PATENTS BILL [H.L.]

HL Deb 22 March 1977 vol 381 cc435-79

5.19 p.m.

Lord ORAM

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

Moved, That the House do again resolve itself into Committee.—(Lord Oram.)

On Question, Motion agreed to.

House in Committee accordingly.

[The Lord MAYBRAY-KING in the Chair.]

Clause 90 [The Patents Court]:

The Earl of SELKIRK moved Amendment No. 321: Page 72, line 41, at end insert ("and two scientific advisers appointed by the Lord Chancellor.").

The noble Earl said: Perhaps I may move Amendments Nos. 321 and 322 in order to ask the Government some questions and because they raise a matter which affects Amendment No. 326A, which I shall be moving presently. This is setting up an entirely new court, and I understand the intention is that it will be a court in the full sense of the word—that it will be part of the High Court, that it will sit as a single judge and that appeals will be made in the ordinary way to the Court of Appeal. In subsection (4) there is provision for scientific advisers to be appointed. I understand these have very rarely been appointed in the past. Can the Government tell us their intention? When is it intended that these scientific advisers will be appointed, and who will be selected?

The Amendment goes rather far, perhaps, in saying that they should be appointed on all occasions and, so to speak, form a permanent part of the court. The object is that the increasing complexity of many patent cases may make this desirable and that this provision should add to the confidence of industry in using the patent court, which is very important because we wish in every way, I think, to encourage new steps which will help and can be used in the application of industry. Indeed, if there is confidence in industry it is unlikely that so many actions will run from the patent court to the appeal court. If the noble and learned Lord can answer those questions, as to what the proposals are in using subsection (4) with regard to scientific advisers, I should be very grateful, and I think it might be of general interest. I beg to move.

Lord CAWLEY

I have had some experience of scientific advisers. I think the last occasion was in the colour television case, where a Court of Appeal had a scientific adviser—and he was in fact made an honorary bencher of Lincoln's Inn for the duration of the proceedings in order that he may lunch with his fellow judges. I think that this Amendment certainly does not achieve what it is meant to achieve. It suggests that two scientific advisers should be permanent officials and that such advisers should not be appointed for individual cases. I think that would be most disastrous, because you must have somebody who knows something about the special line concerned. In the colour television case they found great difficulty in finding anyone who was not biased in some way or connected with either side. In the end they found an official of the BBC who was persona grata to both sides, and I think he was of the greatest assistance to the Court of Appeal. I think it would be a pity to have any permanent officials, and very much better if we carried on as we do now. I think that whenever the court thinks they need somebody to help them, then these officials should be appointed, but that there should be no permanent officials.

The LORD CHANCELLOR (Lord Elwyn-Jones)

I am most grateful to the noble Lord, Lord Cawley, who has spoken to this Amendment, and to the noble Earl, Lord Selkirk, for introducing it in the absence of my noble friend Lord Brown. Certainly, as I think I said on Second Reading, it is the intention that, where it would be advantageous to the court to receive the help of a scientific adviser, that should be done; and I respectfully agree with what the noble Lord, Lord Cawley, has just said, that a panel of permanent experts really would not meet the bill because, in view of the enormously wide range of expertise that now falls for consideration in patent matters, it is much better to have ad hoc an expert in the particular field to assist the court.

What the Government have in mind—and, indeed, I have already put it in train —is that there should be a rule of court requiring that the question of appointing a scientific adviser should always be considered, and should have to be considered, on the summons for directions. That will concentrate the minds of all concerned to the question whether that would be valuable in the particular case—clearly one does not want a scientific adviser in all cases—and I am happy to say that the Supreme Court Rule Committee has already approved of that proposed change and that it will enter into force in a few weeks' time. I think that the concern that noble Lords have expressed will be met by that machinery. I am not precisely clear in my mind who would appoint the scientific adviser, or invite him to serve. Whether it would be the court or myself, I do not know; but perhaps I can look into that and let the noble Earl know the answer to that question. In the light of what I have said, I hope that the noble Earl will feel disposed to withdraw the Amendment.

Lord LLOYD of KILGERRAN

Before the noble and learned Lord sits down I should like to draw his attention to a matter which is causing me a little anxiety, and that is the White Paper on Patent Law Reform. On page 6, chapter 4 deals with the court and appeals. This is a Government White Paper which starts off this section in relation to appeals in patent matters by saying quite explicitly: The existing arrangements for dealing with disputes over patents and appeals from Patent Office decisions are unsatisfactory". That is the first sentence. Then, later on, in paragraph 23 it is said: With these various viewpoints in mind, the Government thinks it right to consider establishing a new court which would not be part of the High Court". It seems to me that the recommendation of this specialist committee was that the court dealing with many of these disputes should not be part of the High Court; and during the Second Reading debate I quoted from various judges who said that disputes on patent matters should not go to the High Court but should go to some other sort of tribunal or commission.

I fully realise that the two patent judges in the High Court who have been dealing with patent disputes in recent years, and of course the first patent judge, the late Mr.Justice Lloyd-Jacob, whom I knew very well, have done a great service to industry by the way in which they have conducted these appeals in the Chancery court in relation to patent matters, and I hope that nothing that I say will in any way be considered to be decrying the great work done by the three judges to whom I have made reference. But, for some reason or other unknown to me, the jurisdiction for dealing with patent disputes is to be in the High Court, which is against the view of the White Paper of only a few months ago; whereas, as I have said on many occasions in your Lordships' House, what is required, particularly by the individual inventor and also by the small firm, is a sort of robust action in dealing with these things.

Therefore, I am under two difficulties. I do not quite understand why there has been this reluctance to start to use a court other than in the High Court for these disputes, as recommended in the Government White Paper; and, also, why it is that there is so little practical sympathy—and I regret to put it so positively—for the views I have put forward that small firms and individuals should have the opportunity, if they so desire, to get the matter dealt with robustly before some kind of commission or some kind of court other than the High Court. I fully realise the legal problems involved, but it seems to me that it would not be beyond the wit of the Government to consider this question of the expense to small firms and inventors in relation to getting their disputes settled.

I am grateful for the long letter I received from the noble and learned Lord in regard to the difficulties of setting up a tribunal. If I may tell him again, it was entirely my fault that he has misunderstood what I said when I referred to the Royal Commission on awards to inventors set up after the last war. That Commission was able to make not only ex gratia awards to inventors who had no rights but also replaced the High Court in relation to patent actions against the Crown under Section 29 of the Patents Act then in force. This Commission was in a position, by agreement, to deal expeditiously with patent claims that would have gone to the Court in the normal way but which the Government at the time decided, because they would be too expensive, should go to the Royal Commission. I am sorry to have spent so much time on this but it seems to me to be a matter which concerns small firms— and by "small firms" I mean firms with under 1,000 employees—and individual inventors.

The LORD CHANCELLOR

The noble Lord has robustly revived his plea for a tribunal to deal with these matters and, with great skill, he has managed to do so on an Amendment dealing with a different matter. I forgive him for that; and I will certainly look again at the point he has made, particularly in relation to the correspondence which we have had in regard to the matter of tribunals. The reason why it was originally proposed that the patents court should not be part of the High Court was to overcome difficulties over the right of audience for patent agents. But that difficulty, happily, did not materialise; so the way was clear for appeals from the comptroller to go to the High Court. That was the recommendation of the Banks Committee.

I agree that there is some slight departure from the White Paper. It did not commit the Government to a mixed court but, certainly, it said the Government would consider it. We have considered it in the light of discussions and we have decided to follow the Banks proposals. For the reasons we have canvassed, I, frankly, do not think the small inventor will be prejudiced by this change; but, as I have said, with great respect, the point is slightly removed from the Amendment we are discussing and I pass the Floor, if I may, to the noble Earl, Lord Selkirk.

The Earl of SELKIRK

I thank the noble and learned Lord for what he has said. So far as I understand the procedure he has outlined, it means, in effect, that in every case where it seems that a scientific adviser is either desirable or helpful to the court this matter will be considered and no doubt a proper appointment will be made. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 90 agreed to.

Clause 91 [Appeals from the comptroller]:

5.34 p.m.

Lord LYELL moved Amendment No. 324: Page 73, line 17, leave out paragraph (b).

The noble Lord said: We now come to Clause 91 which is concerned with appeals from the comptroller. Clause 12 of the Bill—we discussed it during the first session of the Committee, stage—deals with the cases of patents which are called "divided out." This appears to mean that there are two inventions which are contained in one particular patent application. Where this is so, the date of filing an application is to be taken as the earliest date on which the applicant's documents for filing comply with certain particulars. The filing date of the application is of the utmost importance because, under Clause 5 of the Bill, the filing date is the priority date for the invention; and, of course, upon the priority date rests the criterion for novelty.

Because so much depends upon the priority date, we are strongly of the opinion that an appeal to the court should be allowed from a decision of the comptroller when he is acting under Clause 12. The real anxiety for an applicant will arise from Clause 12(4), from which we see that it is a matter of great importance to the applicant that a "divided out" application should be able to claim the priority date of the earlier application. If the comptroller decides against an applicant where an earlier priority date is at issue, we think it is surely right (with so much depending upon the decision of the comptroller) to allow an appeal to the Patents Court as it is to be set up. That is the effect of the Amendment. I beg to move.

