PATENTS BILL [H.L.]

HL Deb 15 March 1977 vol 380 cc1478-577

4.2 p.m.

House again in Committee.

Debate resumed on Amendment No. 247.

Lord LLOYD of KILGERRAN

The object of my suggestion that these matters of dispute should be determined by a tribunal is to save expense to the individual inventor, to the small firm, and to avoid stifling innovation in invention by giving the Crown such great powers where it appears that the only course to take to get a settlement of a dispute is to go to the court. I am grateful to the noble Lord, Lord Harmar-Nicholls, for his general support of my Amendment, and I detected in the reply of the noble and learned Lord, Lord McCluskey, a Celtic sympathy to the matters I was proposing. However, as I understand him, his argument was that my Amendments were not necessary; but with the greatest respect to him, I should like to suggest that it would be of great help for the objectives that I have in mind in putting forward these Amendments, if there could be included in the Bill clear words indicating that a tribunal should be or could be set up.

This would not be an ad hoc tribunal in the way that the noble and learned Lord referred to it, because such tribunals would not necessarily have the air of finality. It is necessary to have finality to such a dispute, and by agreement the parties go along to a tribunal of persons with knowledge of industrial affairs for a final decision, in the same way as so many hundreds of firms and individuals went to the Royal Commission on Awards to Inventors after the last war to settle their disputes in relation to inventions, patented or otherwise.

It would be helpful for the main objectives which I have in mind, and which I have indicated, if the form of the tribunal was set out in the Bill. It would also be helpful to indicate in the Bill that the costs were to be paid by each party themselves, and that the tribunal would not have power to award costs against either of the parties appearing before it. Therefore it seems to me that even from a general psychological point of view it would be very helpful in resolving such disputes and in saving expense if the form of the tribunal could be mentioned in the Bill itself. I have listened carefully to what the noble and learned Lord has said and I do not propose to press the Amendment, but I may return to it at another stage after I have read in Hansard what the noble and learned Lord has said. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord McCLUSKEY moved Amendment No. 252: Page 50, line 2, after ("Wales") insert ("or Northern Ireland").

The noble and learned Lord said: This is a small Amendment, simply allowing Crown use disputes to be referred to a circuit judge or an arbitrator in Northern Ireland, as in the case of England and Wales. I beg to move.

On Question, Amendment agreed to.

4.6 p.m.

Lord McCLUSKEY moved Amendment No. 253:

Page 50, line 5, at end insert— ("(5) One of two or more joint proprietors of a patent or application for a patent may without the concurrence of the others refer a dispute to the court under this section, but shall not do so unless the others are made parties to the proceedings; but any of the others made a defendant or defender shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.").

The noble and learned Lord said: This new subsection is parallel to Clause 64, which noble Lords will have seen, and its purpose is simply to put the position of joint proprietors in Crown use proceedings on the same footing as in infringement proceedings. The Amendment also has the effect of implementing a recommendation of the Banks Committee (which can be seen in paragraph 434 of the report) that it should be made clear that Government Departments may deal with joint proprietors as a single entity for the purpose of settling terms in respect of Crown use. That is all it does. I beg to move.

On Question, Amendment agreed to.

Clause 56, as amended, agreed to.

Clause 57 [Special provisions as to Crown use during emergency.]:

On Question, Whether Clause 57 shall stand part of the Bill?

Lord LLOYD of KILGERRAN

This clause gives very wide powers to the Crown in relation to the use and exercise of inventions. It seems to me that these powers are far too wide. Therefore I should like to ask the noble and learned Lord whether any other countries of the EEC have such wide powers in relation to inventions. I have particularly in mind the powers which the Crown has, as set out in subsection (1)(d), (e) and (f). In this Patents Bill these very wide powers of the Crown are required for the promotion of the productivity of industry. What does that mean? Why should it be necessary to have these wide powers in regard to the exericse of inventions for promoting productivity of industry, commerce and agriculture—the three spheres mentioned in the clause?

It is proposed in paragraph (e)—and I do not understand why this should be necessary—to have these wide powers in relation to inventions: for fostering and directing exports and reducing imports, or imports of any classes, from all or any countries and for redressing the balance of trade;". Lastly, in paragraph (f), the powers are, generally for ensuring that the whole resources of the community are available for use, and are used, in a manner best calculated to serve the interests of the community… I ask why, in a Patents Bill dealing with inventions, should it be necessary to reserve powers of such wide categories? I fully realise that the noble and learned Lord may not wish to answer the question at this stage; but no doubt he will let me know the answer, if not now, then at a later date.

Lord McCLUSKEY

I am indebted to the noble Lord for remaining on his feet until a messenger brought to me the Patents Act 1949. But I think that the noble Lord and the Committee should know that provisions of this kind have in fact been contained within our law under Section 49 of the Patents Act 1949, and have given rise to no difficulty. That is the only answer that I would offer at the moment, but it will be found that precisely these provisions are paralleled in Section 49 of the 1949 Act. In so far as the other countries are concerned, perhaps I could return to that matter when I deal with the similar question which was raised by the noble Lord, Lord Lloyd of Kilgerran, when he spoke on Clause 55 stand part.

Lord LLOYD of KILGERRAN

May I, with due modesty, indicate that I rather expected that that would be at least part of the answer that the noble and learned Lord would receive; namely, that these provisions were in the 1949 Act. Therefore, I assume his argument follows that because they are in the 1949 Act they must be in the 1977 Act. May I therefore ask the noble and learned Lord a supplementary question? How often have those powers under the 1949 Act been used in relation to inventions connected with the paragraphs (d), (e) and (f) to which I have referred?

Lord McCLUSKEY

I cannot specifically answer that but, of course, the period of emergency which was referred to in that Act was a limited period, as no doubt the noble Lord, Lord Lloyd of Kilgerran, knows. I merely refer to that to show that there was a precedent for them; and I should have thought that, speaking as one lawyer, in effect through the Committee, to another, that might have produced a twinge of sympathy.

Lord LLOYD of KILGERRAN

Whenever the noble and learned Lore, speaks I have twinges of sympathy, of course, but we have progressed since 1949. We are in a technological age. I understand that the noble Lord, Lord Wallace, wants to communicate with the noble and learned Lord.

Lord McCLUSKEY

It was merely to enable me to answer the specific point raised by the noble Lord. The answer is that they have not been used.

Lord LLOYD of KILGERRAN

I rather anticipated, again, if I may say so, that that would be the answer of the noble and learned Lord. May I therefore ask him this? Would he consider why these powers should be introduced? I know from my own experience that when foreign manufacturers want to deal with Government Departments in relation to inventions for the services of the Crown—and "for the services of the Crown" is a very wide term in this country—there is a reluctance on their part to get embroiled in activities where their inventions might be interfered with for the purposes set out in paragraphs (d), (e) and (f). I do not propose to press the matter any further, but I have raised it and the noble and learned Lord has been kind enough to give me several fairly impromptu answers.

Clause 57 agreed to.

Clause 58 [Meaning of infringement]:

4.12 p.m.

Lord LYELL moved Amendment No. 255: Page 51, line 13, leave out ("whether for disposal or otherwise") and insert ("for one of these purposes").

The noble Lord said: It might be for the convenience of the Committee if I speak to Amendments Nos. 255 and 257 together, which I think Members of the Committee will see are identical except for the fact that they occur in separate places in Clause 58. The words in the clause at the moment, "whether for disposal or otherwise", do not seem to appear in the Community Patent Convention. However, in the Bill that we are discussing now, Clause 58 provides that an infringement occurs if a person, where the invention is a product…makes, disposes of, offers to dispose of, uses or imports the product… We find that in subsection (1) (a); and in paragraph (b) we find that, where the invention is a process, he uses the process or he offers it for use without consent, there is an infringement. Then, in paragraph (c), if a person, where the invention is a process,…disposes of, offers to dispose of, uses or imports…or keeps any such product", et cetera, there will be an infringement. What we are concerned with are the words "whether for disposal or otherwise" which are added to paragraphs (a) and (c).

In Article 29 of the Community Patent Convention, the nearest that that Convention comes to the words "whether for disposal or otherwise" seems to be to prohibit what is called the "stocking" of a product; and where the invention is a process obtained from a product, again "stocking" is prohibited. We would have thought that if the Government had wished to add this particular term "stocking" to Clause 58(1)(a) and (c) of our Bill, then that small addition would have brought the whole of Clause 58(1) into line with the Community Patent Convention. On the other hand, there is the possibility that the Government may have reasons for not wishing to include this term "stocking", which occurs in the Community Patent Convention, in paragraphs (a) or (c). But neither option makes the words "whether for disposal or otherwise", which we find in (a) and (c), necessary, and the effect of these two minor Amendments is to delete these particular words in paragraphs (a) and (c) from the Bill because we believe they are not absolutely necessary. For that reason, I beg to move.

Lord ORAM

I anticipated that the noble Lord's reasons for moving this Amendment were in connection with the European Patent Convention, and that he had in mind the problem of the "stocking" of a patented product. It seems that his proposal is a drafting change with a view to excluding from infringement the mere "stocking" of a patented product. The Bill was drafted with this intention, and I should like to refer the noble Lord to subsection (5)(a) which specifically states that an act such as keeping a product is exempt from infringement if it is done privately and for non-commercial purposes. However, it may be that that is not sufficient to meet the noble Lord's point. I am prepared to look at it again, and if on reflection I feel that the Bill could usefully be improved certainly I shall table an Amendment at a later stage. I should say at this stage that I do not anticipate that when the matter has been looked at again such an Amendment will be necessary, but I appreciate the point that has been raised and will undertake to look into it.

Lord LLOYD of KILGERRAN

I have listened very carefully to what the noble Lord has said with regard to the proposed Amendment, but I have some difficulty in understanding why the Government wish to retain the words "dispose of" and "disposal" in this clause when, in regard to Clauses 41 and 42, the Government Amendments were to replace the same words used in those clauses by the word "supply". The word "dispose" is used in Clause 58, and also elsewhere in the Bill, such as Clauses 46, 49 and 53, in addition to "supply" and "sell". I am not sure what is intended to be conveyed by the word "disposal" in this connection. It seems to me that the use of the words "dispose" and "disposal" in these subsections requires some reconsideration, and I wonder whether the noble Lord will be good enough, perhaps, when he is reconsidering the Amendment before him, to consider my suggestion that the words "dispose" and "disposal" could perhaps be replaced by the word "supply", with the suitable prepositions, as was done by the noble Lord when he proposed a large number of Amendments in relation to Clauses 41 and 42. The Amendments were numbered 207 to 222.

Lord ORAM

I take note of what the noble Lord has said and give the undertaking that when the matter that the noble Lord, Lord Lyell, has raised is looked at I will take into account also what the noble Lord, Lord Lloyd, has said about the word "dispose". Here again, I anticipate that a satisfactory reply will be possible without an Amendment, but we shall see.

Lord LLOYD of KILGERRAN

I thank the noble Lord very much indeed.

Lord LYELL

I should like to thank the noble Lord, Lord Oram, for going some way towards considering this series of two Amendments. I am grateful for the fact that he wishes to consider the Amendment to see what can be done to improve the Bill, or to incorporate our particular Amendment. However, he did not hold out much hope, and I would be interested to know what indication we shall have that he has considered it if he is not going to put down an Amendment or take any further overt action; but doubtless we can have further consultations of a formal or informal nature. With that, I beg leave to withdraw the Amendment at this stage.

Amendment, by leave, withdrawn.

4.20 p.m.

Lord BELSTEAD moved Amendment No. 256:

Page 51, line 15, leave out ("or") and insert— ("( ) where the invention is a process").

The noble Lord said: This is another drafting Amendment. The words in Clause 58(1)(b): …when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent", qualify the offering of a process for use. The words, "when he knows" et cetera do not refer to the using of a process which is an absolute offence and infringement under Clause 58 and needs no word to qualify it. Article 29 of the Community Patents Convention in paragraph (b) separates these two forms of infringement from each other by a rather different use of grammar. Surely subsection 1(b) of this clause must do so, too! This Amendment does so by making the use of a process and the offering for use separate paragraphs. I realise this may not be the best method of achieving the desired result, but I would suggest that some Amendment is necessary here.

Lord ORAM

My attitude to this Amendment is somewhat similar to my attitude to the last one. We agree with the intention of the Amendment, but here again we feel the Bill as drafted has the same effect. I accept that the point is worth looking at and I am prepared to give consideration to this Amendment, although I repeat that we believe that the phrasing at the moment is satisfactory. If, in our view, an Amendment is not necessary, I will communicate to noble Lords opposite our conclusions in relation to this and to the last Amendment.

Lord BELSTEAD

I am grateful to the noble Lord. I know that there is a tremendous weight of Amendments down and that he and his officials are having to work very hard. On this Amendment, I would say that Parliamentary counsel might get his English grammar cut more quickly. It should be possible for somebody to decide whether you have to use or do not have to use a conjunction in this case. Also, it ought to be possible to look at CPC Article 29 and to reach a conclusion. My conclusion is that this Amendment is necessary and, when the noble Lord comes to look at it, I hope that he and his officials will find that I am right. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord ORAM moved Amendment No. 257A: Page 51, line 32, at end insert ("in the United Kingdom").

The noble Lord said: The Amendment is intended to restrict liability for infringement by a supplier to those cases where he knows or it is obvious that the goods he is supplying are intended for putting the invention into effect in the United Kingdom. This brings the provision of Clause 58(2) into line with Article 30 of the Community Patent Convention.

On Question, Amendment agreed to.

On Question, Whether Clause No. 58, as amended, shall be agreed to?

4.25 p.m.

Lord LLOYD of KILGERRAN

This clause is the most important clause in the Bill. As it defines the infringement of a patent, it is essential that the matter of what constitutes infringement should be clarified in order to reduce expense in any dispute that may arise. The wording of this clause has caused very considerable anxiety among members of the Patent Bar and the Law Society and I propose, in view of the importance of this clause, to raise a number of points at this stage. I apologise for not giving notice to the noble Lord of these points but I should be grateful if, at some time before Report stage, he could indicate what the answers are.

I should like to make one general comment. There is in patent law a very well-settled body of case law which has developed over a long period and which has established what constitutes infringement in the present law. Many lawyers, including myself, feel it would be most unfortunate to put all this body of case law aside and to start afresh with a statutory definition which, in the construing of the new words in the Statute, can only lead to a considerable length of time in the hearing of many cases. I appreciate that the Banks Committee recommended a step of this kind but, with respect to the Banks Committee, I think that the recommendation was largely mistaken. If a definition of infringement is to be included, in my view it should merely codify the existing well-settled law as to infringement using well known terminology, the ambit of which is settled by existing case law.

My first question is whether the words "product" and "process", which we find throughout this clause, are wide enough to cover all patentable inventions. I should like to suggest that perhaps the word "article" should be used in places in order to cover other inventions which are the subject of patents. It may be necessary, if that suggestion is accepted, that there should be amendment of Clause 118(1). Subsection (4) of Clause 58 on the meaning of infringement raises a new matter, the exhaustion of rights. So far as I am aware, that is a new term in United Kingdom patent jurisprudence, at any rate in the Patent Acts, and I wonder whether it really is necessary to have subsection (4) in the Bill. I can see no reason for its inclusion, having regard to such recent decisions of the courts as the Parke Davis case; because it seems now possible for an exclusive licence to be granted in the United Kingdom and a different exclusive licence to be granted in other countries of the Community. In such circumstances, it would seem onerous upon a patentee to ensure that purchasers of goods in one country have to know of a condition that they could not be used in another country.

The next point is that subsection (5) of Clause 58 leaves out reference to the body of a ship. Subsection (5)(d) deals with an infringement in the use of tackle and other equipment on the ship; but it does not mention the ship itself, which may be the subject of a patent. The words "body of a ship" occur in the present Act. They also occur in the Paris Convention on industrial property rights, and again in the European Patent Convention. My suggestion is that the noble Lord might perhaps be good enough to look at Clause 58(5)(d) to include, in addition to the contents of the ship, the body of the vessel itself.

The next point is that this clause in relation to infringement excludes any reference to the aiding and abetting of infringement. It may be that the noble Lord will indicate why that aspect of infringement has been left out. It seems to exclude what is well known among patent practitioners as the "pith and marrow doctrine" in relation to infringement. The pith and marrow doctrine is well set out in case law as to its significance. In brief, it means that where the substance of an invention has been taken, as claimed in the specification, the infringement occurs, although there may be a difference of words which does not really affect the substance of the invention.

The last point is this. I am advised that this clause on infringement seems to include the case of a person finding and infringing an article. This person, although he has merely found the article, is not using the article but would be liable to action for infringement. I apologise to the noble Lord for having raised so many issues but it is necessary in the public interest that this clause, particularly as it defines infringement, should be clear from the outset.

Lord ORAM

The noble Lord has apologised for not giving me notice on these matters; but he said that he did not expect an answer today. That is sometimes even more comforting than giving me notice of detailed points. The noble Lord raised a number of serious issues that need examination. It would be wrong for me to comment on them off the cuff, and I will seek advice about them. I will make a general point in relation to his opening sentences when he queried the need for the clause giving a definition of infringement. It is absolutely necessary to have a definition of infringement in the Bill, and to have one which is on all fours with the Community Patent Convention; otherwise there would develop a duality of standards, and this would be recognised as being contrary to the common aim of the Parties opposite as well as of the Government. So the clause is justified. As to the more detailed points that the noble Lord raised, I will have them looked into and make sure that at some later stage he gets his answer.

Lord LLOYD of KILGERRAN

I am very much obliged to the noble Lord.

Clause 58, as amended, agreed to.

Clause 59 [Action for infringement of atent]:

On Question, Whether Clause 59 shall stand part of the Bill?

4.32 p.m.

Lord LLOYD of KILGERRAN

This clause is associated with the action for infringement. It says that an action for infringement may be brought by the proprietor of a patent. The first matter I should like to draw to the Committee's attention is this: Should it not be made clear that the proprietor should be the registered proprietor, and that if an action is to be brought by the patentee he should be registered as the proprietor? If an unregistered proprietor is allowed to bring an action, this is unreasonable because the person threatened with the action ought to be able to find out from the register of patents whose rights are in question and from what quarter the threat of litigation may come.

My second point concerns subsection 1(b). It says that in an action for infringement an application may be made for an order to deliver up or destroy any patented product in relation to which the patent is infringed, or any article in which that product is inextricably comprised. My suggestion is that subsection (1)(b) is far too narrow. An order for delivery up or destruction will normally, in accordance with the present practice of the courts, apply to such things as jigs and fixtures which are used to make the infringing product. An order for delivery up is usually ancillary to the injunction granted by the court and is to ensure that the injunction is carried out. Therefore would the noble Lord at some stage let me know whether or not he considers hat subsection (1)(b) is too narrow in its application?

Lord ORAM

Again, I will look at the points that the noble Lord has raised. The remedies listed under subsection (1) are those which are available under existing law. I know from his comments to my noble and learned friend Lord McCluskey on an earlier Amendment that that does not necessarily convince the noble Lord, Lord Lloyd of Kilgerran; but unless there is some real objection to the existing law, then we are right to carry them forward into this Bill.

Clause 59 agreed to.

Clause 60 agreed to.

Clause 61 [Relief for infringement of partially valid patent]:

4.35 p.m.

Lord ORAM moved Amendment No. 257B: Page 54, line 21, leave out ("shall") and insert ("may").

The noble Lord said: The Amendment corrects a drafting slip in subsection (2). As drafted, the court is obliged to grant relief if the patent was framed in good faith and with reasonable skill and knowledge. This was not intended; as is evident from subsection (1), the intention is that relief should be in the discretion of the court and the amendment to subsection (2) makes this clear. This is a drafting change with that objective. I beg to move.

