these two Amendments across the Committee, then perhaps between the Committee and the Report stages he will be able to communicate with me. With that I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

4 p.m.

Lord ORAM moved Amendment No. 10:

Page 3, line 3, leave out ("information or any other matter ") and insert ("an invention").

The noble Lord said: This is a purely clarifying Amendment to place it beyond doubt that it is disclosure of an invention which is to be disregarded if a later application is made for that invention in the circumstances set out in subsection (4). The present draft could possibly have included matter extraneous to the invention, but in practice the Amendment produces no change in effect, and the new drafting corresponds more closely to that of the EPC, and in practice does not provide any different effect. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 11:

Page 3, line 19, leave out ("or") and insert— ("(aa) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or other proprietor of the invention or from any other person to whom it was made available, or who obtained it, in confidence from either of them; or").

The noble Lord said: The present draft only covers cases where the disclosure was made possible by the matter having been obtained unlawfully or in breach of confidence at some stage. It fails to cover those cases where the disclosure is made in breach of confidence by a person who obtained the matter in confidence by a person who obtained the matter in confidence in the first place. It sounds a bit like the box within the box within the box, but I think that, if noble Lords read carefully what I have said, they will see the importance of this. The new draft would cover, for example, the case when an employee owned an invention and his employer, thinking that he was himself entitled, disclosed the invention in confidence to a third person who subsequently disclosed it to someone else in breach of that confidence. The present drafting does not cover that sort of case and we therefore regard this Amendment as necessary. I beg to move.

On Question, Amendment agreed to.

4.3 p.m.

Viscount ECCLES moved Amendment No. 12:

Page 3, line 26, at end insert— ("(c) the disclosure was effected by the inventor in a paper—

1. (i) presented as a thesis for the award of a degree or like qualification of a University or Polytechnic Institute; or
2. (ii) read before a learned society; or
3. (iii) published with his consent in the transactions of a learned society.").

The noble Viscount said: Before I come to the Amendment, may I just add one word to what my noble friend Lord Lyell and the noble Lord, Lord Lloyd of Kilgerran, have said about the 380 Amendments—and there will of course be more—which appear on the Marshalled List? It appears that there has been a great deal of consultation between the Government and various interested bodies since the Bill was read a second time. I suggest to the Government—and this was certainly the method used in days long ago when I sat on the other side both in this House and in the other place—that one should get this consultation over with before the Second Reading because what must have happened is that the Government have been persuaded by experts in this field to change the text of the Bill in a great number of places. They could have been persuaded to do that before the Second Reading and, had they done so, they would have produced a Bill which would have been much easier to get through the Committee stage. I believe that the consultation was absolutely right, but it was not taken at the right time.

Having said that, may I move to the Amendment? Section 51 of the 1949 Act which deals with previous communication, display or working, states in subsection (2): An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of… (d) the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society.

That provision granted a period of grace of six months to members of the academic community so far as their theses and other publications were concerned. At present, therefore, provided they apply for a patent within six months of producing the thesis or publishing the paper, that publication does not count as prior disclosure. My Amendment is intended simply to restore the benefit received by the academic community under the 1949 Act and to define it a little more carefully.

One must ask why this protection has been dropped between the 1949 Act and the present Bill. I do not understand why the Government take such a swipe at academic researchers because this was a very useful privilege in that it is not always easy to hold up the research one has done when one is being pressed to read papers by one's colleagues and various learned societies. It is very hard to have to wait until one has gone through the patent application procedure.

I have a second reason for moving the Amendment and here I must declare my interest as Chairman of the British Library. If the Amendment is not put into the Bill it will be very serious for the lending division of the British Library because it is almost certain that when the universities are deprived of this protection they will restrict the publication of theses for fear that it may hamper the getting of a patent. In that case, if the theses are not published, they will not be deposited with the lending division of the British Library, whereas we pride ourselves—and I think I can say that the whole world acknowledges—that we are very quick off the mark in making available to borrowers all over this country and outside the theses published by academic researchers. I cannot believe that the Government appreciate what an unfortunate thing it will be if they leave out what was Section 51(2)(d) of the 1949 Act. I beg to move.

Lord ORAM

May I first deal with the noble Viscount's introductory remarks about the consultations which have gone on and which I readily admit are continuing to go on? The noble Viscount explained that, from his experience, the normal case was that consultations took place fully before Second Reading, but I suggest to him that this is not quite as normal a case as that because, as has been admitted on all sides, it is a most complex, difficult and technical Bill with regard to which many experts take differing views on minutiae of drafting. It is not therefore possible to tidy up everything in the normal processes of consultation. I am sure that the noble Lord would agree that it is right that the consultations should continue and that the Government should take note of the points that come from the various bodies that have a point of view. That is the real reason why quite a number of drafting Amendments have had to be brought forward as they have.

Dealing with the Amendment, the noble Viscount took the somewhat harsh view that the Government were "taking a swipe" at academics. I assure him that there is no such intention. It is another case of our implementing our intention to conform to the European Patent Convention and the narrowing of protection to which he points arises from that. The generally accepted view is that it is not in the public interest or the interest of inventors to give any encouragement, by way of safeguards against prior disclosures, to the delayed filing of patent applications. They should be encouraged to put in the applications early rather than later. That point of view is reflected in the Strasbourg Convention of 1963 and in the European Patent Convention, which provides only limited safeguards; and it is these that are expressed in Clause 2(4) of the Bill. To go further, as the noble Viscount proposes, would involve a departure from the conventions and would lead to different standards being applied in the United Kingdom to European patents, on the one hand, and British patents, on the other, and during the Second Reading debate a number of noble Lords urged that this should be avoided.

Perhaps I should add that the rejection of this Amendment, which I recommend to your Lordships, does not really create hardship for the inventor, since he is always able to file an application for a nominal sum, and this will give him protection. I do not think that the point that the noble Viscount makes about the restricting effect on lending libraries is as serious as he suggests, because surely it would be possible for a library which wished to house and lend out a learned document to advise the inventor, the academic, that he can very easily gain protection if he files an application in the way that I have suggested. So I think that, on reflection, the noble Viscount will realise that, although there is some loss of protection, in a sense, compared with the earlier Act, it is not at all a serious one and does not bear comparison with our duty, our intention, to conform as closely as possible with the European Patent Convention.

The Earl of HALSBURY

I think the noble Viscount's sub-paragraph (i) has a rather different status from his sub-paragraphs (ii) and (iii), because the position of Ph.D. theses in a university library is somewhat ambiguous, and I think the situation ought to be clarified and that there ought to be a declaration that they do not constitute publication. Practice differs from one university to another, I understand, but very commonly Ph.D. theses are in the university library and are available to students and academic staff in that university, but are frequently not made accessible to members of the general public. Therefore, I think we ought to clarify the status of the Ph.D. thesis.

With regard to the other two points, when I was responsible for the affairs of the National Research Development Corporation I always told academic inventors that if they would send me a carbon copy of whatever they proposed to publish in an academic journal I would get it into the Patent Office long before they would get it accepted for publication. The problem was to get them patent minded. Therefore, I am rather with the noble Lord, Lord Oram, here, in saying that we should not liberalise things too much or they will go and miss the date on which they ought to have filed the application. What they ought to do is send a carbon copy round to a patent agent.

Viscount ECCLES

I am of course inclined to bow to what the noble Earl, Lord Halsbury, says, because he is a greater expert than I am. I can only say that the academic community asked us to put down this Amendment, so they must have some real feelings about it; and if they are right, then I think it is the sort of case where one ought to argue with the EEC and say, "We know something which is to the advantage of inventors which you apparently do not know." I do not see why we should give in every time. It happens many times in this Bill; there is another case coming in this clause, which I propose to raise on the Question, Whether the clause shall stand part? At any rate, it is not our business in the library to tell the author of an academic thesis whether or not he should apply for a patent. That is not what we are there to do. We are simply there to take the copy of his thesis and, when anybody asks for it, to make it available to that person. After listening to what has been said, I should like to refer back to the library and ask them their opinion, so for the time being I will ask for leave to withdraw my Amendment.

Amendment, by leave, withdrawn.

The DEPUTY CHAIRMAN of COMMITTEES (Baroness Wootton of Abinger)

I have to call the attention of the Committee to the fact that if Amendment No. 13 is agreed to I shall not be able to call Amendment No. 14.

Lord ORAM moved Amendment No. 13:

Page 3, line 33, leave out from ("art") to ("if") in line 35 and insert ("shall not prevent the invention from being taken to be new").

The noble Lord said: Perhaps I may speak to Amendments Nos. 13 and 15 together. The words deleted by these two Amendments are rendered unnecessary following Amendments Nos. 4, 6 and 7 to Clause 2, with which we were dealing earlier. The words inserted by Amendment No. 13 are intended to make quite clear the effect of the subsection; so these two Amendments are little more than drafting Amendments, I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 15:

Page 3, line 37, leave out ("at that time").

On Question, Amendment agreed to.

4.15 p.m.

On Question, Whether Clause 2, as amended, shall stand part of the Bill?

Viscount ECCLES

I should like to ask a question on paragraph (b) of subsection (4), which says: the disclosure was effected by the inventor displaying the invention at an international exhibition…". The phrase "international exhibition", as defined in Clause 118 on page 86, means an official or officially recognised international exhibition…". Why only at an international exhibition? Why could we not have this benefit given to an inventor if his invention is displayed at a registered or certified exhibition in this country? I cannot see why it should be confined to international exhibitions.

Lord ORAM

I think the answer would be, as the noble Viscount will recall from what I said when I was answering his Amendment, that one does not wish to extend protection too far. One does not wish to discourage the submission of early applications. Therefore, one has to draw the line more tightly, perhaps, than in other circumstances one would wish. That is why the definition is worded in the way to which the noble Viscount has drawn attention. But I take his point that there may be other important exhibitions which do not fall within this strict definition, so I will have a look at it and will write to the noble Viscount or raise it at a later stage. I think that that is about as far as I need go this afternoon.

Clause 2, as amended, agreed to.

Clause 3 [Inventive step]:

The DEPUTY CHAIRMAN of COMMITTEES

I should draw the attention of the Committee to the fact that if Amendment No. 16 is agreed to, I shall not be able to call Amendment No. 17.

Lord ORAM moved Amendment No. 16:

Page 3, line 40, leave out from ("which") to ("part") in line 41 and insert ("forms").

The noble Lord said: This Amendment is consequential upon the Amendments made to Clause 2(2). The Amendment deletes the reference to time in the clause and so removes the word "immediately", deletion of which was also proposed by the noble Lords, Lord Lyell and Lord Belstead, in the Amendments they tabled. I beg to move.

Lord BELSTEAD

As we have had the falling of Amendments to leave out the word "immediately" on about three successive occasions, I cannot resist asking the noble Lord what would have been the effect, if the word "immediately" had been left in.

Lord ORAM

I think that there would have been some ambiguity. There might have been too much stress put upon the word "immediately", whereas what is intended is that all the period beforehand should have been covered. There was some possibility—I do not put it very strongly—that ambiguity would arise. I assume that that kind of consideration was in the mind of the noble Lord when he put down his Amendment.

On Question, Amendment agreed to.

4.22 p.m.

The Earl of HALSBURY moved Amendment No. 18:

Page 3, line 43, at end insert— ("(2)(i) Any claim for a chemical process which involves a series of chemical reactions all of which are known to a person skilled in the art shall not be taken to involve an inventive step. (ii) For the purpose of determining what is deemed to be a reaction known to a person skilled in the art the Secretary of State shall appoint a Consultative Committee the members of which shall be nominated by—

• The Royal Society of London
• The Royal Society of Edinburgh
• The Royal Institute of Chemistry
• The Chemical Society
• The Society of Chemical Industry

and by any other body which he thinks appropriate. Such Committee shall have power to compile a list of such chemical reactions which list shall be published by the Patent Officer and be revised from time to time as the Secretary of State thinks fit.").

The noble Earl said: In moving the Amendment standing in my name I am implementing a promise that I made at Second Reading that I should try to draft something—which I have done with the help of a practitioner at the Patents Bar— to cover a situation which I regard as not entirely desirable and which occurs in the field of chemistry.

The law on patents is more or less coeval with mechanical engineering. Chemistry is perhaps a younger subject; it is a more abstract one, and it is not always easy to reconcile doctrines applicable in the field of mechanical engineering to those applicable in the field of chemistry. If you get a chemical patent your claims (which are a kind of barbed wire fence surrounding territory to which you propose to ban the entrance of anybody else) are divided into two kinds. One kind is called a product claim and the other a process claim. Product claims give you a monopoly of the manufacture (by any method), use and sale of a particular material for a purpose. You could get a product claim on butazolidine for the purpose of relieving gout or arresting the progress of the degeneration at the time of diagnosis, maintaining the patient in a more or less constant condition from that point on. Twenty years later that product claim would expire and anybody else would be free to distribute butazolidine for this purpose. But, in the meantime, your process claims which cover the way of manufacturing it, might have been extended by finding a better way of manufacturing. There is no objection to that if the better method of manufacture really produces something cheaper and it is available at a lower price.

These chemical processes may occur at a single stage and may have very much inventive merit. The person who first thought of combining propylene and ammonia together to form acrilo nitrile as the basis of the acrylics, or some of them, had a very original chemical mind. It was a great triumph. But many of these multi-stage syntheses involve the stringing together of chemical reactions, all of which are textbook stuff. There is the ghost of an old doctrine haunting the Patent Office that the course of a chemical reaction is unpredictable.

I have consulted the three other chemists in your Lordships' House: the noble Lord, Lord Todd, who is a chemist of the utmost distinction and a Nobel Prize Winner, as is the noble Lord, Lord Tedder; and I had hoped to see the noble Lord, Lord Wynne-Jones, in his place. They all applaud my intention; although the noble Lord, Lord Todd, has put me on notice, as it were, that the list of perfectly predictable chemical reactions would be so long that you would never come to the end of drawing it up. The noble Lord, Lord Tedder, too, praises my intention, but he agrees with Lord Todd that it would be a big job to list all the processes and he draws attention to the fact that there are textbooks containing lists of reactions that everybody ought to know and which therefore can be used for reference. Therefore, while I do not intend to press this Amendment, I hope that the comments that I shall elicit from the Front Bench will be helpful for forward thinking; and the fact that this debate will be almost certainly reported in the technical Press will enable other minds to be bent to the problem. I beg to move.

