PATENTS BILL [H.L.]

HL Deb 17 May 1977 vol 383 cc563-634

3.6 p.m.

Read 3^a.

Clause 2 [Novelty]:

Lord ORAM moved Amendments Nos. 1 to 3:

Page 2, line 42, after ("patent") insert ("or a patent").

Page 2,line 43, leave out ("another application for a") and insert ("an application for a") and insert ("an application for another").

Page 3, line 4, leave out ("that other application") and insert ("the application for that other patent")

The noble Lord said: My Lords, these Amendments, the second and third of which are consequential upon the first, cure a defect in Clause 2(3) which arose as a result of Report stage Amendment No. 2. That Amendment, which excluded from the scope of Clause 2(3) consideration of matter contained in the application in suit, inadvertently restricted the scope of the subsection to the case of applications. It should, of course, apply equally to inventions to which a patent relates. These Amendments make that correction.

On Question, Amendments agreed to.

Clause 5 [Priority date]:

Lord ORAM moved Amendment No. 4: Page 4, line 30, after ("preceding") insert ("the date of filing").

The noble Lord said: My Lords, this is a small drafting Amendment to make it abundantly clear that it is the date of filing of the application in suit to which reference is made. I beg to move.

On Question, Amendment agreed to.

Clause 15 [Publication of application]:

Lord LLOYD of KILGERRAN moved Amendment No. 4A: Page 14, line 36, leave out ("subject to section 20 below").

The noble Lord said: My Lords, this is purely a consequential Amendment arising out of the action taken by the House on Clause 20. With the leave of the House, at the same time I should like to speak to Amendments Nos. 6A, 46A, 46B, 55A, and 66A. They are entirely formal Amendments. I am very grateful to the Public Bill Office—to Mr. Webb and his assistants—for having picked up these Amendments which are supplementary to the Marshalled List. I beg to move Amendment No. 4A.

Lord ORAM

My Lords, I accept what the noble Lord, Lord Lloyd, said about these Amendments being consequential on action that the House took on Report. I would therefore advise the House to accept Amendment No. 4A and the subsequent ones to which the noble Lord referred. While accepting that this Amendment is technically necessary in consequence of the deletion of Clause 20, I do not retract anything that I said on that occasion on the merits of Clause 20. It is purely consequential.

On Question, Amendment agreed to.

3.11 p.m.

Lord ORAM moved Amendment No. 5 Page 14, line 37, leave out from ("tiling") to ("during") in line 40 and insert (", then, as soon as possible after the end of the prescribed period, the comptroller shall, unless the application is withdrawn or refused before preparations for its publication have been completed by the Patent Office, publish it as filed (including not only the original claims but also any amendments of those claims and new claims subsisting immediately before the completion of those preparations) and he may, if so requested by the applicant, publish it as aforesaid").

The noble Lord said: My Lords, the effect of this Amendment, which fills a gap in the present draft, is twofold. First, it makes it clear that any withdrawal or refusal of the application after the preparations for its publication have been completed by the Patent Office will not prevent its publication under Clause 15 and its consequent inclusion in the state of the art for Clause 2(3) purposes. This change brings the Bill into alignment with Rule 48(2) of the European Patent Convention. The second effect is to make it clear that the comptroller shall not only publish the application as filed but also the last filed claims before the completion of the preparations for publication. This provision, which corresponds to Rule 49(3) of the European Patent Convention, is necessary because it is those claims which will determine the provisional protection afforded by Clause 66 and not any later claims, filed after the preparation for publication has been completed but before the end of the prescribed period, which cannot, of course, be included in the publication. I beg to move.

On Question, Amendment agreed to.

Clause 17 [Substantive examination and grant for refusal of patent]:

Lord ORAM moved Amendment No. 6: Page 17, line 12, after ("to") insert ("subsection (5) and").

The noble Lord said: My Lords, in moving Amendment No. 6 I should like also to speak to Amendment No. 7. The 1949 Patents Act contains no provision preventing a person from obtaining two or more patents in respect of the same invention where the invention has the same priority date in both cases. This is because it was held in the case of Dreyfus' Application that the Crown should not grant two Letters Patent in these circumstances for the same invention. The Bill, however, does not rest upon a grant of Letters Patent by the Crown, but gives a person a statutory right to a patent if he complies with its requirements. In these changed circumstances, it is no longer safe to rely upon the decision in Dreyfus' Application. The second Amendment (No. 7) therefore puts that decision into statutory form in the Bill. The first Amendment (No. 6) is a paving Amendment for the second. I beg to move.

On Question, Amendment agreed to.

Lord LLOYD of KILGERRAN moved Amendment No. 6A: Page 17, line 12, leave out ("sections 18 and 20") and insert ("section 18").

The noble Lord said: My Lords, I have already spoken to Amendment No. 6A, and I appreciate the reservation which the noble Lord, Lord Oram, will wish to make in regard to this Amendment. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 7:

Page 17, line 14, at end insert— ("(5) Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the comptroller may on this ground refuse to grant a patent in pursuance of more than one of the applications.").

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

On Question, Amendment agreed to.

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

3.15 p.m.

Lord ORAM moved Amendment No. 8: Page 22, line 42, leave out ("probative or holograph writing") and insert ("writing probative or holograph of the parties to the transaction").

The noble Lord said: My Lords, this Amendment has the effect of requiring any assignation of a patent or application for one, or any grant of security, to be signed by all parties to the transaction. It thus brings this provision of Scottish law into line with the corresponding English provision in Clause 27 (6). This Amendment picks up a point made by the noble Lord, Lord Belstead, on Report and I thank him for drawing it to our attention. I beg to move.

On Question, Amendment agreed to.

Clause 30 [Requirement for registration or notice]:

Lord ORAM moved Amendment No. 9: Page 25, line 17, after ("application") insert ("or any right in or under it to any person").

The noble Lord said: My Lords, this Amendment restores to the text of Clause 30(4)(e) words which were inadvertently deleted by Report stage Amendments Nos. 40 and 41. Therefore, I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 10:

Page 25, line 22, at end insert— ("In this subsection 'mortgage' includes a charge for securing money or money's worth.").

The noble Lord said: My Lords, this is merely a technical drafting Amendment of a kind commonly found in Statutes which contain provisions relating to mortgages; it makes plain that the word "mortgage" is to be interpreted as also including a charge for securing money or money's worth. I beg to move.

On Question Amendment agreed to.

Lord ORAM moved Amendment No. 11: Page 25, line 28, leave out from beginning to end of line 34.

The noble Lord said: My Lords, this Amendment deletes subsection (6) of Clause 30, which provided an extended meaning for the words, the inventor or one of the inventors of an invention",

which formerly appeared in subsection (3) of the clause. Those words were, however, removed on Report, so subsection (6) is no longer required. I beg to move.

On Question, Amendment agreed to.

Clause 33 [Co-ownership of patents and applications for patents]:

Lord ORAM moved Amendment No. 12: Page 26, line 33, leave out ("section 7") and insert ("sections 7 and 11").

The noble Lord said: My Lords, this Amendment is consequential upon the insertion into the Bill of Clause 11. Just as the provisions in Clause 33 (3), which relate to the granting of licences and mortgaging of patents by co-proprietors, are subject to those in Clause 7, under which the comptroller may, among other things, make an order transferring the rights of a co-proprietor of an application for a United Kingdom patent to anyone else, so also must it be subject to the provisions of Clause 11, under which the comptroller may make such an order in relation to the rights of a co-proprietor of an application for a patent in any other country or under any treaty or international convention. I beg to move.

On Question, Amendment agreed to.

Clause 34 [Determination of right to patent after grant]:

Lord ORAM moved Amendment No. 13: Page 28, line 42, leave out ("under subsection (2) or") and insert ("by virtue of subsection (2) or under").

The noble Lord said: My Lords, this is purely a drafting Amendment. As at present drafted, Clause 34(7) refers to an order made under subsection (2) of the clause. It is not strictly correct to do so, because the order is not actually made under that subsection but under subsection (1). Subsection (2) merely states a number of matters for which the order may provide but these are expressed to be, "without prejudice to the generality of subsection (1)", and it is, as I have said by subsection (1) that the power to make the order is conferred. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 14:

Page 29, line 7, at end insert— ("(9) The court shall not in the exercise of any such declaratory jurisdiction determine a question whether a patent was granted to a person not entitled to be granted the patent if the proceedings in which the jurisdiction is invoked were commenced after the end of the period of two years beginning with the date of the grant of the patent, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer of the patent to him that he was not entitled to the patent.").

The noble Lord said: My Lords, this Amendment adds a new subsection (9) to Clause 34. It makes a provision in our domestic law which corresponds to what Article 27(3) of the Community Patent Convention provides in respect of Community patents. The effect is that anyone who claims that he should have been granted the patent in place of the person to whom it was in fact granted must institute proceedings to establish his right within two years of the date of the grant. An exception is permitted where the person registered as proprietor knew, at the time when the patent was granted to him or, if he is a successor-in-title of the original grantee, at the time when the patent was transferred to him, that he was not entitled to it.

Lord LLOYD of KILGERRAN

My Lords, is this a new matter from the point of view of the debates we have had on the Bill? I may be wrong, but I cannot recall it being discussed before. I understood the Minister to say that the new provision was required to make our law correspond with Article 27(3) of the Community Patent Convention. If it is an entirely new matter, then I think that should be indicated; in other words, that a Government Amendment is being introduced at this stage although the matter has not been raised before.

Lord ORAM

My Lords, I will take advice, but I think the noble Lord is right and I agree that, with so many Amendments coming forward, it would be for the convenience of noble Lords to have new matter indicated. It may be that references were made to the subject at an earlier stage of the Bill and I will try to find out.

Lord LLOYD of KILGERRAN

My Lords, I am obliged to the Minister.

On Question, Amendment agreed to.

Clause 37 [Compensation of employee for certain intentions]:

3.22 p.m.

The LORD CHANCELLOR (Lord Elwyn-Jones) moved Amendment No. 15: Page 31, line 13, leave out from ("a") to ("provides") in line 17 and insert ("relevant collective agreement").

The noble and learned Lord said: My Lords, it may be convenient for the House to discuss at the same time Amendment No. 15A. The change effected by this pair of Amendments is purely one of drafting. It will be recalled that, as a result of your Lordships' acceptance of Amendment No. 51A moved by the noble Lord, Lord Nelson of Stafford, certain words were inserted in subsection (3) of Clause 37. This pair of Amendments achieve precisely the same objective in what, I hope, will be thought to be a more elegant manner.

Lord BELSTEAD

My Lords, on behalf of my noble friend Lord Nelson of Stafford, who is not able to be here today, I wish to thank the Government for this redrafting which I agree achieves exactly the same object as my noble friend had in mind when he moved his Amendment on Report and which is now overtaken by the better wording of the Government Amendments.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 15A: Page 31, line 29, at end insert ("and 'relevant collective agreement' means a collective agreement within the meaning of the Trade Union and Labour Relations Act 1974 made by or on behalf of a trade union to which the employee belongs and by the employer or an employers' association to which the employer belongs which is in force at the time of the making of the invention".)

The noble and learned Lord said: beg to move.

Lord LLOYD of KILGERRAN

My Lords, while thanking the noble and learned Lord for the elegant way in which he moved this and the previous Amendment, may I ask him a question arising out of the fourth line of this one, in which there is a reference to "the employee"? It refers to a trade union to which the employee belongs, and it means that a collective agreement which is now associated with Clause 37 made by or on behalf of a trade union to which the employee belongs—

The LORD CHANCELLOR

My Lords, I am sorry to interrupt the noble Lord, but I think the word is "employer".

Lord LLOYD of KILGERRAN

In my copy of the Amendment the word is "employee" my Lords. If the word is "employee", it raises a point which was discussed on Report, when it was indicated that collective agreements covered the position not only of employees who are members of the trade union but employees who are not members but who are within the same field of activity. I remember that when the matter was raised, the noble Lord, Lord Nelson of Stafford, said that collective agreements should not be used to cover employees who were not members of the trade union. I have not been able to give notice of this question to the noble and learned Lord because I received the two booklets with some 80 Government Amendments only yesterday afternoon and had not noticed this point until this morning. Perhaps the matter could be clarified at some other stage.

The LORD CHANCELLOR

My Lords, it is a little difficult to see what other stage we could have, save in another place. I will certainly look into the point and communicate with the noble Lord. The words which appear in my copy of the Amendment are "to which the employer belongs" and that would seem to follow sensibly after the words "or an employers' association". It may be that the mischief is merely a misprint in the copy which the noble Lord has, but if it is not I will let him know.

Lord LLOYD of KILGERRAN

My Lords, I am very much obliged to the noble and learned Lord.

The LORD CHANCELLOR

My Lords, the explanation of this mystery is that the lining of the copy of the Amendment supplied to the noble Lord, Lord Lloyd of Kilgerran, is different from mine and I fear that we are talking about a different noun in the Amendment. However, I am advised that the relevant reference is "employee" and I am further advised that this has the effect that the noble Lord. Lord Nelson of Stafford, had in mind and desired. I hope that that reassurance will comfort Lord Lloyd.

On Question. Amendment agreed to.

Clause 38 [Amount of compensation]:

3.28 p.m.

The LORD CHANCELLOR moved Amendment No. 16: Page 32, line 37, leave out ("and").

The noble and learned Lord said: My Lords, it may be convenient for the House to discusss Amendment No. 17 as well. On Report, when your Lordships were discussing Amendments Nos. 53A, 53B and 53C set down by the noble Lord, Lord Nelson of Stafford, I accepted that it would he right to add to the list of matters required to be taken into account under what is now Clause 38(5)—where the fair share of the benefit to be secured to an employee in respect of an invention which originally belonged to him is being determined—a reference to the employer's contribution to the developing and working of the invention. This Amendment carries that into effect. Perhaps I should add at this juncture that the Government are continuing to give consideration to the question whether any of the other matters specified in Clause 38(4) should also be added to Clause 38(5).

When we discussed this previously, again I accepted that reference should also be added to the marketing of the invention, provided that was necessary and appropriate. The Parliamentary draftsman has been consulted on this and he has advised that "marketing" is already comprised within the meaning of "working" and so does not need to be specifically mentioned. I confess that that is a proposition which caused me no little surprise, but that is the wisdom and guidance that I have received and I invite noble Lords to accept the view that it does not need to be mentioned specifically, and accordingly the word "marketing" does not appear in the Amendment. I fear that no Amendment has been tabled to insert it into what is now Clause 38(4)(d), but we are here in the presence of the esoteric skills of Parliamentary draftsmen and I am disposed to invite your Lordships to accept that view. I beg to move.