On Question, Amendment agreed to.

Clause 61, as amended, agreed to.

Clause 62 [Right to continue use begun before publication of patent]:

The DEPUTY CHAIRMAN of COMMITTEES (Lord Nugent of Guildford)

I should tell the Committee that if Amendment No. 257C is agreed to, I cannot call Amendment No. 258.

Lord ORAM moved Amendment No. 257C: Page 54, line 33, leave out from ("does") to end of line 43 and insert ("in good faith an act which would constitute an infringement of the patent if it were in force or makes in good faith effective or serious preparations to do such an act shall have the rights conferred by subsection (2) below.").

The noble Lord said: This Amendment makes two changes to Clause 62. First, it picks up the point which has been noted by the noble Lords opposite in their Amendment No. 258 that Clause 62(1) as drafted only gives a right to continue an act which would constitute an infringement of the patent as defined in Clause 58(1). We agree with the noble Lords that acts which would infringe under the terms of Clause 58(2) should also be covered. The Amendment I am moving does this and so subsumes Amendment No. 258 put down by the noble Lords. Secondly, my Amendment substitutes "good faith" for the two conditions (a) and (b) presently referred to in subsection (1) of Clause 62. We consider that this makes the position clearer, and also makes it consistent with Clause 26(5), which was accepted on the first day of the Committee stage. I beg to move.

Lord BELSTEAD

We are grateful to the noble Lord for meeting, in the first part of his Amendment, the point that we would have made in our Amendment No. 258. Of course we will support the Government's Amendment.

Lord LLOYD of KILGERRAN

May I ask whether there is a precedent for this in the European Patent Convention? This clause is new and, as the Committee will realise most of my interventions on the Bill endeavour to reduce the expense of litigation. It may be desirable, for some reason which I do not appreciate, to make inquiries as to whether a potential infringer has made preparations in good faith. But it must be understood that to do so opens up the scope of very lengthy trials and inquiries. It gives a defence to a potential infringer which was not in previous Acts.

The public is best served by having certainty in relation to many of these patent matters and, particularly, in the clauses dealing with infringement. Thus, a patentee knows that his patent is either invalid and he loses the dispute, or he succeeds. Further, an infringer knows where he is. But to have an inquiry as to whether an infringer has made preparations "in good faith" is something which can usually be looked at only after lengthy research, and probably then only in part. Therefore, until the parties get into court, that point is open to doubt. Perhaps the noble Lord will be kind enough to refresh my memory as to why it was thought necessary to introduce this aspect of "good faith", and whether it is being done because of some clauses in the European Patent Convention which I may have forgotten.

Lord ORAM

If they are there then, like the noble Lord, I have forgotten them; but, as he knows, the general intention of the Bill is to bring our legislation into conformity in large measure with the European Convention, and I would expect that to be the case here. It is inevitable that there are some phrases, such as "good faith", which have to go into a Bill, which I agree are not absolutely precise, and that leads to difficulty both administratively and in the courts. However, I am advised that the phrase is the most suitable one and I do not think there is any cause to query it.

Lord BELSTEAD

I think my noble friend Lord Lyell will be querying it when we come to Amendment No. 263. That relates to Clause 67, but it is the same point, and it was when the noble Lord, Lord Lloyd, mentioned the Community Patent Convention that I opened my ears. When my noble friend comes to move Amendment No. 263, he will be expressing anxieties about the use of the expressions "good faith" and "reasonable skill and knowledge", which mean different things to different countries who are members of the Convention. Perhaps I had better say no more at this stage, except that I believe we share the anxieties of the noble Lord, Lord Lloyd, and we shall be raising them at a later stage.

Lord ORAM

I thank the noble Lord for indicating that, and possibly there will be an interval which will be sufficient for me to seek advice and to give a satisfactory answer.

Lord LLOYD of KILGERRAN

I should also like to express my thanks to the noble Lord, Lord Belstead, in that he appears at least to be moving towards my views as to the objectives which would be served in trying to cheapen the resolving of disputes under the Bill. This is the first occasion that I can remember during the course of our many long hours of debate on patents that I have had the support of the noble Lord, Lord Belstead, in relation to an Amendment which has as its objective the taking care of the interests of the small inventor and also of the small firm, which are not always able to employ expensive professional advice.

Lord BELSTEAD

The noble Lord is quite right to take me to task for not having supported him previously on this particular aspect. If he glances down the list of Amendments he will see Amendment No. 271, in the names of my noble friend and myself and also that of Lord Cawley. We shall once again be supporting him in this respect when we come to that Amendment, but I shall say no more at this stage.

On Question, Amendment agreed to.

Lord BELSTEAD had given Notice of his intention to move Amendment No. 259: Page 55, line 2, at end insert ("and acts of the same nature").

The noble Lord said: This Amendment is similar to Amendment No. 119, which was moved during a previous Sitting by my noble friend Lord Lyell. The Government then said they would be kind enough to look at this matter to see whether Amendment No. 119 was necessary. Perhaps at the same time the Government would be kind enough to look also at Amendment No. 259 with the same objective in mind.

Lord ORAM moved Amendment No. 259A:

Page 55, line 16, at end insert— ("(4) Where a patented product is disposed of by any person to another in exercise of a right conferred by subsection (2) above, that other and any 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 this Amendment. Where a person has a right, by virtue of Clause 62(2), to dispose of a patented product it is evident that subsequent dealings in the product should also not constitute an infringement, otherwise the value of the right given by Clause 62(2) would be seriously weakened. It is the purpose of this Amendment to make it clear that such subsequent dealings I are not infringements. I beg to move.

On Question, Amendment agreed to.

Clause 62, as amended, agreed to.

Clause 63 agreed to.

Clause 64 [Proceedings for infringement by a co-owner]:

Lord ORAM moved Amendment No. 259B: Page 55, line 34, leave out ("if") and insert ("any of the others").

The noble Lord said: I beg to move this Amendment. It is purely a drafting Amendment and does not alter in any way the effect of Clause 64. I beg to move.

On Question, Amendment agreed to.

Clause 64, as amended, agreed to.

Clause 65 agreed to.

Clause 66 [Effect of non-registration on infringement proceedings]:

4.47 p.m.

Lord ORAM moved Amendment No. 259C:

Page 56, line 15, leave out from ("is") So end of line 28 and insert ("subsequently infringed, the court shall not award him damages or order that he be given an account of the profits in respect of an infringement occurring before the transaction, instrument or event is registered unless—

1. (a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
2. (b) the court is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.").

The noble Lord said: I beg to move Amendment No. 295C. Clause 66 was intended to give effect to the Banks Committee's recommendation that unless a change of ownership or grant of an exclusive licence is registered within six months no damages should be recoverable for acts of infringement committed before registration. The purpose of this Amendment is to make the clause reflect the Banks Committee's recommendation more closely and also to make it clear that it applies to an account of profits as well as to damages. Perhaps at this stage I might say that in my view this Amendment takes care of the point made by the noble Lords, Lord Lyell, Lord Belstead and Lord Cawley, in their Amendments Nos. 260 and 261 and, on reflection, it may be that they will consider that it is unnecessary to move those two Amendments. I beg to move.

Lord LYELL

As the noble Lord, Lord Oram, has so kindly suggested, we believe that this particular Amendment meets the points we have raised in our two subsequent Amendments. The noble Lord explained clearly the objective of his Amendment and we are at least some way towards appreciating that the Amendment alters and improves the clause.

Lord LLOYD of KILGERRAN

I, and other practitioners, read Clause 66 before the noble Lord introduced this Amendment. It would appear that the new proprietor who registers late could never get damages for infringements committed after he registers. Therefore, an assignee who has had the patent assigned to him together with all rights of action, could be precluded from obtaining the benefit of the assignment. It would therefore be necessary to join this assignor in the action. Although I listened very carefully to what the noble Lord said in support of his Amendment, may I ask him whether it is to deal with the point that I raised?

Lord ORAM

That sounded to me a somewhat new point, rather than the point which I covered in my explanation of the Amendment. If it turns out to be a new point which needs further comment, I will certainly see that that is made.

Lord LLOYD of KILGERRAN

I am very grateful to the noble Lord.

On Question, Amendment agreed to.

Clause 66, as amended, agreed to.

Clause 67 [Infringement of rights conferred by publication of application]:

4.51 p.m.

Lord LYELL moved Amendment No. 262: Page 56, line 34, leave out ("or an account of profits").

The noble Lord said: It might be for the convenience of the Committee if I speak to Amendments Nos. 263 and 267 as well. My remarks may become somewhat intermingled, and I begin by commenting on No. 267, but I hope that the Committee will see that the totality of my remarks is bound up with this series of three Amendments, which deal with the same clause and, I hope, with the same point.

Clause 67 is concerned with the rights of a patent applicant against an infringer as soon as the patent application has been published. Clearly, the intention of Clause 67 is sound, because if publication carried no rights against infringement anyone at all could effectively steal an invention and the patent application would do nothing to stop this. Clause 67 follows a recommendation of the Banks Committee, and we believe that it is covered by, and has similar provisions to, the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty. Article 34 of the Community Patent Convention provides that between the date of publication of an application and the date of grant, compensation which is reasonable in the circumstances may be claimed from an infringer.

But we do not believe that this point in the Convention is what Clause 67 provides for, because what it says is that damages against an infringer, or an account of profits in respect of any infringing act, may be claimed against an infringer between publication and grant. Thus we can see that the Bill is giving the patent applicant the right to full compensation against an infringer, if the infringement occurs between publication and grant, whereas the provisions in the Community Patent Convention give only compensation which is reasonable in the circumstances. We believe that this is a particularly germane and important point, which seems to justify Amendment No. 267, which would write these words into the clause.

However, the problem which the Community Patent Convention recognises about infringement between publication and grant is that if an applicant makes a very broad claim, or series of claims, others will be left in a great deal of doubt as to whether or not they will be liable to infringe an application for the patent. From such researches as we have been able to make, we understand that in Germany and the Netherlands a very long period of time can elapse between publication and grant. So that applicants often make very broad claims, which they hope will ward off anyone who might be liable to infringe an application. In these circumstances, it seems just that a person who infringes an application at an early stage should not necessarily be liable for full damages. We hope that Amendment No. 267 recognises this point, and also brings Clause 67 into line with the Community Patent Convention.

We have suggested Amendment No. 262, because it seems that an account of profits, as defined in respect of an infringing act, will not be necessary if the fuller wording of our main Amendment, No. 267, is accepted. However, I am afraid that there is still one important problem. I apologise for the fact that my remarks are somewhat lengthy and a little complicated, and I hope that the noble Lord, Lord Oram, will be able to bear with me a little longer.

Under subsection (1) of Clause 67, where an application for a patent has been published, the applicant shall have certain rights against an infringer, and it goes on to provide that references in Clauses 58 to 60 and 64 to 66 shall be construed as including references to any such application. It is here that we come on to the points which were touched on by my noble friend Lord Belstead, and which were germane to the points raised by the noble Lord, Lord Lloyd of Kilgerran. We believe there is a problem here, in that Clause 60, taken as a whole, includes subsection (3) of that clause, which expressly exempts an infringer of a patent which has been amended after the infringement was committed, …unless the court is satisfied that the specification of the patent…was framed in good faith and with reasonable skill and know edge.

We hope that the reason for this will be clear. If an applicant deliberately puts in a very wide specification and subsequently has to amend it, he cannot expect to claim damages for the infringement of the original very wide specification. My noble friend Lord Belstead touched on this earlier and said that good faith and reasonable skill and know edge will mean different things in different countries. As noble Lords will be aware, future patent applications will be coming to the Patent Office in this country, through the Patent Co-operation Treaty, from all over the world. If we remove subsection (3) of Clause 60 from the reference in subsection (1) of Clause 67—sub-section (2) of Clause 60 has no relevance in this case, so far as infringing is concerned—we are left with the reference to subsection (1) of Clause 60, which we consider is the only relevant subsection. We hope that subsection (1) of Clause 60 protects the infringer who is innocent because he was not aware, and had no reasonable grounds for knowing, that the patent existed.

There could be a problem as to what is to replace good faith and reasonable skill and knowledge. We hope that compensation "reasonable in the circumstances", which we find in the Community Patent Convention, would be the basis for assessing reasonable and fair damages against an infringer, and the effect of Amendment No. 267 is to insert those words. I apologise for the length and complication of my speech, and for going back to Clause 60, and I hope that the noble Lord, Lord Oram, and the Committee will understand that my remarks were tied up with, three separate Amendments. I beg to move.

5 p.m.

Lord ORAM

There was no need for the noble Lord, Lord Lyell, to apologise for taking due care in explaining the three Amendments with which he has dealt, for I may have to make a rather long reply. I am able to forecast that I shall give some, but not complete, satisfaction to the noble Lord. I agree with the noble Lord that Amendment No. 262 would bring the wording of Clause 67(1) into closer conformity with Article 34 of the Community Patent Convention and that it would be unreasonable and going too far to provide that the patentee should be entitled to an account of a defendant's profits arising out of an infringement which takes place between the date of publication of the application and the date upon which the patent takes effect. Until the patent is granted, the scope of the patentee's monopoly will be uncertain. We can well imagine that a person who contemplates doing some act which may infringe the patent when granted will, in the period before grant, be in a difficult position, because at the dale of publication of an application the claims made may be vague and indeterminate in scope—I think this was a point which the noble Lord himself made—and they will not have been examined by the Patent Office and, when the patent is granted, the claims allowed may be substantially different.

For those reasons, I am in a position to accept Amendment No. 262, but I am afraid that I must resist the other two Amendments. Amendment No. 263 specifies that the application of Clause 60 is to be limited to what is provided by subsection (1) of that clause. Frankly, we see no reason for this. Clause 60(2) will, without saying so in Clause 67, not apply in proceedings brought under Clause 67, since it relates to infringement of a patent during the grace period for paying renewal fees. However, Clause 60(3) will, and in our view should, apply. It is important that applications should be drafted in good faith and with reasonable skill and knowledge. In considering whether the applicant should be allowed to recoup any loss for an act by a third party in the period before grant, this is surely a factor that the court should take into account and, unless so satisfied about the drafting of the published application, it should refuse damages.

Since the noble Lord interpolated at this point his views about the phrase "good faith" and other similar phrases— and the noble Lord, Lord Lloyd of Kilgerran, did so as well in connection with an earlier Amendment—may I say that we accept that these terms will have to be interpreted and that I indicated earlier that this would be the case. However, we consider also that these terms are as clear as can be. In fact they are used in Article 122 of the European Patents Convention and in Article 28 of the Community Patent Convention. Having regard to the infinite variety of circumstances, it is not really feasible to use different words. Frankly, we do not believe that these words would cause difficulty for our courts or for the parties to a dispute.

May I now comment on the third Amendment to which the noble Lord spoke; namely, Amendment No. 267? This Amendment is, in his view, the important one, for it is directed to the main point that the noble Lords opposite are making. While I commend their desire that we should keep our law in line with the Convention, I am afraid that I must resist the Amendment. Once again we are discussing a matter in respect of which the effect desired by noble Lords opposite does not differ from that desired by the Government, but the words in which the required result is expressed differ. It is necessary to use terminology in the Bill which is appropriate to the legal framework within which the Bill fits. Infringement is a tort and, like all other torts which may be committed, the term "damages" is the correct term to define the appropriate remedy. This does not mean that in all cases a full measure of damages will be obtained by the patentee. On the contrary; in assessing the damages to be awarded the court will, as is usual, take account of all the relevant circumstances to ensure that only a reasonable amount is awarded.

For these reasons, as I hope to have made clear, I am recommending the Committee to accept the first Amendment which the noble Lord has moved, namely. Amendment No. 262, but I shall not be able to make a similar recommendation regarding the two subsequent Amendments.

5.8 p.m.

Lord LYELL

First, I think we had better take the good parts of the egg of the noble Lord, Lord Oram, if we can call it that, and thank him for his acceptance of the first of the three Amendments. So far as Amendment No. 263 is concerned, I should like to study at greater length what the noble Lord has said. Probably what he said was fairly reasonable, but it seems to me that here there is a slight case of the Chinese box. We are already considering "good faith" and "reasonable skill and knowledge". So far as I could understand what the noble Lord had to say, in a dispute as to whether an infringer had infringed a patent which might or might not have been fairly wide in its scope, the infringer would again be entirely dependent upon the court's interpretation of "good faith" and "reasonable skill and knowledge".

Of course we must be slightly disappointed that the noble Lord could not accept Amendment No. 263. We accept what the noble Lord has said: that a full measure of damages will not necessarily be awarded in the case of Amendment No. 267. However, we submit that this does not provide much of a guideline for any person who may wish to make, or produce, or carry on any process which might infringe a patent. In Amendments Nos. 263 and 267 we were looking for a little more certainty than we believe the Bill, as it stands, provides. We consider that the noble Lord's inability to recommend that the Committee should accept Amendments Nos. 263 and 267 means that the Government have taken half a pace backwards towards uncertainty in this area. Certainly we are grateful for the first mercy—that Amendment No. 262 will be accepted by the Government—but we should like to reserve our position in order to consider the reply which the noble Lord has given on the other two Amendments. As I am sure the noble Lord and the Committee are aware, we regard these two Amendments and, indeed, the whole of Clause 67 as very important. We hope that this clause will be considered to be more in line with the articles, both of the European Patent Convention and the Community Patent Convention.

On Question, Amendment agreed to.

5.10 p.m.

Lord LLOYD of KILGERRAN had given Notice of his intention to move Amendment No. 264: Page 57, line 1, leave out paragraph (b).

The noble Lord said: The object of this Amendment was to try to avoid the individual inventor or the small firm from being penalised because, when filing his original specification, he did rot employ a professional adviser and that the original specification was not as wide as it could be. Three further Amendments have been tabled in relation to the subsection which my Amendment proposed to delete, and in those circumstances I do not propose to move the Amendment but to await the result of the debate on the other three Amendments, which go some way towards assisting the individual inventor and the small firm who have not been to very good advisers and who could not afford advisers for the original specification which they filed.

Lord BELSTEAD moved Amendment No. 265: Page 57, line 3, leave out from ("but") to end of line 5 and insert ("the claims also of the printed specification published under section 13 above as interpreted by the descriptior and any drawings contained in it.").

The noble Lord said: The person calculating whether he would be infringing a patent which has only been published, will naturally refer to the claims in the specification published under Section 13. I suggest that such a person would be very unlikely to refer to any amended specification filed subsequently which might be lying at the Patent Office. I understand that it is normal for industry and commerce to receive regular copies of specifications which have been published under Section 13 and that it is wholly reasonable that infringement of these specifications should be liable for damages under this clause. However, I wonder whether it is reasonable to make anyone liable for infringing a later version of a specification which an infringer may well know nothing about and which, incidentally, would probably be narrower in scope anyway. It is to prevent that happening that this Amendment has been tabled. I beg to move.

The DEPUTY CHAIRMAN of COMMITTEES (Lord Nugent of Guildford)

Before I put this Amendment, I should explain to the Committee that if Amendment No. 265 is agreed to I cannot call Amendment No. 266.

Lord ORAM

I am grateful to the noble Lord the Deputy Chairman for pointing out the similarity between Amendments Nos. 265 and 266, because here is a case of great minds thinking nearly alike, in that noble Lords opposite have identified a problem which the Government also recognise. The two Amendments are indeed aimed at the same purpose, which is to make clear that it is the claims as interpreted by the description and drawings of the application as published under Section 13 which must be infringed. In the view of the Government, the drafting of Amendment No. 266 is superior to that of Amendment No. 265. In Amendment No. 265 there is a reference to "printed specification". I suggest that that is misconceived since Section 13 does not refer to printing. Therefore, I hope the noble Lord will recognise that the Government Amendment achieves the purpose which his Amendment seeks to achieve but with rather better drafting.