Lord ORAM

I recall listening with fascination to the noble Earl's speech on Second Reading in which he put forward the argument that he has set out again today. Not being by any means a chemist, I am not able to join in the discussion of chemical formulae but will deal rather with the second part of the Amendment to which, I am sorry to say, we take exception. I do not mean that in any offensive way; but we cannot accept it.

It would appear that in his Amendment the noble Earl is intending to give the Consultative Committee power to determine what might be considered obvious in the field of chemical processes. He referred to textbooks where these things are set out; therefore, it would be obvious. This would be quite contrary to the underlying philosophy of the Bill and of the European Patent Convention. Whether an invention involved an inventive step is a matter for the court and the comptroller, to be judged in the light of the state of the art. To substitute a Consultative Committee would usurp those functions in the chemical processes field and, in our view, there is no justification for treating chemical processes differently from other kinds of inventions. I do not think that the noble Earl would propose that they should be so treated; but it could lead on to similar suggestions in relation to many other fields of invention, and obviously that will be undesirable.

Furthermore, a number of difficulties would arise as to the processing of an application. Would it be possible to convene the committee, if necessary, in the time available to the applicant, and would its pronouncement be binding in any way on the court or on the comptroller in subsequent proceedings? No doubt, the noble Earl would reply that these would be consequential matters which could be taken care of; but for the other reasons that I have furnished, about the Bill being based on the court and the comptroller being the powers to make these decisions, I was glad to hear the noble Earl say that he was not proposing to press this Amendment.

Lord CAWLEY

I think I ought to say that I had a certain amount to do with the butazolidine patent, sometimes known as phenyl butazone. I must say that among all these chemical patents I have rarely found any emphasis put on the process. In nearly every case the product claim appears to be the main point of the patent. I should have thought that the cases where people tried to argue that the process had some novelty were very few and far between.

The Earl of HALSBURY

May I first thank the noble Lord, Lord Oram, for the courtesy of his reply, over which he had obviously taken a lot of trouble and which he gave at some length. I attach no particular importance to the format in which I put forward this Amendment. As I said, I am not going to press it. I thank the noble Lord, Lord Cawley, for giving his view. I saw the noble Lord, Lord Lloyd of Kilgerran, shaking his head when I defined a product claim. I hope that I have not misled the Committee. If so, some lawyer, possibly the noble Lord, Lord Cawley, will correct me. If there is no more to be said, then I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 3, as amended, agreed to.

Clause 4 agreed to.

Clause 5 [Priority date]:

4.30 p.m.

Lord ORAM moved Amendment No. 19:

Page 4, line 25, leave out first ("the") and insert ("an").

The noble Lord said: In moving this Amendment, I should like to speak to Amendment No. 22 and also Amendment No. 20 which is in the names of the noble Lords, Lord Lyell and Lord Belstead. The present draft of Clause 5(2) could be taken to imply that an application for a patent can relate to only one invention. Amendments Nos. 19 and 22 avoid this implication and, together with Amendment No. 20, make it clear that each invention may be accorded its own priority date. I beg to move.

On Question, Amendment agreed to.

The DEPUTY CHAIRMAN of COMMITTEES (Baroness Wootton of Abinger): Amendment No. 20 is a duplicate of Amendment No. 19 and will not be called.

Lord BELSTEAD moved Amendment No. 21:

Page 4, line 25, after ("which") insert ("a claim in")

The noble Lord said: I should not have thought that the Government Amendment to insert the word "an", to which we have agreed, goes far enough. The effect of this Amendment is to make it clear that an invention depends upon a claim of a specification in an application and that therefore each claim in an application may have a different priority date. I think that is the purpose of subsection 2 (a) and I hope that the Government agree that the wording of this Amendment clears the matter up completely by clarifying the text. I beg to move.

Lord ORAM

I understand the point that the noble Lord, Lord Belstead, makes. I assure him that the Amendment is unnecessary in view of Clause 114. That clause defines an invention in terms of the claims. To speak of an invention to which a claim relates—which would be the effect of the noble Lord's Amendment—would result in a circularity of drafting, and cast doubt on the meaning of Clause 114 and on the meaning of the word "invention" in the Amendment we are now considering. If he looks at Clause 114, the noble Lord will find that his point is covered and that his Amendment is therefore not necessary.

Lord BELSTEAD

I am grateful to the noble Lord for helping me. It was precisely because Clause 114, dealing with the extent of an invention, says that an invention is that which is specified in a claim or claims contained in a specification in an application that I put down this Amendment. It seemed to me that because Clause 114 said that, it was necessary to further clarify the text here. If the noble Lord is telling me that by so doing I am going in a circle, I will take his advice. I will look at what he has said, and I now withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord ORAM moved Amendment No. 22:

Page 4, line 27, leave out second ("the") and insert ("that").

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 24:

Page 4, line 41, leave out ("of which the second") and insert ("filed in or in respect of the same country as each other by the same applicant as in the case of the application in suit or a predecessor-in-title of his and the second of those relevant applications").

The noble Lord said: With this Amendment I should also like to speak to Amendments Nos. 24, 26, 27 and 29. These Amendments, taken together, clarify the situation dealt with in Clause 5(3), where the invention or other matter is disclosed in two earlier "relevant applications" of which the second "relevant application" is specified in the declaration of priority referred to in subsection (2). In this case, certain conditions are to be satisfied, these being laid in the Industrial Property (Paris) Convention. Subsection (3) does not at present include all of the conditions specified in that Convention and the Amendments add those further conditions. I think that makes the main intention of my Amendments clear, and I hope that the Committee will accept them. I beg to move.

Lord BELSTEAD

My Lords, our Amendment No. 23—which we have not; moved—and Amendments Nos. 25 and 28 were tabled by my noble friends and myself in order to bring this Part of the Bill in line with the wording of the Paris Convention. It is my understanding that the Amendment which the noble Lord is now moving will also do that. Therefore we shall not be moving those Amendments.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 26:

Page 4, line 44, leave out ("before") and insert ("not later than").

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 27:

Page 4, line 45, leave out ("refused, without") and insert ("abondoned or refused, without—(a)").

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 29:

Page 5, line 2, leave out (" and without") and insert— ("(b) leaving any rights outstanding; and (c)").

On Question, Amendment agreed to.

Lord CAWLEY moved Amendment No. 30:

Page 5, line 4, at end insert— ("( ) Where an invention, as claimed in a claim, is not supported by matter disclosed in an earlier relevant application, but includes within its scope an invention which is so supported, the claim may be notionally divided for the purpose of allocating priority dates into as many sub-claims as may be necessary, provided that each sub-claim is narrower in scope than the claim from which it was divided, and the invention of each sub-claim shall have its own priority date.").

The noble Lord said: Under the present Act, each claim can have only one priority date. It is provided by the European Patent Convention, Article 88(2), that where appropriate multiple priorities may be claimed for any one claim. But this Bill gives no mechanism for doing this. With the permission of the Committee I would also refer to the Amendment to Clauses 114. It is suggested that this mechanism should be inserted in order to allow for more than one priority to each claim. The two Amendments are intended to secure this. I beg to move.

Lord ORAM

I regret that I cannot advise the Committee to accept the Amendment. We consider the Amendment to be misconceived in that it is based upon the concept of allotting priority dates to claims as under the present Act. The noble Lord, Lord Cawley, referred to that. Under the Bill, priority is allotted to an invention, and however many separate, but specified, inventions there may be in a claim, each will attract its own priority date. Where an applicant sees fit to claim an invention generically in broad terms, then that generic invention will be allotted its own single priority date. Any separate, more specific inventions falling within that generic group should be claimed separately, either as specific alternatives in a single claim or each the subject of a separate claim. We also believe that the concept of notional sub-division is vague and that the Amendment would tend to mislead the public since, although expressed in broad terms, the claim might only give protection back to the priority date for an invention expressed in much narrower, but unspecified, terms.

To adopt the Amendment would probably also affect the present practice, which it is intended should continue, of including in a specification a number of claims of progressively narrower scope. In our view, it is vital that this practice should continue unchanged so that third parties may know exactly what the patent protects. With that explanation, I hope that the noble Lord will see his way to withdrawing the Amendment.

Lord CAWLEY

I will, of course, consider with great care what the noble Lord has said. Certainly at this stage I have no desire to press the matter to a Division. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

4.41 p.m.

Lord ORAM moved Amendment No. 31:

Page 5, leave out lines 8 and 9.

The noble Lord said: This is a drafting Amendment. Subsection (4) defines "relevant application" for priority purposes. There is, however, no need to refer to applications for a European patent in subsection (4)(b) or an international application in subsection (4)(c), since those which designate the United Kingdom are included in subsection (4)(a) by virtue of Clauses 74 and 83 respectively, while those which do not designate the United Kingdom are already covered by subsection (4)(d). Therefore, lines 8 and 9 are considered unnecessary.

Lord BELSTEAD

May I just ask the noble Lord one question? This is a little difficult to follow, and I regret to say that I was not listening to him when he started. Where in fact are paragraphs (b) and (c) reproduced in the Bill if they are taken out here?

Lord ORAM

The noble Lord would need to refer to Clauses 74 and 83, which have the effect of including paragraph (b) in an application for a European patent under paragraph (a). If the noble Lord reads what I have just said and what I said in my opening remarks, I think he will find that paragraphs (b) and (c) are adequately covered.

Lord BELSTEAD

I am most grateful to the noble Lord.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 32:

Page 5, line 10, after ("in") insert (or for").

The noble Lord said: I beg to move Amendment No. 32. This is another drafting Amendment, intended to make it quite clear that subsection (4)(d) includes within its scope applications made in accordance with regional patent treaties such as the Patent Co-operation Treaty and the European Patent Convention and which designate Convention countries, as well as applications actually made in a Convention country. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 33:

Page 5, line 15, leave out ("Act") and insert ("section").

The noble Lord said: I beg to move Amendment No. 33. This again is a drafting Amendment, enabling a change to be made which makes it clear that the provisions of Clause 5(5) are applicable only for the purpose of claiming priority under Clause 5. I beg to move.

Lord BELSTEAD

Surely the word should be "subsection"?

Lord ORAM

Off the cuff, I am not able to react to that. I think it would seem to be "section" but I will look at it and, if necessary, bring the matter forward at a later stage.

On Question, Amendment agreed to.

Clause 5, as amended, agreed to.

Clause 6 [Right to apply for and obtain a patent]:

The SOLICITOR-GENERAL for SCOTLAND (Lord McCluskey) moved Amendment No. 34:

Page 5, line 23, leave out from ("granted") to end of line 26 and insert— ("(a) primarily to the inventor or joint inventors; (b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; (c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.")

The noble and learned Lord said: This is a purely drafting Amendment. The Amendment makes no material change in the intended effect of Clause 6. The purpose is to indicate how persons may become entitled to a patent. This Amendment clarifies that intention perhaps rather better than the original draft, with a view to facilitating the practical implementation of the subsection. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 35:

Page 5, line 28, leave out ("subject to subsection (4) below").

The noble and learned Lord said: With your Lordships' permission, I should like to speak to Amendments Nos. 35 and 36 together. Clause 6(4) was intended to deal with a situation where two or more persons devised an invention independently of each other. It did so by providing that the inventor, for the purpose of the Bill, would be taken to be the person whose published application had the earliest priority date, unless the contrary were established under the Bill, for example, under Clause 7. The effect of subsection (4) is, however, already catered for by Clause 2, which provides that the later application will be defeated by one with an earlier priority date. Clause 6(4) is therefore unnecessary, and Amendment No. 36 proposes its deletion. Amendment No. 35 is consequential upon such deletion. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 36:

Page 5, line 30, leave out subsection (4).

On Question, Amendment agreed to.

4.47 p.m.

Lord McCLUSKEY moved Amendment No. 37:

Page 6, line 3, leave out from ("person") to ("and") in line 4 and insert ("who is entitled under subsection (2) above to be granted a patent").

The noble and learned Lord said: By leave, I should like to speak to Amendments Nos. 37 and 38 together. These are, again, purely drafting Amendments. Clause 6(1) states that anyone may apply for a patent, while subsection (2) defines who is entitled to be granted a patent. Subsection (5) creates a presumption that the applicant is the person entitled, unless the contrary is established. The Amendment makes no difference to the intended effect of subsection (5). I beg to move.

On Question, Amendment agreed to.

The DEPUTY CHAIRMAN of COMMITTEES (Baroness Wootton of Abinger)

Amendment No. 38 is misprinted. It should read: "Page 6, line 5".

Lord McCLUSKEY moved Amendment No. 38:

Page 6, line 5, leave out from ("persons") to end of line 6 and insert ("so entitled").

The noble and learned Lord said: I beg to move Amendment No. 38, in relation to page 6, line 5.

On Question, Amendment agreed to.

Clause 6, as amended, agreed to.

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

The DEPUTY CHAIRMAN of COMMITTEES: If Amendment No. 39 is agreed to I shall be unable to call Amendment No. 40.

4.49 p.m.

Lord McCLUSKEY moved Amendment No. 39:

Page 6, line 11, leave out from ("granted") to ("patent") in line 12 and insert (" (alone or with any other persons) a patent for that invention or has or would have any right in or under any patent so granted or any application for such a").

The noble and learned Lord said: Mention has been made of Amendment No. 40. Amendment No. 39, which I now beg to move, accepts in principle Amendment No. 40 standing in the name of the noble Lord, Lord Lyell. This Amendment, No. 39, is intended to make the Bill clearer and to pave the way for later Amendments to the clause. The substantive changes are as follows. First, the words in parentheses at the beginning of the Amendment make it clear that the comptroller can deal with questions involving joint inventors and applicants under subsection (1)(a), which concerns entitlement, as well as under subsection (1)(b), which is to do with whether a joint applicant should be able to deal with his share despite opposition from his co-owners. Secondly, the addition of the words "or would have" makes clear that the comptroller can deal with questions involving rights which would arise only on his determination or on the grant of a patent. It is the second point, of course, which accepts Amendment No. 40 in principle. I beg to move.

