PATENTS BILL [H.L.]

HL Deb 09 May 1977 vol 383 cc50-125

4.38 p.m.

Lord ORAM

My Lords, I beg to move that the Bill be now further considered on Report.

Moved, That the Bill be now further considered on Report.—(Lord Oram.)

On Question, Motion agreed to.

Clause 69 [Declaration as to non-infringement.]

Lord ORAM moved Amendment No. 109: Page 61, line 27, after ("or") insert ("a proposed act")

The noble Lord said: My Lords, I beg to move Amendment No. 109, and to speak at the same time to Amendment No. 110. These Amendments make it clear that the court or the comptroller may make a declaration as to non-infringement in respect of proposed or intended acts which have not actually taken place. I am grateful to nob1e Lords opposite for first drawing our attention to this defect in Clause 69 during the Committee stage, when Committee Amendment No. 269 was discussed. I indicated then that I accepted their Amendment, subject to drafting, and I hope that they will agree that these Amendments fully meet the point. I beg to move.

Lord LYELL

My Lords, subject to what the noble Lord, Lord Oram, has just said, we are very grateful that the Government have been able to accept what we hoped were these minor Amendments in order to make the Bill a little more effective. We are very grateful, and wish to add support.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 110: Page 61, line 29, after ("doing") insert ("or proposing to do")

On Question, Amendment agreed to.

Clause 70 [Power to revoke patents on application]:

Lord ORAM moved Amendment No. 111: Page 62, line 8, leave out from ("in") to ("as") in line 9 and insert ("the application for the patent, as filed, or, if the patent was granted on a new application filed under section 7(3), (Determination of questions about entitlement to foreign and convention patents, etc.), 13(4) or 35(4) above, in the earlier application").

The noble Lord said: My Lords, this Amendment makes Clause 70(1)(d) bite upon new, substitute applications filed under Clause 7(3). Clause 7 is the new clause dealing with the determination of questions about entitlement to foreign and convention patents. The Amendment brings paragraph (d) into line with the European Patent Convention, Article 138(1)(e), by making it clear that a patent granted on such a new application is to be coverable if it extends the matter disclosed in the earlier, original application as filed. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 112:

Page 62, line 12, at end insert— ("(1A) An application for the revocation of a patent on the ground mentioned in subsection (1)(b) above—

1. (a) may only be made by a person found by the court in an action for a declaration or declarator or found by the court or the comptroller on a reference under section 35 above to be entitled to be granted that patent or to be granted a patent for part of the matter comprised in the specification of the patent sought to be revoked; and
2. (b) may not be made if that action was commenced or that reference was made after the end of the period of two years beginning with the date of the grant of the patent sought to be revoked, unless it is shown that any person registered as a proprietor of the patent know at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.").

The noble Lord said: My Lords, I spoke to this at some length when dealing with Amendment No. 104A at our last Sitting, last Thursday. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 113: Page 62, line 23, leave out ("35 above or")

The noble Lord said: My Lords, my noble and learned friend Lord McCluskey spoke to this Amendment when he was dealing with Amendment No. 42 last time, and this Amendment, No. 113, is consequential upon Amendment No. 42. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 113A: Page 62, line 25, leave out subsection (4).

The noble Lord said: My Lords, when dealing with Amendment No. 104A last time I spoke to this Amendment, as well. This Amendment is consequential on Amendments Nos. 112 and 113. I beg to move.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 113B:

Page 62, line 28, at end insert— ( ) A decision of the comptroller or on appeal from the comptroller shall not estop any party to civil proceedings in which infringement of a patent is in issue from alleging invalidity of the patent on any of the grounds referred to in subsection (1) above, whether or not any of the issues involved were decided in the said decision.".

The noble Lord said: My Lords, this Amendment both follows on and, I think, is virtually identical with one which I moved at Committee stage and which stood in the names of both myself and my noble friend Lord Belstead. Noble Lords will recall that the full and due processes of the law were bandied around at that stage. Words like, "estoppel" and res judicata were two of the simpler concepts to come under your Lordships' scrutiny. Noble Lords will also recall that my noble friend Lord Belstead made what I believe to be the very valid point that in any unsuccessful action to revoke a patent the applicant could be sued for an infringement, and that in the course of this he could not use the same arguments, or indeed part of the same grounds, in his defence, even if the basis for the appeal against revocation was entirely different from the original basis.

The noble Lord, Lord Oram, in his reply, referred to this attractive term res judicata and pointed out that, in general, this was a sound provision and I think we would all go along with the fact that it does obviate tedious and repetitive litigation. However, the noble Lord, Lord Oram, mentioned, firstly, that the courts were unlikely to use the law of estoppel—and I would add (I think I have probably got it right) he meant the estoppel of issue, because I understand that is the precise definition of res judicata—to prevent any litigant from protecting himself in an infringement action or in any counterclaim.

Secondly, the noble Lord, Lord Oram, accepted our Amendment, as he said, in principle. He believed that the Government should make it quite clear that res judicata has no application in such circumstances. But, my Lords, what troubled us then, and I must say troubles us still today, is that we are not entirely happy that Clause 72 (and, in particular, as we have it, Clause 72(l)(a), which was mentioned by the noble Lord, Lord Oram) is sufficient to achieve what all of us believe the court will wish to achieve.

Subsection (1)(a) deals with the validity of a patent in infringement proceedings, but we would submit that this need not necessarily be at issue. What we believe is at issue is Clause 70(5), which seems to us to have nothing to do with estoppel of issue or, indeed, res judicata. What we understand by Clause 70(5) is that it removes the right of appeal to the court except by leave of that court; but we do agree that Clause 72(l)(a) deals with the validity of the patent in infringement proceedings, and also that Clause 72(1)(d) will satisfactorily cover the validity of a patent in revocation proceedings. My Lords, the main purpose in pursuing this Amendment is to ensure that, in any proceedings under Clause 72, estoppel cannot be used to bar an applicant from what might quite well be a rightful and, we hope, a reasonable remedy.

My Lords, I hesitate to become more legal—I hesitate even to attempt such an action—but the noble Lord, Lord Oram, has equated Clause 72 and the remedies in that particular clause with our worry in respect of res judicata. I am given to understand that res judicata is a particular form of the law of estoppel, certainly in England; and, as I mentioned, it is estoppel of issue. Our Amendment, we hope, will cover this particular aspect of the law of estoppel. Whereas the new clause, now Clause 72, is thought by the noble Lord, Lord Oram, to deal with res judicata, I am instructed that Clause 72 deals with what is known as action estoppel, where the validity of the patent is judged on any grounds—novelty, obviousness and the others. This is the particular position as we understand it. We would welcome any further comments from the Government before the doctrine of res judicata, or anything similar to it, is invoked in any such proceedings as these.

I think that in earlier proceedings, so far as this Bill is concerned, even on Second Reading, what all of us—certainly those of us on this side, and I believe throughout the House—have been worried about is that proceedings for patents may be carried out in an effective way, but in a reasonably cheap and a reasonably swift way, and that any objectials may be disposed of swiftly and effectively. Some estimates have been made to us that the cost of bringing any revocation proceedings before the comptroller are indeed exactly what we wish to see—they are quite cheap—but the noble Lord, Lord Lloyd, when he has mentioned proceedings moving from the comptroller up to the court, has pointed out the great increase in costs, and this is what worries us and why we are particularly keen on this Amendment, which we have set down again and are discussing today. We believe that the Government should take a very careful and close look at this, as they said they would do.

The noble Lord, Lord Oram, said he believed that our Amendment was covered, but we believe that this, unfortunately, is not necessarily the case. We believe that if our Amendment were not to be accepted and written into the Bill there would be a considerable risk of patent litigants virtually wishing to go to the court, with the very great increases in costs that this would involve. This certainly is not what we would wish to see and I believe it is not what the Government wish to see. For that and other reasons, I beg to move.

Lord ORAM

My Lords, as the noble Lord, Lord Lyell, has said, his Amendment and the speech to which we have just listened covered ground that we covered when dealing with the Committee stage Amendments Nos. 280 and 282 of his noble friend Lord Belstead. I said at the time that in my view the effect of the first of the two Amendments would be achieved by what is now Clause 72. The noble Lord, Lord Lyell, this afternoon referred to my opinion expressed at that time and continues to have doubts as to whether its effect is to meet the points he has in mind. He will be comforted to know that since the Committee stage we have given further thought to this question of estoppel, not only following what the noble Lord has said in this House but also having received representations from the Chartered Institute of Patent Agents and senior members of the patent Bar. Obviously this is a matter of great importance and we are persuaded that it would be wise for the Bill to clarify the position.

So far as concerns prior decisions of the comptroller, I am fully prepared to accept that the unsuccessful applicant should not be estopped if he is later sued for infringement. This should also be the result if the prior decision is given by the Patents Court on appeal from the comptroller. However, the Amendment which the noble Lord, Lord Lyell, has moved, No. 113B, goes further than that in that it provides that there shall be no estoppel as a result of a decision or appeal from the comptroller, even though the decision may have been given by the Court of Appeal or indeed by the House of Lords. As it seems to me at present, this is going too far. I should therefore like the opportunity to consult further with noble Lords opposite and with patent interests with a view to establishing whether it is really necessary to go further than I have already suggested.

I am wondering, therefore, whether the noble Lord, Lord Lye11, would be prepared at this stage to withdraw his Amendment in the light of what I have said. I should then be happy to enter into such consultations with him and others with a view to submitting at Third Reading an Amendment which should meet the points that really need attention. I hope that full satisfaction will then be given to noble Lords who have raised this matter.

Lord LLOYD of KILGERRAN

My Lords, I have listened very carefully to what the noble Lord, Lord Oram, has said. I cannot quite understand his reservations in this matter. It may be helpful if I were to mention that when proceedings occur before the Comptoller General of Patents, the evidence is usually on a declaration or affidavit and that when there is an appeal from the comptroller that evidence goes before the Appeal Court and it is difficult to get further evidence put in. Industry welcomes a robust and quick decision on these infringement matters and many would abide by the decision of the comptroller. Therefore, at first instance, I do not understand why he is limiting the scope of this proposed Amendment in the way he has indicated. No doubt he will consider this point later and we may be able to raise this matter at Third Reading if it is the wish of the other supporters of the Amendment that the matter should not be pressed now.

Lord BELSTEAD

My Lords, before my noble friend replies to the noble Lord and to the offer that the noble Lord has made, may I, as a non-lawyer, get myself absolutely right. As I understand it, the Government are now saying that the problem we have presented by the Amendment moved in Committee and again today is not met by Clause 72 and therefore the Government are of the view that something needs to be done. The noble Lord was good enough to outline the grounds on which he feels that something needs to be done where prior decisions of the comptroller apply and where a court, on appeal from the comptroller, takes a decision.

I am grateful to the noble Lord, Lord Lloyd of Kilgerran, because I think that we too are worried that the action that the Government are contemplating at the moment would not extend to the Court of Appeal or a decision of the House of Lords. Although I can see that the Government have misgivings about this, I do not think that their misgivings are going to overcome the problem that we have been trying to present when speaking twice to this Amendment. I hope that my noble friend may perhaps take my advice, which is that I think that it would be helpful if the Government would do what they have suggested: that is, if the Amendment is withdrawn they would consider it again. But I think it right none the less at this stage that we ought to make the point that we on this side are worried that the Government's misgivings, although understandable, will leave the point not perhaps sufficiently covered.

Lord ORAM

My Lords, with the leave of the House, I thank both noble Lords, Lord Lloyd of Kilgerran and Lord Belstead, for registering those points; so that at least we have it on record now just what is the difference between us at this moment. This will inform the discussions that I have undertaken to enter into. It will be this point, no doubt, that we shall have to discuss. I therefore hope that the noble Lord will now see fit to withdraw the Amendment.

Lord LYELL

My Lords, I have listened peacefully and with dignity to everything that was said. I think it would be churlish and unfitting in this House to turn down the kind offer of the noble Lord, Lord Oram, on behalf of his colleagues. However, I think that if we look through the proceedings (certainly at Committee stage and, probably also, the two days of Report stage) we should find a plethora of cases where further consideration was suggested by the Government.

I was interested to hear the noble Lord, Lord Oram, say that considerable discussion had taken place with patent barristers and with the Chartered Institute of Patent Agents; but I hope that further discussion in narrowing down the point may take place. I note that the litigant should not be estopped either on appeal from the comptroller (nor, indeed, higher appeals) and I am glad that we and the noble Lord, Lord Oram, are running on the same track so far as that is concerned.

I am slightly mystified by Lord Oram's comments that consultations would continue—I think they were his words—about our point as expressed. I have expressed our point as well as I can. He will appreciate that I am not a lawyer (and neither is he) and I think we can both be thankful that we are at least on the level there. But when the noble Lord, Lord Oram, said that our Amendment needs attention, I may say that we have heard this also on Committee stage. We hope the attention that doubtless is going to be given by Lord Oram and his colleagues, and possibly by his noble and learned colleague, will be able to narrow down both the points at issue and our differences. I am sure Members of the House will appreciate that we have not long to go before this Bill will wend its way through your Lordships' House; and, indeed, the other place are keen to deliberate all that we have been discussing.

We were particularly gratified to have the highly qualified support of the noble Lord, Lord Lloyd of Kilgerran, as a qualified practitioner. I am sure that the noble Lord, Lord Oram, will agree that the noble Lord expresses his points briefly and clearly. We are pleased that he believed that evidence before the comptroller is normally taken or affidavit. Lord Lloyd's words on how industry would welcome robust and quick decisions are particularly apposite. There was the small problem that we believed would be solved by Amendment No. 113B, which was supposing a company which was worried by a patent brought forward reasons for regarding this patent as being invalid, together with evidence of proof of this invalidity, it might be that the attack on the patent and the validity would be insufficient merely because it had been done at the comptroller level. As the noble Lord, Lord Lloyd of Kilgerran, said, he hoped that it would be at a robust level. Yet possibly it might not be effective, because the patentee would be able to retain his patent; and in the absence of any definite rules relating to estoppel, without Amendment No. 113B it would leave the opponent open to an infringement action. This would be carried out on the High Court scale with all the additional expense which is particularly anathema to the noble Lord, Lord Lloyd, and everyone.

We believe that there is a risk that if action was taken at the High Court level, the opponent would find it mush more costly and much more difficult adequately to defend himself. This is a particular problem which we believe still has not been solved by the proposals set forth both at the Committee stage and now by the noble Lord, Lord Oram. Certainly it would be ungenerous, particularly in view of the air in which this Bill has been discussed—I will not say argued—across the Floor of the House not to take the advice of the noble Lord, Lord Oram, and withdraw our Amendment.

But of course we look forward to having fairly intensive discussions with the noble Lord. There probably will be other items, even on our agenda today, which will require equally close and delicate negotiations and discussions. I hope that the noble Lord, Lord Oram, is not letting himself and his colleagues in for more than he possibly thought when he was so kind and asked us if we would reconsider our Amendment.

We are grateful to everybody who has spoken on this very difficult issue. I hope that I have not fallen into too many deep legal pits—as my noble friend Lord Belstead said, that I have made no lacuna—and I seek leave to withdraw the Amendment.

The LORD CHANCELLOR (Lord Elwyn-Jones)

Is it your Lordships' pleasure that with peace, dignity and clarity, this Amendment should be withdrawn?

Amendment, by leave, withdrawn.

Lord ORAM moved Amendment No. 114: Page 62, line 31, after ("appeal") insert ("or by way of putting validity in issue in proceedings for infringement").