Lord BELSTEAD

I concede at once that the noble Lord is correct that almost certainly the wording "printed specification" is less attractive, at any rate, than the wording of the Government Amendment. However, the Government Amendment totally fails to meet the point which I sought to make when I moved my Amendment, because their Amendment refers to the "last specification to be filed". So I cannot support Amendment No. 266. Perhaps we ought to work out how we are going to proceed.

The DEPUTY CHAIRMAN of COMMITTEES

There is only one way we can proceed now. The question is that this Amendment be agreed to. As many as are of that opinion will say Content? To the contrary, Not-Content? I think the Not-Contents have it.

On Question, Amendment negatived.

Lord ORAM moved Amendment No. 266: Page 57, line 3, leave out ("last specification to be filed") and insert ("claims of the last specification to be filed (as interpreted by the description and any drawings contained in it)").

The noble Lord said: I spoke to this Amendment when replying to Amendment No. 265, but I recognised from what the noble Lord, Lord Belstead, said that he was not entirely satisfied. I do not wish in any way to "pull a fast one" procedurally. If there is a point which we need to take up at a further stage, that would be quite acceptable to me and we could look into it at Report stage. I beg to move.

Lord BELSTEAD

I do not want to destroy the harmony of the Committee, but I was seeking to say that in my view this Amendment should not be written into the Bill because as a matter of principle, for the reasons which I gave when I moved Amendment No. 265, my noble friend and I disagree with the intention behind the Amendment. Therefore, I would ask the noble Lord to leave the Bill as drafted and the Government could look at it to see what Amendment they should table for the Report stage.

Lord ORAM

In view of what the noble Lord has said, I will agree to withdraw this Amendment and to look at the wording again. It may well be that at Report stage I shall bring forward exactly the same Amendment, but at least we shall have the opportunity of discussing it further at that stage. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 67, as amended, agreed to.

Clause 68 [Remedy for groundless threats of infringement proceedings]:

5.18 p.m.

Lord ORAM moved Amendment No. 267 A: Page 57, line 9, leave out ("to which this section applies") and insert ("of a patent").

The noble Lord said: Where a patentee threatens another person with infringement proceedings, that other person may, under Section 65 of the 1949 Act, bring an action for threats against the patentee. The Banks Committee recommended in paragraph 275 of their report that an action for threats should not lie at the instance of a person actually making or importing a product for disposal or using a process. Clause 68 is intended to repeat the present Section 65 in substance, but with the modification recommended by the Banks Committee. The modification is intended to be effected by subsection (4). However, that subsection is at present defective in that in disapplying Clause 68 entirely to infringements which consist of making or importing a product or using a process, it may have a broader effect than intended. Therefore, the purpose and effect of Amendment No. 267E to subsection (4) is to avoid this defect by barring proceedings rather than disapplying the clause.

Therefore, it is really Amendment No. 267E which is the principal Amendment. I apologise to the Committee; I should perhaps have made it clear that I am speaking to Amendments Nos. 267A, 267B, 267D and 267E. We have put this forward because Amendment 267E revises subsection (4) of Clause 68 so that it more clearly reflects the Banks Committee's recommendation that it should not be possible for a person allegedly making or importing an infringing product for disposal or using a process to bring proceedings for threats. The Amendment does not change the intended purpose of subsection (4). The other Amendments, Nos. 267A, B and D, are consequential drafting changes. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 267B: Page 57, line 11, after ("may") insert (", subject to subsection (4) below,").

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 267C:

Page 57, line 17, leave out from ("unless") to ("the") in line 18 and insert— ("(a) the defendant or defender proves that").

The noble Lord said: As Clause 68 is drafted, the words "the defendant or defender proves that" may be read as applying to both subsection (2)(a) and (b) The intention, however, is that these words should apply only to subsection (2)(a), as is the case under the present law. The Amendment is designed to make that clear. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 267D: Page 57, line 20, leave out ("to which this section applies") and insert ("of a patent").

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 267E: Page 57, line 30, leave out from beginning to ("of") in line 31 and insert ("Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist").

On Question, Amendment agreed to.

Clause 68, as amended, agreed to.

Clause 69. [Declaration as to non-infringement]:

Lord ORAM moved Amendment No. 267F: Page 57, line 36, at beginning insert ("Without prejudice to the court's jurisdiction to make a declaration apart from this section,").

The noble Lord said: As it stands, Clause 69 would be construed as throwing doubt upon the existence and the extent of the court's inherent jurisdiction. The Amendment is, therefore, intended to make it clear that the inherent jurisdiction of the court to make declarations is not affected by the jurisdiction specifically conferred by Clause 69. I beg to move.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 268. Page 57, line 38, after ("court") insert ("or the comptroller").

The noble Lord said: I hope the Committee, and particularly the noble Lord, Lord Oram, will forgive me if once again I appear with not one, lot two, but a trio of Amendments. I think it might be for the convenience of the Committee that I should speak to Amendments Nos. 268, 269 and also Amendment No. 271. If I am prejudging or (reading on any ground or taking any of the points that might be raised by the noble Lord, Lord Lloyd of Kilgerran, may I convey my apologies in advance; I hope I shall not in any way preclude or prejudice the discussion of his Amendment which precedes No. 271. I hope it might be for the convenience of the Committee if I could combine my remarks on these three Amendments.

The Amendments have been put down in order to give the comptroller additional powers. First, we would wish that the comptroller should be enabled to give a declaration that someone or some person has not infringed a particular patent, and that is the main object of Amendment No. 268. Then we come to the second major point, this new clause, and it is providing that if the parties agree they can go to the comptroller over cases which involve infringement. We hope that this corresponds to Section 67 of the 1949 Act; indeed we believe it does. However, there is no longer any limit on damages that the comptroller can award; otherwise, the new clause after Clause 69 corresponds with Section 67 of the old Act.

It may appear to the Government, and indeed to the noble Lord, Lord Oram, that very little use has been made of the provisions of Section 67 in the 1949 Act. But we believe that with the increased power of the comptroller to revoke patents during their lifetime it could be that there will be a call for a cheap alternative to arbitration proceedings. This is the main reason for my noble friends and I moving the Amendment containing the new clause, which preserves the comptroller's power to hear infringement proceedings if both parties agree. Certainly at an earlier stage this afternoon the noble and learned Lord, Lord McCluskey, was pointing out that it was very important that the two parties should agree, and where they did agree they had a certain range of options open to them.

We also hope that the new clause lifts the limits in damages, which we understand are at present in the range of £1,000. This is the maximum that can be awarded by the comptroller under Section 67. We would hope that the Committee would consider this new clause, because if the present trend of costs in infringement cases continues we believe that in the future the parties may be more than ready to have an inexpensive alternative available. We hope that this Amendment will go some way towards the objectives which we heard expressed earlier in the day by the noble Lord, Lord Lloyd; but of course we look forward to hearing any further comments that he may have. I beg to move.

Lord ORAM

I do not quarrel with the noble Lord, Lord Lyell, for having spoken to the three Amendments that he indicated, although I agree with him that in terms of the discussion it may cut somewhat across the Amendment which the noble Lord, Lord Lloyd, intends to move later. But since the noble Lord, Lord Lyell, has spoken to these three Amendments—namely, Nos. 268, 269 and 271—I shall try to comment on those, and we will see how we go when we get to the speech which we shall hear from the noble Lord, Lord Lloyd.

First, may I refer to Amendment No. 268, the one the noble Lord has now moved. I am grateful to him for drawing the Government's attention to the point of the Amendment, which I am pleased to accept. Under the 1949 Act the comptroller does not have the power to make declarations as to non-infringement, but then under that Act the grounds on which he can revoke a patent under Section 33 are very limited compared to the grounds on which the court can revoke a patent under Section 32. However, under the Bill the comptroller will have the same revocation jurisdiction as the court and it seems both sensible and logical that he should have power to make declarations as to non-infringement. It is for that reason that we are prepared to accept the Amendment.

I can be almost as helpful to the noble Lord in relation to Amendment No. 269. Again, I am grateful to the noble Lord for this Amendment which seeks to make clear the intention of Clause 69. However, I should prefer to recommend to the Committee that we do not actually adopt this particular Amendment. We would wish to have a closer look at the actual drafting of this Amendment and bring forward a Government Amendment on Report to give effect to the noble Lord's intention. However, we accept it in principle.

Then there is Amendment No. 271, to which the noble Lord also spoke. This is another Amendment which we can accept in principle. I am aware that the Banks Committee recommended that Section 67 of the 1949 Act, which provides for the comptroller to have a limited infringement jurisdiction, should be repealed. The principal reason for this recommendation was that the procedure had been very little used and the Committee admitted that it had been offered no explanation for that. The fact that a provision has been little used is not necessarily a good reason for repealing it. I accept that the comptroller should retain an infringement jurisdiction though not in precisely the same terms as Section 67 of the 1949 Act.

As the comptroller will have a full revocation jurisdiction in future, it is right that his infringement jurisdiction should be exercisable either together with or separate from his revocation jurisdiction. I can visualise cases where this facility would be both useful and helpful and I note that the proposed new clause overcomes some of the major criticisms levelled at Section 67 of the present Act by the Banks Committee. It does not specify that the parties are not bound by the comptrollers' decisions in subsequent proceedings for infringement before the court. It does not limit the amount of damages which the comptroller may award and Clause 91 will provide a right of appeal to the Patents Court or the Court of Session. So I am also grateful to the noble Lord for introducing this Amendment. However, for drafting reasons, I ask him to consider withdrawing it. I undertake that a Government Amendment to the same effect will be tabled at a later stage.

Lord BELSTEAD

It is most refreshing to find the noble Lord and those who advise him overcoming what I would call "the official mind". In saying that, I mean no discourtesy whatever to members of the Civil Service. I refer to a sort of state of mind into which some of us fall from time to time which says, "This particular proposal is untidy and was recommended against in the last official report. It has not been used very much, so away with it". The official mind into which we sometimes fall does not very often trouble us with the possibilities that times have changed, that maybe the need for the provision of, for instance, this new clause, might manifest itself, and that the future might demand no deletion, but substitution, addition or preservation.

Joking apart, I am very glad that the noble Lord has agreed with this, but for a different reason. During the Second Reading debate on the Bill I, together with other noble Lords, heard my noble friend Lord Eccles, and certainly the noble Lord, Lord Lloyd of Kilgerran—who has made the point again today—and the noble and learned Lord the Lord Chancellor, refer to the expenses of litigation, not least litigation in the patent field. It was the noble and learned Lord the Lord Chancellor who jokingly said that perhaps the matter of patent lawyers' fees could receive some consideration. Many a true word is spoken in jest. To be serious, the preservation of Clause 69 in some form—and I am quite sure that my noble friend Lord Lyell will accept the Government's offer—will leave open an inexpensive route down which parties in some infringement cases may be able to proceed rather more frequently in the future than they have done in the past without diving too deeply into their pockets.

On Question, Amendment agreed to.

Lord LYELL had given Notice of his intention to move Amendment No. 269: Page 57, line 38, after ("doing") insert ("or intending to do").

The noble Lord said: I should have thanked the noble Lord, Lord Oram, at the conclusion of my noble friend's remarks on the previous Amendment. I should like to put on record my gratitude for his acceptance of Amendment No. 268, and the redrafting intentions behind the other two Amendments. I understand that the noble Lord wishes me to withdraw Amendment No. 269 because he will table a Government Amendment?

Lord ORAM

Yes.

Lord LYELL

In that case, I do not move it.

Clause 69, as amended, agreed to.

5.37 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 270: After Clause 69, insert the following new clause:

Proceedings for infringement of patent before comptroller or tribunal

.—(1) Any dispute between a proprietor of a patent or an exclusive licensee under a patent and any other person whether that person infringes the patent may, by agreement between the parties, be referred to the comptroller for determination, or to a Tribunal whose decision shall be final.

(2) Such reference may be made as a separate issue or conjointly with an application for revocation of the patent under section 70 below.

(3) If the comptroller or the Tribunal finds that the patent has been infringed relief by way of damages may be granted.

(4) Sections 61 and 67 above and section 97 below shall apply to a reference under this section.

(5) The Arbitration Acts shall not apply to proceedings before the comptroller or a reference under this section.

The noble Lord said: I am grateful to the noble Lord, Lord Lyell, for taking the course which somewhat straddles my Amendment. Therefore I find myself in an interesting position. The two Amendments prior to mine have been agreed in principle, if not entirely, and the Amendment following mine has also been agreed in principle. Those being the two sides of the sandwich, I am the meat in the middle because my Amendment differs from the subsequent Amendment in substance only in the fact that it suggests' that any dispute relating to infringement of the patent or licence should, by agreement, be referred not only to the Comptroller General but also to a tribunal.

I support the subsequent Amendment which says that the dispute can be referred to the Comptroller General of Patents. However, Amendment No. 270 suggests not only that the parties to the dispute should have the opportunity of sending the dispute to the Comptroller General, but also that by agreement they should be able to send it to the tribunal from which there would be no appeal—the decision of the tribunal would be final. In the case of a reference to the Comptroller General, his decision would not be final—one could appeal against it to the courts, and so on. The practical effect of introducing the Comptroller General's jurisdiction may be that it extends by one step the course of litigation in this matter.

I urge the Government to consider using a tribunal over which even the Comptroller General or a chartered patent agent, who have knowledge of the law in relation to patents, could preside. Persons associated with these industrial and technical matters should sit with him. This would give the kind of robust justice and expeditious hearing of disputes which industry normally requires. In patent disputes industry usually requires a fairly quick decision on these matters so that it can proceed with its other business. If a tribunal was used for this purpose it would reduce the costs because the fees of the counsel appearing before the tribunal would necessarily, in accordance with practice, be not as great as those that are usually charged in the High Court or even before the Comptroller General.

Therefore, my Amendment is the same in principle as the subsequent Amendment, except that I have suggested that not only do the parties have the opportunity of referring their dispute to the quasi-judicial tribunal, the Comptroller General with all that that means, but the dispute could be referred to this tribunal composed of men and women who know something about industrial affairs. I beg to move.

Lord ORAM

It is often the case that the most attractive part of a sandwich is that which is in the middle, but in this case I am afraid, from the Government point of view, the meat to which the noble Lord refers is less attractive than the two slices on either side of it. I have indicated our acceptance of what noble Lords opposite have put down, but I am afraid that I cannot do the same thing in regard to Lord Lloyd of Kilgerran's Amendment. It arises out of a point which he made at Second Reading; his concern, which we recognise, for the small inventor and the small firm who were precluded from fighting patent infringement actions by the enormous expense involved.

The Government share his concern and indeed my noble and learned friend the Lord Chancellor indicated that he shared that concern. I remember too that the Lord Chancellor suggested that the noble Lord, Lord Lloyd, with his expertise in these matters, might suggest ways in which the situation could be improved, and I acknowledge that that is something that the noble Lord, Lord Lloyd, has been attempting to do in moving this Amendment, by making it possible for infringement actions to come before both the comptroller and the tribunal which he has described. He will recognise that we have been over this ground somewhat earlier this afternoon, but nevertheless it is worth making a point or two in response to his moving of this Amendment.

I fear that I cannot accept the proposal that a new statutory tribunal should be set up. There are already many courses open to those in dispute about patent infringement. They may refer the matter to arbitration; they will, the Committee having accepted, I hope, the principle of Amendment No. 271, be able to ask the comptroller to resolve the dispute. Then, failing all else, they can go to court. I would ask the noble Lord what advantage would there then be in a new tribunal? It would not be cheapness of litigation since there is no reason to suppose that proceedings before three men will last less long than proceedings before one. It cannot be ease of litigation since it would be hard to devise a procedure simpler than that before the comptroller. It would not necessarily be speed of litigation which would be an advantage, since to find three men of the right qualities may well not be easy. And not, I fear, finality, in spite of the expressed words of the Amendment on this point, for it would always be possible to apply to the Divisional Court of the Queen's Bench Division for the decision of the tribunal to be quashed on the grounds of error of law or excess of jurisdiction.

The Patents Appeal Tribunal was in this situation until Section 87 of the 1949 Act was amended in 1971 to allow appeals to the Court of Appeal on points of law. I do not think that anyone connected with patents would wish to revert to that situation. The tribunal proposed by the noble Lord would also have a revocation jurisdiction, and I think that he concedes that Amendments Nos. 276, 278, and 279 are consequential on the proposal that he has moved. But the comptroller and the court both have a revocation jurisdiction, and I can see no advantage in setting up a new body with the same powers.

In short, I do not believe that the very desirable object which the noble Lord seeks will be achieved by this Amendment and the consequential ones, and it is for that reason that I resist them. In asking him to consider withdrawing it, I know he will have in mind the discussion that we had earlier on the Amendment moved by the noble Lord, Lord Lyell. I hope he will concede that at least we have gone along the road that he wants us to go, at least part of the way.

Lord LLOYD of KILGERRAN

I am grateful for the long and careful consideration which has been given to my Amendment. In the circumstances, I do not propose to press my Amendment.

Amendment, by leave, withdrawn.

Clause 70 [Power to revoke patents on application]:

Lord ORAM moved Amendment No. 272: Page 58, line 9, leave out from ("[...]o") to end of line 12 and insert ("a person not entitled under section 6(2) above to be granted that patent (alone or with other persons)").

The noble Lord said: This is a consequential Amendment to Amendment No. 34 which was made to Clause 6 and which was accepted by the Committee.

On Question, Amendment agreed to.

The DEPUTY CHAIRMAN of COMMITTEES (Baroness Wootton of Abinger)

Amendment No. 273. I have to call the Committee's attention to the fact that, if this Amendment is agreed to, I cannot call Amendment No. 274.

Lord BELSTEAD had given Notice of his intention to move Amendment No. 273:

Page 58, line 16, leave out paragraph (d) and insert— ("(d) the subject-matter of the patent extends beyond the content of the application for the patent as filed or, in the case of a patent granted on an application under section 7(3), 12(4) or 34 above beyond the content of the earlier application is filed;".

The noble Lord said: Amendment No. 273 will be met by Government Amendment No. 274. Therefore, I shall not move it.

5.46 p.m.

Lord ORAM moved Amendment No. 274: Page 58, line 17, leave out from ("in") to end of line 18 and insert ("any relevant application (within the meaning of section (Amendments of applications and patents not to include added matter) below) as filed ").

The noble Lord said: This is one of the series of Amendments that have been accepted at various stages by the Committee pending Amendment No. 295. Amendment No. 295, which I shall speak to briefly at this stage, proposes a new clause which deals with the prohibition on amendments adding matter, and deals with this prohibition in a comprehensive manner. Amendment No. 274 is a consequence of that Amendment. The purpose of all these Amendments which have been taken at various points in the Bill is to simplify the draft without affecting any material change. I beg to move.

Lord BELSTEAD

The reason why we from these Benches supported Amendment No. 274 which the noble Lord has just moved for the Government, and have withdrawn our Amendment No. 273, is that the Government Amendment will, as we wish to do, import Clauses 7(3), 12(4) and 34(4) into Clause 70(1)(d). In fact, the Government Amendment does that by reference to Amendment No. 295. It is on those grounds that we support Amendment No. 274.

As the noble Lord said that he would refer to Amendment No. 295, may I refer to it as well without going into any detail? I still disagree fundamentally with the Government view that they can use the words "matters disclosed" to refer to subject matter. I think it would be best if we waited and argued that out when we come to Amendment No. 295. For that reason, I am not standing in the way of these various Government Amendments which are being moved into the Bill by reference to Amendment No. 295, and to be consistent with that I shall support Amendment No. 274.