Lord BELSTEAD

My Lords, on behalf of my noble friend Lord Nelson of Stafford, should like to thank the noble and learned Lord for his explanation of the Government Amendment. Like him, I am a little surprised that the word, "marketing" should be subsumed in the word, "working", but I accept what the noble and learned Lord has said and I therefore support the Government Amendments.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 17:

Page 32, line 39, at end insert ("and (c) the contribution made by the employer to the developing and working of the invention as mentioned in subsection (4)(d) above").

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 18:

Page 33, line 17, at end insert— ("(11) In Northern Ireland an order made under section 37 above by the comptroller for the payment of any sums may be enforced as if it were a money judgment.").

The noble and learned Lord said: My Lords, this Amendment adds a new subsection (11) to Clause 38 providing that in Northern Ireland an award of compensation made by the comptroller under Clause 37 may be enforced in the same way as if it were a money judgment. Accordingly, it inserts a provision for Northern Ireland which corresponds to what subsection (9) provides for England and Wales and subsection (10) does for Scotland. I beg to move.

On Question, Amendment agreed to.

Clause 39 [Enforceability of contracts relating to employees' inventions]:

The LORD CHANCELLOR moved Amendment No. 19:

Page 33, line 31, at end insert— (2A) Subsection (2) above shall not be construed as derogating from any duty of confidentiality owed to his employer by an employee by virtue of any rule of law or otherwise".

The noble and learned Lord said: My Lords, at the Report stage, I accepted in principle the point which the noble Lord, Lord Nelson of Stafford, was making in his Amendment No. 56A and I undertook to table an Amendment expressly providing that what is now Clause 39(2) does not render unenforceable a term in a contract of employment imposing an obligation of confidence upon an employee. The Amendment now before your Lordships fulfils that undertaking. I beg to move.

Lord LYELL

My Lords, as one who spoke rather strongly in favour of such a clause at an earlier stage of the Bill, I can say that we are all very grateful to have a note of wit and charm injected into the proceedings by the noble and learned Lord who sits upon the Woolsack, and, on behalf of my noble friend Lord Nelson of Stafford, I should like to say that we are happy that the noble and learned Lord has gone as far as he can—I believe, effectively—to satisfy what was in the mind of my noble friend Lord Nelson.

Lord LLOYD of KILGERRAN

My Lords, I should like to support what the noble Lord, Lord Lyell, has said. This has reduced the serious anxieties of industry in regard to confidentiality. Although the law of confidence in these matters is still fairly clear, this has been a very helpful Amendment.

The LORD CHANCELLOR

My Lords, I am grateful for those two interventions. This shows how helpfully we have worked together to try to get the best possible Bill out of this extremely technical subject of patent law—a subject which I managed successfully to avoid during my whole career at the Bar.

On Question, Amendment agreed to.

3.37 p.m.

Lord ORAM moved Amendments Nos. 20 to 28:

Clause 52, page 46, line 34, leave out ("a patented") and insert ("an").

Clause 52, page 46,line 41, leave out from first ("of") to second ("any") in line 43 and insert ("a relevant communication made in confidence")

Clause 52, page 46, line 47, leave out from ("time") to ("shall") in line 2 on page 47 and insert ("either—

1. (a) after the publication of the application for the patent for the invention; or
2. (b) without prejudice to paragraph (a) above, in consequence of a relevant communication made after the priority date of the invention otherwise than in confidence;").

Page 47, line 7, at end insert— ("(4A) Where an invention is used by virtue of this section at any time after publication of an application for a patent for the invention but before such a patent is granted, and the terms for its use agreed or determined as mentioned in subsection (4) above include terms as to payment for the use, then (notwithstanding anything in those terms) any such payment shall be recoverable only—

1. (a) after such a patent is granted; and
2. (b) if (apart from this section) the use would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Patent Office").

Page 47, line 19, leave out ("use is begun") and insert ("second of the following events, that is to say, the use is begun and the patent is granted").

Page 47, line 25, at end insert— ("(7A) In this section "relevant communication", in relation to an invention, means a communication of the invention directly or indirectly by the proprietor of the patent or any person from whom he derives title. (7B) Subsection (4) above is without prejudice to any rule of law relating to the confidentiality of information.")

Clause 53, page 47, line 32, leave out from beginning to end of line 7 on page 48 and insert— ("(1) Any reference in section 52 above to a patented invention, in relation to any time, is a reference to an invention for which a patent has before that time been, or is subsequently, granted").

Clause 55, page 51, line 30, at end insert ("after a patent has been granted for the invention ").

Page 52, line 28, at end insert— ("(6A) Where by virtue of a transaction, instrument or event to which section 30 above applies a person becomes the proprietor or one of the proprietors of an exclusive licensee of a patent and a government department or a person authorised by a government department subsequently makes use under section 52 above of the patented invention, that person shall not be entitled to any compensation under section 52(4) above (as it stands or as modified by section 54(3) above) in respect of a subsequent use of the invention before the transaction, instrument or event is registered unless—

1. (a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
2. (b) the court is satisfied that it was not practicable to register the transaction, 576 instrument or event before the end of that period and that it was registered as soon as practicable thereafter.").

The noble Lord said: My Lords, before I speak to the Amendments, I should like, with your Lordships' permission, to refer to the point raised by the noble Lord, Lord Lloyd of Kilgerran, in connection with Amendment No. 14. The noble Lord asked whether the point involved was a new one. I am advised that the Amendment was consequential upon Amendments No. 42 and 112 which were agreed at Report stage. They made a provision in respect of the comptroller and Amendment No. 14 does the same for the court. So this is not an entirely new point but is a consequential one.

Turning to the Amendments, they are all primarily of a drafting character, although they make certain minor changes necessary to bring the Crown use provisions into accord with the principles underlying the remainder of the Bill. If any of your Lordships wishes me to answer any point on them, I will try to do so either now or by letter, but I do not think that it would be helpful in general for me to go through the changes in detail. I beg to move Amendments Nos. 20 to 28 en bloc.

Lord BELSTEAD

My Lords, I should like to pick up a drafting point in Amendment No. 28 which reads: Where by virtue of a transaction, instrument or event to which section 30 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and a government department or a person authorised by a government department subsequently makes use under section 52 above of the patented invention, that person shall not be entitled… I am wondering who "that person" refers to.

Lord ORAM

So am I, my Lords. If the noble Lord agrees, I shall look into this and write to him. If there is any clarification needed in the text of the Bill, there will of course be an opportunity in another place to put it right but I anticipate that I shall be able to write to the noble Lord, Lord Belstead, making the position quite clear.

Lord LLOYD of KILGERRAN

My Lords, as the noble Lord, Lord Oram, did not indicate that the Amendments were purely formal and as they relate to the powers of the Crown in relation to patented inventions, I wonder whether I may accept the offer made by the noble Lord that he would write explaining more fully the details of these Amendments rather than going through them now.

Lord ORAM

My Lords, if the noble Lord so wishes, that can readily be done. I shall send him a note which covers all the Amendments in rather more detail, although I reiterate that they are essentially drafting Amendments incorporating some minor changes.

Lord BELSTEAD

My Lords, I only wish to say that my understanding would have been that the adjective "that" in the expression "that person" related to the second person who is referred to in this Amendment, and the second person is a Government Department or a person authorised by a Government Department. However, when one comes to read the Amendment, it is quite clear that the words "that person" do not refer to the second person so mentioned but to the first person. If I may and if the Parliamentary draftsmen will allow a suggestion from the Opposition Benches, I therefore suggest that the sixth line of the Amendment should read, "that person first mentioned".

Lord ORAM

I am sure that the Parliamentary draftsmen have become used to accepting advice from very many quarters and that will include the noble Lord.

On Question, Amendments agreed to.

Clause 58 [Proceedings for infringement of patent]:

Lord ORAM moved Amendment No. 29:

Page 57, line 2, at end insert— ( ) The Arbitration Act 1950 shall not apply to proceedings before the comptroller under this section.

The noble Lord said: My Lords, this Amendment makes it clear that a reference to the comptroller under subsection (3) is not to be treated as an arbitration. Any doubt about the matter is thus removed. Perhaps I may mention that a similar provision is contained in Section 67 of the existing Patents Act. I beg to move.

On Question, Amendment agreed to.

Clause 66 [Infringement of rights conferred by publication of application]:

3.40 p.m.

Lord ORAM moved Amendment No. 30: Page 60, line 8, leave out ("that subsection") and insert ("subsection (2) below").

The noble Lord said: My Lords, this is a purely drafting Amendment to remove an ambiguity, making it clear that the subsection referred to in line 8 is subsection (2) of Clause 66 and not subsection (5) of Clause 71, both of which are referred to in line 2. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 31: Page 60, line 19, leave out from second ("the") to end of line 21 and insert ("claims (as interpreted by the description or any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Patent Office").

The noble Lord said: My Lords, before speaking to this Amendment I should like to call attention to a clerical error in the text. It should read: … as interpreted by the description and any drawings referred to… I wish to thank the noble Lord, Lord Belstead, for having pointed out this error in the text. This Amendment makes it clear that it is the claims in the form in which they are when the preparations for publication have been completed which will determine the provisional protection under Clause 66. These claims will of course be published and it would be wrong, as I said when moving Amendment No. 5 to Clause 15, to take into account any later non-published claims for Clause 66 purposes. I beg to move.

On Question, Amendment agreed to.

Clause 69 [Power to revoke patents on application]:

Lord LYELL moved Amendment No. 32:

Page 62, line 27, at end insert— ("( ) A decision of the comptroller or an 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, I hope that the House will not lose patience at this late stage in the Bill's proceedings either with me or with my colleagues as we bring out once again the—dare I say it? —fascinations of the law of estoppel. Noble Lords will notice that the Amendment, which appears in my name and the names of my noble friends, is identical to those Amendments moved at both Committee stage and Report stage by my noble friend Lord Belstead and myself.

Briefly, we consider that as the Bill stands in its present form it does not make it clear that a litigant will be able to protect himself in any infringement proceedings which may, or probably will, follow from an unsuccessful revocation action. I should like to thank warmly the noble Lord, Lord Oram, for what I would call the flood of information and communications that has surged between us, mostly, I am happy to say, in my direction. I have been happy that the noble Lord, Lord Oram, has agreed with our point little by little, and indeed in communications outside the House he has been able to indicate that in almost all the details our Amendment was acceptable, but he had one or two minor reservations.

In his previous replies, the noble Lord, Lord Oram, believed that Clause 72(1)(a), which was indeed part of a Government Amendment, would meet our difficulty. However, I am afraid that we were not entirely of the same opinion. We consider that Clause 70(5) removes the right of an appeal to the court, except by leave of that court, and I think that I have it right when I say that Clause 70(5) will, without our Amendment, effectively estop a litigant from pleading the same evidence as he used, or indeed as was used, in revocation when he is pleading in the infringement action.

I understand that the comments of the noble Lord, Lord Oram, were part and parcel of what is known as action estoppel—concerning the validity or the obviousness of the patent—whereas our Amendment, we believe, deals with issue estoppel, and it is this aspect of the law of estoppel which, I am told, and so far as I can decipher it, is equivalent to the term, as so nicely used by the noble Lord, Lord Oram: res judicata.

At the Report stage the noble Lord, Lord Lloyd of Kilgerran, mentioned the great cost of taking an appeal to the Patents Court or to the Court of Appeal. We are of the opinion that should our Amendment not be written into the Bill, a certain amount of what we call robust, swift, and effective justice would be lost. It is on these three appealing grounds, as I hope they are, that once again I beg to move the Amendment.

Lord ORAM

My Lords, the noble Lord, Lord Lyell, has indeed been diligent in pursuing this particular point, and quite rightly from his point of view. I indicated during the Report stage that the Government are indeed aware of the importance of the point that the noble Lord has been pursuing, since its insertion or omission from this Bill may well affect the attitude of persons when exercising their choice of either applying for revocation before the comptroller or before the Patents Court. During the Report stage I indicated that the Government were prepared to agree that there should be no estoppel so far as concerns prior decisions of the comptroller or the Patents Court on appeal from the comptroller. However, we had some misgivings, which I explained, about giving the same effect to prior judgments of the Court of Appeal and the House of Lords. The noble Lord, Lord Belstead, was good enough to say that he understood our misgivings on that point, and I, on the other hand, agreed to give further consideration to the matter.

I am glad to say that, as a result, we are now quite prepared to accept this Amendment, in the full realisation that a new situation arises through giving the comptroller, as everyone agrees, the same jurisdiction in respect of revocation on the court. So, if I may say so, this is a case of patience rewarded.

Lord LYELL

My Lords, we on this side of the House can only be immensely grateful to the noble Lord, Lord Oram, for the kind way in which he has seen fit to accept our points. I particularly enjoyed his latter comments, and I wondered whether it would be apposite that we should call this, together with a new concept of the law of estoppel, "Oram's revenge". I am very happy to accept that the Government have seen our point, and we are very grateful.

On Question, Amendment agreed to.

Lord BELSTEAD moved Amendment No. 33:

After Clause 69 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 filing the earlier relevant application.

The noble Lord said: My Lords, I beg to move Amendment No. 33, which has already been twice discussed. I ventured to put it down again because I am advised, and I must say I believe, that if this Amendment is not written into the Bill, the consequences will be unfair to inventors, undesirable in the national interest, and inconsistent with the existing law for the United Kingdom, and inconsistent, too, with the Paris Convention which extends virtually worldwide.

Positively for the last time in these proceedings I will again introduce an old friend into the debate: the inventor who discovers a new method for fixing uppers to the soles of a pair of shoes. He applies for a patent, but soon after he publishes an article about it in the Shoemakers' Gazette; and then, within a year from the date of filing his application for shoes, the inventor files another application, using the same invention, for fixing blinds to their rollers and canvas hoods to the roofs of cars. I suggest that the new application for shoes, roller blinds and car hoods is a single generic claim for fixing flexible matter to a stiffer backing.

The difficulty which I am trying to put before your Lordships is that under Clause 2(2) of the Bill, which 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", the second application for shoes, blinds and car hoods has been anticipated by the disclosure of the invention which was written about in the Shoemakers' Gazette.

The noble Lord, Lord Oram, was good enough to write to me on the 13th May, and in the noble Lord's letter there were these words: Your question arose out of a hypothetical example of an invention which was expressed narrowly in a priority document and generically in a definitive United Kingdom application. I cannot of course say how the courts might decide the validity of the patent in that particular case, but I can say that under the Bill as it stands the patent could be held invalid because of the publication of the invention in the Shoemakers' Gazette, whereas it could not be held invalid if the Amendment were adopted". The noble Lord then went on to say that he was well aware of the importance of the issues raised by this Amendment, and felt that the right thing to do was to refer the question to the Standing Advisory Committee on Patents to get their views on it. Indeed, I am well aware that the noble Lord takes this as being an important Amendment, because he has been good enough not only to write to me about it on two occasions but also to reply to me at length on the Floor of the House. For those reasons, my Lords, I should very much like to accept the invitation which has been given to me in writing that this matter should be put to the Standing Advisory Committee, but I hope the noble Lord will not take me as being unduly difficult over this if I say that I really do not think that I can do this at this final stage of the Bill.

