HL Deb 02 November 1988 vol 501 cc341-4

250 Clause 252, page 110, line 28, leave out from 'design' to 'if in line 37 and insert—

  1. '(2) The period for which the right subsists may be extended for a second, third, fourth and fifth period of five years, by applying to the registrar for an extension and paying the prescribed renewal fee.
  2. (3) If the first, second, third or fourth period expires without such application and payment being made, the right shall cease to have effect; and the registrar shall, in accordance with rules made by the Secretary of State, notify the proprietor of that fact.
  3. (3A)'.

251 Page 111, line 18, at end insert—

'Restoration of lapsed right in design.

8A.—(l) Where the right in a registered design has expired by reason of a failure to extend, in accordance with section 8(2) or (3A), the period for which the right subsists, an application for the restoration of the right in the design may be made to the registrar within the prescribed period.

(2) The application may be made by the person who was the registered proprietor of the design or by any other person who would have been entitled to the right in the design if it had not expired; and where the design was held by two or more persons jointly, the application may, with the leave of the registrar, be made by one or more of them without joining the others.

(3) Notice of the application shall be published by the registrar in the prescribed manner.

(4) If the registrar is satisfied that the proprietor took reasonable care to see that the period for which the right subsisted was extended in accordance with section 8(2) or (3A), he shall, on payment of any unpaid renewal fee and any prescribed additional fee, order the restoration of the right in the design.

(5) The order may be made subject to such conditions as the registrar thinks fit, and if the proprietor of the design does not comply with any condition the registrar may revoke the order and give such consequential directions as he thinks fit.

(6) Rules altering the period prescribed for the purposes of subsection (1) may contain such transitional provisions and savings as appear to the Secretary of State to be necessary or expedient.

Effect of order for restoration of right.

8B.—(1) The effect of an order under section 8A for the restoration of the right in a registered design is as follows.

(2) Anything done under or in relation to the right during the period between expiry and restoration shall be treated as valid.

(3) Anything done during that period which would have constituted an infringement if the right had not expired shall be treated as an infringement—

  1. (a) if done at a time when it was possible for an application for extension to be made under section 8(3A); or
  2. (b) if it was a continuation or repetition of an earlier infringing act.

(4) If after it was no longer possible for such an application for extension to be made, and before publication of notice of the application for restoration, a person—

  1. (a) began in good faith to do an act which would have constituted an infringement of the right in the design if it had not expired, or
  2. (b) made in good faith effective and serious preparations to do such an act,
he has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the restoration of the right in the design; but this does not extend to granting a licence to another person to do the act.

(5) If the act was done, or the preparations were made, in the course of a business, the person entitled to the right conferred by subsection (4) may—

  1. (a) authorise the doing of that act by any partners of his for the time being in that business, and
  2. (b) assign that right, or transmit it on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or the preparations were made.

(6) Where an article is disposed of to another in exercise of the rights conferred by subsection (4) or subsection (5), that other and any person claiming through him may deal with the article in the same way as if it had been disposed of by the registered proprietor of the design.

(7) The above provisions apply in relation to the use of a registered design for the services of the Crown as they apply in relation to infringement of the right in the design.'.

Lord Strathclyde

My Lords, I beg to move that the House do agree with the Commons in their Amendments Nos. 250 and 251. In doing so, I shall speak also to Amendments Nos. 371 to 373, 379, 397 and 403. Amendments Nos. 250 and 251 require the Designs Registry to send reminders when renewals are overdue and allow registered designs which have inadvertently been allowed to lapse to be restored. Amendments Nos. 371 to 373 and 379 revise and update the corresponding provisions in the Patents Act, and Amendment No. 403 is consequential. Finally, Amendment No. 397 is a drafting amendment which brings the wording in paragraph 11 of Schedule 7 into line with that used in paragraph 1 of that Schedule.

Moved, That the House do agree with the Commons in their Amendments Nos. 250 and 251.—(Lord Strathclyde.)

Lord Williams of Elvel

My Lords, Amendment No. 251 is an extremely important amendment to the Registered Design Act 1949. It deals with the restoration of a lapsed right in design. It is vital in my view that the matter raised in subsection (4) of the new clause to be inserted into the Registered Design Act should be fully clarified. The question is: what is the "reasonable care" that the proprietor should have taken before the registrar will decide that the lapsed design right should be renewed. I am worried about the writing into this kind of legislation the expression "reasonable care" without an indication from the Minister of what is intended. Perhaps he can help.

Lord Strathclyde

My Lords, under these amendments the period during which a registered design, or indeed a patent, may be restored will be specified in a statutory instrument. That of course means that we do not need to address the point here.

However, I should like to say a few words about the matter. In the context of patents it is easy to see that a one-year plus period is useful. The imminence of one annual renewal fee will serve as a reminder that the previous renewal was forgotten. Registered designs are different in that renewals are made only every five years.

While I do not wish to enter into a debate on a suitable period for registered designs, I am bound to say that we would not accept a five-year plus restoration period for registered designs. Even with the safeguards for third parties which are rightly built into the amendments, it would be quite untenable to leave the position open for as long as five years. We shall therefore be looking at a period in the region of one year plus and we shall consult those interested in the details in due course.

Lord Williams of Elvel

My Lords, that is all very well but we are dealing with the registrar ordering the restoration of the registered design provided that he is satisfied that the proprietor took reasonable care to ensure that the period was extended under the provisions of the Registered Designs Act.

Lord Strathclyde

My Lords, that is right. The expression "reasonable care" is already used in the equivalent provision under the Patents Act and the courts are used to applying that. What is reasonable is a question of fact in each case.

On Question, Motion agreed to.