Lord LLOYD of KILGERRAN

A number of comments that I had intended to make about this provision have been partly met by the new clause tabled by the Government for insertion after Clause 71 dealing with proceedings in which validity of patent may be put in issue. While on my feet, I might tell the Committee that I shall be supporting in principle Amendment No. 280.

On Question, Amendment agreed to.

5.51 p.m.

Lord BELSTEAD moved Amendment No. 275: Page 58, line 21, at end insert ("provided that an application under paragraph (b) above may be made only by the person or persons who were entitled to the grant of the patent or by their successors in title.").

The noble Lord said: The effect of this Amendment is to prevent anyone objecting to the grant of a patent on the ground that it was granted to the wrong person unless the objector is the person who should have been granted that patent; that is, third parties may not object under the subsection. I will explain why the Amendment is being moved by referring to the Community Patent Convention. Article 57(1)(e) of that Convention, when read with Article 56(1), is absolutely specific on the point at which the Amendment is trying to get. Article 57(1)(e) provides the ground for objection, which is that the proprietor of the patent is not entitled to his patent. Then Article 56(1) provides that on that ground an application for revocation may be filed, …only by a person entitled to be entered in the Register of Community Patents as the sole proprietor of the patent or by all the persons entitled to be entered as proprietors. To me, that seems absolutely clear and it is to conform with that provision of the CBC that I move the Amendment.

Lord ORAM

The Amendment would limit the right to apply for revocation of a patent on the ground specified in Clause 70(1)(b) to the person who was entitled to the grant of the patent, which is what the noble Lord, Lord Belstead, indicated. The European Patent Convention imposes no such restriction on the revocation of European patents by national authorities. On the other hand, as Lord Belstead again indicated, the Community Patent Convention limits the right to apply for revocation in the way proposed by this Amendment and, as he indicated, the noble Lord feels that our procedure on this point should follow the Convention. However, there is a good reason for this approach being adopted in the Convention, since the European Patent Office is not empowered to decide for itself the question of entitlement to the grant of a patent. Such entitlement must first be decided by a national authority and, on request, the European Patent Office will recognise this decision and, if the decision is against the proprietor, will then revoke the Community patent.

No such limitation is imposed on the powers of the Patent Office. The question of entitlement may be referred to the comptroller or the court under Clause 7 or Clause 34 and he may decide. The practical reason that makes it necessary to limit the right to apply for revocation before the European Patent Office does not therefore apply in the case of a revocation action brought under Clause 70 of the Bill. In practice, we expect that the applicant for revocation on the ground of Clause 70(1)(b) will in most cases be the person entitled. However, we do not think it would be right to limit the right to apply for revocation to such person. If another person can show that the proprietor of the patent had no right to its grant, we feel that he should be able to revoke the patent. If he were not able to do so, he could not, for instance, commence manufacture within the terms of the patent claims without running the risk of an infringement action. It is surely right that, if sued for infringement of a patent, a person should be allowed to defend himself by alleging that the proprietor does not have a good title. I should also make the point that, under the present Statute, there is no such limitation on the right to apply for revocation. For all these reasons I must resist this Amendment, and I hope the noble Lord will see the virtue of the arguments I have put forward.

Lord BELSTEAD

I appreciate that the Amendment flies in the face of the "any person" provision in Clause 70(1), but I moved it to harmonise with the CPC, which of course is absolutely specific on this point; it is crystal clear on the subject. I should like to look at what the noble Lord said about the moment when a national patent office is no longer responsible for deciding the entitlement to the grant of a patent and the moment when the European Patent Office becomes responsible. I am afraid that I had not taken that on board as completely as I should have done. I will study what the noble Lord said because it seems extraordinary and untidy, to say the least, that the national patent office, in this case the British Patent Office, should have one set of rules for revocation from the point of view of when the patent was granted to the person dealt with under Clause 70(1)(b) whereas the European Patent Office will have a different rule. I will read what the noble Lord said on the subject and, in the meantime, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord ORAM moved Amendment No. 275A:

Page 58, line 21, at end insert— ("( ) Rules under section 11(4) and (8) above shall, with any necessary modifications, apply for the purposes of subsection (1)(c) above as they apply for the purposes of section 11(3) above.").

The noble Lord said: This Amendment is necessary to make it clear that a patent, whether a United Kingdom patent or a European patent designating the United Kingdom, for an invention which involves the use of a micro-organism may be revoked under Clause 70(1)(c) for failure to comply with rules mace under Clause 11(4) and (8).

On Question, Amendment agreed to.

5.58 p.m.

Lord ORAM moved Amendment No. 277: Page 58, line 28, after ("section") insert ("34 above or").

The noble Lord said: This Amendment is consequential on Amendments which have already been agreed to in respect of Clauses 34 and 35. As the Bill stood, the relationship between Clause 34 (determination of right to patent after grant) and Clause 70 (revocation) was not entirely clear, although the question referred to under Clause 70(1)(b) might be the same as that under Clause 34(1)(a). The effect of this Amendment is that if a person who claims that his invention has been pirated elects to go for revocation rather than proceed under Clause 34, he can obtain the same relief, subject to the same conditions, under that clause as an alternative to revocation.

Examples of cases where this provision might apply are where the revocation proceedings are brought as a counter-claim in an infringement action and where the complainant wishes to argue that, even if the invention is not his, the patent is invalid on some other ground. The purpose of the Amendment is thus to avoid the complainant having to choose between two types of action and to insure that there is neither advantage nor disadvantage to be gained or suffered by proceeding in one way rather than the other. I beg to move.

On Question, Amendment agreed to.

6.1 p.m.

Lord BELSTEAD moved Amendment No. 280:

Page 58, line 33, at end insert— ("( ) A decision of the comptroller or on appeal from the comptroller shall not estop any party to civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds referred to in subsection (1) above, whether or not any of the issues involved were decided in the said decision.").

The noble Lord said: If I may, I shall move Amendments Nos. 280 and 282 together.

The DEPUTY CHAIRMAN of COMMITTEES

Amendments cannot be moved together unless they are consecutive.

Lord BELSTEAD

I am so sorry. I shall move Amendment No. 280 and speak to Amendment No. 282, if I may. Under Clause 70, if the comptroller refuses an application for revocation—in other words, if he allows the patent to remain with the original proprietor—no further application to the court can be made without leave unless it is by way of appeal, and that is provided for in subsection (4). The result of an unsuccessful application may be that the applicant will then be sued for infringement. The unsuccessful applicant would be in an impossible position in such a case if he were not allowed to defend himself—an expression which the noble Lord, Lord Oram, used only a few moments ago on another Amendment.

The effect of Amendment No. 282 is to provide the right for someone to defend himself against an infringement charge after revocation proceedings and to make this absolutely clear. But I am advised that this is not enough because the law of estoppel requires new grounds for a counter-claim. Amendment No. 280 provides that any of the grounds set out in subsection (1) may be used as grounds for alleging invalidity of a patent after a revocation decision by or after an appeal from the comptroller. I beg to move.

Lord LLOYD of KILGERRAN

I rise briefly to support the submission of the noble Lord, Lord Belstead, in this matter. It seems essential that a new subsection should be inserted to prevent the party from being estopped from alleging invalidity of the patent in the circumstances set out.

Lord ORAM

Amendment No. 280 would have the effect of preventing the court from applying the doctrine of res judicata in certain cases. That doctrine is that the courts will refuse to hear again an issue previously raised between the same parties and previously adjudicated upon. Clearly the doctrine is in general a good one; it obviates repetitive litigation and enables the court to get on with other business. However, it is thought extremely unlikely that the courts would ever apply the doctrine of res judicata, where a defendant in infringement proceedings wished to raise the issue of validity as a defence. The Government have in fact already set down their own Amendment (No. 287), which introduces a new clause after Clause 70, and this sets out the occasions on which validity may be put in issue. Subsection (1)(a) of that proposed new clause covers the circumstances envisaged by the noble Lord's Amendment No. 280, and the Government would prefer to deal comprehensively with this topic in that new clause, rather than piecemeal, as would the proposed Amendment. That being so, I must resist the Amendment but I hope that the noble Lord may feel that his point is being catered for in the new clause.

Since the noble Lord, Lord Belstead, referred also to Amendment No. 282, I should like to indicate in relation to that Amendment that we would accept the principle, but that it is thought extremely unlikely that a defendant who had previously unsuccessfully applied under this clause for revocation of a patent would ever be refused leave to raise the issue of the validity of a patent if he were sued for infringement. In these circumstances, the Government accept that it would be better to make it plain that the doctrine of res judicata has no application in such circumstances. Consequently, I am happy, as I have said, to accept Amendment No. 282 in principle, but I should like to give further consideration to the way in which the Bill should be amended so as to achieve the desired objective. I hope, therefore, that the noble Lord will not press the actual wording of Amendment No. 282.

Lord LLOYD of KILGERRAN

I am very grateful to the noble Lord, Lord Oram, for raising the question of res judicata because it has always been a moot point among practitioners as to whether validity of a patent can in any event be res judicata. I understood the noble Lord to say that the Amendments which are to be introduced after Clause 71 are intended to avoid the question of res judicata being capable of being raised in the High Court after a decision of the comptroller.

Lord BELSTEAD

I was wondering what was the answer to that point. Subject to the answer, I must say that I am delighted with the reply of the noble Lord, Lord Oram. It seemed to me, as one with no legal mind at all, that Amendment No. 287, by inserting subparagraph (d) which states that the validity of a patent may be put in issue (d) in proceedings before the court or the comptroller under Section 70 above for the revocation of the patent absolutely meets Amendment No. 280. All that I can do is to apologise to the noble Lord for not having noticed that, though perhaps, as there are 300 Government Amendments to the Bill, I may be forgiven.

With regard to Amendment No. 282, I am extremely grateful to the noble Lord for saying that this provision should be put in because, from the advice I have received, I should have thought that this was right. I am still not sure what is the answer to the question put by the noble Lord, Lord Lloyd, but, pending any communication—perhaps by letter—from the Government, I can withdraw the Amendment because it and Amendment No. 282 will, in the first case, be catered for by Amendment No. 287 and, in the second case, probably be redrafted by the Government. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 70, as amended, agreed to.

6.9 p.m.

Lord BELSTEAD moved Amendment No. 282A: After Clause 70, insert the following new clause:

Effect of disclosure of matter on application for a patent where such disclosure occurs after filing earlier relevant application.

. Where an invention to which an application for a patent relates has the priority date of an earlier relevant application pursuant to section 5 above, then, notwithstanding anything in this Act, the comptroller shall not refuse to grant the patent, and the patent shall not be revoked or invalidated by reason only that any matter disclosed in the earlier relevant application was used or published at any time after the date of filing the earlier relevant application.

The noble Lord said: The reason for this Amendment is twofold. First, I think it necessary in order to continue protection which hitherto has been given by Section 52 of the 1949 Act. The effect of Section 52 is that, once a patent application has been filed in the case, for instance, of a company, that company may start to sell the goods protected by the patent application. In the case of an inventor, he may start to exploit his invention in one way or another and may publish the invention in a technical or a scientific journal. In addition, because of Section 52, any improvements or modifications of the invention will be protected by a later specification as long as it is filed within one year of the original application.

If I may be allowed to take an example which has now become familiar to your Lordships, I shall refer to an inventor who has discovered a means of attaching an upper to the sole of a shoe. He writes about it, he thinks about it, he begins to develop it. Later on, he finds that this same invention can be extended to attaching blinds to rollers and canvas hood to the roofs of cars. The inventor, realising that his invention has these broader possibilities, withdraws his original application for shoes alone because he does not want to waste the money, and he files a second, broader application for shoes, roller blinds and car hoods. If it were not for Section 52, as I understand it, although a claim for attaching uppers to soles of shoes would have the earlier priority date, the application for the broader subject matter for the same invention—that is to say, for shoes roller blinds and car hoods—would not necessarily be supported by the origina1 description and would not have the earlier priority date.

Moreover, if it were not for Sect on 52 being in existence, the three claims in the second application might all be regarded as obvious because the inventory had started to sell the shoes which were made by his invention immediately after filing his first application. I suggest that this new clause which I am moving is necessary, therefore, if protection is to be given against the consequences of publication or exploitation of an invention after the original application has been filed (and this was the protection which was afforded hitherto by Section 52) and to make it clear that the test for priority continues to be any claim fairly based upon the original specification bearing the priority date of filing of the original specification, whereas any claim not fairly based on the original specification has its own priority date.

I believe that the new clause is necessary for another reason; namely, in order to comply with the International Convention for the Protection of Industrial Property, which is known as the Paris Convention. Article IV of that Convention provides that any applicant for a patent in any one of the countries of the union which was set up by the Convention, which extends more or less worldwide, has a year after filing the first patent application within which he may file corresponding applications in the other countries of the union and obtain priority from the first filing. That is exactly like Section 52.

But as I understand it, the system in the Convention, operating internationally, works as follows. Let us suppose that a Frenchman files a patent application for the shoes invention in France, on the date 1st February 1976. He has a year until 1st February 1977 to file patent applications anywhere else throughout the union. He does so, and one of the countries in which he does this is the United Kingdom. His United Kingdom application has that broader set of claims which he has begun to know about—shoes, roller blinds and car hoods. Taking each claim individually, any of these claims—for example, only shoes in this case, which is fairly based on the French application—is entitled to the priority date of that application, but any claim which is not so fairly based, but which is fairly based upon the specification as filed in the United Kingdom is entitled to the United Kingdom priority date. Incidentally, the Paris Convention also allowed the patent applicant to disclose his invention publicly after his first filing, just like Section 52.

I am suggesting that Section 52 of the 1949 Act fulfilled our obligations under the Paris Convention; that is to say, it ensured that any publication or exploitation of an invention as described in the priority document—in the case of my Frenchman, the French specification—would not invalidate the United Kingdom patents specifically. Section 52 also protected the patent applicant if he wished to develop his invention.

As I see it, the problem with this Bill in this context is that there is no protection similar to that which was given by Section 52 to protect the inventor in the case of an invention where some only of his claims are supported by the description of the priority application and some of his claims are not so supported. Your Lordships will notice that the new clause refers to "an invention". It does that because Clause 5 of the Bill refers not to claims but to "inventions". So the effect of the new clause is that where an invention—by that I mean a claim—has the earlier priority date, then the comptroller will not refuse to grant the patent even if it contains claims to inventions which have not the earlier priority date, merely by reason of the fact that the inventor has published the invention or anyone else has published the invention or acquired rights contrary to those of the inventor during the period between the priority application and the filing of the application under consideration.

That seems to me to be precisely the intention of Article IV of the Paris Convention and has been the effect of Section 52 of the 1949 Act. I catch myself apologising once again for a convoluted argument, but the consequences of not including either this new clause or something like it in the Bill seem to me crystal clear. Without some kind of protection similar to Clause 52, which I am suggesting is certainly missing from the Bill, patent applicants will be far more chary of publishing or using their inventions during the first year after filing their original application, and this may mean that the exploitation of some inventions is delayed, and we all know what that means in present commercial and economic circumstances. In addition—and I am sure that the noble Lord, Lord Lloyd of Kilgerran, will be sympathetic with this—it seems to me that unless some protection of this kind is put in the Bill, private inventors who do not have very much financial backing will lose the facility which they have had up to the present of being able to file an application at a low fee with the protection of Section 52, needing to get professional advice only when the application is ready for exploitation or further development. I apologise for the rather convoluted argument, but I most seriously suggest that unless something along the lines of the new clause is put into the Bill the effects, particularly for the private inventor, but also for inventors in general, will be fairly severe. I beg to move.

Lord ORAM

I am grateful to the noble Lord, Lord Belstead, for raising this question. He said that it was a convoluted argument. It is indeed a difficult matter, and I think he would concede that the points he was making merit study and I will undertake to make that study. He made a rather long speech, at a fair rate. I do not complain about that, but it means that we should take time to consider it, and that I will do. But as at present advised I can assure him that Clause 2 of the Bill already produces the effect which the Amendment has without the necessity for this further clause.

Under Clause 2(1) an invention is taken to be new if it does not form part of the state of the art, and under Clause 2(2) the state of the art does not include any use or a publication of the invention made after its priority date. An application for a patent cannot therefore be refused in the circumstances referred to by the noble Lord. Equally, a patent already granted cannot be revoked in these circumstances. The only relevant ground of recovation would be that of Clause 70(1)(a), and so far as non-patentability for lack of novelty is concerned, Clause 70(1)(a) imports Clause 2.

Therefore I must resist the Amendment, but as I understand it, and from what the noble Lord said, the underlying purpose of his Amendment goes further and is intended to deal with the situation where the invention under consideration is not in fact entitled to the priority date of the earlier relevant application in accordance with Clause 5(2)(a). In such a case I appreciate that a publication or use of the matter disclosed in the earlier relevant application could defeat the novelty of the invention. This seems to be another aspect of the problem of so-called self-collision, which first arose when we considered Amendments Nos. 8 and 9, which noble Lords opposite had put down on the first day of the Committee stage. On that occasion I undertook to give further consideration to this.

If I am right in thinking that it is the possibility of self-collision by reason of publication or use of the matter contained in the earlier application with which the noble Lord, Lord Belstead, is concerned—and I gathered from what he was saying that that is the problem to which he is directing himself—I am, of course, as I have indicated, willing to give further thought to this particular problem with a view to dealing with it generally at the Report stage. But I must once again make it clear that we must not depart from the terms of the European Patent Convention in this respect. However, as I said at the beginning, the noble Lord has clearly raised an important problem which merits further thought, and if undertake to give it that further thought and, if necessary, to take action at Report stage.

Lord BELSTEAD

Having been very long-winded to start off with, I hope I can be brief in withdrawing this Amendment. I am grateful to the noble Lord for pointing out to me the effect of Clause 2, and I should like to think about that, if I may. The noble Lord is quite right: what I was trying to get at was the problem of self-collision, and if, as he has undertaken to do, he will continue to give thought to this and will contact my noble friends and myself, we will be most grateful. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

The DEPUTY CHAIRMAN of COMMITTEES (Baroness Wootton of Abinger)

Members of the Committee should note that if the next Amendment, No. 283, is agreed to, I shall not be able to call Amendment No. 284.

Clause 71 [Comptroller's power to revoke patents on his own initiative]:

Lord ORAM moved Amendment No. 283: Page 59, line 7, leave out from ("above") to ("he") in line 8.

The noble Lord said: Amendments have been accepted in respect of Clause 2 so as to line it up more closely with the European Patent Convention, and Amendment No. 283, which I am moving, is a consequence of this and subsumes Amendment No. 284, which noble Lords have on the Marshalled List. I beg to move Amendment No. 283.

Lord LYELL

We agree that the noble Lord, Lord Oram, wishes to improve this particular clause, and we indeed agree with him that his Amendment subsumes our Amendment. We are therefore happy to agree to his Amendment.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 285: Page 59, line 11, after ("amending") insert ("the specification of").

The noble Lord said: It is not, strictly speaking, the "patent" which is amended, as presently stated on page 59 at line 11. As is evident from other clauses, amendment is made to "the specification" of the patent. This is therefore a drafting Amendment which more accurately expresses the position. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 286: Page 59, line 12, leave out from ("aforesaid") to end of line 13 and insert ("without contravening section (Amendments of applications and patents not to include added matter) below").

The noble Lord said: This is another of the Amendments which we considered when we dealt with Amendment No. 274 and which relate to the forthcoming Amendment No. 295. I beg to move.

On Question, Amendment agreed to.

Clause 71, as amended, agreed to.

6.24 p.m.