My understanding is that it has been common practice for patent applicants to publish an account of their inventions after they have filed a provisional patent application—a method, of course, which is going to be done away with by this Bill. Inventors may also try to go round persuading manufacturers to take out a licence without trying to impose any obligation of secrecy upon those manufacturers; and then, as the method has been used by many inventors in the past, a complete specification is filed provided it is within a year, and Section 52 of the 1949 Act protects the inventor whether or not his final claim is drawn in broad or in narrow terms.

My Lords, this Amendment really corresponds directly to Section 52 of the 1949 Act; and, as I said earlier, if it is not agreed to I think it will be unfair to inventors, who are going to be very wary of exploiting their inventions at all during the first year after they have discovered them and filed the applications for them. For the same reason, I think this postponement will not be in the national interest; and, as I have been trying to argue, I do not think it is consistent with the existing law.

My Lords, there is one other difficulty. If the noble Lord will forgive me, I will put it before I finish moving this Amendment, and it is this. I think that refusal of this Amendment will make the law of our country inconsistent with Article 4B of the Paris Convention. I have tried to refer to that Convention before, but on this occasion may I say this? The Convention is absolutely specific on this subject. In Article 4B it is provided: Any application for a patent in any of the countries of the Union has one year to file a corresponding application in other countries and obtain priority for the first filing, and the applicant may disclose his first invention in the interim year".

The Paris Convention then goes on specifically to say that the second application shall not be invalidated,

"by reason of any acts"—

"any acts", my Lords—

"accomplished in the interval".

I do not think that the Bill as drafted corresponds to that provision.

The noble Lord, Lord Oram, made the perfectly valid objection, when this Amendment was being moved at an earlier stage, that the European Patent Convention, which is one of the two Conventions which of course we are attempting to harmonise with, is silent on this subject. My Lords, if noble Lords on the Government Front Bench would care to glance at the Preamble to the European Patent Convention, they will see that the Convention, constitutes a special agreement within the meaning of Article 19 of the Paris Convention". My Lords, if the EPC does not include an equivalent provision to Section 52 of the 1949 Act, I suggest it is because Article 4B of the Paris Convention is doing so and the EPC is operating within, and not outside, the terms of the Paris Convention.

It is for those reasons—and I apologise for the length of time in moving this Amendment—that I believe that this Amendment is necessary. It will continue the effect of Section 52 of the 1949 Act; it will correspond with Article 4B of the Paris Convention; and I do not think there is anything in the EPC which is inconsistent with it. My Lords, I beg to move.

Lord LLOYD of KILGERRAN

My Lords, may I briefly support what the noble Lord, Lord Belstead, has said about this Amendment, which in effect is referred to as the Section 52 type Amendment? It is of special interest, in my view, to the small inventor and the small firm; and I have already declared an interest to your Lordships in that I have the privilege of being the president of the Institute of Patentees and Inventors. In view of the confession made by the noble and learned Lord about his practice at the bar, that he escaped patent law during the course of his practice, perhaps I may say that I have had the privilege of escaping every branch of the law except the patents and trademarks law.

My Lords, this Amendment deals with the independent inventor and the small-sized company, which frequently, when they make an invention, disclose their invention after filing a provisional specification in order to attract financial support. Such disclosure may be in a technical journal which can be read by the examiner at the Patent Office during his examination of the later, complete specification. Therefore, I should like to support this Amendment, so well introduced by the noble Lord, Lord Belstead.

Lord ORAM

My Lords, as the noble Lord, Lord Belstead, has said, this is an old friend. It has indeed been much discussed during the Committee and Report stages of the Bill, and we have considered carefully everything that noble Lords opposite have said with a view to seeing whether we could possibly meet their wishes; but I am sorry to say that, unlike the last Amendment with which we were dealing, that has not been possible in this case. As has been said before, this Amendment has the effect of introducing into the Bill a provision which corresponds to Section 52 of the 1949 Act. In that Act it may have some merit; but as to whether or not that is true we cannot really say because research has not detected any case in which this section of the 1949 Act has been used. From this, I think it is not unfair to deduce that the provision which this Amendment seeks to introduce is not concerned with a matter that can be said to be of great practical importance.

Nevertheless, I have to admit to the existence of Section 52, and I must answer the charge that there is no case for omitting this provision from the new patent law. But, my Lords, it has to be realised that the new law is being established in a different framework from the 1949 Act. Throughout our deliberations, noble Lords on all sides of this House have been saying that we must line up with the European Patent Convention. We must avoid duality of standards in this country: British, European and Corn-mutiny patents must be treated alike. This is common ground, accepted by your Lordships and anxiously desired by industry, commerce, patent agents, barristers, solicitors and everyone else concerned with patents. Indeed, the Government have, sometimes at the express wish of the patent interests, moved numerous Amendments with a view to bringing into close alignment the new law with these Conventions. But here we have an Amendment producing an effect which is not, in our view, produced by the European Patent Convention. Indeed, the noble Lord, Lord Belstead, admitted during the Report stage that he took a similar view. Noble Lords opposite appear, therefore, to be moving once again an Amendment which is likely to introduce that duality of standards which they and everyone else wish to avoid.

It is, as I understand it, argued that the omission of such a provision from the European Convention is rectified by Article 4B of the Paris Convention since the European Convention does not derogate from the provisions of the Paris Convention. I do not say that the two Conventions are in conflict—far from it! —because in the view of the Government the European Convention does give effect to Article 4B of the Paris Convention in that it makes clear that a disclosure of an invention after its priority date does not destroy the novelty of the claims of the patent application directed to that invention. What noble Lords opposite are saying is that this article goes much further and also safeguards any development of the basic invention from a disclosure of that basic invention made after the priority date of that invention. As I have already said, we do not take this view; it not only seems wrong in principle but it is not borne out by the European Patent Convention. It is this Convention with which the new law is to be aligned without in any way running counter to the obligations which this country has under the Paris Convention.

My Lords, this is a difficult technical matter. I think I have understood what noble Lords opposite are driving at, and there are two further points that I feel that I must make. During the Report stage, and again today, the noble Lord, Lord Belstead, illustrated his point with his famous example. According to this example, the applicant, after filing an application for a patent for an invention which is a method of attaching uppers to the soles of shoes, publishes an article about his invention and then later files a second application, claiming the priority of the first application, describing the application of the same method not only to shoes but also to fixing blinds to their rollers and canvas hoods to the roofs of cars, and claiming broadly a method of fixing flexible matter to a stiffer backing. The noble Lord acknowledged that this broad claim would not attract the priority date of the first application; in other words, the invention as broadly claimed takes the filing date of the second application, this being later than the date of the article published by the applicant.

The noble Lord then asked me whether the second application was anticipated by the published article, having regard to Clause 2(2). Unfortunately I gave, off the cuff, the wrong answer and I am, of course, sorry about this. What I should have said was that the broad claim would lack novelty, since its priority date is later than the date of the article. But this is not the end of the story, because it would be possible to split the claim, notionally or actually, into one for (a) the method as applied to shoes, and the other or others for (b) the method as applied to roller blinds and car hoods. The claim to (a) would take the priority date of the first application and hence would not lack novelty. The claim or claims to (b) would, of course, also not lack novelty, since the article gave no indication of applying the method to blinds and car hoods. It may be argued that the claim to (b) lacks inventive step. I agree that this is so, but whether it would succeed depends on the facts; and all that I can say on this point is that if it is so obvious to apply the method disclosed in the article to roller blinds and car hoods, then I am inclined to the view that the broad generic claim may well attract the priority date of the first application; in which event, of course, no problem arises.

This leads me directly to my second point which is that this Amendment, as I understand it, does not serve the purpose which noble Lords opposite intend. The safeguard that it contains against invalidation by reason of use or publication of the matter disclosed in the first application is based, according to the Amendment, on the premise that the invention (that is, the broad generic claim) has the priority date of the first application. My Lords, if this premise is satisfied then the safeguard provided by the Amendment is unnecessary; it is already given by the express terms of Clause 2 because the public disclosure of the content of the first application takes place after the priority date of the generic claim.

My Lords, for all these reasons, I ask noble Lords opposite once again to withdraw their Amendment. Although the noble Lord, Lord Belstead, indicated that he read my letter, which summarised the case that I have been deploying at greater length, and still indicates that he is not satisfied, nevertheless I ask him to consider withdrawing the Amendment. It is, as I understand it, a highly technical matter with no political content but one on which there can be a difference of view. Because of this, as the noble Lord indicated when he quoted my letter, the Government are quite prepared to look yet again at this matter, and I can tell the House that the advice of the members of the Standing Advisory Committee on patents has been sought on this point. Unfortunately, however, there has been insufficient time to complete the consultation process, but I can assure your Lordships that if, on receipt of this advice, the Government are convinced that an Amendment on the lines now proposed is indeed necessary, they will be prepared to deal with the matter in another place. The Government are not, as has been suggested, intending to be infair to inventors and to delay exploitation of their inventions by the present rejection of this Amendment. Their sole concern is to adopt sound principles of patent law which are in conformity with the European Patent Convention. I repeat, therefore, that I hope noble Lords opposite will be prepared to withdraw this Amendment.

4.9 p.m.

Lord DOUGLAS of BARLOCH

My Lords, I have tried to follow this argument and as I understand it, my noble friend Lord Oram is resting on the grounds that the Amendment is unnecessary because the point in question would be covered by the Bill without this Amendment. I must confess that I have failed to understand what reasons there can be for suggesting this. If this point is correct. he is saying, in fact, that the substance of the Amendment is desirable but that he thinks it is already in the Bill. I doubt this very much. I confess that it is a long time since I practised in the Patent Office, but my recollection is that the approach of the Patent Office to applications for patents is extremely narrow and restrictive, and it is not at all willing to give a wide construction to what the inventor has said in his specification. I therefore feel a little unhappy that this provision in the Amendment should not be accepted.

4.10 p.m.

Lord BELSTEAD

My Lords, I am grateful to the noble Lord, Lord Douglas of Barloch, for coming to my rescue, because rescue I need in that I am not sure I am so grateful to the noble Lord, Lord Oram, for speaking—as he always does—with great care and, on this Amendment, at some length to try to explain why the Government will not agree to it. I found it more difficult to follow his explanation as he went on; the fault was not his entirely but mine. The noble Lord said that researches had shown that this had not, so far as could be seen, been used at all. I find that statement astonishing in view of what the noble Lord, Lord Lloyd of Kilgerran, said when he was good enough to intervene for a moment or two. The inventor, who I put forward for the "umpteenth" time. who makes his shoes, roller blinds and car hoods, precisely falls foul of the fact that this provision is not in the Bill at the present time. As I understood him, towards the end of his remarks the noble Lord said that my second application example, the broad generic one, could claim earlier priority and therefore there should not be this problem which I am putting forward.

I hesitate to refer to anything that I have said, but with respect I will refer to what I ventured to put forward to the Government on the Committee stage, that the inventor who I used as an example can be caught both ways. I apologise for quoting my own words, but I said this at column 60 of Hansard on 9th May: 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, beause 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 far as shoes are concerned". Having said that, I ventured to put one other point to the Government. I said at the bottom of column 60: The second generic claim can be said now to have been anticipated by the disclosure in the Shoemakers' Gazette,… It is that point which the noble Lord in his letter confirmed is correct. In this case, my unfortunate inventor is caught both ways.

The noble Lord, understandably, put to us his views about the Paris Convention. I must just gently say to the Government that, in the course of the long proceedings that we have had on this Bill, from time to time Ministers, when they felt it was the right thing to do, have told us that the European Patent Convention and Community Patent Convention are only indicative. Indeed, when we had quite a long debate on what is now Clause 122(7) many noble Lords on the Government Front Bench defended the wording of the Bill which states that a great many clauses of the Bill will be as similar as possible to the EPC and the CPC, because the EPC and the CPC are indicative and we do not have to stick exactly to them.

I am going to use that argument now and say that the Paris Convention in Article 4B is absolutely specific on this matter. I quoted the very words: …by reason of any acts accomplished in the interval so a second application shall not be invalidated by what is being done between it and a first application to which it may refer". I am saying that although the EPC is silent on this matter, that indicates that it approves of what is in the Paris Convention. I simply put it to the House that I believe that this Amendment compares exactly to Section 52 of the 1949 Act, which is the law at the present time, and to Article 4B of the Paris Convention. I venture to suggest to your Lordships that the Amendment should be written into the Bill.

Lord ORAM

My Lords, if I may briefly reply, I need only be brief because it is clear from the speech to which we have just listened that if I were to deploy the full argument again I doubt whether we would reach agreement or would persuade the noble Lord to withdraw his Amendment. If I may refer to what the noble Lord, Lord Douglas of Barloch, said, I do not think I said—or certainly I did not mean to imply—that the Amendment is already covered by the Bill; rather was it the basis of my case that the Amendment would introduce a provision that would put it out of line with the European Patent Convention. There may be argument about this, but that is what I intended to convey.

As I said, this is a highly technical matter which has been pursued with great diligence many times. I had hoped that the information I gave about our reference of such a technical matter to the people who can really best advise us, namely, those on the Standing Advisory Committee, and the undertaking that I then gave—namely, that if they felt that an Amendment of this kind were necessary, we would introduce it in another place—was a perfectly reasonable suggestion to put to your Lordships. But if that is not considered a satisfactory approach to this matter—and I understand that the noble Lord, though accepting it is useful, is not satisfied that it is sufficient for him to withdraw his Amendment—then so be it. We must put the matter to the view of the House.

4.17 p.m.

On Question, Whether the said Amendment (No. 33) shall be agreed to?

Resolved in the affirmative, and Amendment agreed to accordingly.

Their Lordships divided: Contents,116; Not-Contents 61.