The noble Lord said: My Lords, this Amendment gives effect to my acceptance in principle of one moved in Committee by the noble Lord, Lord Belstead. The noble Lord's Amendment rightly drew attention to the need for the provision to be amended so as to permit anyone charged with infringement after revocation proceedings to defend himself in the way in which Clause 70(5), as now amended by this Amendment, permits him to do. I therefore hope that noble Lords will be able to agree that this Amendment achieves the improvement which the noble Lord was seeking and thank the noble Lord for having drawn the point to my attention in the first place. I beg to move.

Lord BELSTEAD

My Lords, this point meets the point that I ventured to make when in Committee. I am grateful to the Government for putting the Amendment down and I will of course support it.

On Question, Amendment agreed to.

5.5 p.m.

Lord BELSTEAD moved Amendment No. 114B: After Clause 70, insert the following new clause:

Effect of disclosure of matter on application where such disclosure occurs after filing earlier relevant application

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

The noble Lord said: My Lords, I beg to move Amendment No. 114B. When this Amendment was debated in Committee, the noble Lord, Lord Oram, said that as he was then advised, he was assured that Clause 2 covered the effect which this Amendment aims to achieve. I confess that I remain concerned that this is not the case. I wonder whether I might put the difficulty to the Government in the following way. Let us suppose that a man—a man who has become an old friend to the Members of the House who have taken part in this Bill—discovers a new method for attaching the uppers of a pair of shoes to the soles. He prepares his specification and applies for a patent. However, he is proud of this invention and, soon after, publishes an article about it in the Shoemakers' Gazette. After that, and within a year from the date of filing his application, it occurs to the inventor that the invention—because the method is being carried out by a machine—can be used for fixing blinds to their rollers and canvas hoods to the roofs of cars. He then files a new application for shoes, roller blinds and car hoods, which I suggest has a single generic claim for the fixing of flexible matter to a stiffer backing.

That generic claim is not supported by the description of the first application for shoes. Therefore, under Clause 5 of the Bill the second application can only claim the date of filing of its own application. The Government may say, "Under Clause 5(2), if an application is supported by matter contained in an earlier application, the second application can take the earlier priority date. But the second generic claim, the one for the three things, is in this case not so supported by the earlier application for shoes alone, because if there is an invention which is limited in its scope—in this case only shoes—it is very doubtful whether it would be held with a broader claim for different articles (in this case roller blinds and car hoods as well as shoes) as being supported by matter in the earlier application for shoes alone. Anyway, it could be argued that work on blinds and car hoods are different arts so for as shoes are concerned.

The second generic claim can be said now to have been anticipated by the dis- closure in the Shoemakers' Gazette, and the claims for blinds and car hoods may be robbed of inventive merit under Clause 3 by the previous application for shoes, because it could be argued that someone skilled in the art could have realised that the invention for shoes could have been used for other things as well. When replying, the noble Lord, Lord Oram, based his case—which he did with great care to me on the previous stage of the Bill—on the fact that it was Clause 2 which resolved the matter. But for the reasons that I have tried to give about anticipation, quite apart from inventive merit under Clause 3, I believe that Clause 2 does not resolve the problem at all, the problem which has been created by publication in a trade newspaper.

I believe that some provision has to reproduce Section 52 of the 1949 Act. That section allows someone, once a patent application has been filed, to start to exploit the invention in one way or another, to publish articles or an account of the invention. Any modifications or improvements of the invention will be protected by a later specification, provided that the later specification is filed within one year of the original application. The case which I sought to make last time, and which I am seeking to make again, is that in effect this Amendment rewrites Section 52 of the 1949 Act into this Bill. In addition, it will comply with Article 4 of the Paris Convention, which provides that any patent application in any of the countries of the union set up by the Paris Convention has one year after filing during which the inventor may file corresponding applications in other countries of the union and may obtain priority from the first filing.

With respect to the case which the Government have put to me before, I remain unconvinced that there is any provision in this Bill which gives the same protection as Section 52 of the 1949 Act and Article 4(b) of the Paris Convention. In fairness to inventors, and in the national interest, to prevent delay in the exploitation of inventions I believe that this Amendment, or a similar provision, is necessary and should be written into the Bill. I beg to move.

5.11 p.m.

Lord ORAM

My Lords, I am grateful to the noble Lord, Lord Belstead, for raising this matter again which, as he indicated, was dealt with fairly fully in Committee. I recall that I agreed on that occasion to give it further thought. What is basically troubling the noble Lord is the absence in the Bill of any provision corresponding to Section 52 of the 1949 Act, which protects an application for a patent from defeat by reason of disclosure of any matter contained in a priority application upon which the first application is based, notwithstanding that the first application may disclose a "doveloped" invention. The noble Lord, Lord Belstead, gave an example, which we have heard before, concerning the attaching of uppers to the soles of shoes. The invention was later found to be applicable to roller blinds and canvas hoods for cars. The noble Lord argued that Section 52, or something like it, was necessary in order to comply with our obligations under the International Convention for the Protection of Industrial Property.

Let me say at once that, having given thought to this as I promised to do, I cannot accept that view of tie matter. Our obligations under that Convention include the giving of a right of priority to the invention first disclosed in another country which is a party to the Convention, and not to any developments of that invention. Indeed, there is nothing in the European Patent Convention which corresponds to Section 52 of the 1949 Act, and I venture to suggest that few would argue that the European Patent Convention is contrary to the international Convention. I do not for a moment underestimate the importance attached by the noble Lord to this point but, as I said during Committee stage, it is essential that we should not depart from the European Patent Convention in this respect. I am afraid, therefore, that after further consideration I must again resist the arguments put forward by the noble Lord.

If the Amendment were to be accepted, the result would be that in some circumstances an invention might be patentable under the Bill but not under the European Patent Convention, and thus we should be introducing a duality of standards in patentability. I hope your Lordships would agree that such a thing would be undesirable.

Finally, may I say that I do not think the picture is quite as black as the noble Lord has painted it. If I may take the example that he gave, any disclosure or publication of the means for attaching uppers to the soles of shoes between the priority date and the date of filing the United Kingdom application for the shoe, the roller blind and car hood, can only defeat the invention so far as it relates to roller blinds and car hoods if that invention is obvious; that is, if it lacks inventive step in relation to the invention relating to the shoe. That is because, so far as novelty is concerned, the Amendment we made earlier to Clause 2(3) precludes consideration of disclosures in the application in suit. Moreover, the disclosure, so far as obviousness is concerned, must be a disclosure otherwise than through publication of the application under the Bill, because Clause 3, which governs obviousness or inventive step, excludes from consideration any matter in the state of the art by virtue of Clause 2(3).

Therefore, all we are concerned with is the case where an invention is disclosed by the inventor before he has made an application either for that invention or for an invention which is obvious in the light of that disclosure. I am bound to say that we find nothing exceptional about that. Indeed, to do otherwise would, I am advised, flout the whole basis of patentability. It is for those reasons, despite the cogency of the arguments we have listened to in Committee and again today, and having taking further advice on this matter, that I cannot recommend your Lordships to accept this Amendment.

Lord LLOYD of KILGERRAN

My Lords, I have very great difficulty again—it is entirely my fault—in understanding the position now raised by the noble Lord, Lord Oram. He says that the attitude of the Government on this issue conflicts with the International Convention for the Protection of Industrial Property, which is known as the Paris Convention which has existed since about 1882. May I ask him, therefore, whether he has consulted the officers of that International Convention regarding this matter? The noble Lord has said that this aspect now put forward by the Government conforms with the European Patent Convention. Of course, that Con- vention did not have the advantage of being discussed by a tribunal and it was not subject to Parliamentary discussion. The European Patent Convention, as I understand it, arose from some notion of the Council of Europe. It has been discussed by Government Departments but has not had the advantage of Parliamentary debate in any country.

Then the noble Lord also said that if this Amendment were pursued it would result in a duality of standards in patentability. Again, I find it very difficult to understand that position. The Amendment has been discussed very fully. It has had the support, as I understand it, of British industry and of British patent agents; and yet the noble Lord and the Government prefer the terms of the European Convention in their entirety, to the exclusion of the International Convention for the Protection of Industrial Property. I wonder whether the Government would consider this matter once again, because this Amendment has had very considerable support in the patent agents' profession.

5.20 p.m.

Lord BELSTEAD

My Lords, I am grateful to the noble Lord, Lord Lloyd of Kilgerran, for speaking as he has done on this Amendment, particularly from the point of view of the Paris Convention. I am also grateful to the noble Lord for saying that it is an important Amendment. Coming from him, I am comforted that I have put it down again. It is the law at the moment, under Section 52 of the 1949 Act, that an inventor, after making a patent application, shall be allowed to publish an account of it or to exploit it without prejudicing his rights, thereafter, even if the inventor expands his invention before making a final application, provided that this is done within one year and also provided that additional matter is not added. It is to protect that position that this Amendment has been put down. I am also grateful to the noble Lord, Lord Oram, for dealing with considerable care with what I said and in a moment I will come to an apology which I feel I ought to make.

First, with regard to the Paris Convention, I readily admit that the effect of this Amendment is not contained in the European Patent Convention. But I shall be surprised if the Government are saying to the House today that the European Patent Convention, and indeed the Community Patent Convention, intend to abrogate the Paris Convention. I think that that would be a very remarkable assertion, and one which I have not heard made either when this Bill was in Committee or during the time that it has been on Report before your Lordships' House. I should have thought that the provisions of the Paris Convention were not abrogated by the European Patent Convention, and, because the European Patent Convention happens to be silent on this subject, I should not have thought that that was a reason for assuming that there will therefore be a duality of standards if this Amendment is agreed to. Rather I should have thought that, perhaps, silence on behalf of the European Patent Convention meant consent with what it is that the Paris Convention provides.

If I may now come to my apology, the noble Lord, Lord Oram, directed our attention to Clause 2(3) and I must honestly admit that I found it difficult to follow what he was saying. Therefore, I should like to reply to him in the form of a question. As I see it, Clause 2(2) provides that the state of the art shall be taken to comprise all matter which has, at any time before the priority date of that invention, been made available to the public by written or oral description, by use or in any other way. That is the effect of Clause 2(2). In the case of this inventor, would I be right in thinking that his second application for shoes, roller blinds and car hoods has been anticipated because of Clause 2(2), by the disclosure of the invention as it refers to shoes in the Shoemakers' Gazette? Would I also be right in thinking that if the invention had begun to be used by the inventor as it applies to shoes before he put in his broader, second application, the broader second application would have been doubly anticipated? It is those two dangers which Section 52 of the 1949 Act and Article 4(b) of the Paris Convention protect the invention from—in my view, very desirably. It is for that reason, above all else, that I feel that something needs to be done about this Amendment.

If the noble Lord, with advice, can tell me that I have got the meaning of Clause 2(2) wrong in the light of further Amendments which have been put down on Report, then of course I will withdraw this Amendment, but ask leave t o have the right to be able to reproduce either it or something like it on Third Reading. But if I am correct in the two questions which I have asked then, without wishing in any way, personally, to belabour the Government, I should like to put this Amendment to a Division.

Lord ORAM

My Lords, if I may speak again with the leave of the House, and reply first to the noble Lord, Lord Lloyd, if I may say so he got my first point wrong when he suggested that I was arguing that this Bill, as it stands, is in conflict with the Paris Convention. I meant to say just the opposite, that it does not conflict with the Paris Convention. He asked whether we had consulted with the officers of the Paris Convention. The answer is: No, this was not done for the reason that we felt that we were not doing anything which was in conflict with the Paris Convention. With regard to the European Patent Convention, it is a major purpose of what we are now considering to bring our legislation into line with the European legislation. I accept what the noble Lord said about that not having had the due process of discussion in Parliament, but I think that we have had ample opportunity in dealing with this Bill to discuss just how it does, or does not, relate to the European Patent Convention.

In reply to the noble Lord, Lord Belstead, I think he will acknowledge that some of the questions that he asked were particularly difficult to answer off-the-cuff. But in relation to his interpretation of Clause 2(2), I understand that the answer is: No; his invention would not have been anticipated, because he had not disclosed it before the priority date. I hope that that helps the noble Lord. I recognise that that is only in outline, but I hope that he feels it is to some extant satisfactory—sufficiently for him not to pursue the course that he mentioned of putting this to a Division. If he is not fully satisfied, I undertake to write to him in time for him to take up the matter again on Third Reading, and these matters can certainly be discussed further for clarification in another place, if need be. I hope that, with that undertaking, the noble Lord will see fit to withdraw his Amendment.

Lord BELSTEAD

My Lords, may I have your Lordships' leave to speak once more? I am grateful to the noble Lord for his reply. He said, in essence, that under Clause 2(2) the second, broader, generic application would not have been anticipated, because it had not been disclosed before the priority date. I do not think it is reasonable for me to ask the noble Lord where that is written into the Bill, because I think he has been taking advice fairly quickly, as have I. That is the obvious question which I should like to ask, and that is the question which I ask the noble Lord to communicate about to me in writing. On those grounds, I beg leave to withdraw this Amendment, but give notice that if the noble Lord cannot satisfy me on this point I shall put this Amendment down again on Third Reading, with a view to taking it to a Division.

Amendment, by leave, withdrawn.

Clause 72 [Proceedings in which validity of patent may be put in issue]:

5.29 p.m.

Lord ORAM moved Amendment No. 115: Page 63, line 9, at the beginning insert ("Subject to the following provisions of this section,").

The noble Lord said: My Lords, I spoke to this Amendment on the last occasion, when dealing with Amendment No. 104A. My Lords, I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 116: Page 63, line 11, leave out ("58") and insert("59").

The noble Lord said: My Lords, this Amendment merely corrects an error in the sectional reference contained in subsection (1)(a). My Lords, I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 117A:

Page 63, line 27, at end insert— ("(3A) The validity of a patent may not be put in issue on the ground mentioned in section 70(1)(b) above in proceedings commenced after the end of the period of two years beginning with the date of the grant of a patent unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent. (3B) Where proceedings with respect to a patent are pending in the court under any provision of this Act mentioned in subsection (1) above, no proceedings may be instituted without the leave of the court before the comptroller with respect to that patent under section 59(2A), 67, 69 or 70 above.")

The noble Lord said: My Lords, this is another of the Amendments which I dealt with collectively when I moved Amendment No. 104A. I beg to move.

On Question, Amendment agreed to.

Clause 73 [Amendment of patent in infringement or revocation proceedings]:

Lord ORAM moved Amendment No. 118: Page 64, line 1, leave out ("determine") and insert ("consider the opposition in deciding").

The noble Lord said: My Lords, this is a drafting Amendment which seeks to make it plain that where a person gives notice of opposition to a proposed Amendment under Clause 73 the court or comptroller is obliged to consider the opposition in deciding whether to allow the proposed Amendment, or any Amendment to the specification of the patent. On the present draft, it is not clear that this has to be done. I beg to move.

On Question, Amendment agreed to.

Clause 74 [Amendments of applications and patents not to include added matter]:

Lord ORAM moved Amendments Nos. 119 to 125:

Page 64, line 10, at beginning insert—

(".—(1) An application for a patent (the later application) shall not be allowed to be filed under section 7(3), (Determination of questions about entitlement to foreign and convention patents, etc.), 13(4) or 35(4) above in respect of any matter disclosed in an earlier application or the specification of a patent which has been granted if the later application discloses matter which extends beyond that disclosed in the earlier application, as filed, or the application for the patent, as filed")

Page 64, line 12, leave out ("section") and insert ("subsection")

Page 64, line 13, leave out from ("disclosing") to ("or") in line 15 and insert ("any such matter")

Page 64, line 18, leave out subsection (2).