The LORD CHANCELLOR

I fully sympathise with the purpose and intent behind this Amendment. I agree that a decision under Clause 12 could affect, and will affect, the priority date of a patent application and that that may have (as the noble Lord has pointed out) very important consequences for the applicant. What troubled us was that the decisions which the comptroller will be taking under Clause 12 are largely administrative acts not involving the exercise of any judicial discretion. At this moment, I do not see how the absence of a right of appeal could cause hardship.

But I think that I have no confidence in what I have just said on those two points. Accordingly, if the noble Lord is content to let the matter be further considered and not to press it at this stage, I certainly would be very happy to consider it. In the light of my own self-criticism it may be that at the end of the day I shall either let him again put down the Amendment on Report or may move it myself. If I could have another look at it I should be grateful.

Lord LYELL

It is gratifying to start our proceedings on this fifth day in Committee with such a kind welcome for this Amendment. We are grateful for the way in which the noble and learned Lord has received it. It contains some points which we felt were of importance and could arouse some hostility and, indeed, induce some hardship with an applicant. We shall be pleased to allow the noble and learned Lord to take further consultations. With that I beg leave to withdraw this Amendment.

Amendment, by leave, withdrawn.

The DEPUTY CHAIRMAN of COMMITTEES (Baroness Wootton of Abinger)

Amendments Nos. 325 and 326 on the Marshalled List are substituted by manuscript Amendments Nos. 325A and 326B.

Lord LYELL moved Amendment No. 325A: Page 73, line 39, leave out ("34, 70 or 71") and insert ("15, 17, 24, 34, 37, 70, 71 or 72").

The noble Lord said: I beg to move this Amendment and would apologise to the Committee for an oversight. The noble Lord, Lord Oram, wrote to me and suggested that while the Government might see their way to considering the original Amendment (No. 325) there was one particular clause that they felt could also be added to this list. This was Clause 17. I was a trifle remiss in adding this particular clause to the list.

However, with that I hope I may pass on to looking at the object and effect of the Amendment. Clause 91(3) prevents two separate levels of appeal from a decision of the comptroller. We presume this is in the interests of keeping legal patent proceedings down to the minimum cost and seeing that they may proceed as cheaply as possible. However, we see that Clause 91 provides two exceptions to this general prohibition. Paragraph (a) gives an absolute right of appeal under certain clauses of the Bill: Clauses 7, 34, 70 or 71. We also find under paragraph (b) a further appeal will be allowed if a decision by the comptroller seems to be or is wrong in law. Even then an appeal is only allowed by leave of the Patents Court, or indeed the Court of Appeal.

We see the effect of this particular Amendment as being twofold: first, the four clauses that have been chosen to give an absolute right of appeal concern important legal issues affecting what we term basic rights. These four clauses which are at present in the Bill at line 39 on page 73 should be supplemented using what we hope are the same criteria. We hope that this is the effect of Amendment No. 325A. The second effect of the Amendment is that we believe that the leave of the court should be necessary even for the right of appeal provided by subsection 3(a) in this clause. This would be the effect of Amendment No. 326B to which I will be coming. I beg to move Amendment No. 325A.

5.42 p.m.

The LORD CHANCELLOR

It may be convenient for me to indicate at once that we propose to accept these Amendments. I am most grateful to the noble Lord for putting them down. We had already accepted in principle Amendments Nos. 325 and 326, which have now been withdrawn in place of the changed draft which is now before the Committee. We share the view of the noble Lord that a right of appeal on fact or law should not be restricted to cases where the comptroller's decision was given under Clauses 7, 34, 70 or 71. But, at the same time, since we are dealing here with proceedings which originated before the comptroller, it is desirable to avoid an undue proliferation of further appeals to the Court of Appeal. But the requirement of leave in every case should secure this. In the circumstances, I am very happy to accept these Amendments.

Lord LLOYD of KILGERRAN

Before the noble and learned Lord sits down, I have not yet spoken to this Amendment because I wanted to listen to what the noble and learned Lord had to say.

The LORD CHANCELLOR

I was not seeking to obstruct the noble Lord; I thought he would like to know that I was agreeing to accept the Amendments.

Lord LLOYD of KILGERRAN

I am much obliged. This Amendment relates to Clause 37. So far as I understand it, this is the clause which deals with the award of compensation to an employee who has a patent and feels he ought to have some compensation. There should be a finality in regard to this kind of appeal from an employee, and indeed I had considered whether an Amendment should not have been put into the previous clause to say that there should be no appeal from the decision of the Comptroller General when he was deciding what award should be paid to an employee. My reason for that would be that there should be that finality in the consideration of what award should be paid to the employee. If the Comptroller General realised that there was no appeal available, that would probably assist him in relation to the realisation of his jurisdiction. I wonder whether, therefore, the Government would consider at least deleting the reference to Clause 37 in the present Amendment, or giving consideration to the question whether or not there should be this appeal as of right to the Court of Appeal in relation to Clause 37.

Lord BELSTEAD

On behalf of my noble friend, may I say that it is not as of right. Amendments Nos. 325A and 326B have been at pains to make it clear that both will depend on leave being given.

Lord LLOYD of KILGERRAN

I am grateful to the noble Lord, Lord Belstead. What I meant to say was that it should not be put into the Bill that there was a possibility, even by leave, of getting an appeal.

The LORD CHANCELLOR

That is a matter of opinion that we considered when we were dealing with the compensation provisions. I would have thought that the amount of the award and the grounds on which the award is made, were matters which could in a given case, subject to leave being granted, be very appropriate indeed for appeal. I should be unhappy if that class of case was excluded While it would concentrate the mind of the comptroller wonderfully to realise that he is giving a final decision and, to that extent, is infallible, somebody once said about the House of Lords and its decisions that they are not final because they are infallible but infallible because they are final. While the comptroller's mind would be concentrated, realising his was a final decision, I do not think that the litigant, feeling that he had suffered an injustice, would obtain great comfort from the thought that at least the comptroller knew his decision was final. I do not think I approve of the denial of the right of appeal in an appropriate case, as the noble Lord pointed out, where leave to appeal is granted.

Lord LYELL

I hope that the noble Lord, Lord Lloyd of Kilgerran, is not too concerned about Clause 37. I appreciate his professional interest and knowledge in these matters. I wonder whether he would agree with me that there would be two sides to an appeal under Clause 37. I hope an employee inventor who felt aggrieved would have a right of appeal, again where the court felt that there were grounds for dispute, and should then be given leave.

Lord LLOYD of KILGERRAN

When the noble Lord talks about the employee having a right of appeal, in my experience that right of appeal is very much limited by the cost of such an appeal. My appeals to the Committee have been to try to reduce the amount of costs in these matters which will he involved to the employee. It is all very well to say that an employee can take the case to the House of Lords; but there is no legal aid for the employee and therefore the cost to him is a serious handicap.

Lord LYELL

I take the point. I wonder what would be the difference in taking an appeal to the comptroller and on. But the noble Lord, Lord Lloyd, will know these things, I am sure, as do the people who are involved in these matters in their professional life.

Lord LLOYD of KILGERRAN

If the noble Lord, Lord Lyell, wants advice about costs, I may be able to tell him privately. It involves thousands of pounds in disputes on patent matters. I feel that employees ought to be assisted in some way to avoid these heavy costs being incurred or threatened to them and thus depriving them of justice.

Lord LYELL

I think probably we should discuss the details and the figures at a later stage, and not during the Committee stage. I hope the noble Lord, Lord Lloyd, will accept that we have gone far enough along the channel today. I should like to say to the noble and learned Lord who sits on the Woolsack that we are most grateful to him for indicating that our Amendment attempts to fit the case. I am also grateful to the noble Lord, Lord Oram, who indicated that this would be broadly acceptable.

On Question, Amendment agreed to.

The DEPUTY CHAIRMAN of COMMITTEES (Baroness Wootton of Abinger)

I now call Amendment No. 326B, which is substituted for Amendment No. 326.

Lord LYELL moved Amendment No. 326B: Page 74, line 1, leave out ("on that ground") and insert ("under this section").

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

On Question, Amendment agreed to.

5.52 p.m.

The Earl of SELKIRK moved Amendment No. 326A: Page 74, line 4, leave out subsection (4) and insert— ("(4) An appeal shall lie to a single judge of the Court of Session from any decision of the comptroller in proceedings under subsection (5) below, except any decision mentioned in paragraphs (a) to (f) of subsection (1) above. (5) In any proceedings before the comptroller under this Act, the comptroller shall hold the hearing in Scotland where either:—

1. (a) both parties have their place of business in Scotland; or
2. (b) the patentee has his residence or place of business in Scotland.

(6) The Lord President of the Court of Session shall make rules for the hearings of appeals by the Court of Session.").