CONTENTS
Airedale, L.	Emmet of Amberley, B.	Monck, V.
Aldenham, L.	Evans of Hungershall, L.	Newall, L. [Teller.]
Alexander of Tunis, E.	Falkland, V.	Northchurch, B.
Allan of Kilmahew, L.	Ferrers, E.	Nunburnholme, L.
Alport, L.	Faversham, L.	O'Hagan, L.
Amherst, E.	Fraser of Kilmorack, L.	Orr-Ewing, L.
Ampthill, L.	Gainford, L.	Platt, L.
Arran, E.	Gisborough, L.	Rankeillour, L.
Avebury, L.	Gladwyn, L.	Reigate, L.
Avon, E.	Glenkinglas, L.	Robbins, L.
Balfour of Inchrye, L.	Gray, L.	Rochester, L.
Banks, L.	Grey, E.	Romney, E.
Barnby, L.	Gridley, L.	Ruthven of Freeland, Ly.
Belstead, L.	Hailsham of Saint Marylebone,L.	Sackville, L.
Berkeley, B.		St. Aldwyn, E.
Blake, L.	Halsbury, E.	St. Davids, V.
Boyd-Carpenter, L.	Hanworth, V.	St. Helens, L.
Broadbridge, L.	Harmar-Nicholls, L.	Salisbury, M.
Byers, L.	Hatherton, L.	Savile, L.
Caccia, L.	Hawke, L.	Spens, L.
Carrington, L.	Hayter, L.	Stamp, L.
Cathcart, E.	Hemphill, L.	Strang, L.
Chelwood, L.	Henley, L.	Strathspey, L.
Clitheroe, L.	Hylton-Foster, B.	Swansea, L.
Clwyd, L.	Ilchester, E.	Teynham, L.
Cork and Orrery, E.	Ironside, L.	Thomas, L.
Cottesloe, L.	Jessel, L.	Tranmire, L.
Daventry, V.	Kings Norton, L.	Trefgarne, L. [Teller.]
Davidson, V.	Kinloss, Ly.	Vernon, L.
de Clifford, L.	Kinnaird, L.	Vickers, B.
De Freyne, L.	Leinster, D.	Vivian, L.
Derwent, L.	Lindsey and Abingdon, E.	Wade, L.
Digby, L.	Lloyd of Kilgerran, L.	Waldegrave, E.
Douglas of Barloch, L.	Long, V.	Ward of North Tyneside, B.
Drumalbyn, L.	Lyell, L.	Ward of Witley, V.
Effingham, E.	McNair, L.	Willingdon, M.
Ellenborough, L.	Mancroft, L.	Windlesham, L.
Elles, B.	Marley, L.	Wise, L.
Elton, L.	Merrivale, L.	Young, B.

NOT-CONTENTS
Ardwick, L.	Jacques, L.	Roberthall, L.
Aylestone, L.	Janner, L.	Samuel, V.
Blyton, L.	Kennet, L.	Segal, L.
Brimelow, L.	Kilbracken, L.	Shepherd, L.
Brockway, L.	Leatherland, L.	Shinwell, L.
Bruce of Donington, L.	Lee of Newton, L.	Stedman, B.
Burntwood, L.	Listowel, E.	Stewart of Alvechurch, B.
Burton of Coventry, B.	Llewelyn-Davies of Hastoe, B.	Stone, L.
Castle, L.	Lloyd of Hampstead, L.	Strabolgi, L.
Champion, L.	Lovell-Davies, L.	Taylor of Mansfield, L.
Chorley, L.	McCarthy, L.	Wallace of Coslany, L.
Cooper of Stockton Heath, L.	Milford, L.	Walston, L.
Crowther-Hunt, L.	Northfield, L.	Wells-Pestell, L. [Teller.]
Darling of Hillsborough, L.	Oram, L.	White, B.
Davies of Penrhys, L.	Pannell, L.	Willis, L.
Elwyn-Jones, L. (L. Chancellor)	Pargiter, L.	Wilson of RadclifTe, L.
Gaitskell. B.	Parry, L.	Winterbottom, L. [Teller.]
Gordon-Walker, L.	Peddie, L.	Wootton of Abinger, B.
Granville of Eye, L.	Phillips, B.	Wynne-Jones, L.
Greenwood of Rossendale, L.	Raglan, L.
Henderson, L.	Ritchie-Calder, L.

Clause 70 [Comptroller's power to revoke patents on his own initiative]:

4.26 p.m.

Lord ORAM moved Amendment No. 34:

Page 63, line 8, at end insert— ("(2) If it appears to the comptroller that a patent under this Act and a European patent (UK) have been granted for the same invention having the same priority date and that the applications for both patents were filed by the same applicant or his successor in title, the comptroller may, on his own initiative but only after the relevant date, consider whether to revoke the patent granted under this Act and may, after giving the proprietor of the patent an opportunity of making any observstions and of amending the specification of the patent, revoke the patent. (3) In this section "the relevant date" means whichever of the following dates is relevant, that is to say—

1. (a) the date on which the period for filing an opposition to the patent under the European Patent Convention expires without an opposition being filed;
2. (b) the date when any opposition proceedings under that convention are finally disposed of by a decision to maintain the European patent;
3. (c) if later than either of the foregoing dates, the date when the patent under this Act is granted").

The noble Lord said: My Lords, this Amendment provides for revocation by the comptroller, on his own initiative, of a patent under the Bill in cases where the proprietor has also obtained a European patent designating the United Kingdom for the same invention having the same priority date. Certain safeguards are, however, provided. First, the proprietor must be given an opportunity to make observations and to amend his patent. Secondly, no action can be taken by the comptroller until the period provided under the European Patent Convention for filing an opposition to the European patent has expired with no opposition having been filed or, if an opposition has been filed, until the opposition has been determined in the proprietor's favour. In other words, the comptroller will not be able to revoke a patent under this subsection until it is clear that two patents, one a Bill patent and the other a European patent, have been granted and the possibility of revocation of the European patent under the EPC has passed. These safeguards are analogous to those provided by Article 80 of the Community Patent Convention which deals with the same problem vis-à-vis Community patents and national patents. I beg to move.

On Question, Amendment agreed to.

Clause 71 [Proceedings in which validity of patent may be put in issue]:

Lord ORAM moved Amendment No. 35: Page 63, line 31, leave out from second ("in") to ("it") in line 33 and insert ("any proceedings unless—

1. (a) a reference to the comptroller of a question mentioned in section 34(1)(a) above has been made complying with section 34(5) above;
2. (b) proceedings for a declaration or declarator as to any such question have been commenced complying with section 34(9) above; or
3. (c) in the case of any other proceedings, they are commenced before the end of the period of two years beginning with the date of the grant of the patent or").

The noble Lord said: My Lords, this Amendment puts right a defect in the existing Clause 71(4). Under subsection (4) as drafted a rightful owner could only put invalidity in issue in any proceedings on the ground mentioned in Clause 69(1)(b) if those proceedings were brought within two years of grant, unless, of course, the proprietor of the patent knew that he was not entitled to it. It was not intended that this should be the case where the rightful owner had commenced proceedings before the comptroller under Clause 34(1), in compliance with Clause 34(5), or before the court under Clause 34(9). The Amendment makes the position clear by providing that once a reference to the comptroller has been made or proceedings for a declaration before the court have been commenced, in accordance with the two-year time limit specified in Clause 34, the rightful owner may put validity in issue under Clause 71 in any proceedings even though those proceedings have been commenced later than two years from the grant of the patent. I beg to move.

Lord AIREDALE

My Lords, I think there is a small drafting point to be raised. I should have thought that the word "or" should appear at the end of paragraph (a), in the same way as it occurs at the ends of paragraphs (b) and (c).

Lord ORAM

My Lords, I am grateful to the noble Lord for pointing that out. At first blush, I think he has made a point and, if so, it will certainly be taken note of and corrected in another place.

On Question, Amendment agreed to.

Clause 75 [Effect of filing an application for a European Patent (UK)]:

Lord ORAM moved Amendment No. 36: Page 66, line 41, leave out ("29 and") and insert ("to").

The noble Lord said: My Lords, this Amendment is consequential upon the addition of what is now Clause 28. This was added during Committee. I beg to move.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 37:

Page 67, line 10, at end insert— ("(aa) where a period of time relevant to priority is extended under that convention, the period of twelve months specified in section 5(2) above shall be treated as extended correspondingly;").

The noble Lord said: My Lords, Article 120 of the European Patent Convention allows time limits to be extended and where, by virtue of that Article the 12-month priority period of Article 87 of the European Patent Convention is extended under the Convention in relation to an application or patent, it is right that on any subsequent consideration of priority questions in the United Kingdom on that application or patent, it should be treated as having been extended under the Bill. I beg to move.

On Question, Amendment agreed to.

4.31 p.m.

Lord ORAM moved Amendment No. 38: Page 67, line 30, after ("30(1)(b)") insert ("above").

The noble Lord said: My Lords, I beg to move this drafting Amendment which inserts a missing word—namely, the word "above"—making it clear that the section referred to is in the section of that number in the Bill.

On Question, Amendment agreed to.

Lord ORAM moved Amendment No. 39:

Page 68, line 4, leave out ('53") and insert ("52(4A)").

The noble Lord said: My Lords, this Amendment is consequential upon Amendments Nos. 23 and 26, which we have dealt with. I beg to move.

Lord BELSTEAD

My Lords, I wonder whether the reference, in line 43 on page 67, to Section 53 should be a reference to Section 52. I am not sure, and I have not had a great deal of time to look at the Government's Amendments. But I just put that to the Government, and they may care to look at it after these proceedings.

Lord ORAM

My Lords, we will certainly do that.

On Question, Amendment agreed to.

Clause 77 [Authentic text of European Patents and patent applications]:

Lord ORAM moved Amendment No. 40: Page 69, line 40, leave out ("subsection (8)") and insert ("subsections (8) and (9)").

The noble Lord said: My Lords, this Amendment is consequential on Amendment No. 37 made at Report stage, which added a new subsection to what is now Clause 25 dealing with Crown use rights when a lapsed patent is restored. I beg to move.

On Question, Amendment agreed to.

Clause 79 [Jurisdiction to determine questions as to right w a patent]:

4.33 p.m.

Lord ORAM moved Amendment No. 41: Page 71, line 38, leave out from ('applicant") to end of line 40 and insert ("does not have his residence or principal place of business in any of the relevant contracting states").

The noble Lord said: My Lords, as at present drafted, Clause 79(4)(b) requires the court or the comptroller to be satisfied, before assuming jurisdiction, that the applicant resides or has his principal place of business elsewhere than in a relevant contracting State—an expression which is defined in Clause 79(9). The Amendment more correctly requires that the court or the comptroller be satisfied that the applicant does not have a residence or principal place of business in any such State. As so amended, the paragraph will more accurately reflect the intention behind the relevant provision of the Protocol on Jurisdiction, which forms an integral part of the European Patent Convention. My Lords, I beg to move.

On Question, Amendment agreed to.

Clause 81 [Patent agents and other representatives]:

Lord ORAM moved Amendments Nos. 42 and 43:

Page 74, line 1, leave out ("or member").

Page 74,line 2, leave out ("or member").

The noble Lord said: My Lords, I should like to move Amendments Nos. 42 and 43 together, and to speak also to Amendments Nos. 52, 53, 54 and 60. Amendments Nos. 42 and 43 to Clause 81, and Amendments Nos. 53 arid 54 to Clause 106, in deleting the reference to a "member" of a body corporate, prevent the clauses applying to the shareholders of the body. It was never, of course, intended that a body corporate could not describe itself as a patent agent unless all the shareholders were registered as patent agents. On the other hand, Clauses 81 and 106 should apply to members of a public body corporate whose affairs are managed by those members. To achieve this, the definition of "director", which includes "members" of a public body corporate in Clause 105(2), and which was applicable only to Clause 105(1), will, I hope, be deleted by Amendment No. 52 and placed in Clause 122, where it will apply generally, by Amendment No. 60. I beg to move.

Lord BELSTEAD

My Lords, as this Amendment will reword it, Clause 81(3) prevents any body corporate from practising before the European Patent Office, unless the name of every director appears on the European list. I think this will mean that a company whose directors are European patent agents, but whose share capital is owned by citizens of a country other than the United Kingdom and who are not on the European list, could practice before the European Patent Office. I am making no criticism at all about any company whose share capital is owned by people from another country, but I am not aware that the European Patent Office has as yet made up its mind on this point. The EPO is still only at a formative stage and will doubtless, in time, say whether it will allow the directors of such companies to act in Europe.

I should have thought that the only way satisfactorily to draft subsection (3) of Clause 81 at this stage is to say that a body corporate may not hold itself out to act before the European Patent Office unless it is so entitled by the European Patent Office. But that seems rather ridiculous, and I have not put down an Amendment to that effect. I suggest that the Government Amendment which has been moved by the noble Lord, Lord Oram, should now he agreed to; but I should give a warning from this side of the House that this is a point which will perhaps be returned to in another place.

Lord ORAM

My Lords, I am obliged to the noble Lord, Lord Belstead. It is a completely new point to me, as he will appreciate. I think that his suggestion is quite acceptable. If your Lordships will accept Amendments Nos. 42 and 43 together, we can give consideration to the point that the noble Lord has made.

On Question, Amendments agreed to.

Clause 85 [Effect of filing international application for a patent]:

4.38 p.m.

Lord ORAM moved Amendment No. 44: Page 77, line 16, after ("amendment") insert ("are").

The noble Lord said: My Lords, this is a drafting Amendment which inserts a word inadvertently omitted from Clause 85(4)(b). I beg to move.

On Question, Amendment agreed to.

Clause 89 [Enforcement of orders for costs]:

Lord ORAM moved Amendment No. 45:

Page 80, line 40, at end insert— ("(c) in Northern Ireland the order may be enforced as if it were a money judgment".).

The noble Lord said: My Lords, just as Clause 89(a) makes provision for enforcement in England and Wales of orders for the payment of costs made by the European Patent Office in proceedings before it, and Clause 89(b) for their enforcement in Scotland, so will the new paragraph (c), which this Amendment adds to the clause, provide for their enforcement in Northern Ireland. My Lords, I beg to move.

On Question, Amendment agreed to.

Clause 93 [Appeals from the comptroller]:

The LORD CHANCELLOR moved Amendment No. 46:

Page 82, line 6, leave out paragraph (b).

The noble and learned Lord said: My Lords, your Lordships will recall that at Report stage I accepted in principle an Amendment moved by the noble Lord, Lord Lyell. I am happy to say that I now also accept in the letter, and should have done so on an earlier occasion as well. I beg to move.

Lord LYELL

My Lords, after the noble and learned Lord's charming reference to the Amendment which I moved at an earlier stage, may I say that we are very grateful that he has been able to comply totally with our request. Therefore we support this Amendment.

On Question, Amendment agreed to.

4.40 p.m.

Lord LLOYD of KILGERRAN moved Amendments Nos. 46A and 46B:

Page 82, line 12, leave out paragraph (e)

Page 82, line 37, leave out ("(f)") and insert ("(e)").

The noble Lord said: My Lords, I beg to move Amendments Nos. 46A and 46B. Both Amendments are consequential and arise out of the deletion by your Lordships' House of Clause 20 from the Bill at Report Stage. Subject to any reservation which the Government wish to make about that deletion, I beg to move.

On Question, Amendments agreed to.