Lord LYELL

If I may speak to this Amendment in so far as it covers Amendment No. 40, may I say that I am very grateful for the clear way in which the noble and learned Lord, Lord McCluskey, has explained how the Government see the essence of Amendment No. 40, and I am very grateful for what they have done.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 41:

Page 6, line 14, after ("patent") insert ("for that invention").

The noble and learned Lord said: This is a purely drafting Amendment. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 42:

Page 6, line 23, leave out from ("before") to the third ("the") in line 24 and insert ("the reference is disposed of by the comptroller")

The noble and learned Lord said: Once again this can be described as a drafting Amendment. As the clause stood, the comptroller had power to order that the application proceed in the names of different applicants, or to refuse the application and allow a new application to be made notwithstanding that the application had already been withdrawn or refused provided that it had been published. It remains the intention that a new application should be allowed in such circumstances and later Amendments deal with this point, but it is clearly impossible to allow an application which no longer exists to proceed in different names. Accordingly, the Amendment provides that the orders listed in subsection (2) may be exercised only when there is a subsisting application. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 43:

Page 6, line 38, leave out from beginning to end of line 2 on page 7 and insert— ("(d) make any order transferring or granting any licence or other right in or under the application and give directions to any person for carrying out the provisions of any such order. (3) Where a question is referred to the comptroller under subsection (1)(a) above and—

1. (a) the comptroller orders an application for a patent for the invention to which the question relates to be so amended;
2. (b) any such application is refused under subsection (2)(c) above before the comptroller has disposed of the reference (whether the reference was made before or after the publication of the application); or
3. (c) any such application is refused under any other provision of this Act or is withdrawn before the comptroller has disposed of the reference, but after the publication of the application.").

The noble and learned Lord said: Once again this Government Amendment can, I think, be dealt with quite shortly. It adds a new paragraph (d) to subsection (2) and substitutes new conditions for the powers exercisable under subsection (3). Under the new paragraph (d) the comptroller is given power to make orders concerning licences and other rights in or under the application. This power is needed to give effect to the comptroller's determination of questions referred to him under subsection (1)(a), which may include questions under subsection (5) of the new clause, and which I hope to move into the Bill after Clause 9. That is the one to which Amendment No. 56 relates. I think that that may be sufficient explanation for your Lordships, but I can clarify the matter further if required.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 44:

Page 7, line 7, at end insert ("subject in either case to section (Amendments of applications and patents not to include added matter) below,")

The noble and learned Lord said: May I make clear what is proposed here, so that your Lordships will not let me away with this unwarily. This Amendment is allied with Amendments Nos. 47, 68, 73, 81, 82, 83, 107, 108, 274, 286 and 289. I hope that we shall be able to dispose of all these fairly swiftly. The position here is that in several clauses, being the clauses that I have mentioned, there are prohibitions on amendments, which add matter to patent specifications. It is intended to deal with these comprehensively in one new clause, and the Amendments to Clause 7 and all the other clauses that I have mentioned are consequential upon this. The Amendment which I hope to move, which would bring in the new clause, is Amendment No. 295. I do not propose at this stage to speak to Amendment No. 295, but, as your Lordships will see, that is the general clause which takes over from all these words in the individual clauses, and I should make it plain that if that clause were rejected the Government would, of course, move Amendments on Report with a view to restoring the original wording, which would then become necessary. So, for the moment, I beg simply to move Amendment No. 44.

Lord BELSTEAD

I wonder whether I may just ask the noble and learned Lord about the wording of the new clause, which is Amendment No. 295, and which is referred to by Amendment No. 44. Article 100 of the European Patent Convention provides that one of the grounds for opposing a patent is that, …the subject matter of the European patent extends beyond the content of the application as filed. What I am asking the Government is: why does not the wording in Amendment No. 295 harmonise with the wording of Article 100 of the European Patent Convention? Why does not Amendment No. 295 provide that, No amendment of an application or the specification of a patent shall be allowed under any of the provisions of this Act to which this section applies if it— (a) results in the application or specification disclosing subject matter which extends beyond that disclosed in the content of any relevant application as filed"? It seems to me that if that wording was chosen by the Government, this new clause would exactly correspond with Article 100 of the European Patent Convention, and I should be grateful if the noble and learned Lord could explain to me why it does not do so.

Lord McCLUSKEY

Perhaps I may be allowed to deal with that specifically when we come to Amendment No. 295. At the moment, I would say only this—and this is general in relation to the Conventions and the Act—that the Conventions are drafted, as your Lordships will be aware, on what is known as an indicative basis. The drafting is not intended to be as precise as the drafting that Parliamentary draftsmen adopt when drafting Statutes of the United Kingdom. I can say only that that accounts for some differences in the wording. There is a desire for a precision in language in United Kingdom Statutes that is not universally shared, even around the rest of the civilised world, and that sometimes accounts for differences. I will attempt to give a more specific answer when I come to Amendment No. 295, if I am allowed to do so.

Lord BELSTEAD

I am grateful to the noble and learned Lord, but I must press him to give an answer a little before that. As he has pointed out, this arises again on Amendments Nos. 73 and 81, and on Amendment No. 84 to write in the words "subject-matter beyond the content of". The reason why I have gone ahead like this is that I submit to the noble and learned Lord that, if his Amendment No. 83 succeeds, I shall not have the chance of moving Amendment No. 84. Therefore, between now and that point on the Marshalled List, I should like to ask him this question again, and perhaps in the intervening time it might be possible for further information to reach him.

Lord McCLUSKEY

Perhaps I may publicly, within earshot of those in the Box, indicate to the noble Lord that I will try to get a precise answer when I deal with Amendments Nos. 81, 82 and 83.

Lord BELSTEAD

I am most grateful.

On Question, Amendment agreed to.

5 p.m.

Lord LYELL moved Amendment No. 45:

Page 7, line 10, at end insert ("and, if the earlier application had been published, the new application shall be treated as if it had been published on the date on which the earlier application was published.").

The noble Lord said: This Amendment relates to Clause 7. In the clause that we have in front of us today, thankfully unamended, we can see that the text of subsection (2) contains these words in lines 22 and 23: unless the application is refused or withdrawn before its publication". However, if we take these words as they appear in the Bill, it seems that the clause deals with cases where published applications may well be the subject of litigation or dispute and where all this is to be settled, we hope, by the comptroller. It seems that all the provisions of the clause are applicable to such published applications. If this is the intention of the Bill, could not the Amendment that we have put down on the Marshalled List be thought to improve the original drafting of the Bill? Also, is there not a chance that where an application is amended and has to be resubmitted, its priority date could be defeated by the published application of an earlier priority? This would seem to be unreasonable in a case where an amendment had to be resubmitted and should get the earlier priority date, yet would be defeated by an application which had been published subsequent to the earlier priority date. If our Amendment were to be added at the end of line 10, we are wondering whether this particular problem, with publication of an application, would be removed. This is purely in the form of a probing Amendment to find out whether we can obtain any information from the noble and learned Lord. I beg to move.

Lord McCLUSKEY

This Amendment, and our response to it, perhaps exemplify the Government's open-mindedness in relation to the helpful observations that have come from your Lordships. My instructions, if I may put it that way, were to resist the Amendment. However, having looked at the matter more closely, we appreciate that there is a point here, for which we are greatly indebted to the noble Lord. The Government would like to consider the matter further. We do not wish to accept the Amendment in its present form. Although these are early days on the matter, having come to a view on this just an hour or two ago, we think that further consideration might produce a more exact result. In the light of this open-mindedness on my part, I hope that the noble Lord might be persuaded not to press the Amendment at this stage. We accept it in principle.

Lord LYELL

I was somewhat startled to receive this reply, having noted the noble and learned Lord's face while I was attempting to explain the complications. Therefore I am gratified that the noble and learned Lord feels that there might be a point to consider. It is abstruse, but certainly we appreciate the kind words that he has used in relation to this Amendment. In view of what the noble and learned Lord has said, we shall be happy to withdraw the Amendment at this stage and will look forward to whatever developments may take place at a later stage. With that, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord McCLUSKEY moved Amendment No. 46:

Page 7, line 13, leave out from ("contain") to end of line 29 and insert ("directions to any person for transferring or granting any right in or under the application.

(5) If any person to whom directions have been given under subsection (2)(d) or (4) above fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the comptroller may on application made to him by any person in whose favour or on whose reference the directions were given authorise him to do that thing on behalf of the person to whom the directions were given.

(6) Where on a reference under this section it is alleged that, by virtue of any transaction, instrument or event relating to an invention or an application for a patent, any person other than the inventor or the applicant for the patent has become entitled to be granted (whether alone or with any other persons) a patent for the invention or has or would have any right in or under any patent so granted or any application for any such patent, an order shall not be made under subsection (2)(a), (b) or (d) above on the reference unless notice of the reference is given to the applicant and any such person, except any of them who is a party to the reference.").

The noble and learned Lord said: This Amendment covers several points, the purpose of which again is to make the Bill more readily comprehensible at this point. They are purely matters of drafting and do not involve matters of substance. Also there is a change to the new subsection (5) which replaces the old subsection (5). This makes it easier for a party in whose favour the comptroller has made an order under the subsection to obtain enforcement of it. Instead of having first to require the other party to comply, he will have to wait only 14 days and can then ask the comptroller to authorise him—that is to say, the successful party—to do whatever the unsuccessful party has been ordered to do but has not done. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 47:

Page 7, line 30, leave out subsection (7).

The noble and learned Lord said: Noble Lords will recall that Amendment No. 47 was one of the long list of Amendments which I mentioned when moving Amendment No. 44. Therefore I beg to move formally Amendment No. 47.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 48:

Page 7, line 36, after ("and") insert (", 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 noble and learned Lord said: Clause 7(8) is analogous to the proviso to Section 56(1) of the 1949 Act, in that it enables the comptroller to decline to deal with disputes which could more properly be dealt with by the court. The proviso to Section 56(1), however, did not specifically confer jurisdiction upon the court, since it clearly had an inherent jurisdiction to do so. Since Clause 7 deals with a wider variety of disputes than does Section 56 of the 1949 Act, it was thought advisable to specify that upon the comptroller declining to deal with the case the court had jurisdiction to do so. This, however, could conceivably throw doubt upon the inherent jurisdiction already possessed by the court. The purpose and effect of the Amendment is simply to make it clear that such inherent jurisdiction does exist and will remain. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 49:

Page 7, line 41, leave out ("Subject to section 76 below").

The noble and learned Lord said: Again this is a formal Amendment and, with your Lordships' leave, I will discuss Amendment No. 50 with it. These Amendments are to make clear that Clause 7 is affected only by Clause 76 in so far as European patents and applications for such patents are concerned. That is the purpose of Amendment No. 49 and also of Amendment No. 50. I beg to move Amendment No. 49.

On Question, Amendment agreed to.

The DEPUTY CHAIRMAN of COMMITTEES (Lord Douglas of Barloch)

I am informed that there is a slight printing error in Amendment No. 50 and that the second line should read: an application for any such patent ". The word "any" has been left out.

Lord McCLUSKEY moved Amendment No. 50:

Page 8, line 11, at end add ("and this section, in its application to a European patent and an application for such patent, shall have effect subject to section 76 below.").

The noble and learned Lord said: I am obliged to the Deputy Chairman of Committees. I acknowledge that the error may be treated as a printing error and that the wording in the second line should read: an application for any such patent". I beg to move Amendment No. 50 with that typographical error corrected.

On Question, Amendment, as corrected, agreed to.

Clause 7, as amended, agreed to.

Clause 8 [Determination after grant of questions referred before grant]:

5.10 p.m.

Lord McCLUSKEY moved Amendment No. 51:

Page 8, line 12, after ("question") insert ("with respect to a patent or application").

The noble and learned Lord said: Amendment No. 51 should be considered along with Amendment No. 52. They are both Amendments of a purely drafting character, the object of which is to make it clear that the ambit of Clause 8 is confined to United Kingdom applications. I beg to move Amendment No. 51.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 52:

Page 8, line 14, leave out from ("for") to end and insert ("the patent").

On Question, Amendment agreed to.

Clause 8, as amended, agreed to.

Clause 9 [Handling of application by joint applicants]:

Lord McCLUSKEY moved Amendment No. 53:

Page 8, line 21, leave out subsection (1).

The noble and learned Lord said: With the leave of the Committee, I should like to speak to Amendments Nos. 53 and 54 together. Clause 9(1) derives from Section 17(4) of the 1949 Act, but the case with which it deals is now fully covered by Clause 28(4) and the new clause to cover Scotland which is to be dealt with in Amendment No. 130, and so there is no need to retain it. The Amendment to line 32 is consequential on the deletion of subsection (1), so I will move that formally when I come to it. In the meantime, I beg to move Amendment No. 53.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 54:

Page 8, line 32, leave out ("any such") and insert ("a").

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 55:

Page 8, line 34, leave out from ("may") to ("by") in line 35 and insert ("on a request made").

The noble and learned Lord said: This is purely a drafting Amendment to simplify the matter and to avoid possible confusion which may arise from using the word "application" in two different senses in the same subsection, so the word "request" has been inserted in place of the word "application" on the second occasion. I beg to move.

On Question, Amendment agreed to.

Clause 9, as amended, agreed to.

Lord McCLUSKEY moved Amendment No. 56: After Clause 9, insert the following new clause: Effect of transfer of application under s. 7 or 9.