The noble Earl said: We now come to the application of this new court for Scotland and I think, by any conceivable standards, what is written into the Bill is totally inadequate. It says three things. The first is that appeals from the comptroller will be taken to the Court of Session and, secondly, that they will not be taken in the sheriff court, except for incidental procedure; thirdly, that the assessors may be paid. Nothing else is put in; no powers are given to the Lord President of the Court of Session to make regulations. In fact, there is no real explanation of how the Government propose this shall work. I hope the Government will give some indication of how they expect this to be conducted.

I should like to ask one or two specific questions as to what it is the Government have in mind. First, are appeals from the comptroller to be taken by a single judge? I should have thought so, and that the general procedure laid down in England would here be followed. What is to be the position of the assessors? So far as I can see, one may pay them but there is no means of appointing them. I wonder whether that does not require to be looked at again. Finally, the Explanatory Memorandum says that hearings will be taken in Scotland for cases affecting Scotland; but there is no reference at all to that in the Bill. My Amendment suggests that the comptroller should sit in Scotland—and he has not sat in Scotland very often, I believe—where both parties are resident in Scotland or where the patentee or the claimant of the patentee is resident in Scotland. That is what the Amendment says, and I very much hope the Government will be able to agree to it, at least in principle.

One other important matter is whether the Government propose to put a filing office in Scotland. The noble and learned Lord, Lord McCluskey, said the other day that it does not require statutory authority but it is a matter of administration. This is a matter where time and expense can be of very real significance and importance. I am informed that in many European countries the filing offices are dispersed round the country and there seems no reason at all why that should not equally be the case in Scotland. It would not be a very great matter to have an office of this character set up, for example, somewhere in the Department of Trade offices in Glasgow.

I should be very grateful if the noble and learned Lord could explain what sort of arrangement is proposed for Scotland and on whom it is desired to put the responsibilities. I do not propose to press the Amendment but I think we ought to have a full explanation of the sort of organisation which is envisaged, and not just these very brief and totally unsatisfactory suggestions which are made in the Bill. Incidentally, I would suggest that subsection (4) would fall very much better under the next clause, Clause 92, with which it appears to me to be far more closely connected. I beg to move.

5.56 p.m.

The SOLICITOR-GENERAL for SCOTLAND (Lord McCluskey)

Perhaps the Committee would allow me to take the Amendment, first of all, in its own terms and then come back to the criticisms made by the noble Earl, Lord Selkirk. The Amendment, as we see, would require the comptroller to hold hearings in Scotland in cases where the parties are resident or have a place of business there. These are certainly factors which ought to be taken into account by the comptroller when fixing the venue. But we suggest they are not the only factors which may need to be considered. Others are the convenience of the patent agents involved and that of the expert witnesses; the expense which would or might be occasioned by all these people and the hearing officer having to travel to and stay in Scotland for the duration of a hearing.

Sometimes, as I think that practitioners here could confirm, there is a degree of urgency involved. I understand that sometimes a hearing has to take place at very short notice indeed. Perhaps most important of all are the wishes of the parties, because although they fulfil the qualifications envisaged in the Amendment, they may wish to appear before the comptroller in London and not to have the proceedings in Scotland, for whatever reason. So there is the need to take into account all these other factors. However, I should like to acknowledge that the Amendment has concentrated the Government's mind upon these matters in a way which perhaps it had not been concentrated before. There is the need to take account of all those factors and also the representations which the Government have received from various bodies in Scotland. All these things have led the Government to the view that further consideration needs to be given to the whole clause.

To that extent, I acknowledge the force of the criticisms that have been made, and indeed the Government are now giving the consideration to these matters which has been rendered necessary by the observations which have been made and by the observations which have fallen from the noble Earl. I can, however, say this in general: the comptroller has always been willing to sit in Scotland, and remains willing to conduct hearings there. Indeed, I can go further and give an undertaking that he will do so whenever the circumstances are appropriate, although I would not want to be driven too hard as to what would constitute "appropriate circumstances".

We must also note that under the present Bill the number of cases in which the comptroller can sit in Scotland has been substantially enlarged, compared with those under which he could sit under the 1949 Act. Under that Act, it was only under Sections 55 and 56 that hearings could be directed to take place in Scotland. The Bill extends his discretion to make such an order.

The noble Earl mentioned specifically the question of the single judge. The question as to whether an appeal should be taken by a single judge or by more than one judge is, as the noble Earl will appreciate, a matter which the Court of Session itself should regulate, because that court controls and regulates its own procedure. The Lord President of the Court of Session has confirmed that in his view the Bill should provide merely for an appeal to the Court of Session—I think that is fairly usual—and that rules of court should provide that the appeal will be heard by an Outer House Judge—that is, a single judge of the Court of Session. The Lord President has confirmed that the court is willing to make rules to that effect, and express provision for it in the Bill is therefore unnecessary.

In relation to the matter of the assessor, I think the noble Earl will see that provision for that is made in Clause 92(3): The remuneration of any assessor appointed to assist the court in proceedings under this Act in the Court of Session shall be determined by the Lord President of the Court of Session with the consent of the Minister…", and so on. One of the matters which the Government have to reconsider is this question of what feature of a case, or of the parties to it, should determine whether that case ought to be heard in Scotland, and what the noble Earl has said will be taken into account.

I think that I should say this in relation to the Amendment. The proposed new subsection (6) is unnecessary in the light of what I have said, because of course the Court of Session has power to regulate its own procedure, which is conferred by Section 16 of the Administration of Justice (Scotland) Act 1933. It can make the necessary rules under that Act, and accordingly the new subsection (6) is unnecessary. The noble Earl raised one other matter; that is, the question of having a filing office in Scotland. I do not think that that arises directly out of this Amendment, but the noble Earl will perhaps appreciate that the matter of filing documents in places other than London is not a peculiarly Scottish point. It affects other cities—for example, Liverpool—and I do not know that one can necessarily say that communications are any better between regional centres in England and London, on the one hand, than they are between Glasgow or Edinburgh and London, on the other. The same applies, of course, to places as remote from London, in terms of travel time and expense of travel, as Newcastle.

The Patent Office in fact accepts business by post and, in practice, that means that a document which is posted, whether in Glasgow, Newcastle or Liverpool, will be treated as having been filed in the Patent Office on the day after posting. Therefore, there is a delay of only one day. I think the noble Earl will appreciate that if one set up a filing office, or more than one, in Scotland, there would be pressure to set up similar offices in other regional centres, and the expense would be out of all proportion to the benefit that might be gained. I give that reply in the hope that it is a satisfactory one, although I do not think that it arises directly out of this Amendment. Subject, however, to those comments, the Government are certainly considering both what the noble Earl has said and the representations which they have received.

The Earl of SELKIRK

I am very grateful to the noble and learned Lord for what he has said. Of course, the argument about Liverpool is always before anyone's mind and we are discussing a much wider sphere. But the fact is that Liverpool is less expensive than Glasgow and, on the whole, travel to Liverpool is quicker than to Glasgow. Therefore, it is that much more difficult, in terms of cost and time, to do things in Glasgow than in Liverpool. I agree that there is a marginal element, and I would not contradict that for a moment.

But may I ask the noble and learned Lord whether he would consider putting subsection (4) of Clause 91 into Clause 92, and making the one clause deal with the Scottish application of this Bill? It seems to me to be tied on to the end of Clause 91, but it has very little to do with it. I leave it with him and will withdraw this Amendment, in the hope that something will be put forward which deals a little more specifically with this subject. But I should have thought—and I believe that the noble and learned Lord acknowledged it—that the wishes of the parties should be the predominant factor. I would not say that the patent agents stand first here, because they want to have everything where they are working. They would not necessarily consider the cost to other people. I would ask the noble and learned Lord to consider that point very carefully. Unless he wishes to say anything more, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 91, as amended, agreed to.

Clause 92 [Proceedings in Scotland]:

6.4 p.m.

Lord McCLUSKEY moved Amendment No. 327: Page 74, line 14, leave out subsection (2).

The noble and learned Lord said: This Amendment deletes what seems to be an unnecessary provision. I can say briefly that subsection (1) of this clause confers exclusive jurisdiction in patent proceedings in Scotland upon the Court of Session, and that it follows from that that there is no need to make additional provision expressly excluding jurisdiction which the sheriff court might otherwise have been thought to possess. I think that that enables me to answer in this visit to the Dispatch Box the point about the sheriff court which the noble Earl made in relation to the previous Amendment. I beg to move.

Lord LYELL

Can the noble and learned Lord explain to me Section 7 of the Sheriff Courts (Scotland) Act 1907, and Section 31 of the Sheriff Courts (Scotland) Act 1971? I wondered what was their importance. Perhaps the noble and learned Lord can also explain the significance of the words, …except in relation to questions which are incidental to the issue in proceedings which are otherwise competent there", in subsection (1).

Lord McCLUSKEY

It will not surprise the noble Lord to know that I do not carry them in my head, nor have I thought it prudent to carry them into the House today. I came to the view that it was unnecessary for them to be there and subsection (2) was to be deleted. I am afraid I did not think that the noble Lord would be so searching as to ask me why they were there, so I cannot give him an explanation. But the question is deserving of an answer, and I will write to the noble Lord and explain how we made the error in the first place.