Clause 99 [Extension of privilege for communications with solicitors relating to patent proceedings]:

The LORD CHANCELLOR moved Amendments Nos. 47, 48 and 49:

Page 84, line 15, leave out subsection (2).

Page 84, line 31, at end insert— ("(3) This section shall not extend to Scotland.").

After Clause 100, insert the following new clause:—

Extension of privilege in Scotland for communications relating to patent proceedings.

It is hereby declared that in Scotland the rules of law which confer privilege from disclosure in legal proceedings in respect of communications, reports or other documents (by whomsoever made) made for the purpose of any pending or contemplated proceedings in a court in the United Kingdom extends to communications, reports or other documents made for the purpose of such proceedings

1. (a) before the Comptroller under this Act, the 1949 Act or any of the relevant conventions, or
2. (b) before the European Court of the European Patent Office under any of those conventions.

The noble and learned Lord said: My Lords, it may be convenient to discuss Amendments Nos. 47, 48 and 49 together. As at present drafted, Clause 99(1) extends the privilege from disclosure in legal proceedings of communications made with solicitors, and subsection (2) of the clause states how the provision is to apply in Scotland. In Scotland, however, the relevant rules of law on such privilege are not confined to solicitors but apply also to communications made with other professional people. Accordingly, it is thought preferable to remove subsection (2) from the clause, to make Clause 99 cease to apply to Scotland and to make separate provision for Scotland in the new clause after Clause 100, which is set out in the third of the Amendments that I have mentioned, namely, Amendment No. 49. I beg to move.

On Question, Amendments agreed to.

Clause 101 [Costs and expenses]:

The LORD CHANCELLOR moved Amendment No. 50: Page 86, line 9, after ("7") insert ("11").

The noble and learned Lord said: My Lords, this Amendment is entirely consequential upon the introduction during the Report stage of the new Clause 11. Clearly, security for costs may be necessary under Clause 11, just as it may be under Clauses 7 and 34. I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 51:

Page 86, line 18, at end insert— ("(5) In Northern Ireland any order under this section for the payment of costs may be enforced as if it were a money judgment.").

The noble and learned Lord said: My Lords, this Amendment makes provision for the enforcement in Northern Ireland of awards of costs made by the comptroller in proceedings before him. It does so by adding to Clause 101 a new subsection (5) which makes provision for Northern Ireland corresponding to that made in respect of England and Wales and Scotland respectively in subsections (2) and (3) of the clause. I beg to move.

On Question, Amendment agreed to.

Clause 105 [Offences by corporations]:

The LORD CHANCELLOR moved Amendments Nos. 52, 53 and 54:

Page 87, line 37, leave out subsection (2)

Clause 106, page 88, line 21, leave out ("or member").

Clause 106, page 88, line 22, leave out ("or member").

The noble and learned Lord said: My Lords, these Amendments were spoken to by my noble friend Lord Oram when he dealt with Amendment No. 42. Formally I beg to move that these Amendments be agreed to en bloc.

On Question, Amendments agreed to.

Clause 107 [Power of comptroller to refuse to deal with certain agents]:

The LORD CHANCELLOR moved Amendment No. 55: Page 89, line 13, after ("above") insert ("or section 88 of the 1949 Act (which is replaced by section 106)").

The noble and learned Lord said: My Lords, Clause 107(1)(b) provides for rules to be made authorising the comptroller to refuse to recognise as agent any person who has been convicted of an offence under Clause 106. It is clearly right that he should also be authorised to refuse to recognise as agent a person who, before the appointed day, has been convicted of an offence under the equivalent provision of the present Patents Act, namely, Section 88. The Amendment fills this gap in the Bill. I beg to move.

On Question, Amendment agreed to.

Clause 110 [Information about patent applications and patents, and inspection of documents]:

Lord LLOYD of KILGERRAN moved Amendment No. 55A: Page 90, leave out lines 35 to 37.

The noble Lord said: My Lords, I have already spoken to this Amendment. It is consequential upon the deletion from the Bill of Clause 20. Subject to the reservation which the noble Lord, Lord Oram, has already made regarding this matter, I beg to move.

On Question, Amendment agreed to.

Clause 115 [Rules]:

The LORD CHANCELLOR moved Amendment No. 56:

Page 92, line 27, at end insert— ("(ee) requiring the Comptroller to hold proceedings in Scotland in such circumstances as may he specified in the order where there is more than one party to proceedings under sections 7, 34, 37(1) or (2), 38(6), 68 or 69 above;").

The noble and learned Lord said: My Lords, during the Committee stage the noble Earl, Lord Selkirk, proposed an Amendment which would have compelled the comptroller in certain cases to take hearings in Scotland. My noble and learned friend Lord McCluskey indicated that the Government were giving consideration to the question of hearings in Scotland. This matter has been much discussed and a conclusion has been reached, that the wise course is to provide a power to make rules defining the circumstances in which the comptroller may or should hold proceedings in Scotland. That is what the Amendment does. Your Lordships will note that this power takes proper care of the situation which was worrying the noble Earl, Lord Selkirk, and other people, by making it clear that rules may be made in respect of proceedings involving more than one party. There is a rule dealing with these matters in the existing Patents Rules. I can give an undertaking that when the new Patents Rules are formulated they will contain a rule which I hope will give full satisfaction to all concerned. I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 57: Page 92, line 30, leave out from second ("the") to ("this") in line 31 and insert ("alteration of any period of time specified in").

The noble and learned Lord said: My Lords, this is a minor drafting change to Clause 115(2)(f) which is intended to meet a difficulty which could arise under Clause 5(2). I beg to move.

On Question, Amendment agreed to.

Clause 119 [Existing patents and applications]:

The LORD CHANCELLOR moved Amendment No. 58: Page 95, line 8, leave out from ("Act") to ("above") in line 10 and insert (""existing patent" means a patent mentioned in subsection (2)(a) and (c) above, "existing application" means an application mentioned in subsection (2)(b)").

The noble and learned Lord said: My Lords, this is a drafting Amendment which is intended to clarify subsection (7) of Clause 119 and to reflect the drafting of the Schedules in respect of existing patents and applications. I beg to move.

On Question, Amendment agreed to.

Clause 122 [Interpretation]:

The LORD CHANCELLOR moved Amendment No. 59:

Page 96, line 34, at end insert ("above").

The noble and learned Lord said: My Lords, this is a minor drafting Amendment. I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 60:

Page 97, line 20, at end insert— director", in relation to a body corporate established by or under any enactment for the purpose of carrying on under public ownership any industry or part of an industry or undertaking, being a body corporate whose affairs are managed by its members, means a member of that body corporate;").

The noble and learned Lord said: My Lords, this Amendment was spoken to by my noble friend Lord Oram when he dealt with Amendment No. 42. Formally I beg to move.

On Question, Amendment agreed to.

Clause 124 [Short title, extent, commencement and repeals]:

The LORD CHANCELLOR moved Amendment No. 61:

Page 101, line 8, at end insert— ("( )The consequential amendments in Schedule (Consequential Amendments) shall have effect.").

The noble and learned Lord said: My Lords, in speaking to this Amendment may I also, with the leave of the House, speak to Amendment No. 74. Amendment No. 61 is a paving Amendment for Amendment No. 74, which adds a new Schedule dealing with consequential Amendments to other enactments. These consequential Amendments are technical in character, and I do not think I need take up the time of the House by going through them in detail. I beg to move.

On Question, Amendment agreed to.

The LORD CHANCELLOR moved Amendment No. 62: Page 101, line 10, after ("Act") insert ("(which include certain enactments which were spent before the passing of this Act)").

The noble and learned Lord said: My Lords, in dealing with this Amendment it may be convenient to consider also Amendment No. 78. Amendment No. 78 is the principal Amendment. Again it lists a number of provisions which either are spent or will be superseded by the Bill. Amendment No. 62 makes it clear that some of the provisions repealed are already spent. I hope that we have caught most of the spent provisions in Schedule 5. I beg to move.

On Question, Amendment agreed to.

4.50 p.m.

The LORD CHANCELLOR moved Amendment No. 63: Page 101, line 11, at end insert (",subject to any savings contained in that column".)

The noble and learned Lord said: My Lords, this is a paving Amendment, made necessary by changes in Schedule 5 made by Government Amendment No. 77, which are consequential on changes in Schedule 4 following Government Amendment No. 73. I beg to move.

On Question, Amendment agreed to.

Schedule 1 [Application of 1949 Act]:

The LORD CHANCELLOR moved Amendment No. 64: Page 102, line 7, after ("13") insert ("(1) to (3)").

The noble and learned Lord said: My Lords, this Amendment arises from changes to Schedule 4 relating to infringement of patents granted under the 1949 Act. As a result of those changes it is no longer appropriate in Schedule 1 to maintain a reference to the "rights of publication" provision of Section 13 (4) of the 1949 Act and this Amendment deletes the reference. I beg to move.

On Question, Amendment agreed to.

Lord LLOYD of KILGERRAN moved Amendment No. 65:

For galley 39— Page 102, line 33, leave out ("eleven") and insert ("fourteen").

The noble Lord said: My Lords, there was an initial agreement between the noble Earl, Lord Halsbury, and myself that I should move this Amendment and he should reply. This brief Amendment is very important because it concerns the term of a patent. Under the present Patents Act the term of a patent is 16 years, subject to certain applications which can be made in the Court of the Comptroller-General for discretionary leave to extend the period of the term by up to 10 years; but now, under this Bill, all patents are to be extended to 20 years and the discretionary right of the court to extend the patent beyond 20 years no longer exists.

Once it has been decided to extend the patent to 20 years there really is no basic logic why the patents already in existence under the present Act should also be extended to 20 years, except for one matter. There may be licensees who would be seriously affected if the patents were all extended to 20 years. There may be persons who have no interest in the patent or who may be operating in the same field, who have made certain inventions or who feel they would be in a position to exploit certain of their products if there were no patents and they thought there would be a period when the patent would have expired.

Now it becomes a question of opinion. Should one now say, in so far as the patents that already exist, that in the last resort they should not have the advantage of five years; they should allow the copyists and other people to come into the field, because they will be fairly free, for the period of five years? This Amendment says, "That is too long; the patentee, the initial innovator who has been keeping on his patent for such a long time and paying heavy fees, probably from overseas and therefore bringing money into the country, should be given only two years where there is to be this relaxation of his monopoly rights, and not five years."

The clause to which this is now an Amendment was brought in by the Government at the Report stage. It includes relevant and, if I may say so, very effective provisions dealing with the rights of licensees and safeguards to people who are working in the other field. Now comes the question: Should this patent be free to the licensee, subject to certain safeguards already in the Bill, for five years or should it be limited to two years? The Standing Advisory Committee have said that it is a five-year period; in other words, they want the figure "11" to he in the Bill, as it is at present. I have suggested that they leave out "eleven" and substitute "fourteen", which will give the two years, because the life of the patent is 16 years.

The position varies from industry to industry as to the value placed on patents. In some industries all patents expire after seven years, but particularly in the chemical industry and the pharmaceutical industry it is difficult to get the patents worked and operated on a commercial scale. In the pharmaceutical industry not only have they to do a lot of work in connection with research and development but they also have to conform with very stringent tests rightly imposed upon them by the Government and other bodies for reasons of safety. Therefore, on balance, it seemed to us on these Benches that it would be right to limit the period over which there was freedom from monopoly to two years (subject to the usual safeguards) rather than five years.

With the leave of the House I should like to speak also to Amendment No. 66. In the Bill as at present drafted there is a clause which, as indicated at the Report stage, is a safeguard to people who have been operating in the same field as the subject of the patent. It says in effect that in this period of five years to which I have referred, and which we now want to reduce to two years, the patent should be subject to licences of right. That is to say, anybody who has been standing by for years, waiting for this patent to lapse, suddenly comes along and says, "I want to get into this field" and therefore he can go to the Patent Office and say, "I must have a licence". The patentee could not prevent him from having a licence and the licence would be granted by the Comptroller-General after a hearing, subject to certain terms.

In my submission there is already a proper safeguard in this clause as at present in the Bill to look after the interests of licensees. Therefore, this Amendment seeks to delete the subsection which says that anybody may come along to have a licence of right. To put the matter quite graphically, this Amendment is in favour of the patentee who has a good invention, so good that he has kept it going almost to the end of its term, and therefore provided there are safeguards for the licensees and persons operating in the same technological field, two years' safeguard is sufficient and not five, as in the Bill. But even in that last period the copyists and the people who want to "muscle in" in that field, perfectly properly no doubt, should not be allowed to do so at the expense, in effect, of the innovator. In other words, this Amendment encourages the innovators and not the copyists. I beg to move Amendment No. 65.

4.59 p.m.

The LORD CHANCELLOR

My Lords, the subject of the term of patents granted under the 1949 Act was debated at some length on Report in connection with Amendment No. 158, also moved by the noble Earl, Lord Halsbury, and the noble Lord, Lord Lloyd of Kilgerran,and I would not wish to cover all that ground again today. I would however say this. Between the two extreme positions of doing nothing about the term of existing patents and of increasing them all unconditionally to 20 years there is almost an infinity of intermediate points. Assuming, as I think it is fair to do, that no one is seriously urging adoption of either of the extreme positions, the problem becomes one of choosing an intermediate solution that gives as much all round justice as can be obtained when one is changing from one system to another.

As I ventured to say during the debate on Report, the Government's proposals in the Bill are based on consultation with industrial and professional bodies concerned with patents, and represent a compromise between the interests of patentees and non-patentees. Of course, as of most compromises, it may be said that this one would be improved if it were shifted a bit in one direction or another, and I am sure that the purpose of the present Amendments is to obtain an even better compromise.

I would venture to repeat what I said on the earlier occasion during debate on Report. If the Government's proposals are acceptable, as they are, to those most affected by them, then, unless there are compelling reasons to the contrary, I think it would be most unwise to change them. I cannot put the matter more simply than that, and I hope that, in the light of that appeal to the desirability of supporting this consensus, noble Lords will feel able to withdraw Amendment No. 65.

Lord NORTHFIELD

My Lords, may I interrupt my noble and learned friend. When he says that the Government's proposals are acceptable, could he tell us more specifically which organisations have said that they accept them, because the information that many of us have had is that considerable lobbies of interested parties are in fact wanting a much better compromise than the Government are offering.

The LORD CHANCELLOR

My Lords, I cannot specify the organisations at this moment of time, but before we have ceased discussing this Amendment I shall be able to do so. My understanding is that they are the professional bodies concerned and a number of industrial organisations as well, but it may well be that before we finish with this Amendment I shall get from a certain place further and better particulars of the matters my noble friend has asked for.