Page 64, line 29, leave out ("This section") and insert ("Subsection (2) above")

Page 64, line 30, leave out ("7(3), 13 (4)")

Page 64, leave out ("35(4)")

The noble Lord said: My Lords, I beg to move Amendments Nos. 119 to 125 en bloc. Amendment No. 119 introduces a new subsection which fills a gap in the Bill by making it clear that, in the case of a new application filed under the clauses referred to, that application must not disclose any matter which extends beyond that disclosed in the earlier application from which it is derived. As at present drafted, the Bill quite correctly prevents any amendments being made to such applications which add matter, but does not prevent matter being added on filing. The new subsection makes it unnecessary to refer specifically to a "relevant application" in subsection (1), which deals solely with amendments. This in turn makes subsection (2) unnecessary. Amendments Nos. 119 and 122 effect these changes. The remainder are purely consequential. I beg to move.

On Question, Amendments agreed to.

5.34 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 126: Before Clause 75, insert the following new clause:

Filing of European patent application.

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

The noble Lord said: My Lords, this proposed Amendment is a British overture to the European symphony to be found n Part II of the Bill, which deals with the provisions about international conventions, including European patents. The purpose of the Amendment is to make it clear that applications for a European patent can be made in the United Kingdom Patent Office and that it is not necessary for practitioners all over the world to file their original patent application in Germany, where the European Patent Office is located, or in any other country. The filing of patent applications throughout the world is becoming increasingly a competitive business. The filing of European patent applications will become a new art and an extensive business. It has been much publicised that the European Patent Office is now in Munich. This office will receive applications for European patents in 1978.

National patent offices, such as the United Kingdom Patent Office, will continue to deal with applications for national patents. Indeed, Part I of the Bill, which is headed "New Domestic Law", states in Clause 2 that every application for a United Kingdom patent shall be made at the United Kingdom Patent Office. It is not, however, made abundantly clear that the United Kingdom Patent Office can receive applications for European patents. It seems to me that it is in the interests of the United Kingdom that this should be made clear, not only in this country but abroad.

Various clauses in Part II of the Bill dealing with European patent matters refer to "a European patent (U K)" and to "the European Patent Office". It is stated in Clause 82(1) that patent agents must have their names on a list maintained by the European Patent Office in pursuance of the European Patent Convention. There are other clauses in Part II of the Bill, which I shall only mention but will not read, that seem to direct practitioners in the patents field all over the world to patent offices other than the United Kingdom Patent Office. This direction is to be found in Clause 76(3)(e) and in Clause 79(3)(c) at page 70. Clause 122, for instance, states that "European patent (UK)" means a "patent designating the United Kingdom". It does not follow from this definition that a European application for a patent can be filed at the European Patent Office. Therefore I submit that while there is no clear statement in Part II of the Bill that all application for a European patent can be filed in the United Kingdom Patent Office, there is a clear mandatory statement that domestic United Kingdom applications shall be filed in the United Kingdom Patent Office.

I raised the matter at the Committee stage. At col. 1535, on 15th March 1977, the noble and learned Lord, Lord McCluskey, was good enough to say that he had a great deal of sympathy with what I had said and with the way in which I had said it. He concluded by saying that he did not think that I should regard the position at that stage as neceisarily the end of the story. Therefore, encouraged by the remarks made by the noble and learned Lord, that my observations in Committee were not quite the end of the story, I hope he does not think that I am making too heavy weather about this Amendment. I beg to move.

Lord BELSTEAD

My Lords, although the names of my noble friends and myself are not added to this Amendment, we should like to support what the noble Lord, Lord Lloyd of Kilgerran, has said in moving it.

Lord LLOYD of KILGERRAN

My Lords, I thank the noble Lord, Lord Belstead, for his support.

The SOLICITOR-GENERAL for SCOTLAND (Lord McCluskey)

My Lords, if I may reply to the remarks made by the noble Lord, Lord Lloyd of Kilgerran, he spoke of this Amendment as being the overture to a European symphony. I am not sure whether it deserves quite that description, elegant though it was. It is certainly a song that we have heard before but I am afraid that my reply must be slightly more waspish than it was last time.

Lord LLOYD of KILGERRAN

My Lords, I hope that it will be tuneful!

Lord McCLUSKEY

My Lords, I have some sympathy with the noble Lord's concern. Indeed, I said so before. His concern is to ensure and publicise the fact that European patent applications must be received by the Patent Office. What I assert is that the matter is abundantly clear, although I accept that it is not abundantly clear in the wording of the Statute. However, one has to think of the constitutional purpose of a Statute. Its purpose is not to give glimpses of the obvious but merely to enact the law. The constitutional position is that if it is unnecessary to put this Amendment into the Statute, then one should not put it in.

I repeat that I believe there is no doubt whatsoever that the Patent Office has authority to receive such applications without any statutory provision. The real question is whether, this being the position, it is as plain as two and two making four that one needs to put this authority specifically into the Bill. There is the constitutional or legislative objection to which I referred last time: that if one specifically gives statutory authority to a Government Department to do a certain thing when it does not need such statutory authority, it throws doubt, or may throw doubt, upon the authority of other Government Departments to act in certain ways in which they already act without having express statutory authority.

Having given further consideration to the matter, I am persuaded that this Amendment is undesirable for the reasons which I have given and that the Amendment would create an unfortunate precedent, albeit, as the noble Lord pointed out during Committee, that this is a somewhat new field. However, that does not alter the principle of the objection which I have outlined. The noble Lord today referred in error to Clause 2; I think he meant Clause 12, the equivalent of Clause 11, which he mentioned at the Committee stage. Clause 12 is concerned only with the filing of applications for patents under the Bill, and although an application for a European patent which designates the United Kingdom is treated for certain purposes under Clause 76 as such an application once it has a date of filing, it is not so treated for the purposes of Clause 12(1). So to answer the question that was asked at that time, Clause 12 does not provide the statutory authority desired by the noble Lord. As I have said, one does not need statutory authority for it.

Clause 12 applications must be made in a prescribed form and filed in a prescribed manner for processing by the Patent Office. That is something more than the exercise of administrative authority, which is all that is required so far as the reception of European applications is concerned. The objection which I have made to the noble Lord's Amendment therefore does not arise in connection with Clause 12. Therefore, I am afraid that I cannot be as accommodating as I hoped at the Committee stage I might have been, but we take the view that the legislative principle is important and should be preserved. For that reason, I hope the noble Lord will feel that the airing he has given to the matter, both in Committee and today, and the plain assertions that I have been able to make about the authority of the Patent Office to receive these applications, will be sufficient to bring to the attention of all practitioners what the position in law is and that he will feel able to withdraw this Amendment.

Lord LLOYD of KILGERRAN

My Lords, I am again grateful to the noble and learned Lord for his exposition of the constitutional problems which this apparently simple Amendment raised. I have no option in this House but to accept the advice given by the noble and learned Lord. No doubt it is a Government decision, but it may be a decision of the Government made at a considerable loss to the invisible revenues of this country. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 75 [Effect of European patent (UK)]:

5.42 p.m.

Lord McCLUSKEY moved Amendment No. 127A:

Page 65, line 20, at end insert— ("(2A) Sections 56(3A) to (3C) and 61 above shall apply to the case where, after proceedings for the infringement of a European patent have been commenced before the court or the comptroller but have not been finally disposed of, it is established in proceedings before the European Patent Office that the patent is only partially valid as those provisions apply to proceedings in which the validity of a patent is put in issue and in which it is found that the patent is only partially valid.")

The noble and learned Lord said: My Lords, this is a small but, I hope, a useful Amendment. Under Clause 61 of the Bill, as amended, and the corresponding subsections which we have recently added to Clause 56, by Amendment No. 74, relief may be given in respect of an infringement even if a patent is partially invalid, provided certain conditions are met. The principal condition is that the specification of the patent must have been framed with reasonable skill and knowledge. The court is given a discretion as to costs or expenses and as to the date from which damages should be reckoned. The provisions are derived from Section 62 of the 1949 Act. Banks reported that that section was a, useful provision for shortening the proceedings and granting an injunction or backdated damages and costs on a fair basis having regard to all the circumstances of the case", but that some of the possible functions of the section were now covered by Sections 30(1) and 59(3), replaced in the Bill by Clauses 25, 74 and 60(3).

By one of those oddities that sometimes occur, things have moved full circle and the very circumstances that Section 62 was first introduced to meet in 1932; namely, the difficulties of there being separate proceedings for amendment and infringement, have now re-arisen in the European field. It may happen that infringement proceedings are taking place here in relation to a European patent at the same time as opposition proceedings under Part V of the EPC. If in the course of those proceedings the patent is upheld in part then the Amendment would give the court a discretion as to damages et cetera. Thus the proprietor of the patent would not have to start a new action and the infringer would only have to pay damages on a fair basis having regard to all the circumstances of the case. I beg to move.

On Question, Amendment agreed to.

Clause 80 [Jurisdiction to determine questions as to right to a patent]:

Lord McCLUSKEY moved Amendments Nos. 128, 129 and 130 en bloc:

Page 70, line 36, leave out ("7") and insert ("(Determination of questions about entitlement to foreign and convention patents, etc.)")

Page 72, line 1, leave out ("7") and insert ("(Determination of questions about entitlement to foreign and convention patents, etc.)")

Page 72, line 16, leave out ("7") and insert ("(Determination of questions about entitlement to foreign and convention patents, etc.)").

The noble and learned Lord said: My Lords, I should like to move Amendments Nos. 128, 129 and 130 together as they have the same effect and are consequential upon the addition of the new use after Clause 10, for the sole purpose of being able to refer to the correct clause. I beg to move.

On Question, Amendments agreed to.

Clause 82 [Patent agents and other representatives]:

Lord McCLUSKEY moved Amendment No. 131: Page 73, line 1, leave out ("person") and insert ("individual").

The noble and learned Lord said: My Lords with the leave of the House, I should like to speak to Amendments Nos. 131, 133, 135, 136 and 137 at the same time. These Amendments are designed to meet a point on which the Government have received representations. Although Article 134 of the EPC does not allow professional representation to be undertaken before the European Patents Office by anyone other than "natural persons", it would be wrong to prevent a group of patent agents who have formed themselves into a company from holding themselves out under the company name as carrying on European business. These Amendments, of which the principal one is No. 135 (the third Amendment) are designed to achieve that result. They do not have, and are not intended to have the effect of allowing such companies to be entered on the European list. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 132: Page 73, line 5, after ("patents") insert ("or for the purpose of conducting proceedings in connection with such patents before the European Patent Office or the comptroller").

The noble and learned Lord said: My Lords, I should like to move Amendment No. 132 and at the same time to mention Amendment No. 160 which I hope to move formally when we reach it. That Amendment applies to Clause 122. This pair of Amendments, the first of which, No. 132, is concerned with European business and the second with business before the comptroller, extend the range of things which an unqualified person is forbidden to do. The definition of "patent agent" in the Bill as drafted is taken from the 1949 Act (Section 101(1)) and the wording of Clause 82 follows that definition. The provisions refer only to "applying for or obtaining patents" and are silent about other possible proceedings. It is thought right to provide that unqualified persons should also be prohibited from carrying on for gain the business of acting as agent for other persons for the full range of proceedings, for example, opposition, revocation and applications for compulsory licences. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 133: Page 73, leave out lines 8 and 9 and insert ("the European list").

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

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 133A: Page 73, line 11, leave out from ("from") to end of line 16 and insert ("conducting or otherwise taking part in any proceedings in connection with European patents before the European Patent Office or the comptroller to the same extent as he is entitled to take part in the corresponding proceedings in connection with patents under this Act before the Patent Office or the comptroller").

The noble and learned Lord said: My Lords, Amendment No. 133A replaces Amendment No. 134 in the second Marshalled List and is consequential upon Amendment No. 132. Since the list of things which are prohibited under subsection (1) has been extended, it follows that the exemptions in subsection (2) must also be extended. This exemption is justified by Article 143. paragraph 7, of the EPC which provides for legal petitioners to have the same right of representation before the European Patent Office as they have in their own States. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendments Nos. 135 to 137:

Page 73, line 16, at end insert— ("(2A) A body corporate shall not for gain act or describe itself or hold itself out as entitled to act as agent or other representative of other persons for any purpose mentioned in subsection (1) above unless the name of every director or member of the body and, if it has a manager who is not a director or member, of that manager appears on the European list.")

Page 73, line 17, after ("(1)") insert ("or (2A)")

Page 73, line 28, at end insert— ("(6) In this section the European list "means the list of professional representatives maintained by the European Patent Office in pursuance of the European Patent Convention.")

The noble and learned Lord said: My Lords, I spoke to this Amendment with Nos. 131 and 133. With the leave of the House, I beg to move Amendments Nos. 135 to 137 en bloc.

On Question, Amendments agreed to.

Clause 84 [Decisions on Community Patent Convention]:

Lord McCLUSKEY moved Amendments Nos. 138 to 141:

Page 74, line 21, leave out from ("instrument") to ("shall") in line 23 and insert ("made under or in implementation of that convention by any relevant convention institution")

Page 74, line 28, after ("section") insert (""relevant convention institution" means any institution established by or having functions under the Community Patent Convention, not being an institution of the United Kingdom or any other member state, and")

Page 74, line 29, leave out ("the Community Patent Convention") and insert ("that convention")

Page 74, line 31, after ("being") insert ("—

1. (a) the European Patent Office or one of its departments; or
2. (b)")

The noble and learned Lord said: My Lords, these Amendments are designed to meet a point raised in Committee by the noble Lord, Lord Lyell, on Amendment No. 317. Noble Lords opposite put down an Amendment in Committee (No. 317) along the lines of what is now Amendment No. 141, and my reaction was that the Government certainly did not intend all European Patent Office opinions to be binding, but that the Community Patent Convention required some opinions on the validity of patents to be binding on our courts. The difficulty arose because the words "instruments issued" in line 21 of page 74 would have included a patent. The first of these Amendments, No. 138, would substitute a reference to an "instrument made", but not a patent. Thus Amendment No. 138, the first of these four Amendments, makes possible Amendment No. 141, the fourth, which I am sure will please noble Lords opposite. The Community Patent Convention, as brought into our law by Clause 83, will now speak for itself so far as the binding or non-binding nature of European. Patent Office opinions on the validity of patents is concerned.

The Amendments make one other small change of substance. Institutions of Member States are now excluded from the definition of convention institutions. This change, which is effected by Amendment No. 139, makes it quite clear that if, for example, the comptroller issues a practice direction about something he is empowered to decide under the Community Patents Convention then that direction is not subject to Clause 84. I beg to move.

Lord LYELL

My Lords, the noble and learned Lord, Lord McCluskey, has made some very kind references to these Benches with regard to Amendment No. 141. We are very grateful for the insertion of this Amendment. We hope, and indeed he will be able to tell us, that it meets our worry on the point we had in mind, and to that extent we are very grateful.

Lord McCLUSKEY

My Lords, I believe it does. I am grateful for that kind acknowledgment. This is the ninth day on which we have been engaged in what the noble Lord, Lord Belstead, would, I am sure, describe as the fixing of stiff matter on to a very flexible backing.

On Question, Amendments agreed to.

Clause 93 [The Patents Court]:

Lord LLOYD of KILGERRAN moved Amendment No. 142: Page 80, line 41, after ("scientfic") insert ("or other")

The noble Lord said: My Lords, Clause 93 is the opening clause of Part III of this Bill, entitled "Legal Proceedings". My Amendment is directed to saseetion(4) under which, as the Bill stands a. present, Rules of court shall make provision for the appointment of scientific advisers to assist the Patents Court in proceedings under this Act and for regulating the functions of such advisers. In my submission, in the context of the present Bill, "scientific advisers" is too limited an expression, and my Amendment suggests that after "scientific" there should be inserted "or other" so that the Court can have other than scientific advisers.