Lord LYELL

I thank the noble and learned Lord and beg him not to go into too much detail. A very brief explanation would certainly satisfy me.

Lord McCLUSKEY

That is exactly what I had in mind.

On Question, Amendment agreed to.

Clause 92, as amended, agreed to.

Clauses 93 and 94 agreed to.

Clause 95 [Exercise of comptroller's discretionary powers.]:

The LORD CHANCELLOR moved Amendment No. 327A: Page 74, line 38, at beginning insert ("Without prejudice to any rule of law,").

The noble and learned Lord said: I am comforted by the fact that my noble and learned friend the Solicitor-General cannot, off the cuff, tell us what are the provisions of Section 7 of the Sheriff Courts (Scotland) Act 1907 and Section 31 of the Sheriff Courts (Scotland) Act 1971. It gives me great comfort to realise that, like myself, his memory is fallible on these important matters.

Clause 95, with which we are now dealing, imposes on the comptroller a specific duty to hear a party to a proceeding before exercising his discretion adversely. It seemed to the Government that this might be thought to be overriding the common law rules of natural justice, of which audi alteram partem—the right of each party to be heard—is a mere example, but a very important one. We think it prudent, lest it be thought that, because this has been specifically identified, the other relevant rules of natural justice do not operate. But, of course, that is far from our intention. The rules of natural justice will continue to apply, and the Amendment seeks to make this plain by adding the words, "Without prejudice to any rule of law" at the beginning of this clause. I beg to move.

On Question, Amendment agreed to.

Lord BELSTEAD moved Amendment No. 328: Page 74, line 38, after ("shall") insert (",before exercising his discretion or giving a decision or determining a question,").

The noble Lord said: With this Amendment, I should also like to speak to Amendments Nos. 331 and 332. I am not sure whether the words "exercising…any discretion" in this clause cover the words which my noble friends and I would like to insert into the Bill by Amendment No. 328. But on the assumption that this is not the case, we think that Clause 95 ought to be wider in scope, in that any party to a proceeding should have the right to put its case, whether the proceedings require the comptroller to exercise his discretion, to give a decision or to determine a question.

An example of what I have in mind is whether the employer and the employee have the right to appear before the comptroller when he is deciding under Clause 37 whether compensation should be awarded to that employee for his invention. That would, presumably, be giving a decision. Then there is the kind of case where there is a right for the employer and the employee to be heard under Clause 38, and the comptroller determines the question of what is the fair share of the benefit from an invention to which the employee is entitled. An example of exercising his discretion might be in Clause 26(4), where the comptroller shall, subject to conditions, restore a lapsed patent by order which may be subject to such conditions as the comptroller thinks fit.

Acceptance of these Amendments would make it clear, I think, that under Clauses 37 and 38 in particular the parties concerned have an opportunity of being heard. Anyway, that is perhaps the clearest example of the practical effect of these Amendments. Perhaps I ought to add that if, by any chance, these Amendments are acceptable in principle to the Government, they may feel that the placing of Amendment No. 331 in the clause does not make for very polished English. If I am told that the Government would prefer to redraft, I will, of course, accept such advice. I beg to move.

The LORD CHANCELLOR

I do not think that there is a great deal between noble Lords opposite and the Government on this question. Clearly the result we are seeking to achieve is that the comptoller shall hold a proper hearing and give interested parties an opportunity to put forward their views in the circumstances in which it would be appropriate for that to be done, and for the comptroller to see that this is done before embarking upon a particular course of action. The only difference between us is that, as at present advised, the Government believe, particularly in the light of the acceptance of Amendment No. 327A, that the present wording of Clause 25 will achieve the result that is being sought.

We are a little apprehensive about extending the wording of the clause as is proposed in these Amendments. They might result in the comptroller being required to hold a hearing before performing what might be a purely administrative act, and clearly that is not what noble Lords have in mind. In particular, Amendment No. 331 would require the comptroller, before coming to any decision, to anticipate who might be liable to be adversely affected by it and this, I venture to think, would be a difficult, indeed an almost impossible task.

Although I am very willing to look again at the matter I do not think, with great respect, that these Amendments will give to parties to proceedings any right that they do not already have under the clause as it is now worded. On this occasion I do not think that the change proposed would be helpful to those who will be directly concerned.

Lord BELSTEAD

I am grateful to the noble and learned Lord for his advice, and I should like to withdraw the Amendment.

Amendment, by leave, withdrawn.

6.14 p.m.

Lord BELSTEAD moved Amendment No. 329: Page 74, line 38, after ("give") insert ("to").

The noble Lord said: Perhaps I may move Amendment No. 329 and speak at the same time to Amendment No. 330. We feel that these Amendments improve the drafting, but if the Government do not feel that this is so we shall, of course, accept their advice. I beg to move.

The LORD CHANCELLOR

I am sorry to sound adamant, which I do not think anybody is on the kind of matters which we are discussing; but I do not think that the Amendments would help. I am afraid that the same criticisms as I had to make before apply to these two Amendments.

Lord BELSTEAD

I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 95, as amended, agreed to.

Clause 96 [Right of audience in, and privilege of communications for, certain proceedings]:

The LORD CHANCELLOR moved Amendment No. 332A: Page 75, line 1, leave out from beginning to first ("any") in line 3.

The noble and learned Lord said: In the Bill as it is now printed, Clause 96(1) confers upon solicitors and patent agents the right to appear and to be heard on behalf of any party to proceedings before the comptroller. For the avoidance of doubt, it is thought desirable to state that parties may also be represented in such proceedings, first by counsel and, secondly, by any other person whom they desire to represent them—as, indeed, is usual these days in tribunal proceedings. Amendments Nos. 332A and 332C seek to achieve that purpose. However, in order to prevent professional men who have been disqualified from practising as such from representing parties before the comptroller as "other persons", the words "subject to rules under Section 103 below" have been inserted. Rules will be made under that clause in due course excluding such people, who may, for instance, have been expelled from whatever professional organisation it may be, from acting as "other persons" and coming under the umbrella of that language. I think I have explained what the Amendments intend to achieve, and I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 332C: Page 75, line 5, at end insert ("may appear before the comptroller in person or be represented by counsel or a solicitor (of any part of the United Kingdom) or a patent agent or, subject to rules under section 103 below, by any other person whom he desires to represent him").

On Question, Amendment agreed to.

6.19 p.m.

The Earl of HALSBURY moved Amendment No. 333: Page 75, line 9, leave out subsection (3).

The noble Earl said: I move the Amendment which stands in my name with some diffidence, as I am well aware that the cobbler should stick to his last. This is a purely legal point and I am not a lawyer. However, I have done my best to assure myself that I would not be wasting the time of the Committee in putting forward this Amendment. In brief, Halsbury has consulted Halsbury and has also taken counsel's opinion. I am concerned simply with the precedent involved in seeking to regulate by Statute the right of audience in what is to be a branch of the High Court. The Supreme Court of Jurisdiction Act has been acted and re—enacted three times altogether—in 1873, 1875 and 1925—and one section has survived for over 100 years. I have the wording of that section here but I will not read it, because "legalese" delivered viva voce tends to be a trifle opaque. It is the section which, as it were, does the minimum amount of regulating these matters by Statute. Save in so far as the Act itself moderates the procedure in court, it leaves everything else unchanged and states that the rules and regulations of court and procedures in court shall be the same as they were before the Act came into force. I am advised that no other Statute has regulated these matters and that they lie within the jurisdiction of the courts themselves because right of audience was not one of the matters which was dealt with by that section of the Supreme Court of Jurisdiction Act.

It is important not to confuse procedure under the various Patents Acts—we have one per generation—with this matter of a precedent. Prior to 1932, an appeal from the comptroller of the Patent Office lay to the law officers of the Crown, which by custom meant the Solicitor General. This was terminated by the Patents Act of 1832 which set up the Patents Appeal Tribunal under a judge of the High Court but it was not itself a branch or a division of the High Court. The Act of 1949 perpetuated the Patents Appeal Tribunal, but enacted Section 8 which gave this tribunal power to make rules and regulations binding upon itself. In 1972 it produced rule No. 9 which gave right of audience to parties in person, to solicitors, to patent agents and to counsel representing them, and although it did this under regulations provided under a Patents Act this is not a precedent for procedure under a superior court. Though I have no doubt it is desirable that the procedure which has been followed in the Patents Appeal Tribunal should by some means or other be extended to the court that is now going to be set up, I have doubts about whether we ought to indulge in a precedent on this matter if an alternative can be found.

I believe that there is an alternative, because in 1971 the Courts Act set up the Crown Court and there was then a good deal of legal argument as to how the right of audience should be regulated in the Crown Court. I believe wisely, the matter was placed under the jurisdiction of the Lord Chancellor and he was free to exercise his jurisdiction, subject to a rather general directive which told him to have account of the scarcity of counsel in any district where his jurisdiction was invoked, and also that popular favourite "the common good", and other matters of a similar character.

I believe there we have a precedent for how this matter might be regulated, because a fortiori the Lord Chancellor surely should have more authority over his own court, if authority were necessary, than is provided by Statute over the Crown Court. While I do not for one moment dispute that something of this kind must be accepted as a rule of procedure, I do query this particular way of going about it as a precedent.