Paragraph 4(2)(c) of Schedule 1, which Amendment No. 66 would delete from the Bill, is an integral part of the provisions relating to the term of existing patents, since its effect is that a patentee cannot during the increased term of his patent stop anyone else from using the invention of the patent provided that he is willing to pay for doing so. This is the meaning of a licence of right. The royalty rate in default of agreement may be determined by the Comptroller under Section 35 of the 1949 Act. So I fear that I must also resist that Amendment.

Lord BELSTEAD

My Lords, may I say a word about this, if only because I rather discourteously had to leave your Lordships' House at Report stage before the noble and learned Lord moved the Government Amendment which writes in paragraphs 3 and 4 into Schedule 1. On that occasion, the noble and learned Lord very fairly admitted that the only controversial aspect of the Government Amendment to which he was speaking at that time was that it restricted the increased term of 20 years to patents having more than five years to run; in other words, the Government were drawing the line between old and new patents at live years.

This Amendment, as Lord Lloyd has explained, draws the line at two years, and the first thing I want to say is that so far as I can see that is really all it does. I am leaving aside for the moment the second Amendment, No. 66, about which I think the noble Earl, Lord Halsbury, will probably say a word, among other things, when he winds up. Taking it in the main, this Amendment really draws the line at two years and it does nothing else. Otherwise the Government's wording is left exactly as it is, with the safeguards for Crown use and for people wishing to work a patent during the increased term of a patent untouched, and leaving in the text of paragraph 4(4), which enables anyone who suffers loss or liability because of the increased term of the patent to apply to the court for restitution. All that stays in.

There are two points I would make without going into any of the arguments, for or against the claims of patentees and the problems of licensees, because Lord Lloyd has referred to those. First, I would apologise to the Lord Chancellor for querying at Report stage the noble and learned Lord's statement that the Government Amendment then was in line with the views of the Standing Advisory Committee on the subject. The noble and learned Lord was absolutely right and I was entirely wrong, because I was in error in thinking that the Government Amendment only allowed extension of an existing patent on the grounds provided by Section 23. Of course that was not the case; I am afraid I misread the Government Amendment. The right to extension in the Government Amendment at that time depended on the patent having five years or more to run.

Having said that, with regard to Lord Northfield's intervention just now, it may be that the Standing Advisory Committee's view on this subject is a majority view and not an absolutely total view. I do not know, and think perhaps your Lordships do not know, although we are aware that there are different views on what at the end of the day has to be an arbitrary decision. But even though the Standing Advisory Committee, either by majority or in total, supports the five-year term, I am bound to say that my noble friend and I on this Bench believe that the noble Lord, Lord Lloyd, has made out a strong case in moving that the two-year term be written into the Bill. If this Amendment errs, it is going to err on the side of the inventor, and really that is no bad thing.

The other point I wish to make is this. I think there is some Parliamentary advantage in accepting this Amendment. The Government Amendment was brought forward at fairly short notice, and I do not cavil at that because I know under what pressure Ministers and members of the Civil Service have been. But it was brought forward at less than a day's notice so far as we were concerned. There was not much time to consider the Government Amendment on its merits. But there will be plenty of time for the Government to consider the merits of this Amendment between now and the Committee stage in the House of Commons.

Indeed, agreement with this Amendment in this House will require the Government to consider the matter all over again, and I do not think that that would be a bad thing. Then if the Government genuinely believe that on grounds of equity, and in response to the Standing Advisory Committee, the Bill should once again revert to the five-year term, I suggest that the Government have only to use their majority, which they have combined with the Liberal Party, in the House of Commons in order to write the five-year term back into the Bill. If they did that, I feel sure that when the Bill comes back to this House, the noble Lord, Lord Lloyd, the noble Earl, Lord Halsbury, and my noble friends and I would then certainly accept the final verdict of the Government.

The Earl of HALSBURY

My Lords, I have, naturally, listened very attentively to all that has been said, particularly by the noble and learned Lord. I did not press our own Amendments on the last occasion, because I thought it wrong to do so when we had Government Amendments, as it were straight from the draftsman's pen. Therefore, I went along with them at Report stage. But having considered what was said then, I realise that there is a certain common ground between myself and the noble and learned Lord, in the sense that there are no magic numbers—five is not a magic number; two is not a magic number—and I am also swayed by the noble Lord, Lord Belstead, into remembering that I am not having the last word on this subject; the Bill now goes to another place. I concede that we need a dead zone for readjustment. You could argue that we should not by Statute intermeddle with the equity of established bargains between citizens, but that view has not been taken; the Government have yielded on that point and those concerned have yielded on that point. It is only a question of how long, with no magic numbers. From my own experience, I should have thought that two years was quite sufficient for the purpose of adjustment.

On the question of where the balance of opinion lies, I am a bit sceptical about the views collected by the Government from their advisers, from professional bodies, from the Standing Advisory Committee and so on. There are three groups of self-interest that have to be balanced against one another. One is the self-interest of the operator-inventor, a big chemical company, say, who are manufacturing the subject matter of the products of their own laboratories, and their interest is clearly to extend the patent for as long as possible. Then there is the licensee for royalties receivable on possibly foreign manufacture, and he may tend towards indifference, because the foreign patent may already exist for 20 years under foreign patent law. So he is anything from an interested to an indifferent party. Then there is the licensee in this country under foreign inventions for royalties payable to a foreign firm or possibly an English one. He would naturally like to see the extension minimal because it would terminate his liability to pay earlier. If I cast my mind along the list of companies with which I have been associated at one time or another, it seems that they are all quite different—their self-interests are different.

I do not think that I can regard as valid a kind of pseudo-plebiscite simulated by the Government's advisers when I know that my own experience is in quite sharp contrast with that. There is variation from industry to industry. For example, two firms which I have been advising in the heavy engineering industry have to pay heavy royalties abroad. That is due to lack of investment by the British steel industry in steelmaking plant. Most of our firms have not built a blast-furnace for years and have to go to America or Japan for the know-how and licences with which to do it. They are heavy royalty payers.

The operator-inventors will, of course, want to extend their term. I was once associated with a firm in the chemical industry whose receivable royalties were so great that they paid for the whole of the research laboratory expenditure in this country so that the advantages of operating patents were, as it were, a free issue.

My Lords, I feel inclined to stick to my guns and convictions on this matter. I have received some support from the noble Lord, Lord Belstead, and I am joining battle with the noble Lord, Lord Lloyd of Kilgerran—we are the usual pair of twins in this debate. If he is agreeable to going ahead, I shall express myself content that the Amendment should be put.

I believe that, as it stands, Amendment No. 66 and paragraph (c) is a rather characteristic piece of legislative legerdemain in which the Government gives away with one hand what it takes back with another. At one time we all felt, without wishing to raise old quarrels, that the Government had made a sensible gesture in consenting not to nationalise the shiprepairing industry. It was only when we read the small print that it was found that a very large proportion of the shiprepairing industry would be nationalised notwithstanding. I do not see the point in giving the operator-inventor a four-year extension of the life of his patent and then saying, "But everybody else can work it too". Where is the sense in that? I beg to support the Amendment standing in my name and that of my noble friend.

The LORD CHANCELLOR

My Lords, with the leave of the House, perhaps I may briefly answer the debate. It might seem almost a heresy to challenge the wisdom of the heavenly twins, if I may so describe them, but challenge them I shall. I do so because, in spite of the intervention of my noble friend Lord Northfield, the Government's proposals amount to a compromise which emanated from the Standing Advisory Committee bodies. Perhaps I may remind your Lordships of the composition of that Committee, which is quite formidable. It comprises the Confederation of British Industry, the Association of British Chambers of Commerce, the International Chambers of Commerce, the Bar Council, the Law Society, the Chartered Institute of Patent Agents, the Institute of Patentees and Inventors and, last but by no means least, the Trades Union Congress. Therefore, it was quite a formidable body that

argued over this for, I think, some considerable time.

To call it a pseudo-plebiscite, which is an attractive turn of phrase, is a little unkind to the deliberations of that sombre and responsible body of men. The compromise is not merely an idea that has sprung into the head of the Government—if I were to rest the matter on that foundation it would not necessarily appeal to all parts of the House. However, it has a good parentage and, accordingly, I hope that it will be accepted.

I am advised that perhaps the noble Lord, Lord Lloyd of Kilgerran, has misunderstood Amendment No. 66. It does not allow a third party to exploit the invention until after the 16-year period is up. It is only then that he "muscles in" and even then he has to pay a royalty, which is fixed by the comptroller under the licence of right. I do not know whether those observations may induce the noble Lord, Lord Lloyd of Kilgerran, not to press Amendment No. 66, but I am afraid that I must resist Amendment No. 65.

The Earl of HALSBURY

My Lords, if the noble and learned Lord had simply said that one adviser of merit had been unanimous on this point, he might have carried me with him but the list is so long that its lack of unanimity is almost guaranteed. Perhaps I may quote from Pooh-Bah in saying that it seems to do no more than: …give artistic verisimilitude to an otherwise bald and unconvincing narrative". My Lords, I shall stick to my guns.

5.16 p.m.

On Question, Whether the said Amendment (No. 65) shall be agreed to?

Their Lordships divided: Contents, 89; Not-Contents, 51.

CONTENTS
Aldenham, L.	Belstead, L.	Darwen, L.
Alexander of Tunis, E.	Berkeley, B.	Daventry, V.
Allan of Kilmahew, L.	Boothby, L.	Davidson, V.
Alport, L.	Bullock, L.	de Clifford, L.
Amherst, E.	Byers, L.	De Freyne, L.
Amory, V.	Carrington, L.	Drumalbyn, L.
Ampthill,L.	Cathcart, E.	Ebbisham, L.
Auckland, L.	Chelwood, L.	Ellenborough, L.
Avon, L.	Clifford of Chudleigh, L.	Elles, B.
Banks, E.	Cork and Orrery, E.	Emmet of Amberley, B.
Barnby, L.	Cullen of Ashbourne, L.	Energlyn, L.
Falkland, V.	Macleod of Borve, B.	St. Aldwyn, E.
Ferrers, E.	Mancroft, L.	St. Davids, V.
Gainford, L.	Mansfield, E.	Sandys, L.
Glenkinglas, L.	Marley, L.	Seear, B.
Gray, L.	Merrivale, L.	Spens, L.
Greenway, L.	Morris, L.	Stamp, L.
Gridley, L.	Mottistone, L.	Strathcarron, L.
Hailsham of Saint Marylebone,L.	Newall, L.	Strathcona and Mount Royal, L.
	Northchurch, B.	Strathspey, L.
Halsbury, E. [Teller.]	Nugent of Guildford, L.	Trefgarne, L.
Harmar-Nicholls, L.	Nunburnholme, L.	Tweedsmuir, L.
Hawke, L.	O'Hagan, L.	Vickers, B.
Hemphill, L.	Orr-Ewing, L.	Vivian, L.
Killearn, L.	Platt, L.	Wade, L.
Kimberley, E.	Porritt, L.	Ward of North Tyneside, B.
Lindsey and Abingdon, E.	Rankeillour, L.	Ward of Witley, V.
Lloyd of Kilgerran, L. [Teller.]	Rochester, L.	Wigoder, L.
Long, V.	Ruthven of Freeland, Ly.	Windlesham, L.
Lyell, L.	Sackville, L.	Young, B.
NOT-CONTENTS
Arwyn, L.	Elwyn-Jones, L. (L. Chancellor.)	Phillips, B.
Aylestone, L.	Gaitskell, B.	Ritchie-Calder, L.
Balogh, L.	Glenamara, L.	Shepherd, L.
Blyton, L.	Gordon-Walker, L.	Shinwell, L.
Boston of Faversham, L.	Greenwood of Rossendale, L.	Stedman, B.
Brimelow, L.	Hale, L.	Stewart of Alvechurch, B.
Bruce of Donington, L.	Henderson, L.	Stone, L.
Burntwood, L.	Kilbracken, L.	Strabolgi, L.
Castle, L.	Leatherland, L.	Taylor of Mansfield, L.
Champion, L.	Lee of Newton, L.	Wallace of Coslany, L. [Teller.]
Chorley, L.	Listowel, E.	Walston, L.
Collison, L.	Llewelyn-Davies of Hastoe, B.	Wells-Pestell, L. [Teller.]
Cooper of Stockton Heath, L.	Lovell-Davis, L.	White, B.
Crowther-Hunt, L.	Milford, L.	Willis, L.
Davies of Leek, L.	Oram, L.	Wise, L.
Davies of Penrhys, L.	Pannell, L.	Wootton, of Abinger, B.
Donaldson of Kingsbridge, L.	Parry, L.	Wynne-Jones, L.

Resolved in the affirmative, and Amendment agreed to accordingly.

5.24 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 66:

Page 103, line 35, leave out head (c).

On Question, Whether the said Amendment (No. 66) shall be agreed to?

Their Lordships divided: Contents, 80; Not-Contents, 45.

CONTENTS
Aldenham, L.	Emmet of Amberley, B.	O'Hagan, L.
Alexander of Tunis, E.	Falkland, V.	Orr-Ewing, L.
Allan of Kilmahew, L.	Ferrers, E.	Platt, L.
Alport, L.	Foot, L.	Porritt, L.
Amherst, E.	Gainford, L.	Rankeillour, L.
Amory, V.	Glenkinglas, L.	Rochester, L.
Ampthill, L.	Gray, L.	Ruthven of Freeland, Ly.
Auckland, L.	Gridley, L.	Sackville, L.
Avon, E.	Halsbury, E. [Teller.]	St. Aldwyn, E.
Banks, L.	Harmar-Nicholls, L.	St. Davids, V.
Barnby, L.	Hawke, L.	Sandys, L.
Belstead, L.	Killearn, L.	Seear, B.
Berkeley, B.	Lindsey and Abingdon, E.	Spens, L.
Boothby, L.	Lloyd of Kilgerran, L. [Teller.]	Stamp, L.
Carrington, L.	Long, V.	Strathcarron, L.
Cathcart, E.	Lyell, L.	Strathcona and Mount Royal, L.
Chelwood, L.	Macloed of Borve, B.	Strathspey, L.
Clifford of Chudleigh, L.	Mancroft, L.	Trefgarne, L.
Cork and Orrery, E.	Mansfield, E.	Tweedsmuir, L.
Cullen of Ashbourne, L.	Marley, L.	Vickers, B.
Daventry, V.	Merrivale, L.	Vivian, L.
Davidson, V.	Morris, L.	Ward of North Tyneside, B.
de Clifford, L.	Mottistone, L.	Ward of Witley, V.
Drumalbyn, L.	Newall, L.	Wigoder, L.
Ebbisham, L.	Northchurch, B.	Windlesham, L.
Ellenborough, L.	Nugent of Guildford, L.	Young, B.
Elles, B.	Nunburnholme, L.
NOT-CONTENTS
Arwyn, L.	Gaitskell, B.	Ritchie-Calder, L.
Aylestone, L.	Glenamara, L.	Shepherd, L.
Balogh, L.	Gordon-Walker, L.	Shinwell, L.
Blyton, L.	Greenwood of Rossendale, L.	Stedman, B.
Boston of Faversham, L.	Hale, L.	Stewart of Alvechurch, B.
Brimelow, L.	Henderson, L.	Stone, L.
Bruce of Donington, L.	Kilbracken, L.	Strabolgi, L.
Castle, L.	Leatherland, L.	Taylor of Mansfield, L.
Chorley, L.	Lee of Newton, L.	Wallace of Coslany, L. [Teller.]
Collison, L.	Listowel, E.	Walston, L.
Cooper of Stockton Heath, L.	Llewelyn-Davies of Hastoe, B.	Wells-Pestell, L. [Teller.)
Davies of Leek, L.	Lovell-Davis, L.	White, B.
Davies of Penrhys, L.	Oram, L.	Willis, L.
Donaldson of Kingsbridge, L.	Pannell, L.	Wise, L.
Elwyn-Jones, L. (L. Chancellor.)	Parry, L.	Wynne-Jones, L.