My main reason for putting forward this Amendment is that there are sections of this Bill which necessitate the consideration of the commercial exploitation of patents, and it may be that the Patents Court would like to have the assistance of some businessman or of people associated with the commercial exploitation of patents. Again, under the sections dealing with the position of employee inventors, questions in relation to industrial relations in a company may arise, and it may be that the Court would be assisted by advisers like trace union officials or persons concerned with industrial relations. I beg to move.

The LORD CHANCELLOR

My Lords, several times the noble Lord, Lord Lloyd of Kilgerran, urged upon your Lordships in Committee the desirability of introducing into proceedings persons of experience in the commercial exploitation of patents and in industrial relations, but he will have noted that on each occasion, with regret, your Lordships declined to accept his proposals. The result is that nowhere in the Bill is mention made of the appointment of any sort of advisers to assist the Patents Court, apart from the reference to scientific advisers in Clause 93(4). Of course, the Court will be assisted by witnesses on each side with commercial experience and industrial relations experience, and my view is that it would not be really very helpful to bring in any other kind of adviser than the scientific adviser. If that is so and is accepted, it would be illogical to require that rules of court should provide for their appointment. With the last part of the argument I am sure the noble Lord will agree. Therefore, I regret to say that I cannot accept the Amendment.

Lord LLOYD of KILGERRAN

My Lords, I deeply regret, of course, that I have failed once again to obtain the sympathy of the noble and learned Lord on this matter, but he knows as well as I do—if I may presume to put it in that way—that the Patents Court have been very reluctant in the past to invite the assistance of scientific advisers. No doubt many judges have spoken to him, as they have to me, to say that while they have witnesses who can deal with scientific matters perhaps it would merely complicate the matter to have these additional scientific advisers. In my view, the position under the Bill has completely changed in the way I have indicated, but, in view of the advice given by the noble and learned Lord, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 94 [Appeals from the comptroller]:

5.58 p.m.

Lord LYELL moved Amendment No. 142A: Page 81, line 10, leave out paragraph (b).

The noble Lord said: My Lords, once again we find this Amendment following from the kind and indeed welcoming remarks made by the noble and learned Lord at Committee stage. In the course of his remarks he said he wondered how much confidence he had in his reply to the point I was putting forward, that an appeal should be allowed from a comptroller's decision, but especially when we were concerned with the date of filing in one of these applications that we call "divided out". I wonder whether the noble and learned Lord who is sitting on the Woolsack is still convinced that such a decision is entirely—I use his word—administrative. For my part, I would suggest that there is always the risk that with so much at stake an appeal should be allowed to the Court, as the decision is bound to concern itself with some aspects—again, with leave, I quote the words of the noble and learned Lord—of judicial discretion. Of course, that will be what lay members of your Lordships' House would call the law. This Amendment is seeking to probe further, to see whether the noble and learned Lord has, or indeed the Government have, anything to add to the answer and comments which we obtained at Committee. I beg to move.

The LORD CHANCELLOR

My Lords, I am happy to say that in view of the strength of feeling expressed by the noble Lord, I can accept the Amendment in principle, particularly as the European Patent Convention itself gives a right of an appeal in cases where purely formal requirements are not met. If the noble Lord is prepared to accept my acceptance en principe, I shall be grateful if he will withdraw the Amendment.

Lord LYELL

My Lords, I think that there is an element of double negative there. I am certainly pleased to accept the acceptance of the noble and learned Lord that there is merit in excluding paragraph (b) from subsection (1). If the noble and learned Lord will accept my contention en principe that we shall find some guarantee in the Bill, I shall be pleased and happy to beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

6.1 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 143.

Page 81, line 19, at end insert— ("(g) an award made in accordance with section 38 above").

The noble Lord said: My Lords, with the leave of the House, I should also like to speak to Amendments Nos. 144 and 145. Clause 94(1) deals with appeals from the comptroller and it cites a number of circumstances in which there shall not be an appeal to the Patents Court from the decision of the comptroller. Amendment No. 143 seeks to add another instance where no appeal should be available to either party, and that is where, in the case of a dispute between an employee and his employer an award is made in accordance with Clause 38 of the Bill as to the amount of compensation which should he paid to the employee. This matter has been dealt with in Committee at considerable length. I merely put forward the submission once again that finality as regards disputes between employees and employers is to he encouraged. This is an attempt to produce finality for such a dispute in the comptroller's court and there should be no appeal, subject, of course, to the usual appeals which are available to anyone where he considers that a court has gone wrong in law.

Amendment No. 144 in principle is concerned that an award made to an employee under Clause 38—that is, the employee-inventor position—should, again, be a final award. Although it is not consequential to Amendment No. 143, it raises the same kind of issue. Amendment No. 145 is also directed to limiting the scope of the appeal which can be conducted in the case of a dispute between an employee and an employer, not at the Comptroller-General stage but at the stage of the higher court. Therefore in effect, the three Amendments are trying to produce a finality at various stages from the comptroller's court through to the other courts. I beg to move.

The LORD CHANCELLOR

My Lords, I am most grateful to the noble Lord, Lord Lloyd of Kilgerran, for discussing these three Amendments. The first would add the awards identified there, made in accordance with Clause 38, to the list of decisions specified in Clause 94(1) in respect of which no appeal would lie to the Patents Court from the comptroller's decision. We do not consider that it would be right to accede to this Amendment. The complexity Df the issues involved and of the amounts at stake make it desirable that the comptroller's decision should be the subject of appeal to the Patents Court at the behest of any dissatisfied party to the proceedings before him.

Amendment No. 144 would prevent an appeal lying from the Patents Court to the Court of Appeal on any such award. Here again, and for the same reasons, the Government think that it would not be right to cut off he parties' rights of appeal in the way proposed. The third Amendment is really part and parcel of the idea contained in the second —it is a matter of drafting mechanics to give effect to that idea. I really have nothing more to add on it. I appreciate the noble Lord's desire to keep down the costs of litigation, but I fear that we must not do so at the expense of justice, and that might be the result of accer ting these Amendments.

Lord LLOYD of KILGEWZAN

My Lords, I thank the noble ar d learned Lord for his full consideration of my Amendments. I fear that I cannot totally agree with the last words of his interesting remarks, that he fears that my Amendments would not give rise to justice being done. In relation to the rights of employee-inventors, I think that V, e are now proceeding into a new field, and I believe that it is in the public interest for an employee and employer to have their disputes considered outside the ambit of the High Court wherever possible. As I have said before and as the High Court has frequently said, it is not the proper tribunal in which to discuss patent disputes. In my submission, those remarks apply far more cogent)/ to any disputes which may arise between an employee and an employer. When the noble and learned Lord addresses your Lordships' House in this way I have no alternative but to accept his advice. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

6.7 p.m.

The LORD CHANCELLOR moved Amendment No. 146. Page 81, line 32, after ("38") insert ("59").

The noble and learned Lord said: This Amendment is consequential upon Amendment No. 82 to Clause 59, giving the comptroller an infringement jurisdiction. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 146A.

Page 81, line 41, at end insert— ("(5) An appeal shall not lie to the Inner House of the Court of Session from a decision of an Outer House judge on appeal from a decision of the comptroller under this Act or rules—

1. (a) except where the comptroller's decision was given under section 7, 16, 18, 25, 35, 38, 59, 70, 71 or 73 above; or
2. (b) except where the ground of appeal is that the decision of the Outer House judge is wrong in law.")

The noble and learned Lord said: My Lords, Clause 94(3) sets out the cases in which, where there has been an appeal from a decision of the comptroller to the Patents Court, a further appeal lies from that court to the Court of Appeal. This Amendment introduces a new subsection (5) to Clause 94 which makes parallel provision for Scotland. Under the existing subsection (4) of that clause, where the comptroller hears a case in Scotland, an appeal from his decision may be made to the Court of Session. It will be heard by an Outer House judge of that court: that is to say, by a single judge of the court, and rules of court will, we understand, be made to make provision for this.

The new subsection provides that the cases in which a further appeal is to lie, that is, from the Outer House judge to the Inner House of the court—which consists of three or four judges sitting together—are the same as will lie in England and Wales from the Patents Court to the Court of Appeal. Thus, this Amendment makes parallel provision for Scotland to that which Clause 94(3) makes for England and Wales. My Lords, I beg to move.

On Question, Amendment agreed to.

Clause 99 [Right of audience in patent proceedings]:

6.10 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 147: Page 82, line 34, leave out ("counsel") and insert ("any barrister").

The noble Lord said: My Lords, in moving Amendment No. 147, with the leave of the House I would wish to speak to Amendments Nos. 148 and 149. Clause 99 of the Bill concerns the right of audience in patent proceedings. I have been approached by the Bar Association for commerce, finance and industry that their members should also have the right of audience in the circumstances of Clause 99. The members of the Bar Association for commerce, finance and industry are members of the Bar but they are not practising members of the Bar. and they have been given audience in the past in certain patent proceedings. These men and women do a fine service, in most cases in business, and they are qualified as barristers. It would be helpful to the courts if they could also have the right of audience in this matter before the relevant patent courts. I beg to move.

The LORD CHANCELLOR

My Lords, I am delighted to say that at last I am in agreement with the noble Lord, Lord Lloyd of Kilgerran. It gives me particular pleasure at last to be able to say that, helpful as he has been throughout our deliberations. I agree with him that there is no reason in logic or in justice why a right of audience which is given to solicitors and to patent agents should not also be given to employed barristers. The Bar Council have no objection to this proposal, so long as it is clear that it is limited to appeals from the comptroller to the Patents Court and does not extend to proceedings in the Patents Court at first instance, which is not what the noble Lord is seeking.

I am fully in sympathy with the thought behind these Amendments. However, I have doubts about the drafting of the Amendments to Clause 99(3)—that is, Amendments Nos. 148 and 149—and I question the necessity for Amendment No. 147. Clause 99(1) gives a right of audience to counsel, solicitors, and patent agents, and in addition to "any other person" whom the party desires to represent him. "Any other person" is a phrase wide enough to include employed barristers, and I would accordingly suggest to the noble Lord that his wishes in that respect have already been met. As to Amendments Nos. 148 and 149, practising barristers have of course an automatic right of audience before the High Court. The noble Lord's Amendment, including, as it does, practising barristers, might be taken to imply that their right of audience is only by virtue of a statutory provision. Accordingly, if the noble Lord would be kind enough to withdraw these two Amendments, I undertake that at a later stage a Government Amendment will be put down to ensure that, when the Patents Court is hearing appeals from the comptroller, employed barristers do have a right of audience.

Lord McCLUSKEY

My Lords, perhaps the noble Lord, Lord Lloyd of Kilgerran, in considering the wording of his Amendment might have regard to the fact that in Scotland those who pass in England under the name "barrister" use a different title.

Lord LLOYD of KILGERRAN

My Lords, I am much obliged to have the advice of two noble and learned Lords on this matter. In those circumstances, I shall not detain the House any further. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 100 [Extension of privilege for communications with solicitors relating to patent proceedings]:

6.14 p.m.

Lord McCLUSKEY moved Amend-ment No. 149A:

Page 83, line 16, at end insert— ("(1A) In Scotland, the provisions of this section shall apply to the rules of law which confer privilege from disclosure in legal proceedings in respect of communications, reports or other documents (by whomsoever made) for the purpose of any pending or contemplated proceedings in a court in the United Kingdom as it applies to the rule of law referred to in subsection (1) above").

The noble and learned Lord said: My Lords, Clause 100(1) provides for an extension of the privilege from disclosure of certain communications with solicitors which parties at present enjoy in legal proceedings in England and Wales. The extension covers proceedings before the comptroller, and proceedings before the European Court of Justice and the European Patent Office under the Patent Conventions. Amendment No. 149A introduces a new subsection (1A) which provides for a similar extension in relation to the corresponding Scottish rules of law on the subject.

The Amendment which follows this Amendment, Amendment No. 149B, might be considered along with this Amendment. It simply leaves out subsection (3), which prevented the clause as printed from extending to Scotland. Now that the new subsection (1A) is to make appropriate parallel provision for Scotland, it follows that the old subsection (3) cannot also be retained. I beg to move.

On Question, Amendment agreed to.

Lord McCLUSKEY moved Amendment No. 149B: Page 83, leave out line 27.

On Question, Amendment agreed to.

Clause 101 [Privilege for communications with patent agents relating to patent proceedings]:

Lord BELSTEAD moved Amendment No. 149C: Page 84, line 33, after ("to") irsert ("legal proceedings in").

The noble Lord said: My Lords, the problem with which this Amendment seeks to deal is that there are parent agents in Scotland who practice before the British Patent Office and will be practising before the European Patent Office, and presum-ably their communications should have exactly the same right of privilege as have those of patent agents in England. It would appear that subsection ',6) means that Clause 101 does not extend to the Scottish courts. This is the meaning which this Amendment seeks to make clear. I hope noble Lords will agree that my brevity is exceeded only by my lucidity. I beg to move.

Lord McCLUSKEY

My Lords, it is of course the intention of the Government, as it is of the noble Lord, Lord Belstead, that patent agents should have the same privilege when dealing with Scottish matters as they have when dealing with matters elsewhere in the United Kingdom. However, the Amendments to Clause 100 which we have just considered are intended to have the same, and indeed perhaps a wider, effect than this proposed Amendment. In Scotland the rules on privilege. post litis motam, that is to say, after the raising of the action, apply to all professional men and not just to solicitors, and so the new subsection (1A) in Clause 100, together with Amendment No. 149B which I have just moved, will confer privilege automatically on patent agents. The Civil Evidence Act 1968 does not apply in Scotland.

In connection with this Amendment, we have looked at the wording of subsection (6), and I should like to take this matter away, having looked at it again today and consulted the draftsmen about it. We think that it may be that the wording could be improved. I am not sure that it can be improved, but perhaps in the circumstances the noble Lord will not press his Amendment at this stage and we would hope that we can achieve our common object by Third Reading.

Lord BELSTEAD

My Lords, I am much obliged to the noble and learned Lord. I am quite certain of one thing, and that is that the wording can be improved. Let us hope that we can find an Amendment about which we can all agree on Third Reading. I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 102 [Costs and expenses]:

6.18 p.m.

Lord LLOYD of KILGER RAN moved Amendment No. 150: Page 84, line 35, after ("party") insert ("save to an employer in proceedings relating to an application under section 38 above").

The noble Lord said: My Lords, Clause 102(1) says that, the comptroller may, in any proceedings before him under this Act, by order award to any party such costs or, in Scotland, such expenses as he may consider reasonable and direct how and by what parties they are to be paid. My Amendment is to limit his powers of awarding costs in a dispute between an employee and an employer as to the amount of compensation which should be paid by the employer to the employee, or an ex-employee, who has made a valuable invention which it is agreed has been of benefit to a company. Perhaps I may remind your Lordships that it is not possible for a case to come before the Comptroller-General unless there is satisfaction that the invention has been of benefit to the company. The object of my Amendment is to prevent the em- ployer getting any costs in such proceedings; that is, to prevent the comptroller from awarding any costs in such proceedings. I shall be told that that would be very unjust to the employer, that one may have a difficult employee and so on and that costs awarded against an employee, or for an employer, would act as some sort of deterrent.