It may well be that in his reply the noble and learned Lord will be able to reassure me on this point. He may tell me that it is not a precedent. He may be able to quote a Statute in which we regulated this matter by Statute before. Alternatively, he may say that he considers it to be a precedent but a rather good one; or he may say that my suggestion that the matter should come under the jurisdiction of the Lord Chancellor would be rather burdensome for the Lord Chancellor, who already has as many duties as anyone could reasonably be expected to undertake.

I shall not press this Amendment, although I think it proper to have raised these matters and I shall be most interested to hear what the noble and learned Lord says in reply. There are two other Amendments later on the Marshalled List which are consequential on this Amendment, and I ask your Lordships' permission to refer to them. They are Nos. 341 and 342. This results from Clause 102(5) making a cross-reference to the clause which I propose to delete by this Amendment. If this were deleted it would then be necessary to amend those, because they refer to it.

In addition, when it has been deleted, it turns out that Clause 102(5) is a reworded version of Section 88(4) of the 1949 Patents Act and it is not clear why this section needs rewording. Is it intended to extend or to limit the scope of the old Section 88(4) or not? Therefore, to some extent I have restored the wording of the old Patents Act and the noble and learned Lord, Lord McCluskey, will remember that last week he told me that if I could persuade the Government to reconsider this present Amendment he would also reconsider Amendment No. 312, which corresponds to the European counterpart of Clause 102(5).

I do not intend to press this Amendment. I hope very much that the noble and learned Lord will assure me that he will take this matter under review, in which case I shall be happy to withdraw the Amendment standing in my name and not to move Amendments Nos. 341 and 342. I beg to move.

The LORD CHANCELLOR

The noble Earl, if I may say so, could hardly have gone to a more impeccable source than Halsbury's Laws of England for guidance upon this matter. The history of this point is a curious one. For many years patent agents and solicitors have enjoyed rights of audience on appeals from the comptroller and until 1932 those appeals, I am fascinated to learn, were heard by the Law Officers and now, as the noble Earl has said, by the Solicitor-General, who I understand was paid an adequate fee for each such hearing, which no doubt was some relief from the shock of having to undertake the responsibility.

From 1932 onwards the appeals have been heard by the Patents Appeal Tribunal, and Section 85(6) of the Patents Act 1949 reproduced a provision in the Patents and Designs Act of 1932 which conferred—therefore statutorily—a right of audience before the tribunal upon those who before 1st November 1932 had been entitled to appear before the Law Officers. Unfortunately, Section 85(6) was, I am instructed, inadvertently repealed by the Administration of Justice Act 1970, for which I do not think I had any responsibility, but I do not want to make a political point on that! Since then, patent agents and solicitors have been authorised to appear and to be heard by the tribunal under its rules. It is the case that the Chartered Institute of Patent Agents is particularly keen to see the restoration of its members' statutory right, and we do not think it is unreasonable to meet their wishes in this regard.

From the passing of the 1932 Act, which established appeals to the Patent Appeal Tribunal, patent agents and solicitors have enjoyed that statutory right of audience before the Patents Appeal Tribunal. In that time, I think it is the case that many of them have gained valuable experience in the presentation of those appeals and I am not aware that any complaints about their competence have been received.

As the noble Earl has indicated, the right to appeal to the tribunal is now being replaced with the right of appeal to the new Patents Court, and we feel that patent agents and solicitors should enjoy the same statutory right of audience on appeals to the Patents Court as they have enjoyed before the corresponding institutions under the antecedent legislation for many years now. I am comforted to be informed that neither the Bar Council nor the Law Society object to what is proposed in the Bill. Accordingly, while I have been able to point to a statutory precedent and can reassure the noble Earl that the professions directly affected are happy with what is proposed in the Bill, I hope the noble Earl will now feel reassured.

The Earl of HALSBURY

The noble and learned Lord has given me one of the assurances for which I asked because he has said that it is a precedent and he thinks it is a good one. Who am Ito say that I know better than the noble and learned Lord on this occasion I am happy to withdraw the Amendment and not to move Amendments Nos. 341 and 342. I thank the noble and learned Lord for his reply.

Amendment, by leave, withdrawn.

6.30 p.m.

Lord BELSTEAD moved Amendment No. 334: Page 75, line 12, at end insert ("and a patent agent shall have a like right in respect of appeals under section 91(4) above").

The noble Lord said: This Amendment would confer on patent agents and solicitors the same right to appear and to be heard before the Court of Session in Scotland on an appeal from a decision of the comptroller as is provided under Clause 96 (3). The only difference is that in England and Wales the appeal is to the Patents Court whereas in Scotland the appeal would be to the Court of Session. I beg to move.

Lord McCLUSKEY

I think the noble Lord, Lord Belstead, is endeavouring to have us believe, by the brevity of the presentation, that the point is so obvious that it must carry the day. I have, with regret, to inform him that the Government cannot accept this Amendment. As has just been said in the debate on the previous Amendment, it is true that for many years past patent agents have enjoyed a right of audience before the Patents Appeal Tribunal which sits for English and Welsh cases. They have thus, no doubt, gained over these years considerable experience in the conduct of patent litigation on appeal. The same, however, cannot be said in regard to Scotland. In a sense we are perhaps shadow boxing in relation to the past here, because the Scottish Appeal Tribunal provided for in Section 86 of the 1949 Act has never been constituted, and, of course, it follows, therefore, that there have never been any appeals from it to the Court of Session. Scottish patent agents and solicitors have, therefore, never been able to obtain in Scotland the experience equivalent to that obtained by their counterparts South of the Border.

I think I must go further than that. This Amendment would introduce a startlingly new departure into the practice and procedures of the Court of Session, a court established some time ago; namely, 1532. The only persons who can plead in this Court, apart from party litigants in person, are advocates, who as such are members of the Faculty of Advocates, and the monopoly right which they enjoy puts the advocate under a heavy duty; indeed, his duty to the Court prevails over his duty to his client, and that principle lies at the root of the administration of justice in the Supreme Court in Scotland. It has grown and been firmly established over the centuries and it is not to be lightly interfered with. I would, therefore, for that reason and for the reason earlier given, say to the noble Lord that this is not an Amendment which we can accept. I think he would also appreciate that to make such a departure would require the most intensive consultation with the interests involved, and of course no such consultation has been possible because of the appearance of this Amendment at this time.

Lord BELSTEAD

I am grateful to the noble and learned Lord for his reply. He has indeed assisted laymen like myself during these days of Committee stage; five different days we have had and there is going to be a sixth, and I suppose on the seventh we all rest. I was intrigued with the reply. Certainly in the cold grey North the noble and learned Lord, although kindly here, rules with a rod of iron. There is the Patent Appeal Tribunal which was set up in 1949 and apparently has never been constituted, and there is no provision apparently for fairly urgent consultations. But let us hope that when everything is put right and power is more devolved than it has been in the past all these things will be more easily regulated in Scotland.

The one point the noble Lord made which I must confess I expected was that this would be a startlingly new departure in the procedures of the Court of Session, which had, after all, been established since 1532. When I told somebody a short time ago that I intended to move this Amendment, the advice I received was that it would not be accepted because it would not be right to interfere with Scottish law. So, with that warning, which I should have heeded, and with the noble Lord's reply ringing in my ears, I beg leave to withdraw the Amendment.

Lord McCLUSKEY

Before the noble Lord sits down, may I, in order not to be wholly negative, and also to save myself having to write a letter, and with the permission of the Committee, say that the sections of the Sheriff Courts Act which I was asked about earlier provide that all cases competent to that court not exceeding £50—the figure was subsequently raised to £250—should be brought in that court only, and not subject to review by the Court of Session. That is what the sections I was asked about provide for.

Lord LYELL

I am grateful to the noble and learned Lord. That is two sections, Section 7 and the other section. They were separated by something like 64 years.

Lord McCLUSKEY

That was the rate of inflation in those days. The £50 figure was in 1907 and the £250 in 1971.

Amendment, by leave, withdrawn.

The LORD CHANCELLOR moved Amendment No. 334A: Page 75, leave out lines 13 to 37.

The noble and learned Lord said: It may be convenient for your Lordships to consider this Amendment with Amendments Nos. 336A and 336B. These Amendments deal with the question of privilege for communications with solicitors and patent agents relating to patent proceedings, and, therefore, they have a certain technicality. Section 15 of the Civil Evidence Act 1968 provides for patent agents to enjoy the same privilege of refusing to disclose the contents of communications made in relation to patent proceedings as solicitors enjoy in relation to communications made in the course of litigation. With the advent of the European and Community Patent Conventions, patent agents will find themselves making and receiving communications also in respect of proceedings before the European Court of Justice and the European Patent Office, and it is clearly desirable, therefore, that they should also be privileged in respect of those communications. But under Section 15 of the Civil Evidence Act the privilege which they enjoy is equated with that enjoyed by solicitors, and, unhappily, doubt exists in some quarters as to whether proceedings before the European Patent Office would qualify as proceedings for the purposes of the Common Law rule about privilege. That means that before the solicitors' privilege is conferred on patent agents, it is very necessary to find out and define the solicitors' privilege in that respect.