On Question, Amendment agreed to.

Resolved in the affirmative, and Amendment agreed to accordingly.

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

5.33 p.m.

Lord LLOYD of KILGERRAN moved Amendment No. 66A: Page 104, line 37, leave out ("20, 21").

The noble Lord said: My Lords, I have already spoken to this Amendment. Itisconsequential on the action of the House in deleting Clause 20 and, subject to any reservations that the noble Lord, Lord Oram, may have on behalf of the Government in the matter, I beg to move.

The LORD CHANCELLOR moved Amendment No. 67: Page 104, line 37, leave out ("68") and insert ("51").

The noble and learned Lord said: My Lords, this is a drafting Amendment consequential on changes to Schedule 4.

The LORD CHANCELLOR moved Amendment No. 68:

Page 104, line 46, at end insert— ("(cc) a reference to the grant of a patent under this Act includes a reference to the sealing and grant of an existing patent").

The noble and learned Lord said: My Lords, this Amendment is necessary so that in applying the provisions of the Bill to existing patents, which is the purpose of Schedule 2, a patent sealed and granted under the 1949 Act shall be treated as if it had been granted under the Bill.

Schedule 3 [Repeals of provisions of 1949 Act]:

The LORD CHANCELLOR moved Amendment No. 69: Page 105, line 21, leave out from ("by") to ("shall") and insert ("Schedule 2 above and Schedule 4 below").

The noble and learned Lord said: My Lords, Schedule 3 relates to repeals of certain provisions of the 1949 Act and paragraph 1(1) of the Schedule as drafted referred to provisions superseded by the operation of Schedule 2. However, Schedule 4 also supersedes some of the provisions of the 1949 Act, and a reference to that Schedule is therefore appropriate in Schedule 3, and that is the effect of the Amendment.

The LORD CHANCELLOR moved Amendment No. 70: Page 105, line 23, after ("11(3)") insert ("13(4)").

The noble and learned Lord said: My Lords, this Amendment complements Government Amendment No. 64 to Schedule 1. Both are consequential on Government Amendment No. 73 which redrafts the transitional provisions of Schedule 4 relating to infringement.

The LORD CHANCELLOR moved Amendment No. 71:

Page 105, line 25, at end insert— ("(3) The repeal of sections 13(4), 46 to 49 and 59 to 67 of the 1949 Act shall not affect the application of those sections in relation to existing patents and applications for patents.").

The noble and learned Lord said: My Lords, Schedule 3 has the effect of repealing the Crown use and infringement provisions of the 1949 Act. However, since those provisions will continue to have force in relation to acts done before the coming into force of the new Act, it is necessary for those purposes to except them from the general effect of the Schedule. This the Amendment does.

5.36 p.m.

Lord LYELL moved Amendment No. 72: Page 105, line 33, leave out from ("Court),") to end of line 36 and insert ("subsection".)

The noble Lord said: My Lords, with the permission of the House, I shall speak at the same time to Amendment No. 76. I spoke to two Amendments identical to these on Report and the argument I put forward then was that the grounds of revocation of a patent should not be changed or be capable of being changed in the middle of revocation proceedings, especially in the case of existing patents, which are of course revocable on the grounds set out in Section 32 of the 1949 Act.

Practioneers, be they the noble Lords, Lord Lloyd of Kilgerran and Lord Cawley, or patent agents or inventors, like the noble Earl, Lord Halsbury, are all concerned to give good advice to inventors or clients. Suppose a patent can be revoked on Section 32 grounds, it can be clearly seen that the patent is invalid. Along comes an inventor and consults an expert adviser who tells him that a patent is indeed invalid and that he, the inventor, can make use of a certain process. This measure will in due course become an Act and, when that happens, that particular patent will become validated and cannot be revoked, with what we regard as two potentially grave consequences.

First, anyone who makes secret prior use of a process can easily find that that process becomes valid, whereas under Section 32 the process is not patentable or the patent is not valid on the grounds of secret prior use. How can that be reconciled with expert advice which is at present given under the provisions of Section 32? The second grave consequence which we believe is liable to arise is the possibility of the removal from the grounds of objection of the lack of fair basis under the 1949 Act, or, as we have it in this Bill, the lack of support in the description.

In my remarks on Report I mentioned the case of secret prior use and I wish to develop those remarks a little further, though I shall do so briefly. The grounds of secret prior use are spelt out in Section 32(1)(l), but in sub-paragraph (l) we we find that secret prior use is not to be taken as grounds for revocation under sub-paragraph (e), which is novelty, and (f), which is obviousness. The law as it stands under the 1949 Act, in subparagraph (l), forbids secret prior use, but the Bill would tolerate and, I believe, even permit it. The Bill also seeks to repeal Section 32 (2), in which we find mention of secret prior use. For this reason, we believe that subsection (2) should stay in the provisions of the 1949 Act as they are to he repealed, or not, by the Bill.

I should like now to turn to the question of lack of fair basis. This ground in the 1949 Act has no counterpart in the European Patent Convention and I wonder whether it was really the intention of the Standing Advisory Committee that everything in this particular category should be omitted from the Bill. I and my noble colleagues hardly think so. An extra wide claim as part of an invention which might aggrieve a third party intending to use a certain process could be seen to offer the possibility that the inventor would find himself obstructed. Could this inventor be caught by the grounds of insufficiency in the Bill? That is one point that worries us. Secondly, it seems that the new Bill will enable interested parties to see patent files in the Patent Office. We believe that this will help in two ways: first, the applicant's comments and descriptions will be able to be closely examined and, secondly, a third party will be able to apply for an order of prohibition or certiorari. This would occur if a claim seemed likely to be granted which was not supported by the description. Under the 1949 Act such files were not open to the public, and I venture to suggest that the patent examiners were more lenient than they will be under the new Bill. Thus, I feel that the grounds of lack of fair basis can and, indeed, ought to be retained in the Bill as an objection to existing patents.

At Report stage, I was delighted and even encouraged by the comment of the noble and learned Lord that there was, as he put it, some theoretical force in my Amendment. I am afraid that I could not entirely agree with the noble and learned Lord when he said on Report that the grounds for revocation that were to be repealed were of limited importance. It appeared to me that he was not entirely convinced that the injustices that I brought forward in the Amendment were to outweigh the need for harmonisation. However, the practitioners, be they qualified or not, are convinced that the grounds of fair basis and secret prior use should remain in the 1949 Act as it applies to existing patents.

I hope that the noble and learned Lord or the noble Lord, Lord Oram, if he is to speak for the Government—I see a look of dissent on the face of the noble Lord, so I shall continue to address my remarks to the noble and learned Lord, whose comments we await with expectation—will say that the Government intend to examine more closely the provisions of Section 32. We believe that, even at this late stage of the Bill—and it is only late in the life of the Bill in this House—this battlefield will be fought over (I hope in a genteel and civil manner) in another place. At this stage we look forward to hearing what the noble and learned Lord has to say. I beg to move.

The LORD CHANCELLOR

My Lords, as has been pointed out by the noble Lord, Lord Lye11, Schedule 3, paragraph 2(2)(b) abolishes certain of the grounds on which an existing patent may be revoked under Section 32 of the 1949 Act, because those grounds are not available as grounds for the revocation of European patents and Community patents or of patents granted under the new law. The first Amendment would have the effect of re-introducing these grounds (except the ground of Section 32(3)) and the second Amendment is consequential.

We discussed this during the Report stage and I am afraid that I am still unable to accept the Amendment. During the period leading up to this Bill, there was much discussion with the several patent interests represented on the Standing Advisory Committee on Patents concerning the policy which should be adopted as regards existing patents. On the point to which this Amendment relates, the Committee clearly advised that, except for prior claiming, revocation of an existing patent should not be possible on grounds which will have no counterpart in the new law. That advice was reflected in the Green Paper published in 1975. It is true that the Chartered Institute raised objection on this particular point to the proposed policy there set out. However, this time no criticism of this policy was made by the organisations representing industry, although another professional body urged that the Bill grounds of revocation should be applied to existing patents. In view of this balance of views, and particularly having regard to the absence of objection from industry, it was decided to retain the policy of the Green Paper and this is now contained in Schedule 3 to the Bill.

I believe that there are good reasons to maintain the provisions of Schedule 3. It would be unjust to revoke an old patent after entry into force of the new law on a ground which is not available for the revocation of new patents. Apart from that, it is highly desirable to harmonise, so far as possible, the grounds for revocation of European, Community and all British patents and so avoid confusion in the public mind. I do not think that that objective would be served by preserving obsolescent grounds of revocation for 20 years after the Bill comes into operation.

The Amendment seeks to reverse this policy on the general ground that the Bill as it stands would validate old patents that could be invalidated on the existing grounds of Section 32. I do not find this argument attractive because we are dealing with a situation where existing patents have not as yet been held to be invalid; the thought that a patent may on some ground be invalid is far removed from a judgment that holds that this is in fact in law the case. As I said during the Report stage and as has again been pointed out today, the argument may have theoretical force, but in practice the revocation grounds which the Bill abolishes are of very limited importance.

The noble Lord, Lord Lyell, put it to the House that his main disquiet with the Bill concerned the abolition of the ground of secret prior use. Noble Lords on this side of the House and those who are advising the noble Lord, Lord Lye11, appear to think it inequitable that an inventor who has not applied for a patent and is relying on secret use of his invention should suddenly find that he is liable to be attacked by the proprietor of a patent which, under the 1949 Act, the secret user could have invalidated. My Lords, this is a true statement of the position so far as it goes, but I should like to say that this secret user is compensated under the Bill by the fact that he is given a right in Clause 61 to continue the use that he had begun. In view of this, I do not feel that the contention of the noble Lord has a great deal of force.

I should perhaps add that, where the secret prior use was the patentee's own secret use before he applied for a patent, then it is true that he obtained his patent knowing it to be invalid. I do not condone that, but bearing in mind that in such cases, as far as they exist, the evidence necessary for the revocation of the patent is usually known only to the patentee, the invalidity of his patent is, in consequence, more notional than real. Having regard to the history of the provision to which this Amendment relates, I regret that I cannot agree to this Amendment.

Lord LYELL

My Lords, I am even more grateful than I was at Report stage for the very full explanation that we have received from the noble and learned Lord. There is only one point that I should like to raise. I wonder whether the noble and learned Lord really believes, as I think he said, that it is undesirable that a patent that is in existence under the 1949 Act should, because of the repeal of the provisions of Section 32, be unable to be revoked under the provisions of the 1949 Act.

As the noble and learned Lord said so nicely, the advisers have given my noble friend Lord Belstead and myself, and indeed other noble Lords, so much advise in these matters of patents. It is these practitioners, if I may call them such, who have expressed disquiet. It seems that the laws relating to revocation of patents are being changed; indeed when the patent was granted it was seen that revocation was as set out in Section 32. I wondered merely whether the noble and learned Lord was entirely satisfied on this question. It seemed not to be justified.

Of course, in matters of law I must take guidance from the noble and learned Lord. I take with respect and humility all his comments. However, I think it would not be right to continue this argument, nor to push it further. We have received a considerable amount of further information today from the noble and learned Lord, and for that reason I beg leave to withdraw the Amendment, without reluctance.

The LORD CHANCELLOR

My Lords, I have little doubt that this matter will be returned to in another place.

Amendment, by leave, withdrawn.

Schedule 4 [Transitional provisions]:

5.52 p.m.

The LORD CHANCELLOR moved Amendment No. 73: Page 106, line 11, leave out paragraph 2 and insert—

("Use of patented invention for services of the Crown

2.—(1) Any question whether—

1. (a) an act done before the appointed day by a government department or a person authorised in writing by a government department amounts to the use of an invention for the services of the Crown; or
2. (b) any payment falls to be made in respect of any such use (either to the patentee or to an exclusive licensee);

shall, subject to sub-paragraph (3) below, be determined under sections 46 to 49 of that Act and those sections shall apply accordingly.

(2) Sections 52 to 56 above shall apply to an act so done on or after the appointed day in relation to an invention—

1. (a) for which an existing patent has been granted or an existing application for a patent has been made; or
2. (b) which was communicated before that day to a government department or any person authorised in writing by a government department by the proprietor of the patent or any person from whom he derives title;

and shall so apply subject to the modifications contained in paragraph 2 of Schedule 2 above and the further modification that paragraph (b) of section 52(4A) above shall not apply in relation to an existing application.

(3) Where an act is commenced before the appointed day and continues to be done on or after that day, then, if it would not amount to the use of an invention for the services of the Crown under the 1949 Act, its continuance on or after that day shall not amount to such use under this Act.

Infringement.

2A.—(1) Any question whether an act done before the appointed day infringes an existing patent or the privileges or rights arising under a complete specification which has been published shall, subject to subparagraph (3) below, be determined in accordance with the law relating to infringement in force immediately before that day and sections 13 (4) and 59 to 67 of the 1949 Act shall apply accordingly.

(2) Sections 57 to 68 above shall apply to an act done on or after the appointed day which infringes an existing patent or the privileges or rights arising under a complete specification which has been published (whether before, on or after the appointed day) as they apply to infringements of a patent under this Act or the rights conferred by an application for such a patent, and shall so apply subject to the modifications contained in paragraph 2 of Schedule 2 above and the further modification that paragraph (b) of section 66(2) above shall not apply in relation to an existing application.

(3) Where an act is commenced before the appointed day and continues to be done on or after that day, then, if it would not, under the law in force immediately before that day, amount to an infringement of an existing patent or the privileges or rights arising under a complete specification, its continuance on or after that day shall not amount to the infringement of a patent under this Act or, as the case may be, the rights conferred by a published application for such a patent.").