Lord ORAM moved Amendment No. 287: After Clause 71, insert the following new clause:

Proceedings in which validity of patent may be put in issue

.—(1) The validity of a patent may be put in issue—

1. (a) by way of defence, in proceedings for infringement of the patent under section 58 above or proceedings under section 67 above for infringement of rights conferred by the publication of an application;
2. (b) in proceedings under section 68 above;
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3. (c) in proceedings in which a declaration in relation to the patent is sought under section 69 above;
4. (d) in proceedings before the court or the comptroller under section 70 above for the revocation of the patent;
5. (e) in proceedings under section 56 above.

(2) The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Act or otherwise) seeking only a declaration as to the validity or invalidity of a patent.

(3) The only grounds on which the validity of a patent may be put in issue (whether in proceedings for revocation under section 70 above or otherwise) are the grounds on which the patent may be revoked under that section.

(4) It is hereby declared that for the purposes of this Act the validity of a patent is not put in issue merely because the comptroller is considering its validity in order to decide whether to revoke it under section 71 above.

The noble Lord said: The main purpose of this new clause is to set out the kinds of proceedings relating to a patent in which the validity of the patent may be put in issue. This allows the drafting of Clauses 24 and 72 to be much simplified, and it also serves to clarify the position. No change in the present law is made, other than to provide, as recommended by the Banks Committee, that invalidity of the patent may in future be pleaded in actions brought under Clause 69 for a declaration of non-infringement.

Subsection (1) identifies the proceedings in which invalidity may be pleaded, and subsection (2) makes clear that these are the only such proceedings. Subsection (3) brings more clarity to the situation by specifying that in any such proceedings the only grounds on which invalidity may be pleaded are those stated in Clause 70. It will be noted that proceedings under Clause 71 are not included in the list set out in subsection (1). This is because Clause 71 relates to proceedings in which only the patentee and the comptroller are involved, and in which the validity is being questioned only on the narrow ground that the invention is not new having regard to Clause 2(3). Subsection (4) therefore completes the picture by specifying that Clause 71 proceedings are not covered by the new clause. I beg to move.

Lord BELSTEAD

I have already thanked the noble Lord for the fact that paragraph (d) of this Amendment meets the Amendment of my noble friends and myself, No. 282. I think there is still an outstanding question from the noble Lord, Lord Lloyd of Kilgerran, as to whether these grounds for putting the validity of a patent in issue overcome the law of estoppel, but I am not a lawyer and I think I will do no more than remind the Committee that there is that outstanding question and say that it will be for the convenience of myself and my noble friends, if perhaps the noble Lord is writing to the noble Lord, Lord Lloyd, on that, if we might receive a copy of the letter.

Lord ORAM

Certainly we will do that.

On Question, Amendment agreed to.

Clause 72 [Amendment of patent in infringement or revocation proceedings]:

Lord ORAM moved Amendment No. 288: Page 59, line 15, leave out from ("court") to first ("the") in line 18 and insert ("or the comptroller in which the validity of a patent is put in issue")

The noble Lord said: Clause 24 deals with amendments to the specification of a patent on application by the proprietor of the patent, and subsection (3) provides that no such amendments should be allowed when certain other proceedings are pending before the court or the comptroller. As a consequence of Amendment No. 287, it is sufficient simply to refer generally to proceedings in which the validity of the patent may be put in issue. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 289: Page 59, line 19, leave out ("by order") and insert (", subject to section (Amendments of applications and patents not to include added matter) below,").

The noble Lord said: This is another of the series linked with Amendment No. 295. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 290: Page 59, line 21, after ("terms") insert ("as to advertising the proposed amendment and").

The noble Lord said: Under present practice a patentee in infringement or revocation proceedings before the court may propose amendments, and the court has a discretion whether or not to advertise the amendments. The amendments are normally advertised if the court feels that their acceptance may affect the interests of persons who are not parties to the proceedings. This makes such persons aware of the proposals, and the practice is to allow them to oppose the amendments if they so wish. Amendments Nos. 290 and 291, in so far as the latter proposes the insertion of a new subsection, are intended to preserve this practice before the court. Moreover, they make clear that the same practice is to be adopted in revocation proceedings before the comptroller.

This is a change from the present situation, but we believe it is necessary since the jurisdiction of the comptroller under Clause 70 has been made the same as that of the court. These Amendments produce the effect which I think the noble Lords, Lord Oram and Lord Belstead, are seeking to produce in their Amendment No. 293. I hope they will consider with drawing that Amendment in the light of the Amendment I am now moving.

Amendment No. 291, if I may speak to that at the same time, also leaves out from the Bill subsection (2) of Clause 72. Subsection (2) is another of the several provisions which have already been discussed which concern the prohibition of amendments which extend the matter disclosed. All these are picked up in a new clause (Amendment No. 295) and so it is proposed to delete subsection (2) as a direct consequence of this. I beg to move.

On Question, Amendment agreed to.

6.31 p.m.

Lord ORAM moved Amendment No. 291:

Page 59, line 23, leave out subsection (2) and insert— ("(2) A person may give notice to the court or the comptroller of his opposition to an amendment proposed by the proprietor of the patent under this section, and if he does so the court or the comptroller shall notify the proprietor and determine whether the amendment or any amendment should be allowed").

On Question, Amendment agreed to.

Clause 72, as amended, agreed to.

Lord ORAM moved Amendment No. 295: After Clause 72, insert the following new clause:

Amendments of applications and patents not to include added matter

.—(1) 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—

1. (a) results in the application or specification disclosing matter which extends beyond that disclosed in any relevant application as filed, or
2. (b) (where a patent has been granted) extends the protection conferred by the patent.

(2) The following are relevant applications for the purposes of this section—

1. (a) in the case of an application which it is proposed to amend, that application, and also, if it is made by virtue of section 7(3), 12(4) or 34(4) above in respect of any matter disclosed in an earlier application, that earlier application;
2. (b) in the case of the specification of a patent which it is proposed to amend, the application for that patent and also, if that application was made as aforesaid, the earlier application.

(3) This section applies to the following provisions of this Act, namely, sections 7(3), 12(4), 14(3), 15(3), 16(1), 24(1), 34(4), 71 and 72.

The noble Lord said: On the first day of the Committee several provisions of the Bill were considered which have the effect of prohibiting amendment of an application which extends the matter disclosed in the application as filed. Government Amendments to those provisions were accepted, subject to later consideration of a new clause which is the object of the present Amendment. The primary intention of this new clause is simply to improve the drafting and clarity of the Bill by collecting together in one clause all the provisions of the Bill which prohibit amendments.

Subsection (3) of the new clause identifies the clauses of the Bill under which amendment of an application or of the specification of a patent may be made and subsection (1) sets out the two general conditions applicable to such amendments. They will not be allowed if they have the effect of extending the matter disclosed. Neither will they be allowed in proceedings after a patent has been granted if they extend the protection conferred by the patent.

The second purpose of the new clause is to make clear that, in the case of a new application which may be filed under Clause 7(3), 12(4) or 34(4), no amendment may be allowed which extends the matter disclosed in the earlier application from which it has been derived. As the noble Lords, Lord Belstead and Lord Lyell, made clear in connection with Amendment No. 273, this is a necessary provision, otherwise the applicant of the new application could obtain the benefit of the date of the earlier application for matter which he puts into his new application at a much later date. For this reason, subsection (1) refers to "any relevant application" and defines such applications in subsection (2). I beg to move.

Lord BELSTEAD

I support the intention of the Government of gathering together provisions into one new clause, but on the first day of the Committee I explained that it appeared to my noble friend and to me that the wording of this Amendment should have referred to "extending subject matter beyond the content of" instead of "disclosing matter which extends beyond the content of". If Article 11 of the EPC is consulted, we find the expression "subject matter", It was for that reason, if no other, that I made this observation. Both the noble Lord, Lord Oram, and the noble and learned Lord, Lord McCluskey, replied at this point. The noble and learned Lord said: 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."—[Official Report, 15/2/77; col. 1462.] That was what the noble and learned Lord said and I am grateful to him for it.

I understand that explanation but I am worried about whether it corresponds with Clause 5(5) of this Bill which perhaps Ministers might like to glance at. If they do so, they will see the words: For the purposes of this Act matter shall be taken to have been disclosed in any relevant application if it was either claimed or disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application. My reading of that is that the words in brackets show clearly that the word "disclosed" is being used as embracing a meaning which includes the revealing of prior art. It would be impertinent of me to contradict the noble and learned Lord, Lord McCluskey, in his explanation of the meaning of "matter disclosed". I am not doing that. I am saying that I do not think that the explanation he gave me and which I quoted is quite on all fours with the way in which the word "disclosed" is being used in Clause 5(5). If the Government would like to think about this and to write to me about it, this is the only bone of contention I have, except that I still am puzzled that we could not have used "subject matter"; but I will not pursue that any further.

Lord ORAM

My noble and learned friend Lord McCluskey and I made some effort, as the noble Lord has acknowledged, on the first day of Committee to clarify this point as the noble Lord has indicated at columns 1543 and 1462. Those attempts are recorded; but it is clear that they were neither sufficiently clear nor sufficiently convincing to satisfy the noble Lord. In the light of what he has said, I will give an undertaking that we will look again at what he said during the course of the first day in Committee and what he has just said. If we are convinced by what he has said, we will write a further explanation to him and possibly—and I am not holding out any commitment—a further Amendment will be decided upon.

On Question Amendment agreed to.

Lord LLOYD of KILGERRAN moved Amendment No. 294: Before Clause 73, insert the following new clause:

Filing of European patent.

. A European patent application may be filed at the Patent Office.

The noble Lord said: We now enter upon Part II of the Bill which purports to deal with provisions about international conventions. I may say that the terms of the Bill in this clause are of such delightful international obscurity that during the last few days they have produced a scintillating shower of Amendments from the Government. There is one matter which we need not discuss today but which is of considerable importance to practitioners in this field of patents: the European Patent Office is at Munich. It may be that many practitioners from abroad feel that the only way of getting a European patent is to file their patent application in Munich. Therefore practitioners in this country want to make it clear both nationally and internationally that a European patent application may be filed in the United Kingdom Patent Office. My Amendment is to include the simple sentence positively directing practitioners all over the world that their European patent application may be filed at the Patent Office. I beg to move.

6.41 p.m.

Lord McCLUSKEY

The purpose of this Amendment has been explained by the noble Lord and I am grateful to him for tabling it. He is concerned to ensure that publicity is given within the four corners of the Bill that European patent applications may be received by the Patent Office. Let me seek to put his mind at rest in this matter in another way, because the Government are equally concerned that the Patent Office has authority to receive such applications, and that is known. We are advised that the Office has authority to receive such applications without any statutory provision, and therefore I give the Committee a solemn assurance that the Pate: it Office is perfectly willing to carry out this service for all those who desire it, and the Patent Office intends to provide that service. I hope that that assurance, given in such terms, will satisfy the noble Lord and that he will not press the Amendment.

Lord LLOYD of KILGERRAN

May I ask how publicity can be given to this event? What is the objection to maintaining it in the Bill?

Lord McCLUSKEY

The objection appears to be that it would set an undesirable precedent because Ministers and Government Departments can dc things of this kind without statutory provision, and if one starts to put into Statutes a provision of this kind in relation to a particular Government Department or branch of a Government Department, then it might shed doubt upon the authority and right of other Departments to do what they do—and there are countless examples of it—without any statutory warrant at the present time. In other words, it is regarded by the draftsman as being an unfortunate precedent if one inserts a new clause of this kind.

Lord LLOYD of KILGERRAN

I resist the temptation to proceed with cross-examining the noble and learned Lord on his reply. He talks about precedent, but we are in a new field in relation to European patents. I should have thought that in this new field a statement that European patent applications can be filed in the United Kingdom Patent Office would be of considerable help to the practitioners, particularly the patent agents in this country and their clients abroad. I had no idea that such a profound constitutional point would be raised by my simple factual Amendment. I do not propose to embarrass the noble and learned Lord, nor the Government, by pressing the Amendment to a Division.

Lord McCLUSKEY

One has a good deal of sympathy for what the noble Lord has said and the way in which he has said it. I do not think he should regard this as necessarily the end of the story.

The Earl of SELKIRK

Is the authority of the European Patent Office in the European Community and not in Parliament? Is this a matter on which we can have authority?

Lord McCLUSKEY

The Amendment speaks about the Patent Office, which is the United Kingdom Patent Office.

The Earl of SELKIRK

But it is the European patents that I am talking about. Is that under our authority or the Community's authority?

Lord McCLUSKEY

The European patent is something which is dealt with in many places in the Bill. We are not concerned here with the Community; we are concerned with the European patents. Of course the Bill gives effect to our obligations under the relevant Convention to which I will be referring in the course of the next hour or so.

Lord LYELL

I wonder whether the noble Lord, Lord Lloyd of Kilgerran, will permit me to add to the very high-powered legal points that have been put by him and the noble and learned Lord, Lord McCluskey. We are discussing the question of the European Patent Office and we are starting Part II of the Bill, which is a very important Part. Is the noble and learned Lord able to give us some indication as to the possibilities of ratification of the European Patent Convention? As the noble Lord, Lord Lloyd, and other members of the Committee are aware, the Convention was signed in Munich in 1973. I understand that 14 nations, including the United Kingdom, signed the Convention then. The European Patent Office is due to be in business as from 1978. Everybody in the profession, including noble and learned and noble practitioners dealing with patents and patent registration, will be aware of the importance of the United Kingdom becoming a founder member of the European Patent Convention. This is for two major reasons: first of all, the United Kingdom, as a leading nation in the field of patents and practitioners of patents, must obtain its share of senior and junior responsibilities at the European Patent Office in Munich——

Lord McCLUSKEY

If the noble Lord will give way, I can tell him that we ratified the Convention on 3rd March 1977 in order to achieve the very object which the noble Lord has described, and the object to which he was about to refer.

Lord LYELL

I have never had the legs cut from under me so gracefully. I wish that I could play the national sport of both the noble and learned Lord and myself on a football field, and that the foul which has been committed could be dealt with with such grace. I was seeking to put up my marker at an early stage because we wondered whether we would get an opportunity later. But I apologise for intervening and hope the noble Lord, Lord Lloyd, will forgive me.

Lord LLOYD of KILGERRAN

May I return to the point to which the noble and learned Lord referred. He said that the matter on my Amendment No. 294 would not be forgotten. To my surprise, I find that my noble friend Lord Simon has been following closely the arguments on this clause. He has reminded me that Clause 11(1) says: Every application for a patent— (a) shall be made to the Patent Office; Perhaps the noble Lord will consider Clause 11 in relation to my Amendment No. 294 when he reconsiders the matter as he has so gracefully agreed to do. I beg leave to withdraw my Amendment.

Amendment, by leave, withdrawn.

6.50 p.m.

Clause 73 [Effect of European patent (U.K.)]:

Lord ORAM moved Amendments Nos. 294B and 294A:

Page 60, line 1, after ("had") insert (", on the date of that publication,").

Page 60, line 1, after ("Act") insert ("granted in pursuance of an application made under this Act").

The noble Lord said: The Committee will see that, in accordance with the jinx which has affected this fourth Marshalled List, Amendment No. 294B precedes Amendment No. 294A. Perhaps, by leave of the Committee, I may take these two Amendments together. They are simply drafting Amendments intended to complete the equation between a European patent (UK), which noble Lords will find defined in Section 118, and a patent granted under the Bill. Amendment No. 294B has the effect that under the provisions of Part I concerning revocation and amendment after grant the European Patent (UK) will be considered as if it resulted from an application in the same terms for a patent under the Bill.

Amendment No. 294A defines more clearly the date on which a European Patent (UK) is to take effect here. For a patent under the Bill, the date on which it takes effect is the date on which notice of its grant is published in the Journal of the Patent Office. This Amendment provides that in the case of a European patent (UK), this notice is deemed to have been published on the date of publication of mention of the grant of the European patent in the European Patent Bulletin. I beg to move Amendments Nos. 294B and 294A.

On Question, Amendments agreed to.

6.52 p.m.

Lord McCLUSKEY moved Amendments Nos. 294C and 294D:

Page 60, line 6, leave out ("and").

Page 60, line 8, at end insert ("; and

(c) any statement made and any certificate filed for the purposes of the provision of the convention corresponding to section 2(4)(b) above shall be respectively treated as a statement made and written evidence filed for the purposes of the said pars graph (b).").

The noble and learned Lord said: I beg to move, by leave of the Committee, these two Amendments together. The first is simply a paving Amendment for the second Amendment, which adds a new paragraph to subsection (1). It fills a gap by making it clear that if in revocation proceedings under Clause 70(1)(a) it is alleged that an invention is not new because of prior disclosure at an international exhibition, the proprietor may pray in aid a certificate filed at a European Patent Office under Article 55(1) of the European Patent Convention. That is part of what is necessary in order to equate the two kinds of patent with which the clause is concerned. I beg to move Amendments Nos. 294C and 294D.

On Question, Amendments agreed to.

Lord McCLUSKEY moved Amendment No. 294E: Page 60, line 12, at end insert ("in proceedings before the European Patent Office").

The noble and learned Lord said: I beg to move this Amendment. Although subsection (1) of this clause has the result that a European patent (UK) is to be treated as a domestic patent as from the date on which it takes effect as a granted patent, the European patent may nevertheless be the subject of opposition proceedings before the Europear Patent Office and be amended or revoked in those proceedings. Subsection (2) already makes provision for that, and the Amendment does nothing more than make a minor drafting change to make it clear that subsection (2) refers to amendment or revocation before the European Patent Office. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendments No. 294F, 294G, 294H and 294J:

Page 60, line 13, leave out subsection (3).

Page 60, line 25, at end insert—> ("(aa) subsection (1) above shall not apply to a European Patent (UK) the specification of which was published in French or German, unless a translation of the specification into English is filed at the Patent Office and the prescribed fee is pad before the end of the prescribed period.[...]").

Page 60, line 28, leave out ("with") and insert ("at").

Page 60, line 30, leave out from ("period") to end of line 36 and insert— ("(6) Where a translation of a specification or amendment into English is not filed in accordance with subsection (5)(aa) or (a) above, the patent shall be treated as always having been void.

(7) The comptroller shall publish any translation filed at the Patent Office under subsection (5) above.

(8) Subsection (5) above shall come into force on a day appointed for the purpose").

The noble and learned Lord said: With the leave of the Committee, I should like to move these four Amendments at the same time. The first Amendment is consequential upon the transfer by the second of the Amendments of the contents of subsection (3) to a new paragraph in subsection (5) in order to avoid any different treatment as between the specification for a European patent application (UK) which is published in French or German and an amendment of the specification which is so published. The third Amendment preserves consistency of drafting in the Bill. The fourth Amendment replaces subsection (5)(b) and widens it to include the case of the specification as well as the amendment, and also removes the requirement that the translation must be filed before the publication of a specification is amended. The translation must be filed before the end of the prescribed period, and that is made clear by the first of the new subsections introduced by the fourth Amendment. The fourth Amendment also introduces another new subsection, requiring the comptroller to publish any transaction filed under subsection (5). That is necessary in the public interest. Then, the fourth Amendment changes subsection (6) as a consequence of the deletion of subsection (3). I beg to move.

On Question, Amendments agreed to.

Clause 73, as amended, agreed to.

Clause 74 [Effect of filing an application for European Patent (UK)]:

6.56 p.m.

Lord McCLUSKEY moved Amendment No. 294K:

Page 60, line 43, leave out from first ("of") to end of line 27 on page 61 and insert ("the provisions of this Act to which this section applies as an application for a patent under this Act having that date as its date of filing and having the other incidents listed in subsection (3) below, but subject to the modifications mentioned in the following provisions of this section.