Moreover, the reason why doubt exists as to whether proceedings before the European Patent Office do so qualify, is that they are concerned with the examination of scientific information which is presented by scientists and assessed by scientists, and that is somewhat different from the privilege enjoyed in respect of legal communications, which are distinguished from other kinds of professional advice in that they are concerned exclusively with rights and liabilities enforceable in law; that is to say, in the ultimate resort in litigation in the courts or before an administrative tribunal. Equally, the examination and search proceedings carried out in the United Kingdom Patent Office by the comptroller and his staff are of the same nature.

Accordingly, the first of the two new clauses we are considering seeks to redefine the privilege which solicitors enjoy in respect of communications relating to patent proceedings. Subsection (1) extends the privilege to communications made for the purpose of any pending or contemplated proceedings before the comptroller under the Bill, then the 1949 Act, or any of the relevant conventions or proceedings before the European Court or the European Patent Office under any of those conventions The relevant conventions are defined in subsection (2) as meaning the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty.

Neither of these proposed new clauses will, as drafted, extend to Scotland. The Scottish courts have their own common law rules about privilege, and discussions are proceeding as to whether it will be necessary to introduce any extension similar to that contained in either of the first or second new clauses into Scottish law. If on further study such extension is found to be necessary, appropriate Amendments will be moved at the Report stage.

The second proposed new clause deals with privilege for communications with patent agents relating to patent proceedings and is intended to ensure that patent agents enjoy the same privilege in relation to communications made for the purpose of any pending or contemplated patent proceedings as solicitors enjoy in relation to communications made in aid of litigation. The new clause extends the protection so given to proceedings before the comptroller as well as to those before the court, and also extends it to communications for the purpose of proceedings before the European Court of Justice or the European Patent Office in all cases, whether contested or uncontested. For the removal of doubt, the expression, "patent proceedings", is defined as including an application for a patent.

Subsection (5) of the second new clause repeals Section 15 of the Civil Evidence Act 1968 and Section 11 of the corresponding Northern Irish Statute, neither of which will be required when the two new clauses become law. The two new clauses subsume Amendments Nos. 335 and 336, which were set down by the noble Lords, Lord Lyell, Lord Belstead and Lord Cawley. In the light of what I have said, I hope that the noble Lord, Lord Lyell, and his colleagues will accept that these points have now adequately been taken care of in these rather lengthy but necessary Amendments. I beg to move.

Lord LYELL

In view of what the noble and learned Lord has been kind enough to say—indeed, he has explained these two new clauses in considerable detail—my colleagues and I would certainly not wish to pass any comments or to say much against the noble and learned Lord. We want to read what he has said and give further study to the new clause.

However, perhaps I may raise one small point. We understood that Amendment No. 335 had been met by the provisions in Amendment No. 336A, but that Amendment No. 336, which we had intended to move and to seek an answer to from the noble and learned Lord, was germane to privilege for communications, not as in Amendment No. 336A with solicitors or in Amendment No. 336B with patent agents, but between the comptroller and the Patent Court in the specific cases of infringement hearings. We believe that the Amendment that we propose was covered by Amendment No. 271, which we moved earlier. Indeed, the noble Lord, Lord Oram, said that the Government would accept this in principle. We were quite happy to accept that at the time; we are quite happy to accept it today. However, there was this lacuna—this gap—which existed, and that would have been the purpose of moving Amendment No. 336.

In view of the clear and lucid way in which the noble and learned Lord has put his three Amendments, including the two major new clauses, we do not seek to move either Amendment No. 335 or Amendment No. 336. We thank him for moving the two new clauses and we should like to study them.

On Question, Amendment agreed to.

Clause 96, as amended, agreed to.

The LORD CHANCELLOR moved Amendment No. 336A: After Clause 96, insert the following new clause:

Extension of privilege for communications with solicitors relating to patent proceedings

.—(1) It is hereby declared that the rule of law which confers privilege from disclosure in legal proceedings in respect of communications made with a solicitor or a person acting on his behalf, or in relation to information obtained or supplied for submission to a solicitor or a person acting on his behalf, for the purpose of any pending or contemplated proceedings before a court in the United Kingdom extends to such communications so made for the purpose of any pending or contemplated proceedings before the comptroller under this Act, the 1949 Act or any of the relevant conventions or proceedings before the European Court or the European Patent Office under any of those conventions.

(2) In this section— legal proceedings" includes proceedings before the comptroller; the references to legal proceedings and pending or contemplated proceedings include references to applications for a patent or a European patent and to international applications for a patent; and the relevant conventions" means the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty.

(3) This section shall not extend to Scotland.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 336B: After Clause 96, insert the following new clause:

Privilege for communications with patent agents relating to patent proceedings

.—(1) This section applies to any communication made for the purpose of any pending or contemplated patent proceedings, being either—

1. (a) a communication between the patent agent of a party to those proceedings and that party or any other person; or
2. (b) a communication between a party to those proceedings and a person other than his patent agent made for the purpose of obtaining, or in response to a request for, information which that party is seeking for the purpose of submitting it to his patent agent.

(2) For the purposes of subsection (1) above a communication made by or to a person acting—

1. (i) on behalf of a patent agent; or
2. (ii) on behalf of a party to any pending or contemplated proceedings,

shall be treated as made by or to that patent agent or party, as the case may be.

(3) In any legal proceedings other than criminal proceedings a communication to which this section applies shall be privileged from disclosure in like manner as if any proceedings before the comptroller, the European Court or the European Patent Office for the purpose of which the communication was made were proceedings before the court (within the meaning of this Act) and the patent agent in question had been the solicitor of the party concerned.

(4) In this section— legal proceedings" includes proceedings before the comptroller; patent agent" means an individual registered as a patent agent in the register of patent agents, a company lawfully practising as a patent agent in the United Kingdom or an individual who satisfies the condition mentioned in section 78(1) above; patent proceedings" means proceedings under this Act, the 1949 Act or any of the relevant conventions before the court, the comptroller, the European Court or the European Patent Office, whether contested or uncontested and including an application for a patent; party", in relation to any contemplated proceedings, means a prospective party to the proceedings; and the relevant conventions" means the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty

(5) Section 15 of the Civil Evidence Act 1968 and section 11 of the Civil Evidence Act (Northern Ireland) 1971 (which make provision corresponding to that made by this section shall cease to have effect.

(6) This section shall not extend to Scotland.

On Question, Amendment agreed to.

Clause 97 [Costs and expenses]:

6.45 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 337: Page 75, line 39, after ("Act") insert (",save in respect of proceedings relating to sections 36 to 40 above,").

The noble Lord said: Clause 97 gives powers to the Comptroller-General in his discretion to award costs to either parties and, in Scotland, expenses. The purpose of my Amendment is to limit his powers in relation to his jurisdiction for dealing with employee inventors who have patents under Clauses 36 to 40. My Amendment is to ensure that an employee who makes a claim to the Comptroller-General should be aware at the outset that he cannot recover his costs and also be assured that no costs can be awarded against him. It seems to me proper that under Clauses 36 to 40 the employee should not be prevented, because of the fear of costs being awarded against him—the costs could be quite heavy for him—from coming to court knowing that he can present his case, that he will have to pay his own expenses and that there shall be no award of costs against him or on his behalf in the course of the hearing.

There are precedents for this kind of action. When an employee is dismissed he can go to the appropriate tribunal and claim that he has been unfairly dismissed. In those circumstances, as I understand it, he has no costs to pay. He knows that he will not have costs awarded against him in the proceedings for unfair dismissal. Therefore, the purpose of my Amendment is that in proceedings before the Comptroller-General if an employee believes, having a patent, that he is entitled to some other rights in respect of that patent as against the employer, then in the discretion of the Comptroller no costs should be awarded against him. I beg to move.

Lord CAWLEY

Can the noble and learned Lord tell me whether, under this clause, the comptroller would have to award costs in accordance with the principles that are observed in the High Court or whether it would be entirely at large?

The LORD CHANCELLOR

I would anticipate that the costs would be at the discretion of the comptroller. I am not quite sure whether that would amount to saying that the costs would be at large, but certainly the discretion would be left to the comptroller to award costs as he thought fit. These might be circumstances, similar to the award of costs in county courts, where the exercise of discretion might result in the reduction in an amount of costs which might in other circumstances be available or the denial of costs altogether. I should have thought that the discretion is as wide as that.

The noble Lord, Lord Lloyd of Kilgerran, thinks that, in any event, in proceedings between employers and employees over claims for compensation there should be no power to award costs at all. Although he believes that the effect would be protective of the employee, which is what he wants, I doubt that very much. On the contrary, there might well be a case where it would be perfectly proper for his costs to be paid for by the employer. By removing the presence of any discretion to award costs, the noble Lord's formula might well result in the richer party being able to abuse his greatest strengths and his position. I think that the protection of the employee is best reserved and preserved by retaining the comptrollers' discretion. Perhaps the noble Lord would like to consider that again.