It has been the experience of industry that costs in legal disputes can act as a serious deterrent to securing justice for an employee, not only for an employee but for a man who cannot afford to instruct solicitors and brief lawyers for the High Court or, as in this case, the comptroller's courts. It will no doubt be said in reply that costs incurred before the comptroller's court will not be large, but that is not to appreciate the circumstances of the cases that will come before that court; thousands of pounds in costs may be involved in such cases.

What cost will the comptroller consider reasonable to award if, because of the complexity of the matter in dispute involving the employee and employer, the employer has, perhaps reasonably, incurred thousands of pounds of expense by way of costs? While it will be said that costs before the comptroller will be low, we are here dealing with an entirely new matter in relation to disputes between employer and employee. And will there not be gross injustice to the employee in terms of industrial relations if he has made an invention which it is agreed is of benefit to the company yet he is prevented from seeking justice because he does not know the magnitude of the costs that will be awarded against him?

Assurances that the costs in the comptroller's court will be low will not carry much weight in a new jurisdiction of this kind. I should have thought that it would be good industrial relations for the Government to include an explicit statement in the Bill to the effect that no costs should be awarded to an employer which an employee must pay in the circumstances of a dispute arising between an employee and employer which is heard before the comptroller's court.

The LORD CHANCELLOR

My Lords, on more than one occasion the noble Lord, Lord Lloyd of Kilgerran, has shown a praiseworthy concern to keep down the costs of proceedings under the Bill. In Committee he moved an Amendment to this clause which would have prevented the comptroller awarding costs to either party to proceedings under what are now Clauses 37 to 41. In reply, I referred to the fact that the costs would be at the discretion of the comptroller. That is a discretion which comptrollers will have had great experience in exercising. I said that there might be cases where it would be perfectly proper for him to order that an employee's costs be paid by the employer. Lord Lloyd has taken that point on board, but he still proposes that no costs should be awarded in favour of an employer in the event of his succeeding.

Whereas ideologically I might be tempted to support that point of view, one has to face the fact that there may well be cases where it would be right that an employer should be awarded costs, and an arbitrary ban on their award of the kind proposed could well cause injustice. The costs that are awardable by the comptroller will, I think, be moderate. They will be at the discretion of the comptroller and I venture to suggest that the combination of those two circumstances might encourage Lord Lloyd to accept my reluctance to adopt his Amendment.

Lord LLOYD of KILGERRAN

My Lords, I am grateful to the noble and learned Lord for that explanation. He spoke about moderate costs. May I ask him what moderate costs are and what experience the comptroller will have had of dealing with disputes between employees and employers? After all, this is a new jurisdiction. I have congratulated the Government before on introducing provisions which give rights to employees for inventions which have benefited the company. It seems wrong therefore that an employee might be faced with large costs awarded against him because they are considered to be reasonable, costs which the employer might have felt it desirable to incur by calling expert witnesses and experienced lawyers to protect his position.

I fear that this may cause grave injustice. As the noble and learned Lord referred to moderate costs, I hope the Government will reconsider the matter and try to define "moderate costs" in the Bill. Might it be said that no costs above, say, £100 should be awarded to an employer in the circumstances of a dispute of this kind?

The LORD CHANCELLOR

My Lords, perhaps I might mention one factual matter which may, at any rate to some extent, reassure the noble Lord. The costs at present awarded by the comptroller rarely exceed about £200 and I have no reason to fear that there would be any dimensions higher than that, but obviously I cannot give an absolute guarantee to that effect. That is the kind of domain about which we are speaking, and, as I say, at the end of the day the discretion is that of the comptroller. If we were faced with a situation of an employer engaging expensive Queen's Counsel with the distinction, for example, of the noble Lord, Lord Lloyd of Kilgerran, and experts of similar distinction and perhaps even expense, than I think he might well take on board the fact that the discretion ought to be exercised in favour of the employee.

Lord LLOYD of KILGERRAN

My Lords, I thank the noble and learned Lord for his gracious approach to the matter, which could be important in that, without being committed by defi ling what moderate costs are, he has given a figure and therefore any employee reading Hansard, as so many employees do, will be able to say, "It will not cost me more than about £200 if I press this dispute with my employer".

The LORD CHANCELLOR

My Lords, I really do not want to go on record as binding myself on that, but I take the point the noble Lord has made.

Lord LLOYD of KILGERRAN

My Lords, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Clause 107 [Restrictions on practice as patent agent]:

6. 29 p.m.

The LORD CHANCELLOR moved Amendments Nos. 151 to 153:

Page 87, line 5, leave out ("company") and insert ("body corporate").

Page 87, line 8, after ("company") insert ("within the meaning of the Companies Act 1948").

Page 87, line 17, leave out from ("director") to end of line 18 and insert ("or member of the body and, if it has a manager who is not a director or member,").

The noble and learned Lord said: My Lords, Clause 107 of the Bill as drafted, which re-enacts with minor changes Section 88 of the 1949 Act, refers simple to a "company". Curiously enough, this is a term which does not as such have an exact legal meaning. It has therefore been decided to widen the prohibition to include all bodies corporate, a term which includes Companies Act companies and any other body having legal personality—for example, a foreign company without a place of business here. We believe that these Amendments will help to prevent poaching of United Kingdom business by outsiders. The principal Amendment is Amendment No. 151 and the remaining Amendments are consequential upon it. I beg to move.

On Question, Amendments agreed to.

Clause 110 [Correction of errors in patents and applications]:

The LORD CHANCELLOR moved Amendment No. 154: Page 89, line 5, after ("with") insert ("a patent or").

The noble and learned Lord said: My Lords, this Amendment extends the power to correct errors so as to enable such corrections to be made in any document filed in connection with a patent. This fills a gap which was inadvertently left in Clause 110 and conforms to the existing law. I beg to move.

On Question, Amendment agreed to.

Lord LYELL moved Amendment No. 154A:

Page 89, line 6, at end insert— ("( ) No correction of a mistake in any specification of a patent (other than an error of translation or transcription or a clerical error) shall be allowed if it extends the protection conferred by the patent unless both the mistake and the manner of correcting it are obvious.").

The noble Lord said: My Lords, it may be for the convenience of the House if I speak also to Amendment No. 154B so that we can make reasonable progress with these two Amendments. I spoke to this matter at Committee stage on, I believe, Amendment No. 346. There, we were pleased to see that the noble and learned Lord believed that he would be able to reconsider what he had said and to consider our views on this matter of correcting mistakes and errors. So far as we can understand, there has not been any change in the Government's thinking nor has any Amendment been put down which would substitute for our Amendment. We hope that the Amendment that we are again putting forward will give the right balance to the clause.

It will be seen that the Amendment should apply only to the amendment of specifications after the grant of a patent, and we also hope that it will prevent third parties from being completely surprised by the amendment of a mistake in every case where the patentee is seeking to do more than correct an error which is, as we would put it, obvious. The Amendment to subsection (2) is, we hope, merely consequential upon the larger Amendment already made to subsection (1). I beg to move.

The LORD CHANCELLOR

My Lords, I appreciate that this Amendment is intended to parallel European Patent Convention Rule 88 and to make it clear that no error or mistake may be corrected unless it is obvious that an error or mistake has been made. We intend to make a rule corresponding to EPC Rule 88 but we do not wish this provision to be included in the Bill. The reason for that is that rules can be changed much more readily than can Conventions or Acts of Parliament. Should it occur that EPC Rule 88 is changed, we may wish to change our corresponding provision in a like manner and it would be unfortunate if we were precluded from so doing because the corresponding provision was in an Act of Parliament. There is no difference in intention between myself and the noble Lord on this point. It is merely a question of preserving flexibility in the matter.

Amendment No. 154B brings the wording of subsection (2) into conformity with that of subsection (1) and makes subsection (2) bite on correction of mistakes as well as on correction of errors. This was always our intention. I am grateful to the noble Lord, Lord Lyell, for drawing attention to this defect and I am happy to accept the Amendment. However, I hope that, in the light of what I have said, Amendment No. 154A will not be pressed.

Lord LYELL

My Lords, we are grateful for the acceptance of Amendment No. 154B. We also take note of and accept the assurance of the noble and learned Lord that rules will be written to implement what we had in mind to provide for in Amendment No. 154A. We are all pleased to accept what the noble and learned Lord has said about flexibility and his suggestion that rules may be more easily changed than Acts of Parliament. However, I hope that, when these rules are drawn up and are used by practitioners, patent agents and patentees, the matter will be as clear as is intended. I see motions of assent from the noble and learned Lord and, that being so, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

Lord LYELL moved Amendment No. 154B: Page 89, line 7, at end insert ("or mistake,").

On Question, Amendment agreed to.

Clause 116 [Rules]:

The LORD CHANCELLOR moved Amendment No. 154C: Page 91, line 2, after ("Act") insert (",except so far as the context otherwise requires, "prescribed" means prescribed by rules and").

The noble and learned Lord said: My Lords, with this Amendment, it may be convenient also to consider Amendment No. 156A. These are drafting Amendments and make no difference of substance to the Bill. I believe that they were inspired by a point raised by the noble Lord, Lord Lyell, in Committee. I beg to move.

On Question, Amendment agreed to.

6.38 p.m.

The LORD CHANCELLOR moved Amendment No. 155: Page 91, line 16, at end insert ("and providing for the remission of fees in the prescribed circumstances").

The noble and learned Lord said: My Lords, this Amendment was spoken to by my noble friend Lord Oram when he moved Amendment No. 19. I beg formally to move.

On Question, Amendment agreed to.

Lord LLOYD of KILGERRAN moved Amendment No. 156: Page 91, line 20, at end insert ("anc to appoint advisers to assist in proceedings under sections 38 and 59 and for regulating the functions of such advisers;").

The noble Lord said: My Lords, on an earlier clause—Clause 93—your Lordships heard that the rules of court could make provision for the appoirtment of scientific advisers to assist the Patents Court. There is no indication:hat such a rule will be available to help the Comptroller-General. Clause 116 gives power to the Secretary of State to make rules, for regulating all matters placed by this Act under the direction or control of the comptroller". I am suggesting therefore that there should be a small but helpful Amendment giving powers to the Secretary of State in the rules to appoint advisers to assist the Comptroller-General in prcceedings under Clause 38—that is, the chause that deals with disputes between an employee and an employer—and under Clause 59, a new part of which was introduced by the Government at Report stage and which gives power to the Comptroller- General to deal with infringement actions. It will also regulate the functions of such advisers as the Comptroller. General desires to assist him. I beg to move.

The LORD CHANCELLOR

My Lords, the noble Lord, Lord Lloyd of Kilgerran, has nobly pressed the need for advisers, and I think that in the context about which we are now speakir g there is virtue in providing a rule-making power so that if it is shown to be necessary in the future it would be possible for the comptroller to appoint advisers to assist him. However, we are considering the practical consequences of that suggestion, and if we feel able to accept the proposal we would think it preferable not to identify particular clauses in the Bill, since at this stage it is a little early to identify the matters about which the comptroller might find it desirable to have the help of outside advisers. We will examine the question of whether the practical difficulries of having advisers can be overcome, and, if they can, we will move an Amendment at a later stage. Therefore, although this is not an absolute commitment, I hope in this case to be able to meet the intentions of the noble Lord.

Lord LLOYD of KILGERRAN

My Lords, I am very grateful to the noble and learned Lord for his sympathetic approach to this matter, and in the circumstance of his assurance that the matter will be reconsidered, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

6.42 p.m.

The LORD CHANCELLOR moved Amendment No. 156A: Page 92, line 1, leave out paragraph (k).

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

On Question, Amendment agreed to.

Clause 118 [Extent of invention]:

The LORD CHANCELLOR moved Amendment No. 157:

Page 92, line 34, at end insert— ("(2) It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim. each invention may have a different priority date under section 5 above. (3) The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article.").

The noble and learned Lord said: My Lords, this Amendment introduces into Clause 118 two new subsections, both of which will, I hope, be to the liking of the noble Lords who have spoken to this matter, particularly the noble Lords, Lord Lyell and Lord Belstead, since they moved Amendments to the same effect in Committee. The new subsection (2) will put it beyond doubt that where the claims of a patent or application relate to more than one invention, the various inventions may have different priority dates. This is provided for in Article 88 of the European Patent Convention and it was always our intention to give effect to this provision. Indeed, we thought that we had already given effect to it, and the new subsection will put this beyond a peradventure—to use the language of the lawyers.

Subsection (3) inserts a specific reference to the Protocol on the Interpretation of Article 69 of the European Patent Convention. Your Lordships may remember that when a similar Amendment was moved in Committee I resisted it, not because I was opposed to the policy, but because it seemed to me to be superfluous. Of course it is important that the extent of the protection conferred by a domestic patent should be interpreted in the same way as the extent of protection conferred by a European patent, and for the latter purpose both Article 69 and the Protocol on its Interpretation are relevant.

However, Clause 122(6) states that Clause 118 is framed so as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention… As I have already said, the corresponding provision is Article 69, and the Protocol governs its interpretation. There can be no doubt that the Protocol is an integral part of the Convention because Article 164 of the Convention says so. Therefore Clause 122(6) makes Clause 118 have the same interpretation as Article 69 does when interpreted in the light of the Protocol.

Speaking for myself, I have always found this matter to be as plain as a pikestaff. Therefore, I was rather surprised during the Easter Recess to read a letter in The Times which accused me of circular argument on this point. The letter, while justly praising the "expert and velvet touch" of the noble Lords, Lord Belstead and Lord Lyell—no doubt in contrast to my hamfistedness—gave the impression that they had been battling to extract concessions from an uncooperative Government. Of course, there were difficulties in this highly technical Bill, as is inevitable, but it is a pity that the correspondent was not here at the earlier deliberations from which he would have seen that almost all has been sweetness and honey in the course of our discussions here. However, there it is, and so in order to comfort all those who have had anxiety, I shall put the matter beyond a peradventure by moving the Amend- ment, and I hope that all will now rest in peace on this particular issue. I beg move.

Lord BELSTEAD

My Lords, I wish to thank the noble and learned Lord for moving the Amendment. The new subsection (2) makes it clear that in cases. including divided out cases, each invention may have a different priority date, and I am grateful that this is now to be written into Clause 118. I cannot think where the noble and learned Lord got the impression that my noble friend Lord Lyell and I feel that we are dealing with an unco-operative Government. I would rather have said that we are dealing with a highly susceptible noble and learned Lord, and indeed I am therefore grateful for subsection (2). I should particularly like to thank the noble and learned Lord for this new subsection (3). He made it clear in Committee that it is a moot point as to whether, by virtue of Clause 122(6), it should be assumed that this clause should he taken to have the same meaning as Article 69 and its Protocol. I should like to thank the noble and learned Lord for putting the matter beyond doubt by adding new subsection (3) to the clause.

On Question, Amendment agreed to.

Clause 120 [Existing patents and applications]:

Lord LLOYD of KILGERRAN moved Amendment No. 158:

Page 93, line 35, at end insert— ("(4A) Any patent to which subsection (2) above relates and whose term had not expired on or before the appointed day shall have effect as if the term mentioned therein was twenty years, subject to the following condi-tions—

1. (a) any licence existing at the day on which this subsection comes into operation which has been granted for the term of the patent shall be treated as having been granted for the term as so extended if the licensee so desires;
2. (b) if the patent would apart from this section have expired on or before the day ending the period of 24 months after this subsection comes into operation, the patent shall during the period of the extension be deemed to he subject to the provisions of section 44 above as if an entry had been made in the register to the effect that licences under the patent are to be available as of right.