(2) This section applies to the following provisions of this Act:—

• section 2(3) and so much of section 11(7) as relates to section 2(3);
• section 5;
• so much of section 10(3) as relates to an application for and issue of a certificate under that subsection;
• sections 28 to 30;
• section 33;
• sections 53 to 67;
• section (Proceedings in which validity of patent may be put in issue), so far as relevant to any of the provisions mentioned above;
• section 100; and
• section 114.

(3) The incidents referred to in subsection (1) above in relation to an application for a European patent (UK) are as follows:—

1. (a) any declaration of priority made in connection with the application under the European Patent Convention shall be treated for the purposes of this Act as a declaration made under section 5(2) above;
2. (b) where the date of filing an application is re-dated under that convention to a later date, that date shall be so treated as the date of filing the application;
3. (c) the application, if published in accordance with that convention, shall, subject to subsection (5) and section (Operation of section 74 in relation to certain European patent applications) below, be so treated as published under section 13 above;
4. (d) any designation of the inventor under that convention or any statement under it indicating the origin of the right to a European patent shall be treated for the purposes of section 10(3) above as a statement filed under section 10(2) above;
5. (e) registration of the application in the register of European patents shall be treated as registration under this Act.

(3A) Rules under section 29 above may not impose any requirements as to the registration of applications for European patents (UK) but may provide for the registration of copies of entries relating to such applications in the European register of patents.

(3B) Section 30(1)(b) shall not apply to an application for a European patent (UK).").

The noble and learned Lord said: I think this may be the point at which to apologise for what the noble Lord, Lord Lloyd, called a "scintillating shower of Amendments". There certainly is a flood of them. I beg to move Amendment No. 294K. The Government have looked closely at Clause 74 and, having done so, have reached the view that it goes further, as drafted, than is needed to implement our obligations under the Convention in respect of European patent applications designating the United Kingdom. The subsection as drafted equates a European patent application (UK) with an application made under the Bill for all the purposes of Parts I and III of the Bill. Subsection (3) qualifies this by specifying that in respect of certain matters it is not Parts I and III of the Bill that govern the European application (UK). However, on reconsideration it was felt to be preferable to adopt a different approach. To that end, the Amendment makes clear in the new subsection (1) that a European application (UK) is equated with an application made under the Bill only for certain specific purposes, which are exhaustively denned in the new subsection (2). As a result, the existing subsections (2) and (3) become superfluous and have been omitted by the Amendment.

In order to illustrate the effect of the Amendment, I might mention a few of the provisions listed in the new subsection (2), contained in Amendment No. 294K. Article 139 of the Convention requires a European application (UK) to have the same prior art effect in this country as a domestic application. The new subsection (2), in referring to Section 2(3) of the Act, together with the new subsection (3)(c), does just this. The reference to Clause 67, when read with the new subsection (3)(c), also gives effect to an obligation; namely, under Article 67 of the Convention, by attaching provisional protection rights in this country to the European application (UK). Finally, the reference to section 10(3) enables the true inventor to apply to the comptroller for a certificate to the effect that a European application should have named him and not some other person, thus complying with our obligation under Article 62 of the Convention.

Subsection (3) of the Amendment reproduces most of the incidents presently set out in Clause 74(1) of the Bill as now drafted, but with some modifications and the addition of a reference to registration of the European application. The modifications occur in paragraphs (c) and (d); they are merely drafting changes to make clear the intention. In particular, paragraph (c) is now made subject to subsection (5) and a proposed new section so as to indicate clearly that, if it is desired to implement subsection (5), a European application (UK) which is published in French or German by the European Patent Office will not in most cases be effective here for the purposes of Clauses 54 and 67, unless and until an English translation of the claims has been filed at the Patent Office and published.

The addition that I have referred to is paragraph (e). Although a European application (UK) is equated with a United Kingdom patent application, paragraph (e) now makes clear that registration of the European application in the register kept by the Patent Office is not required. A Register of European Patents will be kept by the European Patent Office it would therefore be pointless also to require registration of the application on the British register, and so paragraph (e) provides that registration of the application on the European register shall lave effect as if it had been registered on the British register. Subsections (3A) and (3B) are consequences of this. The Committee will realise that Amendment No. 296 is, of course, subsumed in this, and therefore if the Committee agrees to Amendment No. 294K I shall not be moving No. 296. I beg to move.

Lord BELSTEAD

Before we go any further, the noble and learned Lord has mentioned translations and I should like to get my mind clear. Are we to assume that English translations, whenever they are mentioned amidst this plethora of Government Amendments, are always going to be required? This sounds to me a very expensive procedure. I ask the question particularly because Amendment No. 296D, strangely enough, comes before what is still subsection (7) of Clause 74, which clearly makes it a temporary effect. If one reads subsection (7) of Clause 74, it is clear that the requirements of the new subsection (5), which is Amendment No. 296D, will be temporary, and that refers to translations as well.

So in broad terms, whenever we talk about translations into English an these Amendments, and when the noble and learned Lord talked about them just now, will this be something which is mandatory; will it be something which is both mandatory and temporary, or will it be permanent. And in the case of European applications, which are German or French, will they need to have translation provisions in their legislation so that if something is written in English it has then to be translated into German or French? I am not deliberately trying to ask difficult questions, but it would be interesting to know the answers, possibly at a later stage.

Lord McCLUSKEY

I appreciate very much what the noble Lord, Lord Belstead, has said about "a later stage". Perhaps at the moment I can confine myself to saying this. As we go through Part II, we shall of course come to different provisions about the need for translations, about what are the official languages, and the position will be seen to be expressed in a different context in the different clauses, and perhaps I could deal with these as I come to them. That might satisfy the noble Lord, but if it does not satisfy him, then, when we come to the end of Part II, I am sure that he could let me know here and we could then endeavour to answer any question which he feels is left unanswered.

Lord ALEXANDER of POTTERHILL

I wonder whether I may ask the noble and learned Lord a question. As I understand it, if an application for a European patent is made, the patent will in fact be drafted in the language in which the application is made. If a European patent is granted and an applicant has made his application in French, when that patent is granted it would have application in this country if it were a European patent—is that not a fact?—and therefore the question of translation into English would not arise.

Lord McCLUSKEY

Is the noble Lord referring, when he talks about a European patent, to a patent under the European Patent Convention or a patent under the Community Patent Convention?

Lord ALEXANDER of POTTERHILL

I was referring to the European Patent Convention.

Lord McCLUSKEY

That is one of the matters which I think we shall deal with as we pass through these clauses.

On Question, Amendment agreed to.

7.5 p.m.

Lord McCLUSKEY moved Amendment No. 296A: Page 61, line 28, leave out ("and (2)") and insert ("to (3)").

The noble and learned Lord said: This Amendment is like Amendment No. 296C. They are both drafting changes consequent on the introduction of the new subsections (1) and (3). I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 296B: Page 61, leave out lines 33 to 38.

The noble and learned Lord said: A European application when published by the European Patent Office is, by virtue of Clause 74(3)(c), treated as published under Clause 13 and hence is effective as a "published application" for the purposes of Clause 2(3). Once this application is in the state of the art, it remains there no matter what may be the later fate of the application. This is quite clear from Clause 2(3) itself, and accordingly the Amendment seeks to delete sub-section (4)(a) as unnecessary. For these reasons, I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 296C: Page 61, line 40, leave out ("and (2)") and insert ("to (3)").

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 296D:

Page 61, line 43, leave out from beginning to end of line 12 on page 62 and insert— (5) While this subsection is in force, an application for a European Patent (UK) published by the European Patent Office under the European Patent Convention in French or German shall be treated for the purposes of sections 54 and 67 above as published under section 13 above when a translation into English of the claims of the specification of the application has been filed at and published by the Patent Office and the prescribed fee has been paid, but an applicant may—

1. (a) recover a payment by virtue of section 54 above in respect of the use of the invention in question before publication of that translation; or
2. (b) may bring proceedings by virtue of section 67 above in respect of an act mentioned in that section which is done before publication of that translation; 1545 if before that use or the doing of that act he has sent by post or delivered to the Government department who made use or authorised the use of the invention, or, as the case may be, to the person alleged to have done the act, a translation into English of those claims."

The noble and learned Lord said: As result of Amendments already made to Clause 9, the existing subsection (5) has become unnecessary, and one purpose of the Amendment is therefore to delete it. In addition, however, the Amendment introduces a new subsection which is to the same effect as subsection (6) which it subsumes, but which is also directed specifically to the right to recover payment for Crown use under Clause 53. Payment will, of course, not be recoverable until a European patent has been granted, but compensation will then be payable for any use made under Clause 53 from an earlier date. If the European application (UK) is published in English, this date will be the date of publication by the European Patent Office. However, if the European Patent Office publishes in French or German, the new subsection puts the Crown in the same position as other persons and makes clear that payment is recoverable only in respect of use made after an English translation of the claims has been supplied to and published by the Patent Office or transmitted to the Department.

As a matter of drafting, the opportunity has been taken to combine the new provision with the existing subsection (6) which the Amendment consequently deletes. Having said that, I might refer to that explanation as being one which deals with this question of translation and the effect of having the application translated into English. It is not, of course, the only one. I beg to move.

The Earl of KINNOULL

Can the noble Lord say whether the translation into English will be mandatory? This is a point which my noble friend raised, and which the noble and learned Lord did not answer at that stage.

Lord McCLUSKEY

In this instance, as I understand it, unless there is a translation into English the person who has made the application does not derive certain benefits. As I sought to explain, the benefit comes after an English translation of the claims has been supplied to and published by the Patent Office. Therefore it is mandatory, in a non-technical sense, if one wants to derive the benefit.

Lord BELSTEAD

Why, under subsection (7), is it temporary, or potentially temporary?

Lord McCLUSKEY

I am afraid that at the moment I am not in a position to answer the noble Lord's question, but I hope to be able to do so before finally I leave the question of translations. I am having some difficulty in dealing with the notes which are coming to me.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 298: Page 62, line 14, after ("purpose") insert ("by rules").

The noble and learned Lord said: This is a minor drafting Amendment to bring subsection (7) into line with Clause 73(6). I beg to move.

On Question, Amendment agreed to.

Clause 74, as amended, agreed to.

7.11 p.m.

Lord McCLUSKEY moved Amendment No. 298B: After Clause 74, insert the following new clause:

"Operation of section 74 in relation to certain European patent applications.

(".—(1) Subject to the following provisions of this section, section 74 above, in its operation in relation to an international application for a patent (UK) which is treated by virtue of the European Patent Convention as an application for a European patent (UK), shall have effect as if any reference in that section to anything done in relation to the application under the European Patent Convention included a reference to the corresponding thing done under the Patent Co-operation Treaty.

(2) Any such international application which is published under that treaty shall be treated for the purposes of section 2(3) shove as published only when a copy of the application has been supplied to the European Patent Office in English, French or German and the relevant fee has been paid under that convention.

(3) Any such international application which is published under that treaty in a language other than English, French or German shall, subject to section 74(5) above, be treated for the purposes of sections 54 and 67 above as published only when it is re-published in English, French or German by the European Patent Office under that convention.")

The noble and learned Lord said: If one looks at the Fourth Marshalled List, one sees on page 20 Amendment No. 317V. It might be for the convenience of the Committee if, in dealing with the first of these Amendments, Amendment No. 298B, I were to make some reference to Amendment No. 317V. I hope noble Lords will bear with me if I go into a somewhat convoluted explanation as to the general intention of this Amendment and, indeed, of the second Amendment.

In the course of our consideration of the Bill we have, or we shall soon come across, four species of applications which can turn into patents operative in this country. They are, first, United Kingdom domestic applications; secondly, applications for European patents (UK); thirdly, applications for Community patents; and, fourthly, international applications for a patent (UK). It appears that from time to time these species, as it were, interbreed. Sometimes, therefore, an application will start out as one kind of application and then be converted into another. On reconsideration, we think the Bill does not at present deal satisfactorily with two cases where an application which starts out as the one can turn into the other.

Under the Patent Co-operation Treaty, an applicant who makes an international application is required to designate the contracting State or States for which protection is desired. If an applicant designates the United Kingdom, then prima facie it is because he wishes to obtain a United Kingdom patent. If I may, I will call such an application a direct international application (UK). I would remind your Lordships that the provisions concerning such an appliction are to be found in Clause 83. How-ever, Article 4(1)(ii) of the Patent Co-operation Treaty goes on to provide that if for any designated State a regional patent is available, the request for grant which forms part of the application may indicate that the applicant wishes to obtain a regional rather than a national patent.

The Preambles to both the European Patent Convention and the Community Patent Convention make it clear that those Conventions are regional patent treaties under the Patent Co-operation Treaty. It is therefore possible for an international application (UK) under the Patent Co-operation Treaty to contain an indication that the applicant wishes to obtain not a United Kingdom patent but either a European or a Community patent. If it does so, then special rules apply to it, and these are to be found in Part X of the EPC. It is necessary for us to give effect to these rules in the Bill.

Accordingly, the second of the Amendments—that is, Amendment No. 317V—provides that most of Clause 83 is not to apply to an international application for a patent (UK) which is treated, by virtue of the EPC, as an application for a European Patent (UK). Thus, such an application is not to be searched and examined in the Patent Office and the comptroller will not decide whether to grant or refuse a patent for it. In the case of one of these applications which is also, by virtue of the Community Patent Convention, an application for a Community patent, no more needs to be said. Clause 80 brings in the CPC, and the CPC incorporates Part X of the European Patent Convention by reference to Article 2(3) of the Community Patent Convention. That is one of these beasts with which I am dealing and I can now turn to another.

In the case of the international application for a patent (UK) which is treated as an application for a European patent (UK) but is not—and I emphasise "not"—an application for a Community patent, there are three main things to be done and these are done in the proposed new clause after Clause 74. Subsection (1) of the proposed new clause declares that things done under the Patent Co-operation Treaty are to be taken to have been done under the European Patent Convention. This provision is in implementation of Article 150 of the EPC. Thus, for example, if the applicant files a declaration of priority under Article 8 of the PCT, that is treated as a declaration under Article 88 of the EPC and, hence, under Clause 5(2) of the Bill.

I said that there were three things, and the second that I come to is this. Subsection (2) provides that a published international application of the kind we are concerned with only has a Clause 2(3) "whole contents" effect on other applications when a copy has been supplied to the European Patent Office in one of its official languages: that is, English, French or German. Thus, an applicant for a domestic or a European patent cannot be defeated by, for example, a Japanese application which is published in Japanese under the Patent Co-operation Treaty but never proceeded with. This subsection implements Article 158(1) of the European Patent Convention.

Thirdly, subsection (3) provides in effect that an international application of the kind with which we are concerned which is published under the PCT in Russian or Japanese, the two PCT languages which are not EPC languages, does not get "provisional protection" under Clause 54—that is the Crown use clause—or under Clause 67, the clause dealing with infringement of rights conferred by publication of application, until the application is republished by the European Office in English, French or German. It is then subject to the same rules as a normal European application. For example, if published in French or German, claims may have to be further translated into English before protection begins. This subsection is in implementation of Article 158(3) of the European Patent Convention.

I have mentioned Amendment No. 3174V. I do not move that Amendment at this stage, but if it were to be accepted in due course we would not then deal with Amendment No. 318, which is an Amendment that stands in the names of the noble Lord, Lord Lyell, the noble Lord, Lord Belstead, and the noble Lord, Lord Cawley. I apologise for the length and complexity of that explanation and I hope that those whose responsibility it is to read what has been said will be able to understand it. I beg to move.

On Question, Amendment agreed to.

7.20 p.m.

Lord McCLUSKEY moved Amendment No. 298C: Insert the following new clause:

Authentic text of European patents and patent applications

".—(1) Subject to subsection (2) below, the text of a European patent or application for such a patent in the language of the proceedings, that is to say, the language in which proceedings relating to the patent or the application are to be conducted before the European Patent Office, shall be the authentic text for the purposes of any domestic proceedings, that is to say, any proceedings relating to the patent or application before the comptroller or the court.

(2) Where the language of the proceedings is French or German, a translation into English of the specification of the patent under section 73 above or of the claims of the application under section 74 or (Operation of section 74 in relation to certain European applications) above shall be treated as the authentic text for the purpose of any domestic proceedings, other than proceedings for the revocation of the patent, if the patent or application as translated into English confers protection which is narrower than that conferred by it in French or German.

(3) If any such translation results in a European patent or application conferring the narrower protection, the proprietor of or applicant for the patent may file a corrected translation with the Patent Office and, if he pays the prescribed fee within the prescribed period, the Patent Office shall publish it, but—

1. (a) any payment for any use of the invention which (apart from section 53 or 54 above) would have infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted, shall not be recoverable under either of those sections,
2. (b) the proprietor or applicant shall not be entitled to bring proceedings in respect of an act which infringed the patent as correctly translated, but not as originally translated, or in the case of an application would have infringed it as aforesaid if the patent had been granted,

unless before that use or the doing of the act the corrected translation has been published by the Patent Office or the proprietor or applicant has sent the corrected translation by post or delivered it to the Government department who made use or authorised the use of the invention, or, as the case may be, to the person alleged to have done that act.

(4) Where a correction of a translation is published under subsection (3) above and before it is so published a person begins in good faith to do an act which would not constitute an infringement of the patent or application as originally translated but would constitute an infringement of it under the amended translation, or makes in good faith effective and serious preparations to do such an act, he shall have the rights conferred by section 26(6) above, and subsection (8) of that section shall apply to the exercise of any such right accordingly."

The noble and learned Lord said: This is a new clause to be inserted. Noble Lords have commented upon the fact that in this area of the Bill there is a good deal about translations. These provisions are highly technical but are of considerable importance and it is also necessary for the Bill to specify whether in particular instances the original or the translation is to be regarded as the authentic text. Accordingly the proposed new clause would follow Article 70 of the European Patent Convention in providing that the basic rule is to be that the text in the language of the proceedings—that is to say, English, French or German as the case may be—is to be taken as the authentic text, but that if the United Kingdom decides to insist on translations of the claims or applications under Clause 74 and of specifications of patents under Clause 73, then those translations are to be regarded as authentic except for revocation proceedings if they confer a narrower protection than the original. So potential infringers—if I might so describe them—will thus be able to rely on the English text (where there is one) and need not concern themselves with the original. Subsections (3) and (4) deal with the correction of the translation in such circumstances and the protection of people who may have relied on the incorrect translation. I beg to move.

On Question, Amendment agreed to.

Clause 75 [Conversion of European Patent applications]:

Lord McCLUSKEY moved Amendments Nos. 298D, 298E and 298F:

Page 62, line 29, leave out ("within the prescribed period")

Page 62, line 29, leave out line 39 and insert ("the applicant requests the comptroller within the relevant prescribed period")

Page 62, line 45, after ("transmits") insert ("within the relevant prescribed period").

The noble and learned Lord said: It may be for the convenience of the Committee if I deal with these three Amendments together. Again this is an instance where further consideration has been given to the text of the Bill and on further consideration of subsection (2) of this clause it has been noticed that it imposes a time limit within which the European Patent Office is to be expected to transmit a request for conversion. This is not intended and to preserve this time limit would be contrary to Article 136(1) of the European Patent Convention. Therefore Amendment 298D removes this time limit, but consistently with Article 136(2) of the Convention there should be a time limit in the subsection (2)(b) cases and the Amendments Nos. 298E and F serve this purpose. I beg to move.

On Question, Amendments agreed to.

Lord McCLUSKEY moved Amendment No. 298G: Page 63, line 3, leave out ("pays the prescribed") and insert ("within the relevant prescribed period pays the filing").

The noble and learned Lord said: This Amendment is intended to do two things: first, to make clear that the acts referred to in subsection (2)(c), that is to say payment of fee and the lodging of filing translations, must be carried out within a prescribed period. This is consistent with and is allowed by Article 137(2) of the European Patent Convention and the Amendment is necessary because of the deletion by the Amendment 298D of the reference to "a prescribed period".