There could also, of course, be circumstances—I hope it will never arise—where the applicant is a vexatious litigant. It is the case that both industrial tribunals and the Employment Appeal Tribunal can award costs against a vexatious litigant. It is about the only protection that they might have against them, unless the Attorney-General could intervene and possibly have them declared vexatious litigants; but I do not think one can do that in regard to subordinate tribunals. I did it many a time in respect of vexatious litigants in the High Court and remarkable proceedings they were too, because they were naturally fiercely contested by the vexatious litigants. I think, on the whole, that justice would be more fairly done by retaining a power of discretion in the comptroller. One can, I hope, rely upon him to see that the thing is exercised without oppression, and indeed in a way which, in a given case, would be more protective of the employee than leaving out the power.

6.52 p.m.

Lord LLOYD of KILGERRAN

I am grateful to the noble and learned Lord for his comments, and indeed interested that one of the reasons he has given for the fact that my proposed Amendment is probably not suitable is that the employee requires protection against an employer. Frankly, I had not thought that a situation of that kind would arise very acutely in the circumstances of Clauses 36 and 40. I should have thought that there would be a lot of discussion before any matter came to the court, the employee would be fully aware of the situation, and that the situation would have been clarified as to the view of the employer in court.

As to the vexatious litigant, I realise that vexatious litigants are to be dealt with. But it seems to me a pity that the position of an employee inventor is to be allied with that of a vexatious litigant. Of course, employees can be a nuisance. We realise that. But the attitude of many employers is that the employee should, wherever possible, be prevented from opening his mouth in support of his case, and a lot of injustice is being done to employees. Having regard to what the noble and learned Lord has said, I shall reconsider the matter again and withdraw my Amendment at this stage.

Amendment, by leave, withdrawn.

6.54 p.m.

The LORD CHANCELLOR moved Amendment No. 338A: Page 76, line 7, leave out ("costs") and insert ("expenses").

The noble and Learned Lord said: Your Lordships will observe that Clause 97(1) permits the comptroller in proceedings held by him in England and Wales to award costs, and in proceedings in Scotland to award expenses. Expenses is the Scottish term, as I understand it—and I have the distinguished authority of the Solicitor General behind me—for costs.

Subsection (2) deals with the enforcement of such an award of costs in England and Wales. Subsection (3) is intended to deal with enforcement in Scotland of awards of expenses, but again it incorrectly refers to costs. The Government's Amendment No. 338A substitutes the correct term. There is an Amendment put down by noble Lords opposite which would leave the subsection referring to costs and expenses, but I do not think that that would resolve the dilemma. I think that, on the whole, Amendment No. 338A probably puts the matter right, whereas Amendment No. 339, if I may say so with great respect, perhaps even adds to the confusion which I have no doubt already caused in trying to explain this Amendment. I beg to move.

Lord LYELL

We are grateful for the explanation of the noble and learned Lord, and indeed for the signs and motions of assent which came from behind the noble and learned Lord in the course of his explaining to us the moving of Amendment No. 338A. I was about to say, "But we, on our side, got there first", but it took the clear exposition of the noble and learned Lord to point out that our Amendment will add further to the confusion. We are grateful to the noble and learned Lord for pointing out on this occasion a point of substance in Scottish law, and we look forward to plenty more expositions of Scottish law from the noble and learned Lord.

On Question, Amendment agreed to.

Clause 97, as amended, agreed to.

6.58 p.m.

Lord LYELL moved Amendment No. 340: After Clause 97, insert the following new clause:

Evidence before comptroller

—(1) Subject to rules, the evidence to be given in any proceedings before the comptroller under this Act may be given by affidavit or statutory declaration, but the comptroller may if he thinks fit in any particular case take oral evidence in lieu of or in addition to such evidence as aforesaid and may allow any witness to be cross-examined on his affidavit or declaration.

(2) Subject to rules, the comptroller shall, in respect of the examination of witnesses on oath and the discovery and production of documents have all the powers of a judge of the Supreme Court, and the rules applicable to the attendance of witnesses in proceedings before such a judge shall apply to the attendance of witnesses in proceedings before the comptroller.

The noble Lord said: Amendment No. 340 seeks to insert a small new clause. We hope that it corresponds, and indeed we intend it to, with Section 83 of the existing 1949 Act, except that subsection (2) of our new clause provides for the comptroller to have the same powers as a judge of the High Court or, might I suggest to the noble and learned Lord and to the Solicitor-General, possibly an equivalent court in Scotland, whereas the 1949 Act referred to an official referee of the Supreme Court.

We believe it is appropriate to give the comptroller the powers of a High Court judge because of the increase in the comptroller's powers under the Bill. Of course, if we look forward in the Bill to Clause 112(2)(d) we find that there are rights for the comptrollers to rule on questions dealing with evidence and also the compulsion of witnesses, and finally with the discovery and the production of documents. It does not seem to us clear that such rules will allow witnesses to be subpoenaed to appear before the comptroller, and we understand that this is the present practice so far as patent law is concerned. We hope that the new clause that we are proposing here will meet the case and will so provide. I beg to move.

The LORD CHANCELLOR

The noble Lord, Lord Lyell, has identified Clause 112(2)(d), and I am advised that that is adequate to deal with the situation which the new clause contemplates. It confers powers on the Secretary of State to make rules regulating the mode of giving evidence in any such proceeding and empowers the comptroller to compel the attendance of witnesses and the discovery and production of documents. I am advised that the words "regulating the mode of giving evidence" which appear in the provision are adequate and wide enough to allow evidence to be given by affidavit or statutory declaration, or for the examination of witnesses on oath, and enable all the normal procedures relating to the summoning and attendance of witnesses and how they should give evidence and so on, to be covered. With respect, therefore, I suggest that the Amendment is unnecessary.

Lord LYELL

We are grateful to the noble and learned Lord for reassuring us that Clause 112(2)(d) gives the comptroller the powers which we seek to give him by the new clause, and particularly by subsection (2). In the comments I made I referred to "subpoena-ing". I presume that has the same meaning as compelling witnesses to attend and somehow extracting information from witnesses. In Clause 112(2)(d) there is reference to dealing with evidence, the compelling of witnesses and the discovery and production of documents, all of which are somewhat terrifying terms to the average layman like myself. Nevertheless, we are grateful to the noble and learned Lord for assuring us that the provision as drafted covers what we thought to be a gap in the Bill and, with his assurance, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 98 agreed to.

Clause 99 [Unauthorised claim of patent rights]:

7.3 p.m.

The LORD CHANCELLOR moved Amendment No. 340A: Page 77, line 6, at end insert ("(or does not continue to be made)").

The noble and learned Lord said: Clause 99(1) makes it an offence falsely to represent that goods disposed of are patented. This provision is also found in the 1949 Act and is intended to protect the public against misleading information. It is recognised, however, that when a patent expires or is revoked, the patentee may well have unsold articles marked with some indication that they are patented, or may have difficulty in immediately preventing the manufacture of goods so marked. Clause 99(3) makes provision for such cases, but could be construed as covering only the case where the goods were made before the expiry of the relevant patent. The intention, however, is to cover not only that case but the case where the marked goods were made after the expiry of the patent, and that is the purpose and effect of the Amendment.

On Question, Amendment agreed to.

Clause 99, as amended, agreed to.

Clauses 100 and 101 agreed to.

Clause 102 [Restrictions on practice as patent agent]:

The LORD CHANCELLOR moved Amendment No. 342C: Page 79, line 1, leave out subsection (7) and insert— (7) For Article 23(2)(d) of the Solicitors (Northern Ireland) Order 1976 there shall be substituted the following paragraph— (d) a patent agent within the meaning of the Patents Act 1977 preparing, for use in proceedings under that Act defined in the former Act) or on appeal under either of those Acts to the Patents Court or the Court of Session from the comptroller, any document other than a deed;".

The noble and learned Lord said: This Amendment makes two changes. First, it deletes the existing subsection (7). Hitherto, the practice of patent agency in the United Kingdom has been confined to British subjects. We are now obliged to extend the right to practice to all citizens of Community States, and this is the effect of subsection (7) of Clause 102 as drafted. But on further consideration, the Government are of the opinion that the existence of a nationality qualification for practice as a patent agent in the United Kingdom can no longer be justified at a time when the patent system is being internationalised. Secondly, the Amendment introduces a new subsection (7) which relates to an entirely different matter and corresponds to the old Clause 96(5). That is a purely drafting Amendment because it is thought that Clause 102 is a more appropriate bed for that provision to lie in, if that is not too unfortunate a metaphor.

Lord CAWLEY

I am grateful to the noble and learned Lord for the first part of the Amendment, which deals with a matter I raised on Second Reading. He has told us one reason for making this change, but the main reason is that the Government's right hand does not know what their left hand is doing, because this is contrary to the provisions of the Race Relations Act which passed through Parliament in December of last year. That, I think, is the main reason which makes the Amendment absolutely necessary.

On Question, Amendment agreed to.

Clause 102, as amended, agreed to.

Clause 103 [Power of comptroller to refuse to deal with certain agents]:

7.10 p.m.