1. .—(1) Where an order is made or directions are given under section 7 or 9 above that an application for a patent shall proceed in the name of one or some of the original applicants (whether or not it is also to proceed in the name of some other person), any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under either of those sections, continue in force and be treated as granted by the persons in whose name the application is to proceed.
2. (2) Where any such order is made or directions are given that an application for a patent shall proceed in the name of one or more persons none of whom was an original applicant (on the ground that the original applicant or applicants was or were not entitled to be granted the patent) any licences or other rights in or under the application shall, subject to the provisions of the order and any directions under section 7 or 9 above and subject to subsection (3) below, lapse on the registration of that person as the applicant or, where the application has not been published, on the making of the order.
3. (3) If before registration of a reference under section 7 above resulting in the making of any order mentioned in subsection (2) above—
   1. (a) the original applicant or any of the applicants, acting in good faith, worked the invention in question in the United Kingdom or made effective and serious preparations to do so; or
   2. (b) a licensee of the application, acting in good faith, worked the invention in the 1447 United Kingdom or made effective and serious preparations to do so;
   that or those original applicant or applicants or the licensee shall, on making a request within the prescribed period to the person in whose name the application is to proceed, be entitled to be granted a licence (but not an exclusive licence) to continue working or, as the case may be, to work the invention.
4. (4) Any such licence shall be granted for a reasonable period and on reasonable terms.
5. (5) Where an order is made as mentioned in subsection (2) above, the person in whose name the application is to proceed or any person claiming that he is entitled to be granted any such licence may refer to the comptroller the question whether the latter is so entitled and whether any such period is or terms are reasonable, and the comptroller shall determine the question.

The noble and learned Lord said: Amendment No. 56 proposes the insertion of a new clause after Clause 9. The object of this new clause is to introduce into Section 7 procedures provisions similar to those of Clause 35. Clause 35 is modelled on Articles 28 and 40(2) of the Community Patent Convention, and Article 45 of that Convention applies Article 40(2)—and hence by reference to Article 28—to applications as well as patents. The effect is thus that licences and other rights lapse on a complete change of proprietorship, but not otherwise. However, the original applicant or his licensee can obtain a licence to continue to work the invention if, in good faith, he had begun to do so before the dispute began or had made effective and serious preparations to do so. I beg to move.

On Question, Amendment agreed to.

Clause 10 [Mention of inventor]:

Lord ORAM moved Amendment No. 57:

Page 9, line 17, leave out ("the register and").

The noble Lord said: I beg to move Amendment No. 57. Subsection (3) provides for a change in the person mentioned as inventor to be recorded in the register of patents. Subsection (1), however, does not specifically require the name of the person originally mentioned as inventor to be recorded in the register as this will be prescribed by rule and any change in the person mentioned as inventor will equally be dealt with by rule. Therefore, it is unnecessary to refer to the rectification of the register in this respect in subsection (3). I beg to move.

On Question, Amendment agreed to.

Clause 10, as amended, agreed to.

Clause 11 [Making of application]:

5.20 p.m.

Viscount ECCLES moved Amendment No. 58:

Page 9, line 32, leave out ("and").

The noble Viscount said: It may be for the convenience of the Committee if I speak to Amendments Nos. 58, 59 and 63 together. In the Patents Act 1949 Clause 4(1) reads as follows: Every specification, whether complete or provisional, shall describe the invention, and shall begin with a title indicating the subject to which the invention relates. The title is wanted for two purposes. First, for indexing. It is really essential for the patent library, as early as possible, to be able to put an application into a category, and that requires a title that means something.

The second purpose is that of course it helps the searchers that there should be the earliest possible notice that a patent referring to some broad subject is being sought. I quite understand that the Government may say that at present the titles which are required under the 1949 Act can be useless; and perhaps they may go on to ask: Therefore, why have them at all? I have here an example of what I mean. It happened by sheer chance last week that the top application on the pile of patent applications read as follows: No. 1463303: improvements in or relating to flow control devices". That means nothing. It is no help to the indexer, no help to the searcher. But a cursory glance at that patent by one of our experts showed that it could have had a title probably as follows: Valve system for burettes and fluid separators". That is a useful title both for indexing and for searching.

I think that example shows that there really is no justification for dropping titles altogether because some are obscure, and in my Amendment I have taken care to deal with that point, leaving it to the comptroller to change the title into one which makes sense for the two purposes I have described. I feel that we should be impeding the smooth flow in dealing with patents if we did not retain what was clearly meant to be a useful step as described in the 1949 Act. I beg to move.

Lord ORAM

The noble Viscount has raised an important point in an interesting way. Although I am to advise the Committee not to accept this Amendment, I think I can without doubt give him much more satisfaction than I was able to do with his earlier Amendment. He described the importance of titles for indexing and other purposes, and, as he said, they are at present required under the 1949 Act. I can assure him that the requirement for title will be continued, but the intention is to impose the requirement not within the Bill but by rules. The noble Viscount will note that Clause 11(1)(b) requires the application to be in the prescribed form, and Clause 112(2) enables rules to be made concerning the form and contents of patent applications. I hope the noble Viscount will therefore see that his Amendments are unnecessary. I can give him the assurance that his points are fully taken. The method by which the present practice will be continued means that I must ask the Committee not to accept the Amendment. The substance of his case is fully accepted.

Viscount ECCLES

I am very grateful to the Minister for that explanation. May I just ask him for an assurance that when these rules are made the point made in my Amendment will be brought out, namely, that the comptroller shall have the authority to change the title for which he is going to prescribe the need, if it is as obscure and useless as the one which I happened to give in my example? In this way we can do better than the 1949 Act. I should like to have an assurance that that is the intention of the Government.

Lord ORAM

I can give the noble Viscount the assurance that the points he has so lucidly made will of course be taken fully into account when the rules are drawn up. I would not like to give any particular assurance about the contents of rules, but his comments will certainly be fully taken care of.

Viscount ECCLES

I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord ORAM moved Amendments Nos. 60 and 61:

Page 9, line 36, leave out first ("invention") and insert ("application"). line 40, leave out ("invention") and insert ("application").

The noble Lord said: I beg to move Amendment No. 60, and I would ask the Committee to consider Amendment No. 61 at the same time. The purpose of both Amendments is the same; namely, to correct a drafting error in subsections (3) and (4) of Clause 11 which at present refer to the specification of "an invention" instead of the specification of" an application ". These Amendments would put the matter right. I beg to move.

The DEPUTY CHAIRMAN of COMMITTEES (Lord Douglas of Barloch)

If no noble Lord disagrees, I will put Amendments Nos. 60 and 61 together.

On Question, Amendments agreed to.

5.28 p.m.

Lord BELSTEAD moved Amendment No. 62:

Page 10, line 29, after ("granted") insert ("unless there are proceedings pending under section 7 above").

The noble Lord said: If I may refer back to Clause 7 in moving this Amendment, that clause deals with cases in which there is conflicting evidence as to who should be granted the patent. If, under Clause 7, the comptroller is in the process of determining who is the genuine applicant, the person who has made the application and whose right to do this is being contested must not be allowed suddenly to withdraw the application. If the other party is eventually found by the comptroller to be the rightful applicant, his right to the patent would be considerably reduced if he then found that the application had been withdrawn. In such an event a party who successfully contested the right to a patent under Clause 7 would find that he had lost the priority date of the patent, and this could be disastrous; someone else could then file another patent with the same specification and get in before him.

I would suggest to the Government that such an eventuality is not fanciful. Once an application has been published and filed, I understand that very often the company employing the inventor will publish in the trade papers a description of the new invention. If the application for such an invention were then withdrawn while its parenthood was being contested, it would be simple for someone else to step in under the provisions of Clause 12 and deprive the rightful owner of the patent of his opportunity. It is this that this Amendment seeks to prevent. I beg to move.

Lord ORAM

The point the noble Lord, Lord Belstead, has made was indeed considered when the Bill was being drafted. It was rejected on the question of the possibility of enforcement, as an applicant cannot be compelled to prosecute his application. Even if denied the opportunity to withdraw his application, he could obtain the same effect by allowing it to lapse through passage of time or by causing the comptroller to refuse it under other provisions. So if we were to accept the noble Lord's Amendment, it would not be possible to enforce it.

It is appreciated that there would be some advantage in preventing an applicant withdrawing his application where Clause 7 proceedings are pending but, as I have said, in practice it is not feasible to do so. In any event, an aggrieved party, if successful, can file a new application of his own if the relevant application is withdrawn or refused before the termination of Clause 7 proceedings. Therefore, I think that his interests would be safeguarded without the acceptance of the Amendment that the noble Lord has moved.

Lord BELSTEAD

I am grateful to the noble Lord for that explanation. He referred to the fact that the same effect could occur by the proprietor of the patent who is being attacked by an aggrieved party allowing the patent to lapse through passage of time. I did not think that that was, perhaps, a very strong argument, because the period of time before a patent can elapse is a year, as written into the Bill. In fact, my noble friends and I have tabled an Amendment to extend that period to 18 months. The last part of the noble Lord's explanation, that the successful applicant can file a new application at the very moment that the unsuccessful applicant has his patent refused, or the patent is withdrawn, was, I thought, persuasive argument. On those grounds, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 11, as amended, agreed to.

Clause 12 [Date of filing applications]:

Lord ORAM moved Amendments No. 64 and 65 en bloc:

Page 10, line 36, leave out ("the patent is sought") and insert ("a patent is sought in pursuance of the application"). line 39, at end insert ("for which a patent is sought").

The noble Lord said: These Amendments are drafting changes which give added provision to the wording of Clause 12 without affecting its meaning or intention. I beg to move.

On Question, Amendments agreed to.

Lord ORAM moved Amendment No. 66:

Page 11, line 23, after ("filed") insert ("by the original applicant or his successor in title").

The noble Lord said: This Amendment is a drafting change which makes clear that the new application can be filed only by the original person who made the application or his successor in title. I beg to move.

On Question, Amendment agreed to.

5.35 p.m.

Lord ORAM moved Amendment No. 67:

Page 11, line 24, leave out ("subject-matter of") and insert ("matter contained in").

The noble Lord said: This Amendment is needed to make the wording of the Bill consistent. Elsewhere in the Bill the term "matter" is used to express the same concept.

Lord BELSTEAD

The noble Lord's colleague, the noble and learned Lord, Lord McCluskey, was good enough to say that he would return to this subject when we reach Amendment No. 81. However, in spite of accepting that offer from the noble and learned Lord, the matter has come up again on Amendment No. 67. The noble Lord, Lord Oram, said that this Amendment is in order to bring the wording into line with the rest of the Bill. However, in Amendment No. 84 we imply that we do not believe that the Government have this right. If we look at Article 11 of the EPC, we find the expression, "subject matter". It seems to us that in some parts of the Bill that would be a more accurate way in which to refer to "matter". If it is not, perhaps the Government could explain why it is not. I should like a fuller explanation why the Government want to change the wording in Amendment No. 67.

Lord ORAM

Unfortunately I was temporarily out of the Chamber when the exchange with my noble and learned friend Lord McCluskey took place. Equally unfortunately, he has been absent while this exchange has taken place. However, I shall do my best. Perhaps I may refer in advance to Lord Belstead's Amendment No. 84, because the explanation fits more neatly there. I appreciate that the noble Lord has not yet moved the Amendment, but with the leave of the House it would be convenient to make these points now.

If that Amendment were to be adopted, it would provide that it was "subject matter" rather than "matter" that could not be added to an application as a result of amendment. The noble Lord's intention seems to be to provide that the prohibition of subsection (2) applies only to what may broadly be referred to as "inventive matter", and so does not prevent an amendment which serves to clarify an obscurity or resolve an inconsistency. We consider that Clause 16(2), as now drafted, has this effect. It does not, as seems to be thought, refer to "matter" without any qualification. On the contrary, it refers to "matter disclosed" which, in the context, can only mean "matter" which is revealed for the first time by the application. It follows that Clause 16(2) prohibits the addition of matter which is concerned with the invention itself. When understood in this way, the noble Lord's Amendment No. 84 will be seen to be unnecessary.

The use of the term, "subject matter" would also complicate the Bill and lead to confusion. I am sorry if I have had to step into my noble and learned friend's shoes without having the preparation that I might have wished in answering the noble Lord, but if he will be good enough—although this is complex—to look at the account in the Official Report, I hope that he will agree that the Government's argument is sound.

Lord BELSTEAD

I am grateful to the noble Lord for that explanation. We shall, with advice, want to look at the explanation which he has given. I am afraid that I have further complicated the matter by referring forward to Clause 16 when, in fact, at the moment we are on Clause 12. I am grateful to the noble Lord for dealing with my argument in the way he has. With the proviso that we shall look closely at what he has said and possibly return to this again on Report, I shall agree to his Amendment.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 68:

Page 11, line 27, leave out from ("application") to ("the") in line 29 and insert ("(without the new application contravening section (Amendments of applications and patents not to include added matter) below)").

The noble Lord said: This is one of the group of Amendments consequential on a future Amendment. It is the one that my noble friend Lord McCluskey was dealing with earlier. I beg to move.

The DEPUTY CHAIRMAN of COMMITTEES (Lord Douglas of Barloch)

There is a slight ambiguity in the way in which this Amendment is stated on the Marshalled List. It ought to be: Page 11, line 27, leave out from the first. "application" to ("the") in line 29 and insert "without the new application contravening" the section referred to.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 69:

Page 11, line 33, leave out from ("withdrawn") to ("the") in line 34 and insert (" at the end of the relevant prescribed period unless before that end ").

The noble Lord said: This Amendment clarifies subsection (5) by identifying the point in time at which an application will be taken to be withdrawn unless the conditions mentioned in the subsection have been met. I beg to move.

On Question, Amendment agreed to.

Clause 12, as amended, agreed to.

Clause 13 [Publication of application]:

5.42 p.m.

Lord ORAM moved Amendment No. 70:

Page 11, line 42, after ("it") insert ("as filed").

The noble Lord said: This Amendment does not affect the intention of the clause, but puts beyond doubt that applications will be published in the form in which they were filed. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 71:

Page 11, line 44, leave out from ("applicant") to ("during") and insert ("may published it as filed").

The noble Lord said: This Amendment, similarly to the last, puts beyond doubt that it is applications in the form in which they were filed that will be published and also gives the comptroller a necessary discretion over publication at the request of applicants. I beg to move.

Lord BELSTEAD

May I ask the noble Lord why there should be the discretion for the comptroller? The discretion is not given in the Bill as it is drafted at the moment. It is "shall publish it", meaning an application, "except in any prescribed cases", whereas the Amendment is changing the word to "may" publish it as filed. I think I am right that it is important for an application to be published, because under Clause 67 that then gives an applicant the right to claim damages for infringement. Before we go any further, I should like to know why it is that now under this Amendment the comptroller is being given this discretion.

