HL Deb 06 April 2004 vol 659 cc1723-7

11.45 a.m.

Read a third time.

Clause 12 [Threats of infringement proceedings]:

Lord Sainsbury of Turville moved Amendment No.1: Page 6, line 19, at end insert— ( ) For subsection (2) there is substituted— (2) In any such proceedings the claimant or pursuer shall, subject to subsection (2A) below, be entitled to the relief claimed if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them. (2A) If the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent—

  1. (a) the claimant or pursuer shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;
  2. (b) even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect.""

The noble Lord said: My Lords, in moving this amendment, I shall speak also to Amendments Nos. 4, 5, 6 and 8, which stand in my name. This group of amendments addresses concerns that the noble Earl, Lord Attlee, raised at Report. The noble Earl will no doubt have realised that the main amendment in this group follows closely the approach of his amendment on this issue, which he moved at Report.

The main amendment in this group, Amendment No. 1, would amend Section 70(2) of the 1977 Act, in order to give a limited additional defence to a patent holder who is being sued for making unjustified threats of patent infringement. At present, when a patent holder, or anyone else, is sued for making unjustified threats, he may successfully defend himself by showing that infringement was indeed occurring. However, if the infringer can then show that the patent is actually invalid in a relevant respect, so that he has a defence to the allegation of infringement, the patent holder becomes liable for making unjustified threats.

A patent holder may believe that his patent is valid and may have correctly assessed that infringement is taking place. He will rightly want to approach the infringer to resolve the problem, and he is acting in good faith if he does so. However, he may be deterred from this course of action because he knows that, if his patent is found to be invalid for some reason, he will be liable for making unjustified threats. The amendment addresses this problem. Where the patent holder has been sued for making unjustified threats, and his patent has been found to be invalid, he will not he liable, provided he can show, first, that infringement was taking place and, secondly, that he did not know or have reason to suspect that his patent was invalid when he approached the infringer.

The new provision makes clear that the onus is on the patent holder to prove both these points. The provision will not offer any protection for a patent holder who approaches an alleged infringer while knowing or having reason to suspect that his patent is invalid. I also emphasise that the new defence will not be available where the court finds that the patent holder was wrong in his assessment that infringement was taking place.

Finally, I take this opportunity to add one other point concerning the threats provisions. Noble Lords will recall that we promised in Committee to consider a provision to exempt legal advisers from the threats provisions. On closer examination, we decided that any action in this respect would not be appropriate, not least because of the different nature and extent of the UK and Australian threats provisions. I am therefore pleased to be able to bring forward this amendment to provide further assistance to those trying to settle disputes in good faith. It complements the other changes that are already contained in this Bill, which will ensure that the threats provisions no longer provide such a barrier to the negotiation and settlement of disputes over infringement. I beg to move.

Earl Attlee

My Lords, I am extremely grateful to the Minister for tabling this amendment. I am also pleased that he has taken the wise decision not to provide additional protection for legal advisers.

On Question, amendment agreed to.

Schedule 2 [Minor and consequential amendments]:

Lord Sainsbury of Turville moved Amendment No. 2: Page 12, line 34, at end insert— In section 16(1) (publication of application), after "section 22 below" there is inserted "and to any prescribed restrictions".

The noble Lord said: My Lords, this group of amendments can be summarised quite simply. The amendments modify the 1977 Act so that an inventor may, in appropriate circumstances, have his name and address kept confidential by the Patent Office. It will not mean, of course, that a patent applicant or patent holder can keep his details secret. Noble Lords will no doubt recall that we debated this issue in Committee and at Report, so I will keep my comments on the amendments brief.

The amendments clear the way for the relevant secondary legislation, the Patents Rules, to provide the detailed mechanism for confidentiality. This has a number of advantages. First, as I said at Report, it allows us to consult users of the patents system before we set out the details of how and when an inventor may have his name and address kept confidential. Secondly, this approach is consistent with the way in which the matter is dealt with in regulations under the European Patent Convention. Thirdly, rules are already in place which deal with how and when other sensitive material supplied to the Patent Office may be kept confidential.

I trust that noble Lords will agree that these amendments fully meet their concerns on this issue, and that it is appropriate to deliver the measure in this way. I beg to move.

Lord Razzall

My Lords, I very much welcome the amendment that the Government have put forward. As the Minister will know, this is a concern that I raised both in Committee and at Report, supported by the noble Earl, Lord Attlee. I welcome the Government's response. It will give much needed protection in a limited number of cases.

Before I sit down, this may be the last opportunity before this Bill passes to thank the Minister for the extremely courteous way in which this Bill has been conducted. I think we both feel that this is absolutely a model of the way Bills ought to be conducted—that what we said from these Benches and from the Conservative Benches was very closely listened to by the Government. We did not manage to persuade your Lordships to accept all of our amendments, but we did persuade you of the efficacy of many of the points we made. I thank you very much.

Earl Attlee

My Lords, I too am very grateful to the Minister. Of course it is important to remember that most inventors will not desire any confidentiality—quite the opposite actually, because they want to see their name lit up in lights. However, it is an important amendment, and I would like to echo the observations of the noble Lord, Lord Razzall, about our deliberations on this Bill.

On Question, amendment agreed to.

Lord Sainsbury of Turville moved Amendments Nos. 3 to 8: Page 13, line 23, at end insert— In section 24 (publication and certificate of grant), after subsection (3) there is inserted— (4) Subsection (3) above shall not require the comptroller to identify as inventor a person who has waived his right to be mentioned as inventor in any patent granted for the invention." Page 13, line 37, at end insert— In section 61 (proceedings for infringement of patent), in subsection (4)(b), for "plaintiff" there is substituted "claimant". Page 13, line 40, at end insert— In section 63 (relief for infringement of partially valid patent), in subsection (2), for "plaintiff—there is substituted "claimant". Page 13, line 40, at end insert— In section 70 (remedy for groundless threats of infringement proceedings), in subsection (3)(c), for "plaintiff' there is substituted "claimant". Page 14, line 33, leave out "After subsection (2)" and insert— In subsection (2), for paragraph (i) there is substituted— (i) giving effect to an inventor's rights to be mentioned conferred by section 13, and providing for an inventor's waiver of any such right to be subject to acceptance by the comptroller:". ( ) After that subsection Page 14, line 42, at end insert— In section 131 (Northern Ireland), at the end there is inserted— (f) any reference to a claimant includes a reference to a plaintiff"

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

On Question, amendments agreed to.

Lord Sainsbury of Turville

My Lords, I beg to move that this Bill do now pass. I would like to thank the noble Lords for their kind comments. I think it is encouraging that at least on the Patents Bill we can agree to have a rational approach to these issues. I am very pleased that this rather technical Bill has passed through in such a constructive manner.

Moved, That the Bill do now pass.—(Lord Sainsbury of Turville.)

Lord Lyell

My Lords, I apologise to the Lord Chairman for intervening, but I wish to express my thanks as a Back-Bencher on this particular Bill, and reiterate what has been said by the noble Lord, Lord Razzall and by my noble friend, Earl Attlee. As one of the last of the Mohicans who was on the Benches in 1977 with the master Act, I found the Minister's comments displayed enormous clarity and knowledge, and were very helpful. Some of the points that he raised on Second Reading were also very helpful and much appreciated. I also appreciated his technical knowledge and skill, and the putting right of most of my queries. I thank him very much.

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