The LORD CHANCELLOR moved Amendment No. 342B: Page 79, line 29, at end insert— ("(3) Rules may authorise the comptroller to refuse to recognise as agent or other representative for the purpose of applying for European patents any person who does not satisfy the condition mentioned in section 78(1) above and does not fall within the exemption in subsection (2) of that section.").

The noble and learned Lord said: We get into alphabetical disorder again Clause 103, which corresponds to Section 89 of the 1949 Act, provides that the comptroller may refuse to deal with patent agents who for defined reasons are disqualified from acting as such. But as drafted the clause does not take account of the fact that when the Bill becomes law the Patent Office will act as a receiving office for European applications, and in consequence the comptroller should be authorised to refuse to deal with agents or other professional representatives who would not be entitled to act before the European Patent Office. The Amendment achieves this by providing the comptroller, in relation to European business with the power to refuse to deal with anyone who is not on the list of professional representatives maintained by the European office. That power, however, will not affect the exemption of Clause 78(2) of the Bill in respect of European business conducted by barristers, advocates and solicitors. I beg to move.

On Question, Amendment agreed to.

Clause 103, as amended, agreed to.

Clause 104 [Immunity of department as regards official acts]:

The LORD CHANCELLOR moved Amendment No. 342D: Page 79, line 36, leave out paragraph (b) and insert— ("(b) shall incur any liability by reason of or in connection with any examination or investigation required or authorised by this Act or any such treaty or convention, or any report or other proceedings consequent on any such examination or investigation.").

The noble and learned Lord said: The purpose of the Amendment is to confine the immunity which Clause 104 presently provides for official acts to what is strictly necessary for the proper functioning of the Department. It was never the intention to use Clause 104 as a universal whitewash for official acts, and I agree that the clause as it is now drafted is in excessively general terms. So we have looked again at Clause 104 in the light of the Amendment which was put down by noble Lords opposite, and we have now put down Amendment No. 342D which I hope meets the points to which the Amendment of noble Lords opposite was directed.

I am very grateful to noble Lords for raising this matter and I hope that they will accept the draft which I now propose. I think that it is a little better than the Amendment of the noble Lords in two ways. First, it does not take account of the fact that some of the examination and search processes are optional; for example, in Clause 14(7). Secondly, it fails to mention subsequent reports or other proceedings consequent on any examination or search which are protected by Section 11(3) of the 1949 Act. Accordingly I hone that in the circumstances noble Lords opposite will be disposed to accept the Amendment, which I beg to move.

Lord LYELL

Once gain we are very grateful to the noble and learned Lord, this time for pointing out that the Government Amendment No. 342D supersedes our Amendment and is clearly superior to it in this legal essence. We have no intention of moving our Amendment No. 343, which falls in alphabetical or numerical order.

Lord CAWLEY

I am very grateful to the noble and learned Lord for this Amendment. This concerns another matter that I raised on Second Reading, and I need not repeat what I said then.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 344: Page 79, line 38, at end insert— ("(2) Where, by reason of an error or omission on the part of any officer of the Secretary of State, an act or step in relation to an application for a patent or any proceedings under this Act (not being proceedings in court) required to be done or taken within a certain period, whether prescribed by rules or otherwise specified, has not been so done or taken, the comptroller shall extend the period for doing the act or taking the step.").

The noble Lord said: We wish to move this Amendment because we hope it will help to mitigate any liability on the part of the Secretary of State, or indeed any officer of his, if time limits are extendable in the case of a mistake which might have been made by the Secretary of State or one of his officials. By "mistake" I have in mind a small or minor error, but one which could have more grave consequences. That is the entire object of the Amendment, and interestingly we find that it has a precedent in Section 160 of the current Patents Act which applies to Australia, and we think probably that it applies well there. For that reason I beg to move.

The LORD CHANCELLOR

I appreciate that the purpose of the Amendment is to provide applicants and patentees with a guarantee of redress if some official error or omission causes a time limit for doing something under the Act to be missed. However, the existing provision in the Patents Rules for the extension of time limits, which has worked very well in the past, will also appear in the rules under the new Act. It is true that extension of time limits under the provision is discretionary, but this gives flexibility in application. The new subsection which has now been proposed is therefore I think superfluous, and I hope that the noble Lord will accept what I have said regarding the rules covering the situation with which his Amendment seeks to deal.

Lord LYELL

I hope that the noble and learned Lord will accept that in the Amendment we were not attempting to give redress to any aggrieved party. The Amendment hopes to extend the time limits so that any possible passive redress may be given. We did not seek to open the door to any further litigation or to any further action by an aggrieved litigant, but the noble and learned Lord has indicated to us that rules will cover this point and that he believes that our Amendment is superfluous in this respect. Of course we take his guidance, but we would like to study what he has said.

The Lord CHANCELLOR

Perhaps the word "redress" is not a very happy one here. The power to extend the time limits is what I had in mind to refer to.

Lord LYELL

The noble and learned Lord took two barrels to this in his first reply, and we accept the right barrel—that it is just extending the time limit. Nevertheless, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 104, as amended, agreed to.

Clause 105 [Correction of errors in patents and applications]:

The LORD CHANCELLOR moved Amendment No. 344A: Page 79, line 41, leave out ("clerical error") and insert ("error of translation or transcription, clerical error or mistake").

The noble and learned Lord said: In relation to the correction of errors in patent documents, it is thought that the effect of Clause 105 would be the same as the corresponding provision in the European Patent Convention Rule 88. However, in order to remove any uncertainty on the point it is proposed to amend the wording of Clause 105 so as to bring within its scope all the defects specifically referred to in the European Patent Convention Rule 88, and this is what the Amendment does. I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 344B: Page 79, line 42, leave out ("in pursuance of") and insert ("in connection with").

The noble and learned Lord said: The purpose of this Amendment is to avoid the possibility that some documents filed at the Patent Office, although relevant to patent applications might not, on a strict interpretation of the words, be held to be in pursuance of those applications, and it would he undesirable if for that reason errors in the documents could not be corrected. So we propose to leave out "in pursuance of" and insert "in connection with". I beg to move.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 346: Page 79, line 42, leave out ("in pursuance of such an application") and insert ("at the Patent Office, provided, in the case of an error which is not a clerical error, that both the mistake and the method of correcting it are obvious.").

The noble Lord said: Again, this Amendment goes considerably further than Amendment No. 344B, to which we have just agreed; but I would ask the noble and learned Lord, or indeed anyone on the Government Bench who could assist us, whether our Amendment, which goes beyond the earlier one in the case of a clerical error, a mistake and correcting this mistake as obvious, is superfluous or otiose, or whether our particular point has been covered by the noble and learned Lord's Amendment. We think that there is a good chance that it has been covered, but nevertheless we felt that our Amendment was a little more detailed, and we should be pleased to hear what the noble and learned Lord has to say. I beg to move.

The LORD CHANCELLOR

I wonder whether I can deal with this by saying that I shall be glad to look at the explanation which the noble Lord has given of this Amendment, and perhaps we can return to a consideration of it at a later stage.

Lord LYELL

I am most grateful to the noble and learned Lord, and, of course, given that assurance, I beg leave to withdraw this Amendment.

Amendment, by leave, withdrawn.

Clause 105, as amended, agreed to.

Clause 106 [Information about patents applications and patents, and inspection of documents]:

7.22 p.m.

The LORD CHANCELLOR moved Amendment No. 346A: Page 80, line 25, at end insert ("nor shall that subsection prevent the Secretary of State from inspecting or authorising the inspection of an application for a patent or any connected documents under section 19(6)(a) above").

The noble and learned Lord said: Clause 106(2) provides that the comptroller shall not publish documents or information about a patent application, without the applicant's consent, until that application has been published. Clause 106(3) makes exceptions to the generality of subsection (2), but it has failed to include the right of the Secretary of State to authorise the United Kingdom Atomic Energy Authority to inspect at any time applications containing information relating to atomic energy, as provided for in Clause 19(6)(a). That apparent inconsistency between the provisions of Clause 19, which the Committee has approved, and Clause 106 is removed by the Amendment. I beg to move.

On Question, Amendment agreed to.

Clause 106, as amended, agreed to.

Clause 107 [Loss or destruction of certificate of grant of patent]:

On Question, Whether Clause 107 shall stand part of the Bill?

The LORD CHANCELLOR

As noble Lords will know, a patent under the 1949 Act is defined as Letters Patent for an invention. These Letters Patent are granted under the Royal prerogative; they are themselves evidence of the grant of a patent, and that is why Section 80 of the 1949 Act provides that the comptroller may cause a duplicate of the patent to be sealed if he is satisfied that the original has been lost or destroyed or cannot be produced. A patent certificate under this Bill is not a document of title. Evidence of the grant of patent will in future be a certified extract from the Register of Patents, and therefore the issue by the comptroller of a duplicate certificate that a patent has been granted is a purely administrative matter. This clause is therefore unnecessary, and should be deleted.

Clause 107 disagreed to.

Clauses 108 to 110 agreed to.

Lord ORAM

I think this may be considered a useful point at which to change your Lordships' business, and I beg to move that the House be now resumed.

Moved accordingly and, on Question, Motion agreed to.

House resumed.