(4B) Where before the day on which subsection (4A) above comes into operation a person made in good faith effective and serious preparations to do an act which would constitute infringement of a patent by virtue only of the extention under subsection (4A) above, and it appears to the comptrcller having regard to all the circumstances that it would be just to order the grant of a licence to that person, the comptroller shall have power to order the grant to that person of a licence under the patent on such terms as he thinks fit. (4C) The provisions of subsections (4A) and (4B) above shall not apply to any patent whose term was extended under the previsions of section 23 or 24 of the 1949 Act to a term of twenty years or more.").

The noble Lord said: My Lords, this Amendment deals with a difficulty that arises in relation to the term of patents. Under the Bill which we are considering all patents after the appointed day are to have a life of 20 years. This brings United Kingdom jurisprudence into conformity with many other countries. But a problem arises about the terms of patents that have been already granted under the 1949 Act, and some unfairness may arise to present patentees. in circumstances in which the Bill is to be found at present.

I should like briefly to describe the present position in regard to a patentee and the terms of his patent. Patents granted under the present Patents Act of 1949 have a term of 16 years, but applications can be made to the court for further extensions on two grounds. One is under Section 24 of the Act which allows an extension of up to 10 years in respect of war loss which the patentee may have experienced, but that extension is quite irrelevant at the present time, in view of the period of time from the last war. There is a second ground upon which the term of a patent can be extended, and that is by an application to the High Court under Section 23 on the grounds that the invention is of outstanding merit and that the patentee has been inadequately remunerated. This is well known to be a very expensive procedure, usually involving numbers of expert witnesses, and it is rarely invoked in relation to patents; but for patents granted under the 1949 Act this present Bill retains a reference to both Section 23 and Section 24 of the 1949 Patents Act, and that is my excuse for wearying your Lordships with a reference to it.

There is obvious unfairness that may arise. Suppose a person files a patent application just before the appointed day. What will be the term of that patent under the old Act? It will be 16 years plus his rights to have further extensions, according to the present Bill, under Sections 23 and 24 of the old Act, which will be kept in being by the present Bill. The likelihood of their getting an extension under Section 24 is nil. Under Section 23, the chances are that in many cases there will be very considerable difficulty in getting any extension at all; but the Bill says that the patentee should not get more than four years anyway as a result of any application on the ground that he has not been adequately remunerated for his invention. The Amendment which I have the privilege to propose in conjunction with the noble Earl, Lord Halsbury, is to the effect that all patents in existence at the time of the passing of this Bill should be extended to 20 years. It proposes that they should all have 20 years; but, obviously, if one has an overall extension of that kind, there may be some difficulties arising for licensees. It is therefore suggested that a licence which exists at the date at which this new clause extending patents comes into operation and which has been granted for the term of the patent shall be treated as having been granted for the term as so extended if the licensee so desires. This gives an opportunity for the licensee to say, "No, I do not want to continue with this licence; I do not want to continue under its terms". Of course, the terms may or may not involve the payment of royalties and the exchange of technical information.

Then there is another class of person who may find himself in an unfair position, and that class is dealt with under paragraph (b) of my Amendment. Where a patent would have expired, apart from this provision, during the period of two years after the subsection comes into operation, the patent shall during the period of the extension be deemed to be subject to the provisions of", the Act dealing with licences of right. That is to say, if there is this extension then, for a period of two years before the end of the term of the extension, somebody can apply to the Comptroller-General or to the court for a licence of right. There will be a further relief, of course, under my proposed Amendment, by the addition of subsection (4B). It applies where a person. in good faith. has been doing some research work and can establish that he was hoping to be free to market his invention during the period for which the patent has been extended; that he had been hoping that the patent would expire and, therefore, that he would be free from being sued, probably, for infringement. If he has acted in good faith, he can go to the comptroller and say, in effect, "I have been operating in this way; it is only just that I should have a licence under the patent".

So that, if I may use an expression referred to earlier in this Report stage by the noble and learned Lord, my submissions are characterised by limpid clarity, perhaps I may ask the leave of the House to refer to Amendments Nos. 165, 166 and 167, which are consequential, and to No. 169B, which is a rather lengthy Amendment. The only effect of that latter Amendment is to remove any necessity for keeping in being Sections 23, 24 and 25 of the 1949 Act, to which I have referred, relating to the extension of terms of patents under the reasons of war loss and inadequacy of remuneration. May I also, with the leave of the House, refer to Amendments Nos. 170 and 172.

My Lords, the extension of the terms of patents has very important industrial and commercial implications to many manufacturers in this country. Some industries, of course, are not concerned with patents being extended at all because the technology in their industry moves so fast that, once the term of a patent is extended up to about seven years, there are new inventions and, therefore, they are not concerned with long periods for the terms of patents. But, particularly in the chemical industry and in the pharmaceutical industry, it is often seven, eight or nine years before a patentee can get any remuneration in respect of his invention. It is particularly hard, in my view, for the pharmaceutical industry, because nowadays they have to subject their inventions to so many tests to see whether there are any side effects in relation to the drugs which are the subject of these patents that it is sometimes as much as ten years before a pharmaceutical patent can bring any return. With that no doubt inadequate explanation, I beg to move.

The Earl of HALSBURY

My Lords, I find myself in some difficulty in supporting the noble Lord, Lord Lloyd of Kilgerran, because, if I may have the permission of the House to refer to the Government Amendment No. 167B, that seems to collide with our one. If I may project myself forward, if we made the Amendment standing in the name of the noble Lord and myself we might perhaps be in collision with Amendment No. 167B when it is put forward on behalf of the Government. I feel that the only responsible action I can take at the moment is to say that I received the Government Amendment only after lunch today and that I have not had time to study it and collate it with the Amendment standing in the name of myself and the noble Lord. I therefore think that the right course of action at this stage would be to reserve my position until Third Reading, and to say that I shall not, for my own part, press the list of Amendments which the noble Lord, Lord Lloyd of Kilgerran, read out; nor shall I raise my voice against the Government Amendment when the voices are collected.

I have, in addition, some ideas of what I might think on Third Reading. I believe that the Government Amendment, if I may refer to it, proposing a sort of five-year stay of execution, provides for too long a period. My original idea was to reduce this to two years, but over the weekend I had a very interesting suggestion from a chartered patent agent in the chemical industry. The suggestion, as a compromise, is that patents with a year or less to run should be given no extension; patents with between two years and one year to run should be given a year's extension; those with between three and two years, two years' extension; those with between four and three years, three years' extension; and then, those with five or more would get the full four years' extension. This would significantly reduce the number of the disgruntled and the degree of their disgruntlement, and I should like to see as many as possible inventors "gruntled", if I may put it in that way. With those remarks, my Lords, I would not seek to press these Amendments this afternoon.

7 p.m.

The LORD CHANCELLOR

My Lords, this Amendment in substance repeats an Amendment which was moved in Committee by the noble Earl, Lord Halsbury, and the noble Lord, Lord Lloyd of Kilgerran. At that time, I outlined proposals for a Government Amendment which would have broadly similar effects to that earlier Amendment. Its proposals, as the noble Earl, Lord Halsbury, has just said, now appear as Amendment No. 167B which we have not yet reached. In view of certain industrial difficulties, it appears now as a supplement to the second Marshalled List. That could not have eased the task of the noble Earl. I understand that he is holding his hand, so to speak, without prejudice at this stage and will return to the matter after we have considered Amendment No. 167B and perhaps in the light of what I am about to say.

The present Amendment and the Government Amendment No. 167B really differ in only one fundamental respect; that is, that the present Amendment would increase the term of all existing patents granted under the 1949 Act to 20 years. The Government Amendment would confine that privilege to patents which have more than five years of their 16-year term to run. That aspect of the Government's proposals was, I appreciate, criticised in Committee and your Lordships will remember that the five year cut-off period was referred to as "magic" and a good deal of what the noble Earl has called "disgruntlement" was forecast as a result of this operation.

I ventured to say then that what the Government proposed was the result of consultations with the Standing Advisory Committee on Patents whose members, after all, are drawn from bodies representative of industry and the legal and patent professions, and I hope that I may be forgiven for emphasising that fact now. I might also add that if users of the patent system and its practitioners are broadly agreed on what should be done for existing patents, that alone ought to be substantial justification, I submit, of Government Amendment No. 167B.

Perhaps I may be permitted to make two other points which I think are substantial. First, the policy to be adopted should have regard to the interests not only of patentees but also of non-patentees desirous of working inventions after the relevant patents have expired: and it is to safeguard the position of the latter that it is proposed that the term of "old" existing patents should remain at 16 years. Otherwise, non-patentees who have already made plans to use the inventions of such patents in the reasonable expectation that they would expire at the end of their 16-year term might experience great difficulty if they were suddently faced with the fact that the term of those patents was to be increased to 20 years.

Secondly, it has been said that the five-year cut-off point will be unfair to patentees who find themselves just on the wrong side of that point; and in the event of that interesting suggestion that the noble Earl, Lord Halsbury, has made of grading down the cut-off periods, at each point there will be somebody who would find himself arbitrarily and unluckily on the wrong side of the line. Unfortunately, you can always fault a cut-off point in that way. But some such point is almost unavoidable in changing from one set of rules to another; and if all existing patents were to be given a 20-year term, the unfairness or hardship would not be eliminated but merely transferred to a new point in time—and two or three have been suggested—in that case the date on which the new Act comes into operation.

My Lords, I hope that in the light of what I have said and in the light of the provisions of the Government Amendment which, to some extent, we are discussing now, noble Lords may feel that we have dealt with the substance of matters that were raised earlier.

Lord BELSTEAD

My Lords, may I say a few words about the Amendment of the noble Lord, Lord Lloyd of Kilgerran, and the noble Earl, Lord Halsbury, and the Government Amendment No. 167B, which we may be allowed to discuss at the same time: and make it clear that my noble friend Lord Lyell and I should like to support the intention of the noble Lord, Lord Lloyd of Kilgerran, and the noble Earl, Lord Halsbury, in their Amendment.

I am sure that, with one important proviso—and it is the proviso referred to by the noble and learned Lord when he mentioned non-patentees—it is inequitable to enable new patentees immediately after the appointed day to have as of right a term of 20 years, and old patentees, because they happen to fall before the appointed day, to have only 16 years and no more. I think that the noble Lord, Lord Lloyd of Kilgerran, has explained clearly this unfairness. He gave us the illustration of the chemical and pharmaceutical patents. I think it is fair to remember that it was a recommendation of Banks that there would be a 20-year term for all patents.

When one comes to the proviso that something must he done to protect the interests of the non-patentees, as the noble and learned Lord has said, I venture to suggest that there may be a defect in the Amendment of the noble Lord, Lord Lloyd of Kilgerran, and the noble Earl, Lord Halsbury, in that although new paragraph (a) of subsection (4A) allows for existing licensees to extend their licences for old patents to 20 years, and although new paragraph (b) of subsection (4A) provides that old patents in their last two years shall be deemed to allow licences as of right, the licences mentioned in both new paragraphs have to be paid for. The licensees will go on paying royalties and they will be paying royalties in a period during which, as the noble and learned Lord said, those people would have expected, before this Bill was thought of, that they would not have to be getting licences and paying royalties at all.

I wonder whether the noble Earl and the noble Lord, Lord Lloyd of Kilgerran, in considering what they may be doing with their Amendment, would give some thought to whether there is anything in what I have just said with regard to royalty-free licences during the extended period. Then, on the other hand, I feel that the Government this evening would like us to accept their Amendment, and I am afraid that my noble friends and I cannot do this. I hope that the noble and learned Lord will not think I am being discourteous when I say I also received the Amendment at a rather late stage, and perhaps the Government will forgive me if I have got it all wrong. But as I read it, it seems to me that the defect of the Amendment is that the right to extend an old patent is not going to be as of right; it is going to depend on Section 23 of the 1949 Act, for Section 24 no longer has any effect.

The noble and learned Lord referred to the Standing Advisory Committee. I was not quite sure that I heard him aright; but I understood him to say that the Government Amendment was in line with what the Standing Advisory Committee would wish. I am surprised to hear that the Standing Advisory Committee would wish the extension of old patents, at whatever stage, to depend entirely upon having to prove their case under Section 23 of the 1949 Act. I do not think that that is my view, as of this evening, anyway. For that reason alone—because I feel and I think that many of my noble friends feel that to have to prove their case under Section 23 is not what we are after at all with respect to old patents—if the Government will forgive us, we shall not support the writing of this Amendment into the Bill this evening.

Lord LLOYD of KILGERRAN

My Lords, I am grateful for the support, in principle at least, to most of the Amendment which I have moved. I agree that the position of the licensee who finds that the patent has been extended is a matter for further consideration. As I have indicated, the licence may not involve payment of royalties, but it is for consideration whether the term of extension of the patent under the Amendment I have proposed should be such as to allow the licensee to continue with the patent but on a royalty-free basis.

The noble and learned Lord explained very clearly the position of the Government. Naturally it is very difficult to decide what is equitable in relation to the terms of the patents. It is a difficult matter. In some other fields it has even been suggested that some matters are only as long as the Lord Chancellor's foot; but in the present case from industry to industry, the consideration as to what should be the term of the patent will differ very considerably. As I have endeavoured to emphasise, the position of the chemical industry and the pharmaceutical industry deserves very careful consideration by the Government.

Like the noble Lord, Lord Belstead, I received the Government Amendment only today. I find the same difficulties about that proposed Amendment by the Government as does the noble Lord, Lord Belstead. As at present advised, I also feel that I could not support the Government Amendment. In view of the fact that there will be further discussions in regard to the extension of terms of the patent under the Government's Amendment, I beg leave to withdraw the present series of Amendments which I proposed, but reserve the position that I may take up the matter at Third Reading.

The Earl of HALSBURY

My Lords, in concurring with the noble Lord. Lord Lloyd of Kilgerran, I want to say something about the question of fairness and hardship. The licensee is entirely parasitic upon the inventor. If all the world's licensees were laid end to end, if you had the Witch of Endor herself to pronounce the invocation, she could not raise the ghost of an invention from one of them.

In industry people are ambivalent—and this probably goes for the Standing Advisory Committee—because in industry people are both inventors and licensees; they cross-license one another t. nder their inventions. I do not think it unfair that when justice, at long last, is being done to the inventor—and I am now spec- king as an inventor in the chemical industry, metallurgy, electronics and a number of fields in which I have had patents which have earned money for my employers—I do not see that it is unjust that somebody should pay the fair price at last when he has in a sense been getting it too cheap for too long. For this reason, I wish to see inventors properly rewarded, ard I hope that we shall see them doing so at a later stage in the Bill.

Amendment, by leave, withdrawn.

The LORD CHANCELLOR moved Amendment No. 158A: After Clause 120, insert the following new clause:

Priorities between patents and applications under 1949 Act and this Act.

(" —(1) The following provisions of this section shall have effect for the purpose of resolving questions of priority arising between patents and applications for patents under the 1949 Act and patents and applications for patents under this Act.

(2) A complete specification under the 1949 Act shall be treated for the purposes of sections 2(3) and 5(2) above—

1. (a) if published under that Act, as published application for a patent under this Act;
2. (b) if it has a date of filing under that Act, as an application for a patent under this Act which has a date of filing under this Act;

and in the said section 2(3), as it applies by virtue of this subsection in relation to any such specification, the words "both as filed and" shall be omitted.

(3) In section 8(1), (2) and (4) of the 1949 Act (search for anticipation by prior claim) the references to any claim of a complete specification, other than the applicant's, published and filed as mentioned in section 8(1) shall include references to any claim contained in an application made and published under this Act or in the specification of a patent granted under this Act, being a claim in respect of an invention having a priority date earlier than the date of filing the complete specification under the 1949 Act.

