HL Deb 02 November 1988 vol 501 cc376-7

380 Schedule 5, page 180, line 25, at end insert—

'Revocation where two patents granted for same invention.

10A. In section 73 of the Patents Act 1977 (revocation on initiative of comptroller), for subsections (2) and (3) (revocation of patent where European patent (UK) granted in respect of same invention) substitute—

"(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 the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent.

(3) The comptroller shall not take action under subsection (2) above before—

  1. (a) the end of the period of filing an opposition to the European patent (UK) under the European Patent Convention, or
  2. (b) if later, the date on which opposition proceedings are finally disposed of;
and he shall not then take any action if the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention.

(4) The comptroller shall not take action under subsection (2) above if the European patent (UK) has been surrendered under section 29(1) above before the date on which by virtue of section 25(1) above the patent under this Act is to be treated as having been granted or, if proceedings for the surrender of the European patent (UK) have been begun before that date, until those proceedings are finally disposed of; and he shall not then take any action if the decision is to accept the surrender of the European patent.".'.

Lord Strathclyde

My Lords, I beg to move that the House do agree with the Commons in their Amendment No. 380. If a patentee obtains, for the same invention, both a domestic UK patent and a European patent which designates the UK, one or other has to go if we are to avoid having two patents in force in the UK for that invention. At present, the patentee has no option—it is the UK patent which must go.

When the House was considering the Bill at Report, the noble Earl, Lord Stockton, drew attention to the fact that this could cause difficulties for the patentee if the European patent is ready for grant before the domestic one. He would have to gamble on getting his UK patent if he decided that that would be preferable and thus withdraw his European application. If the UK patent was in the end not granted, he would end up with nothing.

My noble friend Lord Beaverbrook undertook that the Government would look into the problem and try to find a solution, bearing in mind that the European Patent Convention does not permit revocation of the European patent in such circumstances. Amendment No. 380 is the result. It does not require the European patent (UK) to be revoked, but allows the proprietor to surrender it instead, which in practice has much the same effect. The only real difference is that surrender cannot take place until some time after it is requested and is not fully retrospective in effect. There may, therefore, be a period in which two patents are in force for the same invention, but as one of those patents will be under notice of surrender throughout that period, nobody will be misled. I commend the amendment to the House.

Moved, That the House do agree with the Commons in their Amendment No. 380.—(Lord Strathclyde.)

On Question, Motion agreed to.