Secondly, instead of leaving the fee to be prescribed by rules the Amendment identifies it as the filing fee, this being the fee required by Clause 11(2)(c) for filing a United Kingdom application under the Bill. The filing fees in fact are described in Article 137(2)(a) of the Convention as the national application fee. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY move Amendment No. 298H: Page 63, line 4, leave out ("French or German") and insert ("a language other than English").

The noble and learned Lord said: Again we are still with Clause 75 and this is another Amendment which relates to the language provisions. Under Article 14(2) of the European Patent Convention, it is allowable in certain circumstances for a European patent application (UK) to be filed in a language other than English, French or German, these being the official languages of the European Patent Office. For instance, a resident of Sweden—and Sweden is of course a contracted State under this Convention—may file his European application (UK) at the Patent Office in Stockholm in the Swedish language. In the normal course, the applicant would be required to supply a translation into one of the official languages of the European Patent Office. But, before he does so, it may happen that the Swedish authorities impose what I may describe as a secrecy order on the application in accordance with procedures corresponding to Clause 19 of the Bill relating to security and safety. In this event, if subsection (2)(b)(ii) is to be complied with, it would be possible to convert the European application (UK) into an application for a patent under the Bill and the Patent Office here would then obviously need to be supplied with an English translation.

As your Lordships will understand, the placing of a secrecy order would prevent the application taking the normal course through the European Patent Office. If that did happen it would be possible to convert the European application (UK) into an application for a patent under the Bill. As drafted, subsection (2)(c) only allows a translation to be required if the European application (UK) is in French or German. Normally this would be the case but it is not necessarily so, and to cater for the situation that I have described and others that might arise the Amendment extends the power of the patent office and requires a translation whenever the European application (UK) is not in English. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 298J:

Page 63, line 13, leave out from ("Act") to end of line 19 and insert ("but if that date is re-dated under the convention to a later date, that later date shall be treated for those purposes as the date of filing the application; (b) if the application satisfies a requirement of the convention corresponding to any of the requirements of this Act or rules designated as formal requirements, it shall be treated as satisfying that formal requirement; (c) any document filed with the European Patent Office under any provision of the convention corresponding to any of the following provisions of this Act, that is to say, sections 2(4)(b), 5, 10(2) and 11, or any rule made for the purposes of any of those provisions shall be treated as filed with the Patent Office under that provision or rule; and (d) the comptroller shall refer the application for only so much of the examination and search required by sections 14 and 15 above as he considers appropriate in view of any examination and search carried out under the convention and those sections shall apply with any necessary modifications accordingly.").

The noble and learned Lord said: Sometimes when I hear the expression "a language other than English", I wonder whether what I am saying to the Committee sounds like English. This again is a substantial Amendment to Clause 75. Subsection (3)(a) refers to the date of filing under the Convention and specifies that this date shall be regarded as the date of filing for the purposes of the Bill. This seems straightforward enough, but the fact is that in certain circumstances the Convention provides for the redating of the European application. For this reason the Government think it advisable to make it clear that, if redating occurs, the new date shall be regarded as the date of filing for the purposes of the Bill. This is the first purpose intended to be served by the Amendment.

Secondly, the Amendment expands the existing subsection (3)(b). This is concerned with the form of the application. It is also concerned with the documents required. On further consideration of the subsection it seemed advisable to make clear exactly what is intended. For this purpose the Amendment introduces new paragraphs (b) and (c). Paragraph (b) makes clear that, if the European application satisfies a formal requirement of the Convention, then it satisfies the corresponding formal requirements of the Bill or rules. This complies with the obligation imposed on us by Article 137(1) of the Convention. Paragraph (c), on the other hand, clarifies the situation by indicating that if a document has already been filed with the European Patent Office then it is to be treated as filed with the Patent Office. For instance, if a declaration of priority has been filed with the European Patent Office it will be treated as filed at the Patent Office here for the purposes of Clause 5.

Thirdly, the Amendment adds a new paragraph (d). Since under the terms of subsection (1) the converted European application (UK) is to be treated as an application for a patent under the Bill, it follows that the Patent Office should make a full search and examination under Clauses 14 and 15, as it is expected to do in the case of an application made under the Bill. However, this would be pointless in many cases because the European Patent Office would be likely to have carried out a full preliminary examination and search. Accordingly, the Amendment, by adding the new paragraph (d) to subsection (3), removes the obligation on the Paten: Office and provides for the extent of the search and examination to be at the comptroller's discretion. Accordingly, he looks at the particular case and in the light of what he deems to be necessary, having regard to what has been done, he can exercise discretion in respect of what is allowed under the new paragraph (d). I beg to move.

On Question, Amendment agreed to.

Clause 75, as amended, agreed to.

Clause 76 [Jurisdiction to determine questions as to right to a patent]:

Lord McCLUSKEY moved Amendment No. 299:

Page 63, line 20, at beginning insert— ("( ) The Court shall not have jurisdiction to determine a question to which this section applies except in accordance with the following provisions of this section.").

The noble and learned Lord said: I am happy to say I can be brief here and dispose of quite a number of birds with one stone. May I speak to Amendments Nos. 299, 300, 301, 303, 304, 305, 306, 307, 308, 309 and 310 at the same time. Amendments Nos. 309 and 310 relate to Clause 77. In our consideration of Clause 7 the Committee will recall that we agreed an Amendment (it was Amendment No. 48) expressly reserving the inherent jurisdiction of the court to decide questions as to entitlement to patents. These Amendments are all consequential on that one and make it clear that the position in relation to Clause 76 questions—that is, questions as to the right to a European patent—is the same. Therefore, they are simply drafting Amendments of a consequential kind. I beg to move Amendment No. 299.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 299B: Page 63, line 26, leave out ("right") and insert ("share").

The noble and learned Lord said: In moving Amendment No. 299B, I should like, with the leave of the Committee, to refer at the same time to Amendment No. 310D. "Right" is defined in Clause 118(1) as including among other things an "interest" in a patent, for example an interest as a mortgagee. The Protocol on Recognition which these clauses implement deals only with entitlement to be granted a patent. These Amendments would bring the clauses into line with the Protocol—that is, the Protocol on Recognition annexed to the European Patent Convention—so as to ensure that only cases covering entitlement to a patent are covered. I beg to move Amendment No. 299B.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 299A: Page 63, line 30, leave out ("of") and insert ("made by").

The noble and learned Lord said: This is another Amendment which is in reverse order; it is No. 299A, which relates to page 63, line 30. It is purely a drafting Amendment intended to put beyond doubt that the clause is dealing with all inventions made by employees and not merely those which belong to employees. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 300: Page 63, line 31, at beginning insert ("The court and").

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 301: Page 64, line 1, at beginning insert ("The court and").

On Question, Amendment agreed to.

The DEPUTY CHAIRMAN of COMMITTEES (Lord Amherst of Hackney)

I have to tell your Lordships that if Amendment No. 301A is carried I cannot call Amendment No. 302.

Lord McCLUSKEY moved Amendment No. 301A: Page 64, line 17, leave out ("subsection (1) to (3)") and insert ("subsections (1) to (4)").

The noble and learned Lord said: Amendment No. 301A, which stands in the name of my noble friend, and Amendment No. 302 are both seeking to correct a typographical error in the Bill as printed. The Government prefer the Amendment which I am now moving, No. 301A, because it picks up an additional typographical error in that "subsection" should in fact be "subsections". We are grateful to the noble Lords opposite for bringing the matter to our attention.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendments Nos. 303 to 308:

Page 64, line 17, after ("above") insert ("the court and")

Page 64, line 20, leave out ("comptroller") and insert ("court or the comptroller, as the case may be")

Page 64, line 27, after ("Kingdom") insert ("proceedings are begun before the court or")

Page 64, line 28, leave out from first ("the") to ("unless") in line 29 and insert ("court or the comptroller, as the case may be, shall stay or sister the proceedings before the court or the comptroller")

Page 64, line 34, after ("which") insert ("court or")

Page 64, line 35, at end insert— ("(6A) References in this section to the determination of a question include respectively references to—

1. (a) the making of a declaration or the grant of a declarator with respect to that question (in the case of the court); and
2. (b) the making of an order under section 7 above in relation to that question (in the case of the court or the comptroller).")

The noble and learned Lord said: With the leave of the Committee, I beg to move Amendments Nos. 303 to 308.

On Question, Amendments agreed to.

Clause 76, as amended agreed, to.

Clause 77 [Effect of patent decisions of competent authorities of other States]:

Lord McCLUSKEY moved Amendments Nos. 309 and 310:

Page 65, line 1, leave out ("comptroller unless") and insert ("court or the comptroller unless the court or")

Page 65, line 3, at beginning insert ("The court or").

The noble and learned Lord said: I have already spoken to Amendments Nos. 309 and 310. I beg to move.

On Question, Amendments agreed to.

Lord McCLUSKEY moved Amendment No. 310D: Page 65, line 5, leave out ("right or interest") and insert ("share").

The noble and learned Lord said: I have already spoken to this Amendment in connection with Amendment No. 299B. I simply move it formally.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 310A: Page 65, line 13, leave out ("parties") and insert ("same parties as in the proceedings in question").

The noble and learned Lord said: This is a simple drafting Amendment. It seeks to make it quite clear that the earlier proceedings—that is, those which entitle the court or the comptroller to disregard a later decision made in another relevant contracting State—must have been between the same parties as the parties to the later proceedings.

On Question, Amendment agreed to.

Clause 77, as amended, agreed to.

Clause 78 [Patent agents and other representatives]:

7.44 p.m.

Lord ALEXANDER of POTTERHILL moved Amendment No. 31[...]0B: Page 65, line 16, leave out from ("as") to ("European") in line 17.

The noble Lord said: In the Second Reading debate on the Bill I conceded that I knew nothing about patent law, but I do know something about professional life and the importance in professional life of nomenclature, status and relationship. That is what I should like to speak to on this Amendment. Perhaps the House would be kind enough to allow me to talk to Amendments Nos. 310B and 310C together. Amendments Nos. 312A and 358A are consequential, so I need not refer to them.

We are concerned with the fact that under Article 134 of the European Patent Convention, two categories of people will be practising—those qualified in law and those qualified as patent agents. They will be described in the English language in a Eurolist, which is provided for under the European Patent Convention, and known throughout the English-speaking world as "European patent attorneys". Unless there is an amendment to the Bill, members of the Chartered Institute of Patent Agents in this country will not be entitled so to describe themselves. They will be placed in a gravely disadvantageous position in obtaining business throughout the English-speaking world because of this distinction in nomenclature, which could have a distinction in fact though, indeed, it would be conceded that members of the Chartered Institute of Patent Agents in this country are as well if not better qualified than their European colleagues. I understand that this has been the subject of discussion. between the Chartered Institute of Patent Agents and the Law Society.

Naturally and rightly the Law Society has been greatly concerned at the use of the term, "attorney", even though it is a term which has largely fallen into disuse in this country. Prior to the Second Reading debate I do not think that any agreement had been reached and therefore no Amendment was tabled. Since then I believe that quite considerable progress has been made in the discussions. Certainly the Law Society has accepted that it would not wish to place chartered patent agents in this country in a disadvantageous position. I am sure the Government will know that the Patent Office feels as strongly as the Chartered Institute of Patent Agents on this matter.

I believe that the Law Society has suggested an Amendment, although it was probably not acceptable to the Government. The Amendment which I have moved at this stage probably goes beyond what the Government might think appropriate or what the Law Society might think appropriate because it concedes a point which greatly concerned the Law Society. When the Eurolist is established it will, in the first instance, admit not only those who have satisfied examination requirements—which will subsequently be necessary if one wishes to be included on the list and which will be comparable to the examination requirements of the Chartered Institute in this country—but it will admit those with five years' experience practising as patent agents. Not unnaturally the Law Society is gravely concerned at the description of such people as "European patent attorneys".

In my professional life I have had occasion to recognise that when a profession is very largely being established or when a new status is being established, as is happening in this case—and we must accept that in the long term we are establishing virtually an international profession of European patent attorneys—it is inevitable that there will be a certain whitewashing operation. This is what will happen over the years, just as it happened in the teaching profession when we created the status of the qualified teacher. One cannot simply discard people who have been practising a profession, sometimes for many years with success, because they have not passed the required examination. This is as true in this field as it was in teaching. My information is that in this country there are only 20 people in a profession of 1,000 to whom this would apply who have not satisfied the examination requirements but who have been practising successfully.

This is an important matter to those in the profession. If it is not provided for, it could adversely affect the opportunities of such people to obtain business throughout the world where English is the spoken language, and where this term is applied to their European colleagues and not to them. I am certain that the House would wish to avoid this and I am quite sure that if time allows between now and the Report stage, the Government might find it possible to table an Amendment, the terms of which would be acceptable to both the Law Society and the Chartered Institute of Patent Agents. Therefore, I do not propose to press this Amendment. I seek an assurance from the Government that they would be prepared to examine the matter further in the hope of tabling an Amendment on Report which would certainly protect the interests of the Chartered Institute of Patent Agents in this country and their opportunity to obtain business for the benefit of this country. I hope it would also satisfy the other interests which are concerned. If the Government could give an assurance that they will explore this matter, I should be very happy to withdraw the Amendments.

Lord McCLUSKEY

I had hoped that I should hear other voices on this matter. I have certainly listened with interest to the remarks made by the noble Lord, Lord Alexander of Potterhill, in support of these Amendments and acknowledge that there is much that is persuasive in what he said. I want it to be clearly understood that the Government are just as anxious to secure the same object; namely, that qualified British patent agents do not operate under any disadvantage when competing with others, wherever they may be, for European Patent Office business.

As the noble Lord recognised, the Government need to give further consideration to these Amendments with a view to being satisfied that the use of the title "European patent attorney" is not only fully justified in the circumstances but also would not mislead the public into thinking that the people concerned were fully trained lawyers. As the noble Lord obviously recognised and referred to, legal bodies on both sides of the Border are concerned about this matter, and the Government, which must pay heed to the representations they receive from whatever quarter, are in fact in the course of doing that at the present time.

I can and do give the noble Lord the assurance that the suggestion he has put forward will be given full and further consideration by the Government and that if, as a result of such consideration and such consultation the Government believe that amendment to the Bill—perhaps not here but in a different place—is needed, a Government Amendment will in fact be tabled if that is the decision. The noble Lord asked that that be done at the Report stage. I would not hold out much hope that our consideration could be completed by that stage, but I would say that if the Government come to the view I have referred to, the Amendment will be tabled at a later stage. Of course if that should not be done, then the noble Lord, Lord Alexander of Potterhill, will no doubt take his own counsel upon what he will do. He is not proposing to press this Amendment, and therefore I need say no more on it. I am indebted to him for making his contribution in this way.

The Earl of SELKIRK

Perhaps I should say a word on this, and I apologise for not speaking before the noble and learned Lord, Lord McCluskey. I must say to the noble Lord, Lord Alexander, that it is not quite as easy as he is making out. For instance, the Scottish Law Society view is that a solicitor in Scotland is by law prevented from calling himself an attorney. Therefore, if it happened that there was a solicitor who was a member of the Chartered Institute of Patent Agents he could not call himself an attorney. I think, therefore, that it is rather harsh to suddenly impose that, unless you are going to change the law on a wider scale. As a matter of fact, there are objections to changing the law on a wider scale because the words by which the solicitors profession are called in Scotland are precisely defined, and it would be a pity to bring in other words which may be more vague.

After all, the Chartered Institute of Patent Agents is a respected organisation. Are you really going to improve an organisation's standing by changing its name? I happen to have had experience, not exactly in a professional line, of doing that, and it had no effect whatever. I should have thought that the Institute itself had a very high standing in all the English-speaking world, and it certainly would confuse the English-speaking world in North America if these words were introduced.

I should hope that the Government would think very hard about this before bringing this in. I did not know there was anything in the Statute to say that the word "attorney" was to be used. So far as I am aware, that has been developed purely in this country. Is it actually laid down? I was not quite certain that it had been laid down. I am very doubtful whether this would make any difference.

Their own standing, I should have thought, would have carried them far enough, and I believe that to change would be extremely confusing. The law on technical matters is an intricate subject, and the word "attorney", though fallen into complete disuse in this country now, seems to apply in North America largely to the meaning of law. Anybody who looks at this Bill, unless he knows a great deal about the law, will never get very far with it. I think it could in that sense be misleading. I think I would on the whole regret it being generally used.

Lord ALEXANDER of POTTER-HILL

I am grateful to the noble and learned Lord for the undertaking that he has given, and I would entirely accept that it might be at a later stage than the Report stage before appropriate action could be taken. I tabled this Amendment at the request of the Chartered Institute of Patent Agents who are deeply concerned about it. I therefore cannot accept that they are not worried about it. They are very worried about it, because they believe that it could adversely affect their opportunities in European business in the future. In the American case, the patent attorneys of America are qualified in law, but they also have to be qualified as patent agents. This is a fact. I entirely accept that. But it is because of that that there is a very real distinction in the United States between a patent agent and a patent attorney. A patent agent, so called, would not be given business by responsible bodies because he would not have the status which they would require.

Therefore, if the patent agent in this country had so to describe himself, he would be putting himself in parallel with a similarly named person in America of a very different status and standing. Therefore, it is very important. I fully accept the difficulties in relation to the legal profession, and obviously the Chartered Institute would have no wish in the world in any way to affect the legal profession or its operation in relation to patents. This is not at issue. I suggest that to change the title is much more important than has been suggested by my noble friend.

Lord McCLUSKEY

Is the noble Lord aware that to some extent the boot is on the other foot? In Scotland solicitors are known as law agents.

Lord ALEXANDER of POTTERHILL

That is perfectly true. I never knew that they were called attorneys, either. I thought they were always called advocates. I have been away from there sufficiently long that I am probably out of date, because they sometimes move rather rapidly in these matters. I would be happy to withdraw my Amendment with the assurance which the noble and learned Lord has kindly given.

Amendment, by leave, withdrawn.

Lord McCLUSKEY moved Amendment No. 311: Page 65, line 19, after ("unless") insert ("he satisfies the condition that").

The noble and learned Lord said: Amendments Nos. 311 and 313 are related, though they are purely drafting Amendments. The first Amendment provides the antecedent for the condition referred to in subsection (5), and the second deletes an unfortunate reference to nonexistent paragraphs. I beg to move.

On Question, Amendment agreed to.

7.57 p.m.

The Earl of HALSBURY moved Amendment No. 312:

Page 65, line 23, leave out subsection (2) and insert— ("(2) Subsection (1) above shall not prohibit a barrister advocate, or solicitor in any part of the United Kingdom from taking part in proceedings in that part of the United Kingdom relating to European Patents and applications therefore to the same extent as he would before the appointed day have been entitled to take part in proceedings under the 1949 Act.")

The noble Earl said: This is an Amendment to Clause 78 which contains material which is the European counterpart of material in Clause 102, to which I have proposed Amendments Nos. 341 and 342, which are themselves derivative. They are consequential upon Amendment No. 333, which we shall not reach tonight. I therefore believe that it would be in the interests of economy of time for your Lordships' House if the noble and learned Lord were to give me an assurance that whatever reconsideration I can persuade him to extend following our debate on Clause 33 will include my Amendment No. 312. I beg to move.

Lord McCLUSKEY

I am happy to give the noble Earl the assurance which he has sought. In fact, these matters may be most appropriately dealt with when we come to Clause 96, which we shall not even attempt to reach tonight.