(4) In section 32(1)(a) of the 1949 Act (which specifies, as one of the grounds of revoking a patent, that the invention was claimed in a valid claim of earlier priority date contained in the complete specification of another patent), the reference to such a claim shall include a reference to a claim contained in the specification of a patent granted under this Act (a new claim) which satisfies the following conditions:—

1. (a) the new claim must be in respect of an invention having an earlier priority date than that of the relevant claim of the complete specification of the patent sought to be revoked; and
2. (b) the patent containing the new claim must be wholly valid or be valid in those respects which have a bearing on that relevant claim.

(5) For the purposes of this section and the provisions of the 1949 Act mentioned in this section the date of filing an application for a patent under that Act and the priority date of a claim of a complete specification under that Act shall be determined in accordance with the provisions of that Act, and the priority date of an invention which is the subject of a patent or application for a patent under this Act shall be determined in accordance with the provisions of this Act.")

The noble and learned Lord said: My Lords, this is an important but I regret to say highly technical Amendment to the Bill which I shall endeavour to explain in simple terms though I am aware there are underlying complexities arising from the differing concepts of priority and validity in the Bill as compared with the 1949 Act. I believe that the noble Lord, Lord Cawley, mentioned this at an earlier stage in our deliberations.

Briefly, the Amendment makes provision for resolving two situations: first, where an application for a patent is filed under the Bill while there is pending an application under the 1949 Act for the same invention but which has not yet been granted; and, secondly, the reverse situation, where a Bill application is filed having an earlier priority date than a 1949 Act application. The principle adopted is that where the Bill application was a later priority date than the 1949 Act application, the latter shall be treated for the purposes of the "whole contents" provision of Clause 2(3) as if it had been filed under the Bill. Conversely, where it is the Bill application which has the earlier priority, its claims shall be effective against the claims of the 1949 Act application in the "claim-against-claim" provisions of Sections 8 and 32 of the 1949 Act.

Perhaps it is now apparent that building the necessary bridge between the Bill and the 1949 Act in order to resolve conflicts in which the contestants lie on different sides of the frontier is no simple business. The Amendment has, however, been carefully framed so that an applicant (or patentee) under the Bill can only be defeated according to the rules of the Bill, and an applicant (or patentee) under the 1949 Act can only be defeated according to the rules of that Act. I therefore commend the Amendment as providing as much justice as is possible in a technically different situation.

My Lords, this is of very high technicality. I hope that a later reading of what I have brutally and frankly read out will be of assistance to your Lordships. I beg to move.

On Question, Amendment agreed to.

Clause 122 [Interpretation]:

7.18 p.m.

The Earl of HALSBURY moved Amendment No. 159:

Page 94, line 20, at end insert— (" "computer program" means one or more recorded symbols or signals representing a sequence of instructions which is capable of causing a computer to perform a useful function;")

The noble Earl said: My Lords, this Amendment merely resuscitates the Amendment which the noble Lord, Lord lronside, and I moved in Committee and withdrew in order to give the Government spokesman the opportunity to think about it again. The industry is extremely anxious that the words "computer program" as used in the Bill, meaning something one cannot get a patent on should be defined in such a way that they can lead to no misunderstanding as to what they mean. I am afraid that I am repeating what I said in Committee, but I think that it is important to say it again.

A computer is a device which carries out a series of mathematical or logical operations in sequence. The essence of a computer is the sequentiality of the operations it performs. This can be achieved in two ways: a piece of hardware can he designed, something you can pick up like a clock or an inkwell, my Lords, a physical object which you can hold in your hand which can he the subject of design in a drawing office; something which is manufactured; something which has all soils of ingenious tricks and gadgetry which enables an operator to carry out these sequential operations; or, my Lords, you can have what is called a "software program" which is originally simply written on a piece of foolscap manuscript. It is handed to a girl who has a keyboard instrument in from of her and, exactly as if she was typing it out, she works the keyboard with her fingers. From the inside of the keyboard emerges a long strip of tape or punched cards with holes in them. This is called the "software". This is presented to the computer input section which proceeds to carry out its sequential function.

Any given program can be accomplished in either of these two ways. It is simply a matter of convenience and cost. It is extremely important that, as the word "program is used ambiguously in technology, it should be used unambiguously in courts of law. To leave it ambiguous as the Bill now does means that sooner or later some judicial pronouncement has to he made on what is a purely technological matter. I believe that it is the right course—and I know that the industry wants this very much—that we should insert a proper definition of what we mean by "computer program" when we exclude it from the field of what is patentable. I beg to move.

The LORD CHANCELLOR

My Lords, we discussed this matter in Committee when an identical Amendment was moved. I have a good deal of sympathy with the underlying intention. As I understand it, the intention is to make it quite clear that the exclusion of "computer program in Clause 1 (2) (e) is not to bite on what is called computer "hardware". The noble Lord, Lord Ironside, conceded during the discussion of the Amendment in Committee that the regrouping of "a computer program" in Clause 1(2) with, a scheme, rule or method for performing a mental act, playing a game or doing business", went at any rate some way towards meeting his point.

We have aligned ourselves with the European Patent Convention so that "computer program" must be construed as ejusdern generis, as it were, with the other things mentioned. Perhaps I might say to the noble Earl that curing the negotiations on the European Patent Convention the United Kingdom endeavoured to get a definition of "computer program" inserted into the Convention. Unfortunately, as the noble Earl will realise, we were outvoted, the majority taking the view that the meaning of "computer program" was a matter best left to jurisprudence—a proposition which clearly gives no comfort to the noble Earl. However, it is not the intention of the EPC, I understand, to exclude compute "hardware" from patentability. I said earlier that I would look again at this matter, but I ventured to warn your Lordships that I thought the Amendment we had already made to Clause I was probably as far as we could to. I am afraid that, having reconsidered the Amend-men t, I must again resist it.

In attempting an exhaustive definition of "computer program"—and I fully appreciate the purpose of so doing—I believe that the noble Lords would be introducing a departure from the Convention which could give rise to the possibility of duality of standards as to patentability between, on the one hand, the Convention and, on the other, the Bill. That is a situation which, to say the least, would be highly undesirable and which we have so far striven to avoid. Accordingly, I hope that, in the circumstances I have outlined, the noble Earl will once again withdraw his Amendment.

The Earl of HALSBURY

My Lords, in view of the manner in which the noble and learned Lord has asked me to do this with his usual courtesy, I can only say that I have done my best to get this through but feel I must be bound by h s advice. Therefore, I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

7.23 p.m.

The LORD CHANCELLOR moved Amendment No. 159A: Page 95, line 31, after ("licensee" ") insert ("and "non-exclusive licence" ").

The noble and learned Lord said: My Lords, this is a paving Amendment for the Amendment to Schedule 1, No. 167B, and I hope I shall be permitted to explain it when we reach that hurdle. I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 160: Page 96, line 11, at end insert ("or for the purpose of conducting proceedings in connection with such patents before the comptroller").

The noble and learned Lord said: My Lords, this Amendment was spoken to by my noble and learned friend Lord McCluskey when he dealt with Amendment No. 132, which was approved. I beg to move.

On Question, Amendment agreed to.

7.24 p.m.

Lord LYELL moved Amendment No. 160A: Page 96, line 26, after ("and") insert ("without prejudice to the generality of the foregoing,")

The noble Lord said: My Lords, this Amendment is very much the same as one which I moved in Committee. My reason for moving that Amendment was to try to find out why the words which this Amendment seeks to insert into the Bill have been omitted from the interpretation of the word "published" because the words, without prejudice to the generality of the foregoing", are included in the interpretation of the word "published" in Section 101 of the 1949 Act.

The problem presented by the omission of the words we are seeking to have inserted into the Bill is presumably that this clause is a kind of "code", to which those who are practising and interpreting patent law will have regard. It would seem that this definition of the word "published" will therefore be used as a definition of when a document shall be taken to have been published. It seems to us that if the words, without prejudice to the generality of the foregoing",

have been cut out of this definition, as compared with the 1949 Act, there must be a reason. We fear that without those words a document will not be taken to have been published unless it can be inspected as of right somewhere in the United Kingdom. We are quite clear that that cannot be the intention, because Clause 2(2) refers to the state of the art as comprising matter which has been made available, to the public (whether in the United Kingdom or elsewhere) here)". Therefore, that might be a small hook upon which to hang this argument. At the previous stage, the noble and learned Lord the Lord Chancellor said that the purpose of the Amendment was not entirely clear to him. I hope that my explanation tonight is a little clearer than my earlier one at Committee stage. I beg to move.

The LORD CHANCELLOR

My Lords, it is the case that in Committee I agreed to look again at the points made by the noble Lord, Lord Lyell, on an Amendment which was identical to the present one. I have done so, and I hope that the following explanation will be sufficient to show why the words which this Amendment seeks to insert were included in Section 101 of the 1949 Act but are not included in the corresponding provision in the Bill. "Published" in the 1949 Act is roughly the equivalent of "made available" in Clause 2(2) of the Bill. In the Bill the term "published" is used in a different sense. It refers to "official" publication of an application which is potentially going to be a patent effective in the United Kingdom; that is to say, publication by the comptroller or publication under one of the Conventions, which is treated as publication by the comptroller. So to insert the words proposed by the Amendment would have a damaging effect.

The definition of "published" in Clause 118(1) has two legs. The first relates to making available in the United Kingdom or elsewhere; the second is concerned with documents and says that documents are published when they can be inspected as of right in, but only in, the United Kingdom.

The Amendment would subject the second leg to the first, if that is not a mixed metaphor, and so have an undesired effect in that publication under Clauses 14 and Clause 122(4) would not need to be in the United Kingdom. It would mean, I am advised, that if the comptroller wanted to—though of course he would not—he could "publish" United Kingdom applications for the purposes of Clause 14 and, hence, of Clause 2(3) by making them available to the public in Omsk, Minsk and Tomsk, although I concede that such a course is highly unlikely.

I hope, in the light of this somewhat complex explanation, that the noble Lord will withdraw his Amendment.

Lord LYELL

My Lords, in the absence of other noble Lords wishing to speak, may I say that I probably deserved all I got in the complicated but very clear answer from the noble and learned Lord. I have taken in about nine-tenths of what he said. I think he will agree that he gave a very complex answer to what I unashamedly read out as a complex question. I do not wish to delay the House in any further debate, and I am grateful to the noble and learned Lord. I will study his remarks later—I will not say at leisure —and beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

7.31 p.m.

The LORD CHANCELLOR moved Amendment No. 161: Page 96, leave out lines 41 to 43 and insert (" "services of the Crown" and "use for the services of the Crown" have the meanings assigned to them by section 54(3) above, including, as respects any period of emergency within the meaning of section 57 above, the meanings assigned to them by the said section 57").

The noble and learned Lord said: My Lords, this Amendment does two things: first, it deletes from Clause 122(1) the definition of the expression "Union of Paris", since Government Amendment No. 80 has deleted the only use of the expression in the Bill, no doubt to the delight of everyone concerned; secondly, it adds definitions of the expressions "services of the Crown" and "use for the services of the Crown", drafted so as to cover the use of those terms both in the "normal" Crown use provisions of the Bill (Clause 53 to 56), and in the special provisions as to Crown use during an emergency (Clause 57). My Lords, I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 162:

Page 97, line 4, at end insert— ("(2A) For the purposes of this Act matter shall be taken to have been disclosed in any relevant application within the meaning of section 5 above or in the specification of a patent if it was either claimed of disclosed (otherwise than by way of disclaimer or acknowledgment of prior art) in that application or specification.").

The noble and learned Lord said: My Lords, this Amendment was foreshadowed by Amendment No. 9, the effect of which was the deletion of subsection (5) of Clause 5. The purpose of that Amendment and the present one is to ensure that the term "matter", as used in relation to what is disclosed in a patent or patent application, shall have the same meaning throughout the Bill. This is a question of some importance, since the term "matter" is used in such key clauses of the Bill as Clause 5 on priority, Clause 70 or revocation and Clause 74 on amendments of applications and patents. My Lords, I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 163: Page 97, line 31, leave out second ("4") and insert ("5").

The noble and learned Lord said: My Lords, this is another Amendment which I am pleased to move, because it gives effect to the wish expressed by the noble Lords, Lord Lyell, Lord Belstead and Lord Cawley, during the Committee stage for the inclusion of a reference to Clause 5 of the Bill in Clause 122(6). The arguments for and against the inclusion of such a reference are finely balanced, but having given the matter further consideration the Government have decided that the advantage favours the reference, in the expectation that the priority provisions of the European Paten.: Convention will have the same effect in proceedings before the European Patent Office and the courts of other Con. racting States as the priority provisions of Clause 5 will have here. My Lords, I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 164: Page 97, line 31, after ("(6)") insert ("35(5),52").

The noble and learned Lord said: My Lords, the addition of Clauses 35(5) and 52 to the list in Clause 122(6) of clauses of the Bill framed to have the same effect as corresponding provisions of the Community Patent Convention and other Patent Conventions is made necessary by Amendments which have already been made. As a result of Amendment No. 112 to Clause 70, the conditions of revocation of a patent, on the ground that it was granted to an unentitled person, have been aligned with the CPC. It follows that a reference to Clause 35(5), relating to the transfer of ownership of a patent granted to an unentitled person, is now appropriate in Clause 122(6).

As far as Clause 52 is concerned, this provides the possibility of extending to non-Member States the compulsory licence provisions of Articles 47 and 82 of the Community Patent Convention. However, the clause has been redrafted in such a way that it no longer refers to the CPC. A reference to the clause is therefore needed in Clause 122(6), in the interest of uniformity between Clause 52 and the corresponding provisions of the CPC. My Lords, I beg to move.

On Question, Amendment agreed to.

Clause 123 [Northern Ireland]:

7.36 p.m.

The LORD CHANCELLOR moved Amendment 164A:

Page 98, line 6, at end insert— ("(cc) any reference to the Companies Act 1948 includes a reference to the corresponding enactments in force in Northern Ireland; and").

The noble and learned Lord said: My Lords, this is a purely drafting Amendment needed primarily for Clause 85(3). My Lords, I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 164B: Page 98, line 11, leave out ("alone").

The noble and learned Lord said: My Lords, this is another drafting Amendment in relation to Northern Ireland, and it was suggested by the Northern Ireland Office. My Lords, I beg to move.

On Question, Amendment agreed to.

Schedule 1 [Application of 1949 Act]:

The LORD CHANCELLOR moved Amendment No. 167B:

Page 99, line 29, leave out paragraphs 3 and 4 and insert— ("3.—(1) This paragraph and paragraph 4 below shall have effect with respect to the duration of existing patents after the appointed day, and in those paragraphs—

1. (a) "old existing patent" means an existing patent the date of which fell eleven years or more before the appointed day and also any patent of addition where the patent for the main invention is, or was at any time, an old existing patent by virtue of the foregoing provision;
2. (b) "new existing patent" means any existing patent not falling within paragraph (a) above; and
3. (c) any reference to the date of a patent shall, in relation to a patent of addition, be construed as a reference to the date of the patent for the main invention.

(2) Sections 23 to 25 of the 1949 Act (extension of patents on grounds of inadequate remuneration and war loss) shall not apply to a new existing patent.

(3) The period for which the term of an old existing patent may be extended under sections 23 or 24 of that Act shall not exceed in the aggregate four years, except where an application for an order under the relevant section has been made before the appointed day and has not been disposed of before that day.

(4) Accordingly the following words in the 1949 Act shall cease to have effect except as respects any such application, that is to say—

1. (a) in section 23(1), the words from "(not exceeding" to "ten years)";
2. (b) in section 24(1), the words "(not exceeding ten years)"; and
3. (c) in section 24(7), the words from "but" to the end.