Lord ORAM

I understand that there may be technical reasons preventing an earlier publication, and that therefore the comptroller has to have a discretion. That is the only point I can make at this stage. If the noble Lord would like me to write to him in greater detail I should be prepared to do so.

Lord BELSTEAD

I should be most grateful.

On Question, Amendment agreed to.

Clause 13, as amended, agreed to.

Clause 14 [Preliminary examination and search]:

5.46 p.m.

Lord ORAM moved Amendment No. 72:

Page 12, line 29, after ("period" insert ("subject to section 12(5) above)").

The noble Lord said: This Amendment removes a possible point of doubt from Clause 14(4). It makes clear that, although provision is made for the applicant to have the opportunity to amend within a specified period, this must be read in conjunction with Clause 12(5), which is overriding. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 73:

Page 12, line 30, leave out ("16(2)") and insert ("(Amendments of applications and patents not to include added matter)").

The noble Lord said: This is another of those consequential Amendments to be considered in connection with Amendment No. 295. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 74:

Page 12, line 33, leave out from ("shall") to end of line 35 and insert ("make such investigation as in his opinion is reasonably practicable and necessary for him to identify the documents which he thinks will be needed to decide").

The noble Lord said: This Amendment clarifies the intention of Clause 14(4) by giving the examiner the discretion to carry out such a search as appears reasonable and necessary in any particular case. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 75

Page 13, line 4, leave out ("as aforesaid") and insert ("in relation to the whole or part of the application").

The noble Lord said: This Amendment makes the wording of Clause 14(5) internally consistent without making any material change. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 76:

Page 13, line 8, after ("examiner") insert (", either before or").

The noble Lord said: Clause 14(6) prescribes the procedure to be adopted when the claims of an application relate to two or more inventions. It may become apparent that the claims of an application relate to two or more inventions before, as well as during, the search, and the purpose of the Amendment is to cause the subsection to cover both possibilities. This does not involve any change in the intention of the subsection. I beg to move.

On Question, Amendment agreed to.

5.50 p.n.

Viscount ECCLES moved Amendment No. 77:

Page 13, line 28, at end insert— ("(9) When an applicant has made a request for a search under this section and before the examiner begins the search the applicant discloses the results of any competent search made with the express purpose of identifying any publications relevant to assessing the patentability of the invention under the United Kingdom law, the comptroller may remit all or part of the search fee.").

The noble Viscount said: The purpose of this Amendment is to remedy what appears to be an injustice to British patent and trade mark searchers. Your Lordships will see that the previous subsection empowers the comptroller to remit all or part of the search fee when an applicant discloses the results of a search under the law of any other country than the United Kingdom. The Amendment extends this power to remit the fee in respect of any competent search made with the express purpose of identifying any publications relevant to assessing the patentability of the invention under United Kingdom law. Why should searches carried out abroad, particularly by The Hague branch of the European Patent Office, benefit and not searches in the United Kingdom? We know that The Hague office will carry out searches for the public and not only for the European Patent Office, and I am asking that patent agents and professional searchers in this country, acting privately, should have a similar benefit.

The Government may say that the search might not be one that they would particularly like. That is why I have included the word "competent". That word is important, for once the word is there, the comptroller is perfectly capable of judging whether the search which has already been made under United Kingdom law is an effective search. I do not see why they should not have the same benefit, otherwise they might drive searches abroad which should have been made here. The Patent Office, so far as I know, accept the judgment of patent agents; why should they not accept the judgment of patent searchers?

Lord ORAM

As the noble Viscount, Lord Eccles, explained, his Amendment seeks to extend the facility provided by Clause 14(8) to searches carried out privately by or on behalf of the applicant. It is appreciated that such searches may be well carried out. Nevertheless, I must resist the Amendment because I suggest that the public interest requires that patents be granted on the basis of searches in respect of novelty and inventive step that are made quite independently of the applicant, and that would not be the case if the Amendment were accepted. We consider that failure to do what I have suggested—that is, to have searches conducted independently of the applicant—would undermine confidence in the presumptive validity of granted patents. Also, it would place the Patent Office in a difficult position, because it would need to exercise its discretion on a case by case basis. If the Amendment were accepted, there would, for example, be difficulties in determining whether the search was competent (a word he stressed), but it would raise difficulties of administration. For those reasons, I am afraid that I must advise the Committee not to accept the Amendment.

Lord CAWLEY

Does the provision as it stands cover searches at The Hague? I should like some illumination on this and to know whether they are under the laws of any other country. Are they under the laws of the Netherlands? The subsection as it stands might rule out The Hague searches if they are not conducted under the laws of the Netherlands.

Lord ORAM

I confess that that is a question which I am not in a position to answer, but I will seek the answer and let the noble Lord have the information by the quickest means possible.

Viscount ECCLES

I am disappointed in the Minister's answer. It is one more occasion on which the Bill shows that we are putting out business abroad; that, I fear, is what will happen. Naturally, if people can get the fee remitted, they will have the search carried out somewhere else. It is with sorrow, therefore, that I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

5.56 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 78:

Page 13, line 28, at end insert— ("(9) The applicant shall be informed of the results of and extent of the examiners search within six months of the date of the request by the applicant, or if at that date all formal requirements have not been complied with, within six months of the date on which the applicant has complied with all formalities.").

The noble Lord said: The clause with which we are dealing is concerned with the question of the preliminary search and examination of applications, and this Amendment is designed to insert a new provision which would make it mandatory for the applicant to be informed of the extent and results of such a search within six months. It is important that the applicant should know the results of a search as early as possible, and six months would seem to be a reasonable period, provided the formalities have been dealt with. If the formalities have not been dealt with in that six months, my Amendment goes on to cover that situation and says that the notification should come six months after the formalities have been completed.

In my view, not only should the results of the examination be given to the applicant but the extent of the search should be given to him as well. The extent of the search is most valuable and will probably save the applicant a great deal of money in relation to his foreign applications. Thus, the Amendment would merely add a provision suggesting that the notification should be of the extent and results of the examination within six months of the request for such information or within six months after the formalities have been completed, after the application has been processed.

Lord ORAM

The Bill as drafted imposes no time limit within which the Patent Office has to inform the applicant of the results of his search. This is deliberate because the Patent Office needs to preserve flexibility in order to make the most efficient and economic use of the skilled manpower available. I am sure that the wide experience of the noble Lord, Lord Lloyd of Kilgerran, is such that he realises that the Patent Office is not in a position to control the input of patent applications. In some technical fields, the input runs at a fairly steady level, but in others it is not unusual for there to be a flood of applications within a relatively short space of time. If therefore the Patent Office was obliged by Statute to act within a fixed period, as the noble Lord suggests, this would be likely to create considerable difficulties.

The intention of the Patent Office is to do its best to ensure that the search result on an application is available to the applicant by the time his application is published, and I think Lord Lloyd can be assured that, in many cases, this will be no later than would be the case if his Amendment were accepted. The Amendment would, however, in other cases require the Patent Office to disturb the orderly fashion in which it carries out its operations. As to this, I would hope the noble Lord could agree that this would not serve the general public interest. I must therefore resist the Amendment.

However, I should like to add that, as the noble Lord seems to wish, the Patent Office appreciates that there may well be a need for a quicker search in those cases where the applicant is contemplating taking out patent coverage in other countries. The Green Paper published in 1975 agreed with this, and I can say that the Patent Office hopes to be able to give such a useful service to British industry. However, it is better for this to be arranged administratively rather than to be the subject of a statutory duty which could add to the difficulties and affect the high standards of the Patent Office.

The Amendment also seeks to oblige the Patent Office to inform the applicant of the extent of the search. I am grateful to the noble Lord, Lord Lloyd, for raising this point and I can assure him that the Patent Office recognises that it is useful for applicants to be given information about this. Indeed, the Patent Office intends to indicate to the applicant the classified files in which the search has been carried out, but, bearing in mind the need for the Patent Office in everyone's interest to perform the search in the most efficient and economical way, it will in many cases be necessary to qualify the statement made to the applicant. In view of this, I would prefer to avoid any statutory obligation about the extent of the search, particularly since this would need to be interpreted and could give rise to argument and limitations on the activities of the Patent Office which, I can assure your Lordships, need to be carried out in a flexible manner.

In view of those arguments—and I believe that the noble Lord will understand that we recognise his case but feel that it is better done administratively than by the acceptance of his Amendment—I hope that the noble Lord will see his way to withdrawing the Amendment.

Lord LLOYD of KILGERRAN

I am very grateful to the noble Lord for his explanation and I fully appreciate the administrative difficulties under which the Comptroller General of Patents works and has worked for many years. I should be the last person to suggest that there should be a time limit in this matter that could not be met by the Comptroller General. If it embarrasses the administration of the Patent Office I will gladly withdraw the Amendment, having regard to the assurances given by the noble Lord in his reply.

Amendment, by leave, withdrawn.

Clause 14, as amended, agreed to.

Clause 15 [Substantive examination and grant or refusal of patent]:

6.2 p.m.

Lord ORAM moved Amendments Nos. 79 and 80:

Page 13, line 29, leave out from first ("the") to ("to") in line 30 and insert ("conditions imposed by section 14(1) above for the comptroller"). line 32, after ("search") insert ("are satisfied").

The noble Lord said: With permission, I shall speak to Amendments Nos. 79 and 80 together. These two Amendments go together. They are minor drafting changes which point more clearly to the conditions which must be satisfied before the application is referred to an examiner for preliminary examination and search. I beg to move.

On Question, Amendments agreed to.

Lord ORAM moved Amendment No. 81:

Page 14, line 8, leave out ("16(2)") and insert ("Amendments of applications and patents not to include added matter)").

The noble Lord said: I beg to move the Amendment and, since my noble and learned friend Lord McCluskey has now returned, I ask him to intervene at this stage in the light of his earlier undertaking.

Lord McCLUSKEY

I gave the Committee a hostage to fortune, as it were, earlier in that I undertook to reply to the noble Lord, Lord Belstead, in relation to the question that he asked. I am advised that the answer has been anticipated by my noble friend Lord Oram in dealing with Amendment No. 67, but that it may be put as follows: in various parts of the Bill we use the expressions "matter", "matter contained" and "matter disclosed". "Matter" is the general word; it means everything. "Matter contained" refers to matter contained in the patent specification by way of description. "Matter disclosed" refers to matter contained which is revealed for the first time; in other words, it is matter which relates to the invention. Accordingly, when one extends the matter disclosed, one is adding to knowledge which was not revealed at the date of filing. It follows, I believe, that we use the term "matter disclosed" as the exact equivalent of the words "subject matter" in the Convention and, in particular, in Article 100. I should add that we expect the practice under the Bill to be the same as that under the present law. I hope that the noble Lord, Lord Belstead, can accept that as an answer to the question that he asked me at an earlier stage.

Lord BELSTEAD

I think I understand that explanation of this matter, though I must confess that there is a great deal about this Bill that I do not understand. Firmly and stoutly, we are standing up for our rights in Europe and maintaining that as a nation we can call something by another name. So this Bill will continue to refer to "matter disclosed" when in fact it really means "subject matter".

On Question, Amendment agreed to.

Clause 15, as amended, agreed to.

Clause 16 [General power to amend application before grant]:

Lord ORAM moved Amendments Nos. 82 and 83:

Page 14, line 22, leave out ("subsection (2)") and insert ("section (Amendments of applications and patents not to include added matter)"). Page 14, line 24, leave out subsection (2).

The noble Lord said: With permission, I shall move Amendments Nos. 82 and 83 together, since both are consequential on Amendment No. 295. I beg to move.

On Question, Amendments agreed to.

Lord ORAM moved Amendment No. 85:

Page 14, line 28, after ("specification") insert ("and abstract").

The noble Lord said: This is a minor Amendment to allow the comptroller to acknowledge registered trade marks in abstracts as well as in specifications. It is necessary because the comptroller's power as given by Clause 16(3) does not at present extend to abstracts, since by the terms of Clause 11(2)(b) an abstract is not part of the specification. I beg to move.

On Question, Amendment agreed to.

Clause 16, as amended, agreed to.

Clause 17 [Failure of application]:

6.8 p.m.

Lord ORAM moved Amendment No. 86:

Page 14, line 31, after ("application") insert ("for a patent").

The noble Lord said: This is a drafting Amendment. The term "application" means different things in different parts of the Bill. Here, it is intended to mean an application for a patent, and the Amendment makes this plain. I beg to move.

On Question, Amendment agreed to.

Clause 17, as amended, agreed to.

Clause 18 agreed to.

Clause 19 [Information prejudicial to defence of realm or safety of public]:

Lord ORAM moved Amendments Nos. 87 and 88:

Page 16, line 26, leave out ("that") and insert ("above that the"). Page 16, line 38, leave out ("any") and insert ("the").

The noble Lord said: With permission, I shall speak to Amendments Nos. 87 and 88 together. These are drafting Amendments which do not affect the meaning of Clause 19. I beg to move.

On Question, Amendments agreed to.

Lord ORAM moved Amendments Nos. 89 and 90:

Page 17, line 21, leave out ("the said") and insert ("that prescribed"). Page 17, line 30, leave out ("expiry of the said") and insert ("end of that").

The noble Lord said: With permission, I should like to move Amendments Nos. 89 and 90 en bloc. In subsection (7) it is not wholly clear what is referred to by, "the said period". The intention is to refer to the period prescribed for the purposes of Clause 13, which is mentioned at page 17, line 14. Amendment No. 89 makes this plain, and Amendment No. 90 is a minor drafting Amendment to provide consistency of terminology.

On Question, Amendments agreed to.

Clause 19, as amended, agreed to.

Clause 20 [Restrictions on applications abroad by United Kingdom residents]:

Lord ORAM moved Amendment No. 91:

Page 18, line 14, leave out from ("filed") to ("unless") in line 15 and insert ("outside the United Kingdom an application for a patent").

The noble Lord said: I beg to move Amendment No. 91. This Amendment merely clarifies the drafting of Clause 20(1) without affecting its meaning.

On Question, Amendment agreed to.