The Earl of HALSBURY

I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord McCLUSKEY moved Amendment No. 313: Page 65, line 36, leave out ("paragraph (a) or (b) of")

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

On Question, Amendment agreed to.

Clause 78, as amended, agreed to.

Clause 79 [Application of sections 78 and 74]:

On Question, Whether Clause 79 shall stand part of the Bill?

8 p.m.

Lord McCLUSKEY

Before we leave this clause, which is the last in this group of clauses, perhaps I might attempt to answer the point which the noble Lord, Lord Belstead, raised about Clause 74(7), to which the noble Lord, Lord Alexander of Potterhill, also referred in relation to translations. The effect of Clause 74(7) is that the Government may, by their operation of the subsection, make the filing of an English translation of a foreign language application mandatory. Having made a translation into English mandatory, the Government may remove the requirement by rules.

Whether or not we shall require translations into English will depend largely on what the other countries do in relation to applications in languages foreign to them; if other countries are chauvenistic about it, we can be so, too. The United Kingdom is perhaps at an advantage in this matter in that it is likely that most European applications will be in English in the first place. It is not properly described as a temporary provision; it is a provision which enables the Government to act and react in the light of what others may do.

The course we propose, with Amendment No. 314A, will correct two defects in the Bill. First, as drafted it fails to cover one case where, if a patent is granted, it would be a Community patent, and so it and the patent would be governed by Clause 80. Secondly, clauses other than Clauses 73 and 74 should also have been disapplied. The Amendment will paint the picture more clearly in that it will show that the reason for disapplying various provisions is that Clause 80 applies corresponding provisions, and not that Community patents and applications are to be exempt from the type of restrictions imposed by the clauses. Perhaps I need say no more than that.

On Question, Clause 79 disagreed to.

Clause 80 [Implementation of Community Patent Convention]:

Lord McCLUSKEY moved Amendment No. 314A:

Page 66, line 37, at end insert— ("( ) Sections 73, 74, 76, 77, (Operation of section 74 in relation to certain European patent applications) and (Authentic text of European patents and applications (UK)) above shall not apply to any application for a European patent which under the Community Patent Convention is treated as an application for a Community patent, or to a Community patent (since any such application or patent falls within the foregoing provisions of this section")

The noble and learned Lord said: I spoke to this Amendment on the Motion, Whether Clause 79 shall stand part of the Bill? I beg to move.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 315: Page 66, line 38, leave out ("the court") and insert ("a court of the United Kingdom").

The noble Lord said: When we look at Clause 80(2) we see that it provides that the Secretary of State may make regulations to allow any obligations under the Community Patent Convention to be implemented by a "domestic institution ". This may seem rather weird nomenclature, and if we consult Clause 87 we find that costs may be ordered to be paid by the European Patents Office and that such costs may be recoverable through the county court or the equivalent.

It would seem that the definition of a "domestic institution" should be a court of the United Kingdom because different obligations imposed by the Community Patent Convention will be implemented by different courts in the United Kingdom, and that of course applies very much to courts in Scotland as well as in England and Wales. It would seem that the court is defined in Clause 118 as being, in this instance, the High Court. Would it be the High Court in Scotland? I go out on a limb and say that that would be the Scottish equivalent, but I say it subject to correction by the noble and learned Lord.

Lord McCLUSKEY

In answer to the last point made by the noble Lord, Lord Lyell, in Clause 118 he will find that, as respects Scotland, "the court" means the Court of Session. The Government are sympathetic to the suggestion which Lord Lyell has made—that Clause 80 should enable matters such as enforcement of costs to be allocated to the county courts and their equivalent if it were decided that to do so would be desirable—although I am advised that the Amendment as drafted would not achieve the result he seeks.

The Community Patent Convention deals with the matter in Article 61(3), which applies Article 104(3) of that Convention, and Clause 87, to which Lord Lyell referred, seeks to implement Article 104(3) of the EPC. As the Bill stands, the clause would apply equally where it was a Community patent that was concerned. It may be that for consistency with the general approach adopted in relation to the CPC, Clause 87 should not apply where Community patents are concerned, and we will be looking at this point. Perhaps I need not give a long and involved answer on this matter at this hour. We agree to consider the point and, with that assurance, perhaps the noble Lord will feel able not to press it further at this stage.

Lord LYELL

I am only too glad to accept the invitation of the noble and learned Lord. With his usual charm and kindness he has agreed to look at the matter further and I am therefore pleased to beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 80 agreed to.

Clause 81 [Decisions on Community Patent Convention]:

Lord McCLUSKEY moved Amendment No. 316: Page 67, line 11, leave out ("of that convention").

The noble and learned Lord said: This is seen to be an Amendment of purely drafting character. I need not explain it, but the words to be deleted are plainly otiose. I beg to move.

Lord LYELL

I presume that the noble and learned Lord's Amendment means what he intends, but it occurred to me that there could be a possibility in the near future that the United Kingdom might not be so united as at the moment. How would the Bill read then? Possibly my homeland and that of the noble and learned Lord might choose some looser form of association with the United Kingdom. The Amendment might be somewhat dangerous in that case. It may be pedantic, but it seems to me that the clause as drafted makes a great deal of sense. I would not quibble, but perhaps I could have the opinion of the noble and learned Lord on this.

Lord McCLUSKEY

I have given a lot of grey hair to the subject of devolution and I do not know how long the noble Lord, Lord Lyell, is prepared to listen to me on the matter, but perhaps the proper place to deal with the awful eventuality that he is prepared to consider is not Clause 81 but some subsequent Bill for the dismemberment of the United Kingdom. Perhaps I can leave it at that.

On Question, Amendment agreed to.

8.13 p.m.

Lord LYELL moved Amendment No. 317: Page 67, line 12, at end insert ("(nor the European Patent Office)")

The noble Lord said: Again, this deals with Clause 81(1) and we see that it provides that there is a possibility of a dispute or question with regard to the meaning of the Community Patent Convention. We believe that this could be treated as a question of law and that this query would be referred to the relevant convention court, which we understand to be the European Court of Justice in Luxembourg. But subsection (2) seems to go a little wider, for it seems to define the "relevant convention court" as a court or other body over which the Community Patent Convention has jurisdiction. This would appear to include the European Patents Office which would mean that our own courts, including the highest court in the land—your Lordships' House—would be subject to the rules of the European Patent Office. This is what we hope that the Amendment will prevent. I beg to move.

Lord McCLUSKEY

I think that the noble Lord may have made a slip of the tongue. The body referred to in subsection (2) is a body which, under the Convention—that is, the Community Patent Convention—has jurisdiction over proceedings, but I accept his point. If the Amendment as presently drafted were accepted, it might prevent our courts from staying proceedings under Article 77(2) of the Community Patent Convention, pending consideration by the European Patent Office of the question whether the patent should be revoked. The Amendment would also mean that, in hearing questions as to validity, our courts might not be bound to follow a prior decision of the European Patent Office concerning the validity of a patent which, so far as the facts are the same, Article 90(1)(a) of the Community Patent Convention requires. Noble Lords will see that that Article says so in clear erms.

Having said that, however, I acknowledge that it is arguable that the effect of the clause as drafted is to make a non-binding opinion of the European Patent Office (being such a body as is referred to) binding. It is not intended that this should be the result and the Government would therefore like to consider the point and at the same time will have regard to what the noble Lord has said in introducing the Amendment. So, in the spirit in which these proceedings have been conducted and in the light of the Government's intention to look again at this point, may I invite the noble Lord not to press the Amendment at this stage?

Lord LYELL

Certainly, I am very grateful for the reply of the noble and learned Lord and I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 81, as amended, agreed to.

Clause 82 [Jurisdiction in legal proceedings in connection with Community Patent Convention]:

Lord McCLUSKEY moved Amendment No. 317A: Page 67, line 18, leave out ("made by statutory instrument")

The noble and learned Lord said: This is a purely drafting Amendment. Clause 113(1) already requires any order made by the Secretary of State to be by Statutory Instrument, so it is unnecessary to repeat the requirement here. I beg to move.

On Question, Amendment agreed to.

Clause 82, as amended, agreed to.

Clause 83 [Effect of filing international application for a patent]:

Lord McCLUSKEY moved Amendment No. 317C: Page 68, line 12, leave out paragraph (a).

The noble and learned Lord said: This is an Amendment which really seeks to leave out a provision which, although it is thought to be strictly correct, seems to read rather oddly. There are a number of provisions of the Bill dealing with granted patents which refer back to the original application—for example, those dealing with revocation (Clause 70) and provisional protection (Clause 67). In applying these provisions to a patent granted in pursuance of an international application, it is necessary to assume that the international application was a domestic application. It was for this reason that the paragraph which this Amendment seeks to delete was included. However, it is appreciated that the provision reads oddly and, on reflection, it is felt that there is sufficient implication to be able to dispense with the paragraph. No change in effect is intended. With that explanation, I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendments Nos. 317D and 317E:

Page 68, line 15, leave out from ("satisfies") to ("shall") in line 16 and insert ("relevant conditions")

Page 68, line 17, at end insert ("subject, however, to subsection (6) below); (bb) where the date of filing an application is re-dated under the Treaty to a later date, that date shall be so treated as the date of filing the application;")

The noble and learned Lord said: With the leave of the Committee I should like at the same time as moving Amendments Nos. 317D and 317E en bloc to speak to a substantial number of other Amendments; that is, Amendments Nos. 317G, 317J, 317K, 317L, 317M, 317P and 317R. These Amendments are intended to make improvements to Clause 83 and I shall try in a general way to separate them so far as that can be done. They are designed to achieve two main purposes. The first is to allow for the different effects permitted by the Patent Co-operation Treaty of publication under that Treaty in relation to Clause 2(3) (the whole contents) and Clauses 54 and 67 (provisional protection). It would be wrong to allow an international application that is published but not pursued further to destroy the novelty of a domestic application, particularly if published in a language other than English.

Accordingly, Amendments Nos. 317D and 317E provide that the application is only to be treated as published for Clause 13 purposes if the application has been received at the Patent Office in an English version and the fee paid. This proposition is, however, subject to the new subsection (6) which provides that, for provisional protection purposes, time starts to run from the date of publication under the Treaty if publication was in English or from whichever is the earlier of two dates—re-publication under the Act or the date of actual notice to the person concerned in other cases.

The second main purpose of this group of Amendments is to cover the possibility that an application may be amended under the Treaty even after the relevant conditions have been satisfied, If the amendment is made before the copy is sent to the Patent Office, then the applicant need supply the application and the amendments only once. If the amendment is made later he must do what is necessary to satisfy the conditions again in respect of that amendment. I ought to mention that deletion of the existing subsection (6) is not intended to remove the power to remit fees; the fee in question is the search fee, and as noble Lords have seen, there is already power to remit this fee in Clause 14(8). I beg to move Amendments Nos. 317D and 317E en bloc.

Lord LLOYD of KILGERRAN

These Amendments remove points of considerable anxiety to practitioners, particularly in relation to the two principal points mentioned as to destruction of novelty and the amendments. We are very grateful to the noble and learned Lord for introducing these Amendments.

On Question, Amendments agreed to.

8.21 p.m.

Lord McCLUSKEY moved Amendment No. 317F: Page 68, line 19, after ("be") insert ("so").

The noble and learned Lord said: Amendment No. 317F, like Amendment No. 317H, is a purely drafting Amendment; indeed both Amendments are. They are intended to bring paragraphs (c) and (d) of subsection (1) into line with paragraph (b). I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317G: Page 68, line 20, leave out ("and").

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317H: Page 68, line 22, after ("be") insert ("so").

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317J:

Page 68, line 23, at end insert ("; and (e) an amendment of the application made in accordance with the Treaty shall, if it satisfies the relevant conditions, be so treated as made under this Act.").

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317B: Page 68, line 25, leave out ("that treaty") and insert ("the Treaty").

The noble and learned Lord said: Noble Lords will see that the Treaty is defined in lines 7 to 8 on page 68, and so it is right to refer to it as such. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendments Nos. 317K, 317L and 317M:

Page 68, line 26, leave out ("as aforesaid") and insert ("to subsection (6) below").

Page 68, line 33, leave out from ("the") to end of line 36 and insert ("relevant conditions are satisfied and, if those conditions are not satisfied before the end of the prescribed period, the application shall be taken to be withdrawn").

Page 68, line 37, leave out ("said conditions") and insert ("relevant conditions—

(a) in the case of an application,").

The noble and learned Lord said: With the leave of the Committee, I should like to move these three Amendments en bloc. I have already spoken to these Amendments. I beg to move.

On Question, Amendments agreed to.

Lord McCLUSKEY moved Amendment No. 317N: Page 68, line 39, leave out ("prescribed") and insert ("filing").

The noble and learned Lord said: Amendment No. 317N is intended to make it clear that the fee to be paid is in fact the filing fee referred to in Clause 11(1)(c), which I mentioned a little earlier. Perhaps I should at this time mention a later Amendment, No. 317Q, which I will move formally in due course. That Amendment is consequential on the first Amendment, to which I have spoken, in that there will be an additional fee for publication of the translation of the application, and now that subsection (4) will refer to the filing fee it is necessary to mention this fee specifically. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317P:

Page 68, line 40, at end insert ("; and (b) in the case of an amendment, that a copy of the amendment and, if it is not in English, a translation into English have been filed at the Patent Office.").

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317Q: Page 68, line 41, alter ("shall") insert ("on payment of the prescribed fee").

The noble and learned Lord said: I have already spoken to this Amendment. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317R:

Page 69, line 1, leave out subsection (6) and insert— ("(6) For the purposes of sections 54 and 67 above an international application for a patent (UK) published in accordance with the Treaty—

1. (a) shall, if published in English, be treated as published under section 13 above on its publication in accordance with the Treaty;
2. (b) shall, if published in any other language and if the relevant conditions are satisfied, be treated as published under section 13 1574 above on the publication of a translation of the application under subsection (5) above;

but, if the application is published in a language other than English, the applicant may recover a payment by virtue of section 54 above in respect of the use of the invention in question before publication of that translation, or may bring proceedings by virtue of section 67 above in respect of an act mentioned in that section which is done before publication of that translation, if before that use or the doing of that act he has sent by post or delivered to the Government department who made use or authorised the use of the invention, or, as the case may be, to the person alleged to have done the act, a translation into English of the specification of the application.").

The noble and learned Lord said: I have already spoken to this Amendment. I beg to move it formally.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 317S: Page 69, line 3, leave out ("not") and insert ("cease to").

The noble and learned Lord said: As the Bill stands, if an application is, for example, deemed withdrawn under the Patent Co-operation Treaty it will be treated as if it had never been. This result was not intended; the application must continue to be treated as an application which has been withdrawn so that, for example, the applicant can use it as a basis for claiming priority here or elsewhere. The Amendment is designed to achieve the desired effect, which was always intended. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendments Nos. 317T and 317U:

Page 69, leave out line 5. line 10, leave out from ("where") to ("the") in line 19 and insert ("the application or the designation of the United Kingdom in the application is deemed to be withdrawn under the Treaty because of an error or omission in the Patent Office or any other institution having functions under the Treaty or of an application not being received by the International Bureau, owing to circumstances outside the applicant's control, before the end of the time limited for that purpose by the Treaty. (8) Where the relevant conditions are satisfied before the end of the prescribed period,").

The noble and learned Lord said: It may be for the convenience of the Committee if I speak to both Amendments Nos. 317T and 317U at the same time. These Amendments are designed to bring the clause more closely into line with Article 25 of the Patent Co-operation Treaty. When I was dealing with Amendment No. 298B I spoke to another Amendment, No. 317V, which is related. In relation to these two Amendments, Nos. 317T and 317U, perhaps I might deal with the proposed new subsection (10), which is incorporated in Amendment No. 317V. The Amendments are all drafting Amendments. They are designed to bring the Bill more closely into line with Article 25.

In particular, the Bill as it stood did not seem to deal satisfactorily with cases where the application is not accorded a filing date, since the application got off the ground for the purposes of the clause only if it was accorded a filing date. The proposed new subsection (10) deals with this point. Similarly, the comptroller does not need to be empowered to decide that a withdrawal by the applicant himself was the result of an error or omission. With the leave of the Committee, I beg to move Amendments Nos. 317T and 317U en bloc.

On Question, Amendments agreed to.

The DEPUTY CHAIRMAN of COMMITTEES (Lord Amherst of Hackney)

Before I call Amendment No. 317V, I should tell the Committee that if Amendment No. 317V is carried, I cannot call Amendments Nos. 318 or 319.

Lord McCLUSKEY moved Amendment No. 317V:

Page 69, leave out lines 25 to 44 and insert— ("(9) The foregoing provisions of this section shall not apply to an international application for a patent (UK) which is treated by virtue of the European Patent Convention as an application for a European patent (UK). (10) If an international application for a patent which purports to designate the United Kingdom is refused a filing date under the Treaty and the comptroller determines that the refusal was caused by an error or omission in the Patent Office or any other institution having functions under the Treaty, he may direct that the application shall be treated as an application under this Act.").

The noble and learned Lord said: I have already spoken to Amendment No. 317V; indeed, I referred to it at a much earlier stage when I dealt with Amendment No. 298B. So at this stage I beg formally to move the Amendment.

Lord LLOYD of KILGERRAN

Before the noble and learned Lord exhausts all the letters in the alphabet in relation to the Amendments to this clause, perhaps I may say that the Amendments which he has so eloquently submitted to the Committee have removed a great number of the anxieties of practitioners in this matter, and I am grateful for the large amount of work which has been done in getting these Amendments prepared.

Lord McCLUSKEY

I am indebted to the noble Lord for these repeated tributes.

On Question, Amendment agreed to.

Clause 83, as amended, agreed to.

Clause 84 agreed to.

Clause 85 [Evidence of conventions and instruments under conventions]:

Lord McCLUSKEY moved Amendment No. 319B: Page 70, line 36, leave out ("mentioned in section 81 above") and insert ("arising under or in connection with the relevant convention").

The noble and learned Lord said: Clause 85(1)(c) as drafted provides for judicial notice to be taken of decisions and opinions of any court having jurisdiction under the Community Patent Convention on questions relating to that Convention. Clearly, similar judicial notice should also be taken of decisions and opinions of any court having jurisdiction under the European Patent Convention. The purpose and, I believe, the effect of this Amendment is to make this clear. I therefore beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 319A: Page 70, line 38, after ("(b)") insert ("above").

The noble and learned Lord said: This is clearly a pure drafting Amendment. Without it there could be said to be a doubt as to whether the subsection 1(b) referred to was the preceding one or some other one, so the word "above" is to be inserted to remove any doubts on that. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 391C: Page 70, line 40, leave out ("community") and insert ("convention").

The noble and learned Lord said: This is an Amendment designed to correct a typographical error. It was intended to refer to a "convention institution" as defined in Clause 85(6). I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 320: Page 71, line 33, leave out ("member of") and insert ("party to").

The noble and learned Lord said: This, again, is a pure drafting Amendment. It is more correct to refer to States as being "party to" rather than "members of" the conventions there, and accordingly I beg to move this Amendment.

On Question, Amendment agreed to.

Clause 85, as amended, agreed to.

Clauses 86 to 88 agreed to.

Clause 89 [Financial Provisions]:

Lord McCLUSKEY

Before the Question is put, perhaps I may say that my attention has been drawn to the fact that earlier on I was somewhat critical of what I thought was the order of some of the numbers and letters on the Marshalled List. In fact, the way in which the Fourth Marshalled List is laid out is the correct and conventional way. I had not understood that, and if I have offended anyone I should like to apologise for it.

Clause 89 agreed to.

Lord ORAM

I think this may be a convenient time to agree that we have made good progress; and, if that is so, I beg to move that the House do now resume.

Moved accordingly and, on Question, Motion agreed to.

House resumed.