4.—(1) The term of every new existing patent under section 22(3) of the 1949 Act shall be twenty instead of sixteen years from the date of the patent, but—

1. (a) the foregoing provision shall have effect subject to subsections (4) and (5) of that section; and
2. (b) on and after the end of the sixteenth year from that date a patent shall not be renewed under the said subsections (4) and (5) and an application shall not be made under section 26 above for its restoration except by or with the consent of the proprietor of the patent.

(2) Where the term of a new existing patent is extended by this paragraph—

1. (a) any licence in force under the patent from immediately before the appointed day until the end of the sixteenth year from the date of the patent shall continue in force so long as the patent remains in force, but, if it is an exclusive licence, it shall be treated as a non-exclusive licence;
2. (b) notwithstanding the terms of the licence, the licensee shall not be required to make any payment to the proprietor for working the invention in question after the end of that year;
3. (c) every such patent shall after the end of that year be treated as endorsed under section 35 of the 1949 Act (licences of right).

(3) Where the term of a new existing patent is extended by this paragraph—

1. (a) any use by any Government department or any person authorised by a Government department of the invention in question for the services of the Crown which was made before the appointed day and continues to be made until the end of the sixteenth year from the date of the patent may continue to be made so long as the patent remains in force;
2. (b) notwithstanding any terms for such use agreed on or determined before the appointed day, the use of the invention after the end of that year may be made free of any payment to the proprietor of the patent.

(4) Without prejudice to any rule of law about the frustration of contracts, where any person suffers loss or is subjected to liability by reason of the extension of the term of a patent by this section, the court may on the application of that person determine how and by whom the loss or liability is to be borne and make such order as it thinks fit to give effect to the determination.

(5) No order shall be made on an application under subsection (4) above which has the effect of imposing a liability on any person other than the applicant unless notification of the application is given to that person.").

The noble and learned Lord said: My Lords, this is a very important Amendment, and we have already dealt with some aspects of it in earlier discussions. It gives effect to the Government's proposals on the term of existing patents which, as I have already said, I outlined during the debate in Committee on the Amendment which was then moved by the noble Lord, Lord Lloyd of Kilgerran, and which was today moved as Amendment No. 158. As the House will have noticed, the Amendment does three principal things. First, the term of "old existing patents"—those having five or fewer years of their term to run—remains at 16 years; secondly, the term of all other existing patents—"new existing patents"—is increased from 16 to 20 years, subject to safeguards to protect the positions of the Crown, of licensees and of others who wish to work such patents during the increased term; and, thirdly, the provisions for the extension of patents on the grounds of inadequate remuneration or war loss (Sections 23 to 25 of the 1949 Act) are abolished, except as far as "old existing patents" are concerned, but the term of such patents may not be extended by more than four years.

The Amendment also makes some detailed provisions of a technical nature and, more importantly, allows anyone who suffers a loss or is subjected to a liability by reason of the increased term of new existing patents to apply to the court, which may determine how and by whom the loss or liability is to be borne. I think it would be right to say, as I said when we were discussing Amendment No. 158, that this Amendment is controversial in one major respect only; that is to say, the restriction of the increased term of 20 years to patents having more than five years to run.

In the earlier discussion the noble Earl, Lord Halsbury, suggested that under the Bill existing patents, depending on their age, should have a term worked out on a sliding scale. I am advised; that this suggestion has already been considered fully and rejected as too complicated and too difficult to administer. It was put forward some time ago by the Chartered Institute of Patent Agents, and I understand it is not being pressed by them now.

One other point arose in the earlier discussion. I referred to the views of the Standing Advisory Committee, and I am advised that Amendment No. 167B is in accordance with the policy that was approved by the committee. I think it was the noble Lord, Lord Belstead, who raised this point. Paragraph 4(1) extends the term of every new existing patent to 20 years. Section 23 of the 1949 Act is relevant only to old existing patents. We have discussed this matter now at some length, and I beg to move.

Lord LYELL

My Lords, at an earlier stage this evening my noble friend Lord Belstead, who is no longer with us as he has a prior appointment, expressed strong dissatisfaction on one—

The LORD CHANCELLOR

My Lords, will the noble Lord forgive me. I notice that Amendment No. 167C is an Amendment to Amendment No. I67B, which perhaps I should have called at an earlier point.

7.42 p.m.

Lord LLOYD of KILGERRAN moved manuscript Amendment No. 167C as an Amendment to Amendment No. 167B: Page 3 of the Supplementary Marshalled List, paragraph 4, in line 4 of sub-paragraph (4) after ("court") insert ("or the comptroller").

The noble Lord said: My Lords, it may be helpful if I move the manuscript Amendment which has already been referred to by the noble and learned Lord the Lord Chancellor. In sub-paragraph (4) of the Government Amendment, it is stated that where a loss is suffered by some person or other arising from the conditions of this proposed Amendment, this person can go to the court to have the position considered. My manuscript Amendment enables this person to go either to the court or to the Comptroller-General of Patents. Therefore my Amendment inserts in sub-paragraph (4) the words "or the comptroller" after the word "court". Again this is in keeping with the general line I have been taking, that people should have the opportunity to go to a tribunal which is less expensive than the High Court, and I beg to move the Amendment. By way of explanation, may I say why the manuscript Amendment comes in at this stage. I received the Government Amendment just before lunch. Immediately I went to the appropriate quarters to seek advice as to whether I could add this small but quite important Amendment.

The LORD CHANCELLOR

My Lords, I find myself in the same difficulty from the point of view of time as the noble Lord who has just spoken. However, I am advised that paragraph 4(4) of the proposed new clause is intended as a general safeguard that is needed in case of unforeseen hardship occasioned by the extension to 20 years of the term of new existing patents. If cases arise, it is likely that they will involve issues which would be better dealt with by the court, with its all round legal expertise, than by the comptroller. I am advised that this point was considered by the Standing Advisory Committee during consultations on the term of existing patents. Its advice was that questions concerning loss or liability should be a matter for the court alone. In the light of that reasoning by the committee and my explanation of it, perhaps the noble Lord will reconsider his manuscript Amendment.

Lord LLOYD of KILGERRAN

My Lords, I am very much obliged to the noble and learned Lord. I will read tomorrow in Hansard what he has said. Therefore I reserve my position, but at this stage I beg leave to withdraw the Amendment.

Amendment to the Amendment, by leave, withdrawn.

The LORD CHANCELLOR

My Lords, now we revert to Amendment No. 167B.

Lord LYELL

My Lords, I was apologising for the absence of my noble friend Lord Belstead who moved this Amendment at an earlier stage. I mean no discourtesy either to the noble and learned Lord or to the Government, but I, too, first saw the second list of Amendments this morning, although possibly a litttle earlier than some other noble Lords. I believe that there was great merit in what my noble friend Lord Belstead had to say. Possibly the extension of existing patents, be they new or old, should be allowed but, as my noble friend said, only as a result of Sections 23 and 24 of the 1949 Act. As my noble friend Lord Belstead pointed out, and as I think more expert minds in this field have been able to point out to us, the cases in which Section 23 could be used nowadays are somewhat limited. Indeed, I understand that the cases in which extensions have been granted have been relatively few, although they are possibly quite numerous in one or two sectors of industry.

The noble and learned Lord referred to paragraph 4(4), which he thought might provide a suitable safeguard against possible or prospective loss as a result of the cut-off date for new and old patents operating somewhat inequitably. We shall have to read very carefully what the noble and learned Lord has said. However, may I ask him whether it is entirely reasonable that we should accept this evening what I believe, and what I think the House will believe, is a major change in the definition of patents and, indeed, a very important change to this part of the Bill, particularly in view of what has been said by the noble Lord, Lord Lloyd of Kilgerran, and the noble Earl, Lord Halsbury? Certainly my noble friend Lord Belstead and I are of the opinion that there is very considerable merit in both of these Amendments, one of which has been moved by the noble and learned Lord and the other by the noble Lord, Lord Lloyd of Kilgerran, and the noble Earl, Lord Halsbury.

We wonder whether it might be possible at this late stage to achieve what one might call a compromise. We believe that there are very serious issues, particularly in relation to sub-paragraph (3) of paragraph 3. That said, I reserve my position in order to hear what the noble Lord, Lord Lloyd of Kilgerran, and the noble Earl, Lord Halsbury, have to say, unless it is that they have nothing further to add since they have already spoken to Amendment No. 158. I should not be able to recommend my colleagues to accept the Government's Amendment at this stage tonight, particularly in view of the somewhat short notice that the House has had on what I am sure the noble and learned Lord will accept is a highly technical and very important piece of legislation.

The LORD CHANCELLOR

My Lords, with the leave of the House I should like just to say that this is a difficult part of the Bill; points of substance have been raised and I wonder whether noble Lords would be content to allow the Amendment to go forward in its present form with my undertaking that we will look at the points that have been raised in relation to it between now and the Third Reading of the Bill. I should be very happy to do that because I appreciate, first, the lateness of delivery of the Amendment, and also the points that have been raised.

Lord LYELL

My Lords, with the leave of the House, I should be grateful for that and indeed I believe that would be the wise course to adopt. I should like to raise one humble reservation. We have heard it said before, during the Committee stage, that the noble and learned Lord and his colleagues would look at items, and I hope that we on our side have not been too repetitive in this Report stage because in several cases, which we must not enumerate. verbal assurances have been given that a point would be looked at and, owing to pressure of new Amendments, to our knowledge no written evidence has been produced that the point has been looked at, whether satisfactorily or not. However, I accept that the noble and learned Lord, and his colleagues, will look at this matter as a question of priority, and with that assurance, which has been so charmingly given by the noble and learned Lord, I would have no further opposition to the Amendment going through as it stands tonight.

Lord LLOYD of KILGERRAN

My Lords, I should like briefly to support the noble Lord, Lord Lyell, in this matter. I understand the noble and learned Lord has said that he will reconsider the matters that have been raised under Amendment No. 158 which I withdrew, and in those circumstances I concur with the view that has been expressed.

The Earl of HALSBURY

My Lords, I support the view taken by the noble Lord, Lord Lyell. I was very much afraid that if we raised our voices against this Amendment we should approach Third Reading in a vacuum. This Amendment gives us something to build on by way of further amendment at Third Reading and in that spirit I would not oppose this Amendment.

On Question, Amendment agreed to.

Schedule 2 [Application of this Act to existing patents and applications].

The LORD CHANCELLOR moved Amendments Nos. 168 to 169A:

Page 100, line 20, leave out ("28, 30 to")

Page 100, line 21, leave out ("99, 102")

Page 100, at end insert ("and (4)").

The noble and learned Lord said: My Lords, the purpose of this group of Amendments is to apply certain provisions of the Bill to 1949 Act patents and applications.

On Question, Amendments agreed to.

Schedule 3 [Repeals of provisions of 1949 Act].

7.55 p.m.

Lord LYELL moved Amendment No. 169C: Page 101, line 17, leave out from ("court), ") to end of line 20, and insert ("subsection").

The noble Lord said: My Lords, this is in the nature of a probing Amendment to seek out further information from the Government, and I should like to speak also to Amendment No. 173 which is consequential on this Amendment. The two Amendments are concerned with something that we believe is of importance: that existing patents should be revocable upon the existing grounds which are set out in Section 32 of the 1949 Act. I will not weary your Lordships by reading them, but this applies particularly to the grounds of prior secret use, which was something which was not immediately evident to me, although I understand it is of importance to practitioners, including patent agents, patent lawyers and patent barristers. I am sure it appears to be inequitable that an inventor, who has not applied for a patent because for some reason he has already made commercial use of the invention in secret, should find suddenly that such a patent will be validated under this Bill, and that someone who, in the past, has obtained a patent, even though he knew it should not be granted on the grounds of prior secret use, knows that his deception will be validated.

The whole of Schedule 3 as drafted was moved into the Bill by a Government Amendment in Committee. At that time a further point was raised; namely, that a situation might be created by Schedule 3 that someone would ask for advice, from, let us call him, a practitioner, as to whether the patent would be infringed, and the expert would advise the client that he need not worry about any infringement because under Section 32 of the 1949 Act the patent concerned is clearly invalid. But then, as a result of this Bill, we come to the appointed day for commencement and we find there that the provisions of Section 32 are amended; in other words, the rules about invalidity are changed in the middle of a revocation action. At an earlier stage my noble friend Lord Belstead ventured the opinion that this would result in absolute chaos. The effect of the Amendment is to ensure that the existing patents should be revocable continually on the existing grounds. It is for that reason that I beg to move.

The LORD CHANCELLOR

My Lords, this again is a sphere of high technicality. Schedule 3, paragraph 2(2)(b), to which this Amendment relates, has the effect of abolishing certain of the grounds on which an existing patent may be revoked under Section 32 of that Act. The abolished grounds are commonly referred to as inutility "false suggestion", "claims not fairly based" and "secret prior use" Those grounds have been abolished because they are not grounds for the revocation of European patents and Community patents (and hence should not be grounds for the revocation of United Kingdom patents under the Bill), and because it is desirable that the grounds of invalidity of all patents effective in the United Kingdom should be harmonised as far as possible to avoid doubt in the public mind as to what is and what is not a valid patent.

The purpose of the Amendment, as I understand it, is to restore to Section 32 of the 1949 Act the grounds of invalidity that the Bill would abolish (except the ground of Section 32(3)). The case for doing so is that abolition of grounds of invalidity validates patents that would have been held invalid if their revocation had been sought before the passage of the Bill, and that this is unfair on potential users of the inventions of the relevant patents, since instead of being faced with invalid patents, they will now be faced with valid ones.

There is some theoretical force in this argument, but in practice the grounds of invalidity which the Bill would abolish are of very limited importance when compared with such grounds as novelty and obviousness. Again any fairness and legal purity which the Amendment would achieve, therefore, seem small in comparison with the advantage of having standards of validity of existing and new patents which, although not identical, are the same in basic respects. I believe if the patent system is to be of maximum encouragement to industrial innovation its legal complexities—and Heaven knows there are plenty of them!—should be kept to a minimum. Thus, although the Amendment seeks to eliminate a possible source of injustice to non-patentees, I regard the possibility of actual injustice as sufficiently remote to justify the priority which the Bill gives to simplification and harmonisation of the all-important conditions of validity.

Lord LYELL

My Lords, I will admit to being dazzled by the amount of ground that the noble and learned Lord has covered. I notice he was looking straight at me while giving the House the benefit of the reply to my Amendment. I would add briefly—and I am sure the noble and learned Lord would accept it—that there are very strong feelings, certainly in some sections of the professional practitioners in patent law, patent agents, barristers and solicitors, that various advice that might be given by these practitioners could be given not as part of litigation. Nevertheless, I have been given to understand that information would have been given by patent agents, and as a result of the alteration in Section 32 various acts which would have been illegal and would have been discouraged by the patent agents are by the effect of the Bill made respectable.

However, I think I should not seek to pursue this matter now. I will endeavour to study what the noble and learned Lord has said. Possibly I ought to add a minor reservation, and, dare I say to the noble and learned Lord, with reluctance I beg leave to withdraw the Amendment.

Amendment, by leave, withdrawn.

The LORD CHANCELLOR moved Amendment No. 174: Page 107, line 16, at end insert ("In section 33(3), the proviso.").

The noble and learned Lord said: My Lords, Section 33(3) of the 1949 Act contains a proviso that the comptroller shall not revoke unless the circumstances are such as would have justified refusal of the grant of a patent under Section 14. Bearing in mind that Section 14 is repealed in Section 5, it is necessary to repeal the proviso to Section 33(3). That is what the Amendment does. I beg to move.

On Question, Amendment agreed to.