Lord ORAM moved Amendments Nos 92 and 93:

Page 18, line 18, leave out from ("whether") to ("before") in line 20. Page 18, line 28, leave out from beginning to ("in") and insert ("containing the same information as that application has first been filed (whether before or after the appointed day)").

The noble Lord said: My Lords, I beg to move Amendments Nos. 92 and 93 en bloc, and I should like also to speak at the same time to Amendment No. 95. Clause 20(1) lays down conditions that must be met before a United Kingdom resident may apply for a patent in another country. This is necessary for security purposes. Subsection (2) provides that those conditions do not apply when an application for a patent for an invention has first been filed outside the United Kingdom by a person not resident in the United Kingdom. However, the provision in subsection (2), as drafted, does not take account of the fact (as does subsection (1)(a)) that what is significant for security purposes is the information contained in a patent application. The proposed Amendment to page 18, line 28, remedies this defect. The other changes which would be made by the Amendment, including the new subsection (4), affect the drafting of Clause 20 without affecting its meaning.

On Question, Amendments agreed to.

6.14 p.m.

The Earl of HALSBURY moved Amendment No. 94:

Page 18, line 29, after ("resident") insert ("or travelling").

The noble Earl said: This is a probing Amendment to ascertain the exact position of a British subject travelling abroad, as described by me at Second Reading. An offence against Clauses 19 and 20, which are connected with security matters, involves on summary conviction a fine not exceeding £1,000, and on conviction on indictment imprisonment for a term not exceeding two years or a fine, or both.

I should like to remind the Committee what I said on Second Reading. A very fertile, distinguished British inventor, a Nobel prizewinner, a professor in a British university, had also a consultancy with a big American firm and an honorary professorship in America. While temporarily resident in America, travelling during the long vacation, he made an invention, took it to an American patent attorney, made a patent application, and executed an assignment to the National Research and Development Corporation. My question of the noble Lord is whether this man had broken this law? Is it our intention that in such circumstances one would sacrifice a possible priority date in order to satisfy the provisions regarding penalties laid down here? Is it really the wish of the Legislature that we should fine a Nobel prizewinner £1,000 for inventing something in America, which he patented there and assigned to a British public corporation? I beg to move.

Lord ORAM

As the noble Earl has explained, his Amendment would extend subsection (2) to a person travelling outside the United Kingdom, and it is evidently intended to simplify matters for a United Kingdom resident when travelling abroad, by allowing him to make his initial application in the country where he happens to be staying. However, in providing this facility the Amendment would largely defeat the intention of subsection (1), since anyone wishing to circumvent its provisions—not a Nobel prizewinner, but someone less distinguished—could do so merely by personally filing his application in, say, France, and for this reason I am afraid that the Amendment must be resisted.

As I have said, the Amendment would undermine the provisions of Clause 20(1). They exist for security reasons and prohibit United Kingdom residents filing patent applications abroad unless certain conditions are satisfied. It is appreciated that the prohibition may inconvenience the United Kingdom citizen who has a good idea while travelling abroad, but to adopt the Amendment would be to overcome that inconvenience at the cost of providing an easy route for circumvention of the principal purpose of Clause 20. It should be borne in mind, too, that the Patent Office accepts business by post, so that the United Kingdom resident abroad should not normally have great difficulty in filing a patent application within a few days of drafting his specification. I hope that with that explanation the noble Earl will see fit to withdraw the Amendment.

The Earl of HALSBURY

I thank the noble Lord for that reply. I can quite see his point. We must have some system of security. I wonder whether I might probe a little further into this matter. Would it be an offence to have the specification drawn up by an American patent attorney and then send it to the British Patent Office for filing? It is very difficult to correspond about an invention. It is necessary to have something of a session between the patent agent in this country, or the patent attorney in America, and the individual inventor.

Lord CAWLEY

This provision was first conjured up in the 1949 Act. Nobody thought about it before then and I cannot help thinking that the basis of it was not security but exchange control, because it does not cover British subjects who are resident abroad. They are not of course subject to exchange control. I cannot help thinking that all this business of security is a blind. If one files first abroad one can easily get around exchange control.

The Earl of HALSBURY

I am greatly obliged to the noble Lord, Lord Cawley, for coming to my rescue on this matter. I beg leave to withdraw the Amendment on this occasion but I reserve the right to bring the matter forward again on Report stage after I have had an opportunity to inform myself a little more closely.

Amendment, by leave, withdrawn.

Lord ORAM moved Amendment No. 95:

Page 18, line 36, at end insert— (4) In this section—

1. (a) any reference to an application for a patent includes a reference to an application for other protection for an invention;
2. (b) any reference to either kind of application is a reference to an application under this Act or any convention or treaty to which the United Kingdom is a party."

The noble Lord said: I beg to move this Amendment formally, having spoken to it earlier.

On Question, Amendment agreed to.

Clause 20, as amended, agreed to.

Clause 21 [Publication and certificate of grant]:

Lord ORAM moved Amendment No. 96:

Page 19, line 1, leave out from ("proprietor") to end of line 2.

The noble Lord said: Subsection (2) of Clause 21 requires the comptroller, following the grant of a patent, to send the proprietor a certificate that the patent has been granted to him, in respect of the invention described in the specification of the patent". The Amendment deletes the quoted words since they are unnecessary. Moreover, because more than one invention may be described in a specification the words are inaccurate. I therefore beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 97:

Page 19, line 5, leave out ("in the prescribed manner").

The noble Lord said: Subsection (3) of Clause 21 requires the comptroller to publish the specification of the patent "in the prescribed manner". The Amendment deletes the quoted words for consistency with Clause 13, which imposes no qualification on the manner in which the comptroller is to publish patent applications. The form in which patent specifications are to be published is in any case an administrative matter, and if necessary rules can be made by virtue of the rule-making power given by Clause 112. I beg to move.

On Question, Amendment agreed to.

Clause 21, as amended, agreed to.

Clause 22 [Term of patent]:

Lord ORAM moved Amendment No. 98:

Page 19, line 6, after ("Act") insert ("shall be treated for the purposes of the following provisions of this Act as having been granted, and").

The noble Lord said: Clause 67 provides protection for an applicant in the event of an infringement which occurs in the period between the date of publication under Clause 13 and the date on which a patent is granted. Under the present terms of Clauses 21 and 22 the latter date is earlier than the date on which the rights conferred by the patent take effect, this date being the date on which notice of the grant is published in the Patent Office journal. It follows that for a short period there is no protection. The Amendment fills this gap by making clear that a patent is to be treated as having been granted on the same date as the rights conferred by it take effect. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 99:

Page 19, line 11, at end insert— ("(1A) A rule prescribing any such other date under this section shall not be made unless a draft of the rule has been laid before, and approved by resolution of, each House of Parliament.").

The noble Lord said: Clause 22(1) provides for the maximum life of a patent to be 20 years beginning with the date of filing the application for the patent "or with such other date as may be prescribed." These last words have given rise to some doubts and uncertainty among those interested in patents, and the object of the Amendment is to allay any fears by making it clear that the starting date can be changed only by means of the Affirmative Resolution procedure.

Revision of the Industrial Property Convention is now being negotiated, and there is a proposal, which is much supported, to oblige the member countries to use the priority date—that is, the date of the first filing in a member country of an application for protection of an invention—as the starting date for fixing the term of patents, instead of the date of filing of an application for protection of the invention in the country concerned. With this in mind the words "or with such other date as may be prescribed" have been added at the end of Clause 22(1) so as to enable the starting date to be changed without the need for further legislation. This would be an important change, and the Government accept that it should not be made without the tighter control by Parliament that the Amendment provides. I beg to move.

On Question, Amendment agreed to.

The PRINCIPAL DEPUTY CHAIRMAN of COMMITTEES (Baroness Tweedsmuir of Belhelvie)

Before I call Amendment No. 100 I should mention that, if it is agreed to, I cannot call Amendment No. 101.

Lord ORAM moved Amendment No. 100:

Page 19, line 15, leave out ("may, if so requested, specify") and insert ("shall, if so requested, allow").

The noble Lord said: This is merely a drafting Amendment. I beg to move.

Lord BELSTEAD

I think this Amendment is a little more than drafting. It imposes a duty, and it is one which we on this side of the Committee would certainly support.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 102:

Page 19, line 16, after ("months") insert ("specified in the request").

The noble Lord said: This, again, is a small drafting Amendment, if the noble Lord, Lord Belstead, will agree. I beg to move.

On Question, Amendment agreed to.

6.28 p.m.

Lord ORAM moved Amendments Nos. 103 and 104:

Page 19, line 19, after ("and") insert ("accordingly— (a)"). line 21, leave out ("accordingly be valid") and insert ("be valid; and (b) subject to section 26(5) and (6) below, an act which would constitute an infringement of it if it had not expired shall constitute such an infringement ").

The noble Lord said: Perhaps I may take Amendments Nos. 103 and 104 together. Clause 22(2) provides that, if a renewal fee is not paid when due, the patent shall cease to have effect. However, Clause 22(3) provides for a grace period for payment: if the fees are paid during the grace period, the patent is to be treated as if it had never expired. The question therefore arises as to what should be done about an act carried out during the period when the patent is ineffective which would be an infringement if the patent had not expired. The Amendments supply the answer by providing that the act shall nevertheless constitute infringement, this being justified since the grace period is no longer than six months and to let infringers escape would negative any advantage conferred on the patentee by the provision allowing extension of the time for paying the renewal fee. However, any person who in good faith begins, in the interval between expiry and resurrrection of the patent, to do an act which would infringe, or make preparations to this end, should be free to carry on without being liable for infringement. The Amendment makes this clear by referring to "section 26(5) and (6) below". I beg to move.

On Question, Amendments agreed to.

On Question, Whether Clause 22, as amended, shall stand part of the Bill?

6.30 p.m.

Lord BELSTEAD

I wonder whether I could make one or two points about this clause. Although the Banks Committee recommended a 20-year term for patents—and Clause 22(1) provides for that term of 20 years and brings our patent law into line with the EEC Directive in this way—the Government will be aware that this provision is not received by some existing patentees as being entirely fair. Existing patentees, or some of them, see the term of patents filed (after Clause 32 comes into force) extending to 20 years while their own existing patents will end after 16 years without the possibility of the ten-year extension, as was provided until this Bill was published. I admit that the 10-year extension depends on two points which one has to prove: either that one had received insufficient remuneration for one's patent or else one had suffered from war damage; and the applications under those two legs of the case did not occur very often.

Indeed, I am not rising here to ask the Government to change their mind about this length of time of 20 years; even though I think that existing patent holders have a case for feeling aggrieved to some extent. If one looks back at the White Paper, paragraph 14 says: Given a 20-year term, there is no justification for the present provision for extending the 16-year term in certain circumstances and the provision will therefore be abolished as Banks also recommended. That really is a splendid non sequitur which conveniently omits to mention that existing patentees are not going to qualify for the 20-year term at all; and, not unnaturally, some of them feel a sense of grievance.

Laying that aside, I should like to make it clear to the Government that my concern is for those people ready to file a patent application now and who may be waiting to do so until this Bill becomes law, and the Secretary of State comes to appoint a day for Clause 22 to come into operation by order. I understand that filings in the United Kingdom have run in the region of 45,000 to 60,000 patent applications a year. This Bill was ordered to be printed on 20th December last year but, presumably, as soon as the Queen's Speech in November revealed that a Patents Bill was going to be introduced some potential applicants have waited to see whether the Bank's recommendation of a 20-year term would be provided for and whether any exception would be made for existing patentees. It is not possible to guess exactly when this year the Bill is going to become law. Certainly, with the mass of Amendments already put down, the timetable is likely to be a little longer than perhaps either the Government or any of your Lordships had hoped.

I should like to ask the Government three questions. If the noble Lord prefers to write to me on them I shall be satisfied. The first question is this. Is it the intention of the Government to bring Clause 22 into operation at the very earliest date on which any other clauses in the Bill are going to become operative? Secondly, can the Government indicate when that date is likely to be? Thirdly, have the Government any cause for concern that quite a considerable number of filings are being deliberately held up in order to qualify for the 20-year term after the Bill has come into operation? It is that third question which has caused me to rise now to put these questions to the Government.

Lord LLOYD of KILGERRAN

May I support the noble Lord, Lord Belstead, in regard to the difficulties arising from the extension of patents, particularly those in existence now or those which will be filed before this Bill is passed. I should be grateful if it were possible for the noble Lord, Lord Oram, to communicate with me also on the three questions put by Lord Belstead. I would mention at this stage that at a later stage I shall be suggesting a form of extension of patents and safeguarding the interests of persons who independently have made certain experiments and investigations during the period, believing that a patent would be expiring. It would be premature of me to outline at this stage the form of Amendment that I am proposing to put forward.

Lord CAWLEY

I support the noble Lord, Lord Belstead. It is a fact that the same invention will often arrive at the Patent Office from different parts of the Kingdom at the same time. Getting one's patent in as quickly as possible is of the greatest necessity for a patentee. It seems somewhat hard luck on a patentee if he must gamble between being anticipated and getting 20 years and not being anticipated and getting 16 years.

Lord ORAM

I recognise the importance of the issues raised by the three noble Lords. I am grateful to Lord Belstead for indicating that possibly the answers could be provided more effectively in writing. I shall gladly take up this matter and let him have a letter on the matter. Noting what the noble Lord, Lord Lloyd of Kilgerran, has said, I would certainly include him in that correspondence as, indeed, I would include the noble Lord, Lord Cawley. I would point out now that there will be an opportunity later in the Bill, when we come to deal with transitional provisions, when these matters can be explored further. Hopefully, the correspondence can take place so that the discussion at that later stage can be better informed.

Clause 22, as amended, agreed to.

Clause 23 [Patent not to be impugned for lack of unity]:

6.38 p.m.

Lord LYELL moved Amendment No. 105:

Page 19, line 22, after ("patent") insert ("or to an amendment of a specification").