The noble and learned Lord said: My Lords, this is a technical Amendment of some complexity. It has two purposes. First, it introduces into the Bill a transitional provision governing the Crown use of patented inventions which are the subject of existing patents and applications. Expressed briefly, this provides that questions relating to the use of inventions for the services of the Crown, and payment for such use, shall be determined under the relevant provisions of the 1949 Act where the use took place before the appointed day, but shall be determined by the provisions of the Bill where the use takes place after the appointed day.

Secondly, the Amendment redrafts and, simplifies the transitional provisions of Schedule 4 relating to the infringement of existing patents and applications. Again, the appointed day marks the divide—the old law on infringement applies to acts done before that day, and the Bill provisions to acts done after it. This, however, is subject to the important proviso of paragraph 2A(3), according to which an act begun before the appointed day, which was not an infringement of an existing patent, shall not be an infringement if continued after that day. This is a matter of some complexity, but not, I think, controversial.

Before I formally move the Amendment, I should like to say that there was a point raised by the noble Lord, Lord Lloyd of Kilgerran, about Amendment No. 14 breaking new ground. Perhaps I should point out in connection with Amendment No. 73, that the transitional provisions relating to Crown use, which it introduces into the Bill, do not break new ground but are the natural analogue of the infringement transitional which was in the Bill as published. I beg to move.

The LORD CHANCELLOR moved Amendment No. 74:

After Schedule 4, insert the following new Schedule: Consequential Amendments—

Registered Designs Act 1949 (c. 88)

1. In section 32(1) of the Registered Design Act 1949—

1. (a) in paragraph (a), for "the Patents Act 1949" substitute "the Patents Act 1977" and
2. (b) in paragraph (c), after "1949" insert "or section 106 of the Patents Act 1977".

2. In sections 42 and 44(1) of the Registered Designs Act 1949, for "the Patents Act 1949" there shall be substituted, in each case, "the Patents Act 1977".

Defence Contracts Act 1958 (c. 38)

3. In subsection (4) of section 4 of the Defence Contracts Act 1958, for the words from "Patents Act 1949" to the end there shall be substituted "Patents Act 1977".

Administration of Justice Act 1970 (c. 31)

4.—(1) In subsections (2) and (3) of section 10 of the Administration of Justice Act 1970 for "either" there shall be substituted, in each case, "the".

(2) In subsection (4) of the said section 10, for "(as so amended)" there shall be substituted "(as amended by section 24 of the Administration of Justice Act 1969)".

(3) For subsection (5) of the said section 10, there shall be substituted:— (5) In subsection (8) of the said section 28 (which confers power on the Tribunal to make rules about procedure etc.) there shall be inserted at end of the subsection the words "including right of audience".".

The noble and learned Lord said: My Lords, I beg to move Amendment No. 74 formally. I have already spoken to this Amendment.

Schedule 5 [Enactments repealed]:

The LORD CHANCELLOR moved Amendment No. 75: Page 111, line 18, at end insert ("Section 13(4), subject, however to paragraph 1(3) of Schedule 3 above").

The noble and learned Lord said: My Lords, it might be convenient if I speak to Amendment No. 77 as well as this Amendment. These Amendments to Schedule 5 are consequential upon Government Amendments which have already been adopted. I beg to move.

The LORD CHANCELLOR moved Amendment No. 77:

Page 111, line 43, at end insert:—

("1 amp; 2 Eliz. 2. c. 52.	The Enemy Property Act 1953	Section 8, so far as it relates to the Patents Act 1949, subject, however, to paragraph 1(3) of Schedule 3 above.
5 & 6 Eliz.2.c. 13.	The Patents Act 1957	The whole Act, except in relation to existing applications.
2 & 3 Eliz. 2. c. 32.	The Atomic Energy Authority Act 1954	In Schedule 3, the entry relating to the Patents Act 1949, subject, however, to paragraph 1(3) of Schedule 3 above.
6 & 7 Eliz 2.c.38.	The Defence Contracts Act 1958	Section 1, so far as it relates to the Patents Act 1949, subject, however, to paragraph 1(3) of Schedule 3 above.
9 & 10 Eliz. 2. c. 25.	The Patents Act 1961	Section 2.
10 & 11 Eliz. 2 c. 30.	The Northern Ireland Act 1962	In Schedule 1, the entries relating to section 61 of the Patents Act 1949, subject, however, to paragraph 1(3) of Schedule 3 above, and the entry relating to section 84 of that Act.
1967 c. 80.	The Criminal Justice Act 1967	In Schedule 3, in Parts I and IV, the entries relating to the Patents Act 1949.
1968 c. 46.	The Health Services and Public Health Act 1968	Section 59, subject, however, to paragraph 1(3) of Schedule 3 above.
1969 c. 58.	The Administration of Justice Act 1969	In section 24, in subsection (1), the words "85 of the Patents Act 1949 and section" and "each of", in subsections (2), (3) and (4) the words "of each of those sections" and in subsection (4) the words from "as subsection (11)" to "and" and the words "inthe case of the said section 28".
1970 c. 31.	The Administration of Justice Act 1970	In section 10, in subsection (1), the words "Patents Appeal Tribunal or the" and in subsection (4), the words from "the Patents Appeal" to "and".
1971 c. 23.	The Courts Act 1971	Section 46.

Page 111, leave out lines 32 to 34 and insert— ("sections 34 to 45. Sections 46 to 49, subject, however, to paragraph 1(3) of Schedule 3 above. Sections 54, 57 and 58. Sections 59 to 67, subject, however, to paragraph 1(3) of Schedule 3 above. Section 68").

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

The LORD CHANCELLOR moved Amendment No. 78:

1973 c. 4.	The Atomic Energy Authority (Weapons Group) Act 1973	In section 5(2), the words "any provision of the Patents Act 1949 or", "section 46(3) of the Patents Act 1949 and" and "each", subject, however, to paragraph 1(3) of Schedule 3 above.
1973 c. 41.	The Fair Trading Act 1973	Section 126.
		In Schedule 3, in paragraph 16(2), the words from "of section 40" to "Commission", where first occurring.
		In Schedule 12, the entry relating to the Patents Act 1949.
1974 c. 47.	The Solicitors Act 1974	In Schedule 3, paragraph 3.").

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

An Amendment (privilege) made.

5.57 p.m.

The LORD CHANCELLOR

My Lords, I beg to move that this Bill do now pass. This matter has been not a war of attrition, but a struggle of endurance and, speaking for the Government, I should like to express our gratitude to noble Lords who have taken part in this difficult operation, so full of technicality, and so wearisome at times to the spirit. I understand that we have achieved, if that is the right word for it, a record number of Amendments to the Bill, not exceeded in modern times, as somebody has said. I am not quoting that as necessarily a merit, but it is a measure of the burden which has been placed upon noble Lords during the six days of discussion in Committee and the three days of discussion on Report.

There were two reasons for this, if I may plead some elements in mitigation. First, there was the extreme technicality of the subject matter; and the other reason for the multiplicity of Amendments was, frankly, the time factor and the need, which was recognised generously by noble Lords, to introduce the Bill in the House before Christmas so that it would be enacted in time for us to become founder members of the European Patent Convention.

My noble friend Lord Oram and my noble and learned friend Lord McCluskey will, I am sure, be happy to join in my expressing gratitude to noble Lords for the assistance they have given. Perhaps I may mention one matter about which we had our differences; namely, over the former Clause 49, which dealt with compulsory licences for pharmaceutical products. Noble Lords will remember that I undertook that the Government would move an Amendment to leave out that clause if a satisfactory voluntary agreement was reached with the pharmaceutical industry, but I was unwilling at that moment that the Government's hand in the negotiations should be jeopardised, as I feared it might be, by thr premature removal of that provision. However, all has ended happily and, in the event, despite the demise of Clause 49—or indeed, no doubt some would say, because of it—a satisfactory agreement with the pharmaceutical industry has been reached; and that is a matter which I am happy to record.

My Lords, I should like to express my gratitude for the helpful and constructive suggestions of the noble Lords, Lord Lyell, Lord Belstead, Lord Cawley and, last but not least, Lord Lloyd of Kilgerran. We are grateful also for the interventions from the noble Earl, Lord Halsbury, the noble Lord, Lord Nelson, and other speakers; and I think we can reasonably claim that on this occasion, in the case of this Bill, the House of Lords has greatly improved it from the time of its First Reading in the House. I beg to move that this Bill do now pass.

Moved, That the Bill do now pass.—(The Lord Chancellor.)

6.1 p.m.

Lord LYELL

My Lords, it falls to me to represent on these Benches the noble Lord, Lord Belstead, and to reply to the very kind and fulsome tributes and comments which have been made by the noble and learned Lord who is at this moment sitting upon the Woolsack. As we have come to this stage in the life of the Bill, I must say that I feel a twinge of sadness, and I wonder about the feelings of your Lordships, in or out of the House, not closely connected with inventions, with shoes, with blinds, with car hoods or, indeed, with the wonders of modern science. I have seen it written that many of the proceedings in your Lordships' House were akin to a ritual clog dance, but certainly I could not come to that conclusion having so often discussed the attachment of soft uppers to stiff backing, certainly from our Benches.

My Lords, I and, I suggest, many others in your Lordships' House were reminded of St. Luke's Gospel, in the New Testament, when we heard that this was the tenth session of the Patents Bill; but I wondered who would fulfil the part of the tetrarch and who else would rule various sectors of your Lordships' House. But, certainly, as the noble and learned Lord mentioned, on this Bill we have had six sessions in Committee and three more on Report, and we have also had Second Reading as well as today's very full afternoon. Indeed, Amendments were moved right through the Bill. It seems light years ago since we started, which I think was the 24th January. In fact, it was a mere 16 weeks when we set out on what I would call our Odyssey. My colleagues and I have learned, we have concentrated, we have laughed from time to time, we have listened a great deal and we have wondered. I believe that all of us have done valuable work.

At this stage we have spent at least 37 hours on the Bill. We have covered a very great deal which is of scientific interest. Let us not forget polytetra-fluoroethylene, chains of polymers and the like, which came in, I think, with the law of confidentiality. The noble and learned Lord pulled me up sharply on that; however, he is his usual charming self today. Above all, my Lords, I have to thank my noble friend Lord Belstead and the noble Lord, Lord Cawley, who unfortunately has not been able to be with us today, as he warned us. Certainly, too, the noble Lord, Lord Lloyd, and the noble Earl, Lord Halsbury; and the members of what I would call the Government triad. The noble and learned Lord, Lord McCluskey, is, I believe, otherwise occupied today, but nevertheless I hope that he would feel part of the House for the purposes of these tributes. Also, of course, I should like to thank all those who have been connected with our work on the Bill, both in your Lordships' House and outside. I would add my support to the Motion of the noble and learned Lord, that this Bill should, at last, after 37 hours and ten minutes, now pass.

6.4 p.m.

Lord LLOYD of KILGERRAN

My Lords, may I also thank the noble and learned Lord for his kind words, and add my thanks and praise to that trinity of noble Lords from the Government Front Bench who have worked so hard in this matter. We have had two noble and learned Lords and the noble Lord, Lord Oram; and I see a spirit of devolution having descended upon the Government Benches in this connection. Indeed, from the Benches on the opposite side, too, because those of us who have participated so much have connections with each country of Great Britain.

My Lords, on Second Reading I referred to the Patents Bill as another monster in the jungle of international and national patent law. Since Second Reading this monster has grown from 96 pages to 111 pages—over 16 per cent. inflation in five months, which must bring alarm to all Members of this House and elsewhere. But, as the noble and learned Lord has said, the Bill has been very much improved, and I think it is fair to say that this monster is now far more manageable than it was when it came to us on Second Reading. But whether it will be less expensive in operation, I doubt; and the more I reflect on the patent law the more I am convinced that more will have to be done to simplify procedure and reduce costs than is contained in this Bill. The White Paper on Patent Law, if I may remind your Lordships, said in paragraph 21: Existing arrangements for dealing with disputes over patents and appeals from Patent Office decisions are unsatisfactory". I feel that at least there should be experiments aimed at finding alternative and more rational methods of dealing with patent disputes. It may be that, when the rules associated with this Patents Bill are formulated, that aspect will be borne in mind.

My Lords, I feel very sincerely, as a person who has spent most of his working life at the patent and trademarks bar, to the exclusion of every other part of the law, that the United Kingdom methods of dealing with patent disputes do not really match up to the needs of industry in the 20th century. In conclusion, I should also like to thank the noble Lords, Lord Belstead and Lord Lyell, for the great courtesy they have shown to me, and for the tremendous work that they have done, not being experts in this field, in assimilating basic matters in a difficult technical field.

6.7 p.m.

The Earl of HALSBURY

My Lords, if an intervention from the Cross-Benches is permitted, I should like to refer to what the noble and learned Lord said about this having been a rather rushed Bill in the first place. He put us on notice in this respect at Second Reading, and we all understand that the rush was due to meeting our international obligations and also our legislative programme. That is an extenuating circumstance, obviously, though I do not think that our proceedings have been a model for such proceedings in the future. This is not the time to argue the recommendations of the First Report of the Committee on Practice and Procedure, which was published, I think, the day before yesterday, but I believe that those of us who have, as it were, borne the burden of the battle and the dust and the heat of the day could have done it in a Select Committee, round a table together. There were ten of us altogether. There were, first, two highly-skilled professionals, the noble Lord, Lord Lloyd of Kilgerran, and the noble Lord, Lord Cawley, who has been backing up and assisting the noble Lords, Lord Belstead and Lord Lyell. Then there were three what I might call experienced amateurs: Lord Brown and Lord Nelson, and I think I could come into that category.

The Government Bench had full backing from the Government machine, obviously, but, even so, the way they mastered their briefs was something to which one should pay a tribute. But I am really lost in admiration for the noble Lords, Lord Lyell and Lord Belstead, for the way they mastered the details of this extremely tricky, technical subject; and I think the Government, the House and the other place ought to be extremely grateful to them for the hard work they have done in licking this Bill into shape. I think we have all done our best in a spirit of amity, and we can now send the Bill winging on its way to another place, hoping that, like a homing pigeon, it will return to us in due course, hopefully in recognisable shape.

The LORD CHANCELLOR

My Lords, may I, on behalf of my two noble friends, express our gratitute for the kind remarks which have been made about us. I share the encomiums placed upon the noble Lords, Lord Lyell and Lord Belstead. Their efforts have really impressed me enormously, and I am most grateful to them. May I also thank those who have instructed the Ministers in this matter for their forbearance and patience in introducing me to what has been, too often, very much virgin ground. I am most grateful to them.

On Question, Bill passed, and sent to the Commons.