The noble Lord said: This clause seems brief and fairly uncomplicated. Nevertheless, there are two small suggested Amendments and it might be for the convenience of the Committee if I speak to them together. We believe that these Amendments are in the form of clarification. They seek to improve the clause so that where a patent specification for some reason has been amended, this particular case is treated in the same way as the original patent. I think it is under Clause 24 and also under Clause 34, among other clauses, that the comptroller has power to amend a patent. It seems to us that it would be logical and would prevent any possible injustice if the amendment to that patent were treated, for this purpose in this clause, as a patent.

Dealing with the unity of the patent, we are told that unity is not necessarily a ground for objection to the patent after the patent has been granted, once the broad inventive concept has been disposed of. But, from this broad inventive concept, other claims may have been submitted as separate inventions. Once submitted, they no longer will be linked by this broad concept. If these separate inventions are submitted, we believe that there is always the chance that some, or all of them, will require to be amended in due course during search and examination. Do the Government not consider that this pair of Amendments meets the case where an inventor has to, may require to or may merely desire, with the concurrence of the comptroller, to amend his claims? I hope the Amendments clarify the clause and improve the Bill. I beg to move.

Lord ORAM

I can be quite brief in reply to the noble Lord, Lord Lyell, because we agree with him that amendment of a patent specification in post-grant proceedings should not give rise to objection on the grounds of lack of unity of invention. We accept the point that he made. At this point I would rather not accept the Amendments simply because we should like to look at the drafting of Clause 23 again with a view to putting down a Government Amendment at a later stage. In principle, I accept what the noble Lord has said.

Lord LYELL

That is admirable news and is indeed an admirable reply. I am very grateful to the noble Lord for the reply that he has given and the fact that the Government are going to be kind enough to do the drafting and see how our concept and ideas can be fitted into this clause. We hope to improve the Bill. With the kind reply that the noble Lord has given, I am pleased to beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 23 agreed to.

Clause 24 [General power to amend specification after grant]:

Lord ORAM moved Amendment No. 107:

Page 19, line 28, after ("section") insert ("and to section (Amendments of applications and patents not to include added matter) below,").

The noble Lord said: This is another consequential Amendment. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 108:

Page 19, line 32, leave out subsection (2).

The noble Lord said: This is again a consequential Amendment. I beg to move.

Lord BELSTEAD

I have almost certainly missed something; but it seems to me that in cutting out subsection (2) one is cutting out a most important subsection which removes the protection to competitors who could be turned otherwise into infringers. I feel sure that the Government have dealt with this in some other way somewhere else, but I am not aware at the moment where this is. It just seems to me that this subsection, which is important, is being deleted.

Lord ORAM

I understand that this matter is picked up in Amendment No. 295. Perhaps the noble Lord would like to check that and return to the point later if he is not fully satisfied.

Lord BELSTEAD

I am grateful to the noble Lord. It is hardly surprising that I had not reached so far as Amendment No. 295; but I now have and I understand the situation.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 110:

Page 19, line 36, leave out from ("be") to end of line 40 and insert ("allowed under this section where there are pending before the court or the comptroller proceedings in which the validity of the patent may be put in issue.").

The noble Lord said: Amendments Nos. 110 and 288 are consequential. Clause 24 deals with amendments to the specification of a patent on application by the proprietor of the patent and provides that no such Amendments should be allowed when certain other proceedings are pending before the court or the comptroller. I hope that that is sufficient explanation. I am a little doubtful.

Lord BELSTEAD

This Amendment cuts out references to both infringement and revocation. I am wondering whether those two "sins" are covered by reference to the validity of the patent. I do not know whether the noble Lord can give me a reply to that. If he cares to glance at the subsection, it will read: No such Amendment shall be allowed under the section where there are pending before the court or the comptroller proceedings in which the validity of the patent may be put in issue". By wording it like that, one has cut out any reference to either revocation or infringement. I am wondering whether revocation and infringement are covered by reference to validity.

Lord McCLUSKEY

If I may offer a "Stop Press" reply, I understand that the matter is picked up by Amendment No. 287 which the noble Lord, like myself, may not have yet perused with the care which it deserves.

Lord BELSTEAD

The noble and learned Lord is indeed kind. It is a mystery tour through later Amendments. Little by little we are picking up more information. I will put a ring round that Amendment and accept what the noble and learned Lord says as being true.

On Question, Amendment agreed to.

6.46 p.m.

Lord ORAM moved Amendment No. 111:

Page 20, line 5, leave out ("the application") and insert ("a patent").

The noble Lord said: This Amendment corrects a drafting slip. Clause 24 is about amendment of the specification of a patent by the proprietor of the patent and Clause 24(6), which provides for third party opposition to an Amendment, should clearly refer to the application for amendment being made by the proprietor of the patent. I beg to move.

On Question, Amendment agreed to.

Clause 24, as amended, agreed to.

Clause 25 [Amendment of register and certificate on death, etc., of applicant]:

On Question, Whether Clause 24 shall stand part of the Bill?

Lord ORAM

Clause 25 deals with the rare case where it is found after the grant of the patent that the proprietor had died or, in the case of a firm, had ceased to exist before the grant was made. It enables the comptroller in this circumstance to amend the register of patents and the certificate issued to the proprietor on the grant so as to record the name of the person to whom the patent should have been granted. The clause reproduces Section 20 of the 1949 Act which appears to have been introduced in order to prevent the patent being regarded as never having been granted. This result may have arisen under the 1949 Act since because of the saving for the Royal Prerogative in Section 102(1) of that Act no person had an absolute right to the grant of a patent. It could therefore be argued that a grant to a person who at the time of grant was non-existent was really no grant at all. However, since the Bill does not preserve the saving for the Royal Prerogative, the premise on which the provision of Clause 25 is founded is no longer valid and the clause is unnecessary. In any case, Clause 25 is a provision concerning a procedural matter and not substantive law and is more appropriate to the rules. I beg to move.

Clause 25 negatived.

Clause 26 [Restoration of lapsed patents]:

Lord ORAM moved Amendment No. 112:

Page 20, line 18, at end insert ("to the comptroller").

The noble Lord said: This is a drafting change which makes it explicit that the application for restoration must be made to the comptroller. At present the comptroller's jurisdiction is only to be implied from reference to him at lines 26 and 28. I beg to move.

On Question, Amendment agreed to.

6.50 p.m.

Lord LYELL moved Amendment No. 113:

Page 20, line 19, leave out ("one year") and insert ("eighteen months").

The noble Lord said: With this Amendment, we come to a particular point of interest concerning renewal fees and the restoration of lapsed patents. Although I am not a patent agent and, indeed, until the end of last year I was not intimately connected with this immensely complicated subject, I am given to understand that most cases of lapsed patents occur or rather, are first noticed, when the time comes to pay the renewal fee. Assuming that neither the patent agent nor the Patent Office are habitually incompetent, or indeed that the owner of the patent is not an habitual late payer, it seems that the omission to pay the renewal fee will be noticed when the fee is tendered for the second year.

Normally, no one would tender payment early, and thus it can easily be understood that when payment is due, say, on the 1st January, 1977, the patent agent is told that he has not paid the renewal fee for 1976. I understand that renewal fee is payable within 12 months, and it would appear that the renewal fee has to be paid within the calendar year of 1976. Then, when the patent agent comes along to pay the fee for 1977, promptly and correctly, he will find that his prompt payment in respect of 1977 will not ensure that the patent has not lapsed. We wonder whether it is not reasonable for a patent agent, when paying a renewal fee—which I understand in any case may be paid up to six months after the due date—to have some small element of grace, since the act of payment will in all probability represent the first occasion when he or anyone else is made aware of the previous omission. That omission, as noble Lords will know, could have very grave consequences. Indeed, the patent could lapse and then all the procedures would have to be gone through again in order to restore it. There is also a risk that someone else might be able to obtain a patent for a similar invention, or the patent might be permanently lost.

We believe this ultimate penalty is too grave a penalty for what we regard as a minor oversight. I acknowledge it may well be an annoying oversight from the point of view of the Patent Office, but we should be very grateful to hear the Government's view on that ultimate sanction. We understand that the Bill proposes a 12-month period, whereas I understand that under the 1949 Act no patent lapsed if a fee were tendered within three years. Possibly three years is rather a long time: we would ask for 18 months. I beg to move.

Lord ORAM

The argument put forward by the noble Lord in support of his Amendment was that failure to pay a renewal fee may not be discovered until the time arrives for paying the renewal fee for the following year. What the noble Lord said sounded very reasonable and kindly, but I am sorry to tell him there are at least three reasons why the Government do not feel able to accept what may seem, on the face of it, to be a reasonable Amendment. First, when considering the period during which an application for restoration may be allowed, it is necessary to pay close regard to the uncertainty which is created for third parties who, knowing the patent has ceased to have effect, are themselves contemplating going into production. To increase the period, as the noble Lord proposes, would increase that uncertainty.

Secondly, under the European system, it has been accepted that applications for the restoration of rights must be made within 12 months to the European Patent Office. Clause 26 is completely in line with that, and it would be in no one's interest to adopt a different practice for the British Patent Office. Thirdly, we feel it is unnecessary to increase the period, because the Patent Office are prepared to issue reminders. Administratively, that really takes account of the points made by the noble Lord.

Lord LLOYD of KILGERRAN

I should like to add a cri de coeur to this matter over a point to which the noble Lord, Lord Lyell, did not refer. If there is a failure to pay the fee, it represents a very serious liability on the patent agent. He may be sued for negligence, and I have known very serious cases to arise because of an oversight of that kind, and the agent has found himself in considerable difficulty. Having regard to the fact that payment of the fee can be made six months in arrears under Clause 22(3), and having regard to the fact that the noble Lord, Lord Oram, said that the noble Lord, Lord Lyell, had put forward a reasonable Amendment in a reasonable manner, I wonder whether further sympathetic consideration might be given to some relief over this matter.

Lord CAWLEY

Of course, all patent agents take out substantial insurance policies against this kind of thing.

Lord ORAM

I am glad to have that inside information from an expert, put forward in reply to another expert. However, I did not say that the noble Lord had put forward a reasonable Amendment: I said that it sounded reasonable—which is a rather different matter.

Lord BELSTEAD

Before my noble friend speaks, I think it might be wise if we were to look at Amendment No. 114. I do not know what my noble friend will do about the Amendment, but it really asks for further jam to be put on the top of jam, in the sense that he is asking for another month to be put on top of an 18-month period. If I have any influence with my noble friend, I would advise him not to press that very far as I cannot see there is a very strong case for it. But, despite what my noble friend Lord Cawley has said, I hope the Government will give a little thought to this. If they do not want the period of eighteen months, what would appear to be self-evidently wrong is that on the very day you are paying your fee for the new year, you may be told in the same breath, or by return of post, by the Patent Office that they are very glad to have received that fee but they are terribly sorry that the patent has now lapsed because, by a matter of two days, you have run over your time.

I wonder whether the noble Lord might urge the Government to look at this again, perhaps from the point of view of importing part of Amendment No. 114 into Amendment No. 113, and giving, say, one month's grace over and above the period of one year. I think that is all we are asking for—a sensible administrative arrangement—despite what the noble Lord said as regards the European Convention, just to make sure that when the new year's fee is paid one does not find that by a few days one has overrun the renewal date.

Lord ORAM

That sounds even more reasonable than what the noble Lord, Lord Lyell, said, and I will give an undertaking to look at it again. I think that, if anything is forthcoming, it will be on the administrative level rather than in the form of an Amendment to the Bill. I should not like to forecast the outcome at this stage, but I will give that undertaking to the noble Lord.

Lord LYELL

I am very grateful for the support I seem to have had, certainly from one Member of the Committee. I was fascinated to hear one of the reasons given by the noble Lord, Lord Oram. I think we might be able to use that as a very interesting hook on which the noble Lord could dangle his case. I believe that the third reason he gave for my Amendment being unnecessary was that the Patent Office were prepared to issue reminders. To me, this means that they do not already do this. I was unaware that the Patent Office were prepared to issue reminders and to take some action to assist patent agents. If the Patent Office are prepared to issue reminders in due time—say, one or two months before the renewal fee is payable—this might go some way to alleviate our fears. However, when the noble Lord talked about uncertainty for third parties, I wondered whether the suggestion of my noble friend Lord Belstead, of a reasonable administrative period of one or two months, would obviate considerable expense, as well as the risks for patent agents to which the noble Lord, Lord Lloyd, referred.

If I likened the noble Lord, Lord Oram, to a bowler at cricket, I would say that he has at least removed a bail, if not one of my stumps, with his comment on the precedent in the European Patent Convention. But I would ask whether he would again go carefully over all the reasons, because the reason that the Patent Office were prepared to issue reminders was totally unexpected and this might go some way towards meeting the case. Nevertheless, I still persist in my belief -in which I believe I am supported by those on this side of the Committee— that the Amendment seeks something which is reasonable, and I should like to pursue these discussions further, although possibly not in Committee. With that, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

7.2 p.m.

Lord ORAM moved Amendment No. 115:

Page 20, line 31, leave out ("specified") and insert ("allowed").

The noble Lord said: This Amendment is a direct consequence of Amendment No. 100, dealing with page 19, line 15. The further period is not a period specified by the comptroller, but a period which he allows on request. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 116:

Page 20, leave out line 36 and insert ("any unpaid renewal fee and any prescribed additional fee").

The noble Lord said: This Amendment is intended to clarify the situation, which is to be the same as under the existing law. Before a patent can be restored, two kinds of fees must be paid: first, the renewal fee, failure to pay which led to the lapse of the patent, and any other renewal fee which has become due for payment in the meantime; and, secondly, such additional fee as may be prescribed. As presently drafted, the "additional fee" can be interpreted as being the same as the "additional fee" which is payable under Clause 22(3), as a condition for extending the grace period for paying renewal fees. The Amendment makes clear that it is not the same. Under present practice it is somewhat higher, being in the form of a penalty, and the intention is to continue this practice. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 117:

Page 20, line 39, leave out from ("requiring") to ("have") in line 40 and insert ("compliance with any provisions of the rules relating to registration which").

The noble Lord said: This is a purely drafting Amendment which makes no material change. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 118:

Page 21, leave out line 8 and insert ("subsection (6) below").

The noble Lord said: This Amendment is a simple drafting Amendment, which identifies subsection (6) as the provision conferring the right. I beg to move.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 119:

Page 21, line 10, at end insert ("or acts of the same nature").

The noble Lord said: This Amendment is intended to seek some clarification. At the end of line 10, we see the words "do that act", and we believe that in this context the word "act" could give rise to some ambiguity. Subsection (5) contains the words: a person began in good faith to do an act which would constitute an infringement", and so on. We are seeking some explanation as to whether the mere beginning of what could be a lengthy process entitles any person to continue with that action at a certain time or place. Alternatively, does the word "act" in this context entitle that person who is acting in good faith to carry out a whole continuous series of processes, all possibly dependent on the first action?

I should not like to go to extremes and suggest that the infringement might consist of an entire chain of power stations, or an enormous chemical processing plant with a series of interrelated activities and plants. But it seems to me that there is some ambiguity in the words, "do that act", and that is why we have proposed this Amendment. We hope that it might clarify the position, and permit a more liberal interpretation to be placed upon this subsection. I beg to move.

Lord ORAM

The intention of this Amendment, as the noble Lord has explained, is to make clear that if in good faith a third party begins to do something in the period when the patent has ceased to have effect, he may continue to do it after the patent is restored without his being liable for infringement. For instance, if during that period a third party in good faith uses a process or makes a product covered by the patent, he must have the right to continue use of the process or manufacture of the same product. We agree with this, but we believe that Clause 26(5) and (6) has this effect. However, we are prepared to look at the point and to consider what the noble Lord has said in support of his Amendment. If on further reflection it seems desirable to make the position still plainer than we now believe it to be, a Government Amendment will be put down.

Lord BELSTEAD

Before my noble friend responds, may I ask the noble Lord this question? When I was reading Clause 26(5) and (6), I wondered about an act, which was started between the time when the patent ceased to have effect and the time when it was restored, for the manufacture of a certain kind of tin-opener, and when the person concerned, acting in good faith, had done little more than begin to install the necessary machinery in order to produce 500 tin-openers a day. I then wondered whether it would be taken that he had made, "effective and serious reparations to do such an act" if he then put his machinery into operation and produced not only 500 tin-openers a day but 5,000. From reading the text at the top of page 21, I do not know the answer to my question, and I would hazard the guess that even the noble and learned Lord, Lord McCluskey, might not give me an exact answer. It is for that reason that, if the Government feel that some extra clarification is necessary, we shall be very grateful.

Lord ORAM

I will take those points into consideration in conjunction with the Amendment and the points which have been made by the noble Lord, Lord Lyell.

Lord LYELL

Naturally my noble friend Lord Belstead presented a much | more florid example than I was prepared to give. We are very grateful to the noble Lord, Lord Oram, for the way in which he has received the Amendment and for his promise to examine it further. I do not think that there is anything else that I want to say. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

7.10 p.m.

Lord ORAM moved Amendment No. 120:

Page 21, line 24, at end insert— ("(8) Where a patented product is disposed of by any person to another in exercise of a right conferred by subsection (6) above, that other and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor.").

The noble Lord said: I beg to move. The Bill already provides protection against infringement actions for purchasers who obtain patented goods from a person, other than the patentee, who has a right to deal in the goods. Such protection is given by Clauses 33(5) and 111. On reflection, it is right also to give this protection in a case where the goods are obtained from someone who has a right under Clause 26(6). The Amendment that I move therefore fills a gap.

On Question, Amendment agreed to.

On Question, Whether Clause 26, as amended, shall stand part of the Bill?

Lord LLOYD of KILGERRAN

Very briefly, may I say that Clause 26 as it originally stood in the Bill caused very grave concern to practitioners in the field and also to industrialists. I should like to thank the Government very much for the improvements which they have introduced as a result of the Amendments we have discussed in connection with this clause. I should like to make the further plea, that a certain period of time should be given for a person who forgets to pay the renewal fee, a point which was discussed in an earlier Amendment moved by the noble Lord, Lord Lyell.

The noble Lord, Lord Oram, gave three reasons why he had to reject that Amendment. The noble Lord, Lord Lyell, dealt with the third one when he referred to the fact that now reminders would probably be given by the Patent Office. The second reason that the noble Lord, Lord Oram, gave was that the Bill had to be in line with the European system, and I should be grateful if he could indicate to me how he justifies the fact that the Bill must be in line with that system. Is he saying that in respect of the lapsing of a national patent the United Kingdom comptroller has no discretion and cannot have discretion because of what the European Convention, or the European system has laid down?

There are two aspects to many of these matters. One of these important aspects is that a national patent system is still in being. In giving as his reason that there must be harmony between the European system and the United Kingdom national system over relaxation of the general principle of giving relief to a man who forgets to pay the fee, I am wondering whether no discretion is left to the comptroller to deal, as a matter of justice, with a difficulty of this kind.

Lord ORAM

I do not think that it is an absolute requirement. I was making the point that since the European system prescribes the period of 12 months and that since a large purpose of the Bill is to bring our practice and law into line with the European Convention, it would be in nobody's interests to adopt a different practice for the British Patent Office. It is not an absolute requirement but a wish to conform if there is no strong reason against. It was in connection with this Amendment that I undertook to look at the whole question, in particular making the point that I thought that it would be an administrative rather than a statutory solution. I think we can leave it at that. I reiterate the undertaking which I gave earlier.

Lord LLOYD of KILGERRAN

I thank the noble Lord.

On Question, Clause 26, as amended, agreed to.

Clause 27 [Surrender of patents]:

7.15 p.m.

Lord ORAM moved Amendments No. 121:

Page 21, line 32, leave out from ("and") to end of line 33 and insert (",as from the date when notice of his acceptance is published in the journal, the patent shall cease to have effect, but no action for infringement shall lie in respect of any act done before that date").

The noble Lord said: Clause 27 enables a patentee to offer to surrender his patent, and subsection (3) provides for the comptroller to accept the offer and declare that the patent shall cease to have effect. The purpose of the Amendment which I am now moving is twofold. First, in order to give certainty it identifies the date on which the patent ceases to have effect as being the date when notice of the comptroller's acceptance is published in the journal. Until that date the patent remains effective, and it follows from this that the patentee could sue for any infringement which occurred before that date. This, however, could put third parties to unnecessary expense and difficulty in defending themselves, bearing in mind that the real reason for the offer to surrender is because the patentee realises that the patent is invalid and wishes himself to avoid the trouble of an application for revocation of his patent. The second purpose of the Amendment is therefore to provide that no action shall lie in respect of any infringement before the date on which the patent ceases to have effect. I beg to move.

On Question, Amendment agreed to.

Clause 27, as amended, agreed to.

Clause 28 [Nature of, and transactions in, patents and applications for patents]:

Lord McCLUSKEY moved Amendment No. 122:

Page 21, line 35, leave out ("Except in Scotland").

The noble and learned Lord said: Amendment No. 122 is to leave out the words "except in Scotland" at the beginning of Clause 28, Perhaps at this hour I might be permitted for one moment to unburden myself of a matter which has been troubling my conscience since the debate began. I understand that one's geographical origin can be betrayed by the way that one pronounces the word which is the subject matter of the Bill. The noble Baroness, Lady Tweedsmuir of Belhelvie, joined the ranks of those speakers who pronounced "patent" with a long "a". I am not sure whether the present Deputy Chairman of Committees has declared himself on the matter. The noble Lord, Lord Oram, has slid from patent to join the noble Lord, Lord Belstead, who has impeccable Southern origins, and who pronounces it as "pay-tent". I hope that I shall be forgiven if I continue to call it patent.

In moving Amendment No. 122, may I refer to Amendments Nos. 124, 125, 126, 127 and 128 and also to Amendment No. 130. The matter here concerns Amendment No. 128 which puts in a new clause. The other Amendments remove from Clause 28 all references to Scottish legal terms. This Amendment adds a new clause to the Bill dealing separately with the nature of, and transactions in, patents and patent applications in Scotland. It is preferable to make separate provision with regard to these matters for England and Wales on the one hand and Scotland on the other, on account of certain differences in the legal concepts and terminology used in the two systems. The new clause will have as nearly as practicable the same effects in Scotland as will Clause 28 South of the Border. The separation of the provisions relating to the two legal systems into two separate clauses should also add to the clarity of the provisions. So at this stage I beg to move Amendment No. 122, and in due course I shall move the others formally.

Lord LYELL

I, too, am one of the speakers in your Lordships' Committee from North of the Border. I have been pronouncing the term "patent" with a short "a", ever since I became acquainted with this particular measure. I am sure the Committee is grateful for the very clear way in which the noble and learned Lord, Lord McCluskey, has explained to us the provisions of the new clause, and indeed that the new clause will bring the Scottish law into line with the law South of the Border. Perhaps I might be permitted to apologise to the Committee. I understand that earlier in the Committee deliberations I did not refer to the noble and learned Lord. Lord McCluskey, as being learned in the law and I hope he will take this apology in the spirit in which it is offered.

On Question, Amendment agreed to.

7.21 p.m.

Lord CAWLEY moved Amendment No. 123:

Page 21, line 36, leave out ("(without being a thing in action)").

The noble Lord said: This is a probing Amendment. Most practitioners in the; art know of letters patent for inventions, things or choses in action. I can only imagine that now that letters patent for inventions will no longer be granted and because a new statutory right is being created—by implication, but nevertheless a new statutory right exists—it is no longer a thing in action, and we should like elucidation as to why this provision has been put into the Bill. I beg to move.

Lord McCLUSKEY

I hope the English lawyers present will forgive me if I venture into this field. The "thing in action" does not survive in the cold climate North of the Border. Clause 28(1) is designed to establish a code which regulates the creation and transfer of patents, applications for patents and rights in or under them. In this respect it is like Section 73 of the Companies Act 1948, which makes similar specific provision in respect of shares in companies. The appropriate provision for Scotland is Section 455 of the same Act.

The new code is tailored to the nature of patents, whereas the rules governing things in action are not and are in many respects difficult to apply to patents, patent applications and the like. Moreover, the new code will facilitate operation of the registration system provided for in the next following clauses of the Bill. In keeping with the general policy of the Bill to make as nearly as possible the same provisions in relation to United Kingdom patents, applications, and so on, as are made under the European Patent Convention in relation to their counterparts, it becomes necessary for the United Kingdom law to put it beyond doubt that applications for patents are objects of property capable of being transferred and otherwise dealt with. That is the explanation which I would offer to the noble Lord, Lord Cawley.

Lord CAWLEY

I am most grateful to the noble and learned Lord for that explanation. I do not think I can say much more. I never thought a "chose in action" was of very great importance but now apparently, in relation to patents, it has been abolished. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord McCLUSKEY moved Amendments Nos. 124 to 128 en bloc,

Page 21, line 40, leave out subsection (2).

Page 22, leave out lines 5 and 6. Page 23, line 16, leave out from beginning to second ("and"). Page 24, line 24, leave out from ("assignment") to second ("a") in line 25 and insert ("or mortgage of"). Page 25, line 34, leave out ("or assignation").

The noble and learned Lord said: With the leave of the Committee, I beg to move en bloc Amendments Nos. 124, 125, 126, 127 and 128, to all of which I have already spoken.

On Question, Amendments agreed to.

Lord McCLUSKEY moved Amendment No. 129:

Page 22, line 39, at end insert ("or to bring proceedings under section 56 below for a previous act").

The noble and learned Lord said: I beg to move Amendment No. 129. Under the existing law it is doubtful whether, on an assignment of a patent, the assignee can sue for infringements which took place before the assignment, since, at the time when they occurred, he had no interest in the patent and so suffered no injury. After the assignment, the assignor may not wish to pursue claims for such infringements, assuming that he has the right to do so. The subsection permits the parties to the assignment to agree contractually that the assignee shall have the right to sue for past infringements. It also permits the same right to be conferred by contract on an exclusive licensee. Thus, under the new code the point will no longer be in doubt.

Clause 53 of the Bill empowers a Government Department to use a patented invention for the services of the Crown (as defined in Clause 54(3)) and Clause 53(5) requires such use to be paid for, either upon terms to be agreed between the Department and the proprietor of the patent or, in default of agreement, to be determined by the court on a reference under Clause 56. Such use by the Government Department is not infringement of the patent (Clause 53(1)) and so the right to bring proceedings under Clause 56 for the Section 53(5) payment is not covered by the wording of lines 38 to 39 of the subsection as drafted. As it is desired to enable assignees and exclusive licensees to take contractual assignments of the right to recover payment for past Crown use of patented inventions, the Amendment is needed in order to extend the provisions of Clause 28(8) to such assignments. I beg to move.

On Question, Amendment agreed to.

Clause 28, as amended, agreed to.

Lord McCLUSKEY moved Amendment No. 130: After Clause 28, insert the following new clause:

"Nature and transactions in, patents and applications for patents in Scotland.

(.—(1) Section 28 above shall not extend to Scotland, but instead the following provisions of this section shall apply there.

(2) Any patent or application for a patent, and any right in or under any patent or any such application, is incorporeal moveable property, and the provisions of the following subsections and of section 33(3) below shall apply to any grant of licences, assignations and securities in relation to such property.

(3) A licence may be granted, under any patent or any application for a patent, for working the invention which is the subject of the patent or the application.

(4) To the extent that any licence granted under subsection (3) above so provides, a sub-licence may be granted under any such licence.

(5) Any patent, any application for a patent, or any right in or under any patent or any such application may be assigned, and security may be granted over it.

(6) Any assignation or grant of security under this section may be carried out only by probative or holograph writing.

(7) An assignation of a patent or application for a patent or a share in it, and an exclusive licence granted under any patent or any such application, may confer on the assignee or licensee the right of the assignor or licensor to bring proceedings by virtue of section 59 or 67 below for a previous infringement or to bring proceedings under section 56 below for a previous act.").

The noble and learned Lord said: This also is one of the group to which I have already spoken. I beg to move Amendment No. 130.

On Question, Amendment agreed to.

Lord ORAM

Before we pass to Clause 29, may I say that I think we have made satisfactory progress. We feel so on this side of the Committee, and I hope others do. Therefore, this might be the point to move that the House be resumed.

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

House resumed.