§ 7.39 p.m.
§ Lord Triesman
rose to move, That the draft regulatory reform order laid before the House on 7 June be approved [20th Report from the Regulatory Reform Committee].
The noble Lord
said: My Lords, I beg to move the Motion standing in the name of my noble friend Lord Sainsbury. The Regulatory Reform (Patents) Order 2004 comprises many reforms which in combination will amend the Patents Act 1977. They will do so to make it possible to administer the Patents Act 1977 and the Patents Rules 1995 in a manner compliant with the World Intellectual Property Organisation's Patent Law Treaty, which I will refer to from now on as the PLT to save time. 1202 It is also intended to unify the criteria for allowing restoration of a ceased patent and the new provision for reinstatement of a terminated application for a patent; to allow patent applications withdrawn as a result of an error in a request from the applicant to be resuscitated; and to remove an anomaly in the treatment of patents as items of personal property between Scotland, the remainder of the United Kingdom and the Isle of Man.
While the proposals will be of considerable benefit to patent applicants and patentees, simplifying procedures and removing unnecessary burdens, care has been taken to ensure that they do not in any way undermine the interests of the public in general. In particular, the proposed legislation specifically protects the rights of third parties whenever a patent application whose termination has been made known to the public is resuscitated or reinstated.
The field of patents is specialised. The strange mixture of law with technology means that, in practice, most dealings with the Patent Office are conducted by highly skilled professional representatives working on behalf of patent applicants and patent proprietors. The department has consulted widely, and we are satisfied that these proposals are accepted as sound, reducing processing complexity without affecting the balance between rights-holders and third parties and being substantially cost-neutral. As such, they have been welcomed by those who represent the interests of applicants and patentees.
Articles 4 to 7 of the draft order seek to remove burdens from the process of making an application for a patent, and, in particular, from the requirements associated with qualifying for a date of filing. The date of filing of an application is important. The priority date of an invention is determined by the date of filing of the first application made in respect of it and sets the temporal boundary of the "state of the art"—that is to say, the known body of knowledge against which the novelty of the invention is to be judged.
The administrative formalities associated with qualifying for a date of filing should, therefore, in so far as it is possible, be reduced to the minimum. At the same time, the maximum scope possible should be afforded to applicants to comply with other less time-sensitive formal requirements by a later date, although this will as a consequence carry the risk that an application may be treated as withdrawn or refused if not all the formal requirements are subsequently complied with.
It is therefore proposed to reduce the amount of detail that needs to be supplied about the applicant; to make clear that where a description is filed in a foreign language it will still qualify for a date of filing; to allow a reference to an earlier application for the invention to be made instead of filing a description; and to abolish the filing fee and replace it with an application fee that can be paid later.
It is also proposed to improve on the existing arrangements for the late filing of missing material and to allow such material to be included without amendment of the date of filing where it was wholly 1203 contained in an earlier application from which the applicant legitimately claims priority rights. The new filing requirements will also keep applicants better informed of the status quo of their applications. In particular, when no application fee is paid at the time of filing, the applicant will be notified of the time available in which to pay it and the consequences of not paying in time.
Payment of the application fee will cause the Patent Office to examine the application for formal defects and to notify the applicant of any outstanding requirements. Between them these two provisions will allow those applicants who wish only to obtain a date of filing to do nothing more than meet the date-of-filing requirements, while at the same time ensuring that those who want to proceed need only pay the application fee to be promptly and fully informed of the outstanding requirements to be complied with. This represents the best use of resources for both applicants and the Patent Office.
Articles 17 and 18 of the order are concerned in part with the resuscitation of applications withdrawn as a result of an error in a request from the applicant, and in part with the extension of time limits specified by the comptroller. The present proposals not only make clear that the error-correction provisions of the Patents Act 1977 are available to correct such mistakes, but will also provide for the protection of third parties whenever the fact that an application has been withdrawn is published before the error has been remedied.
While many time limits are specified in the Act or prescribed in the rules, there remain some which are set by the comptroller. They are outside the scope of the existing provisions for extension of time periods, and the present reforms will remedy that deficiency. A first extension of any time limit specified by the comptroller will be available on request as of right, provided that the request is made within a prescribed time. Second and subsequent extensions will be allowable at the discretion of the comptroller. There is at present no formal provision for reinstating an application which has been refused or treated as withdrawn as a result of the applicant having failed to meet a time limit.
Article 8 of the proposed reforms will enable applicants to request, and the comptroller to allow, reinstatement of terminated applications, provided that the applicant can show that there was always a genuine intention to continue with the application. Where notification that an application has been terminated is published, appropriate third-party protection will be a precondition for allowing reinstatement. Article 9 adapts the existing provisions for restoring ceased patents to be uniform with the standards required by the newly instituted reinstatement provisions of Article 8.
I have already mentioned the importance of the date of filing in establishing the priority date of an invention. Until now, declarations of priority have been allowed only when the date of filing of the later application is not more than 12 months after the date of filing of the earlier application from which priority 1204 is claimed. Article 5 of the present proposals will allow the applicant to request, and the comptroller to allow, declarations of priority to be made with respect to applications filed within a limited period after expiry of that 12 months, provided that the applicant can show that it was always his intention to have filed it in time.
Article 10 addresses an anomaly in the treatment of patents as objects of personal property in Scotland, the remainder of the United Kingdom and the Isle of Man. Articles 12 to 16 and 19 effect consequential amendments to the Patents Act 1977 and are made necessary by the principal changes, which have already been explained. Articles 20 to 23 provide the transitional arrangements necessary to ensure a smooth introduction of the proposed reforms.
I thank the members of the Select Committee on Delegated Powers and Regulatory Reform for their finding that the present proposals are appropriate to be made under the Regulatory Reform Act 2001, and for recommending them to the House. The committee in another place has also considered the proposals. I had not treated them as a repeat of anything said in the other place because the debates in this House are freestanding on the matter. It concluded that they remove burdens within the meaning of the Regulatory Reform Act 2001 without removing any necessary protections or preventing the exercise of any existing rights or freedoms. On the committee's unanimous recommendation, the order was unanimously approved in the other place. I now commend it to this House.
Moved, That the draft regulatory reform order laid before the House on 7 June be approved [20th Report from the Regulatory Reform Committee].—(Lord Triesman.)
§ Baroness Miller of Hendon
My Lords, I thank the Minister for his very clear, detailed explanation of the order and for his department's usual excellent Explanatory Notes, which were of great help.
This is a highly technical order which will easily be understood by a specialist in patent law—indeed, the Minister mentioned that it was often the patent lawyer who got involved in doing this. I am advised by one such patent lawyer, whom I consulted, that the order removes a number of anomalies in the 1977 Patents Act and simplifies what are now considered to be over-rigid time limits and excessively prescriptive procedures for the presentation and granting of applications and transfers of the valuable rights constituted by a patent.
This is not a controversial matter, especially as it has undergone not one but two separate exercises in Parliamentary scrutiny. We are pleased to give it our support.
§ Lord Shutt of Greetland
My Lords, I too, thank the Minister for his detailed presentation of the order. I am neither a patent lawyer nor a patent agent. I suspect that it could have been quite an interesting career, but 1205 it was not to be. Perhaps there is a place in your Lordships' House for a patents expert—we may already have onex2014;but I am not one of those.
On the basis that the order is about the removal or reduction of burdens, the removal of anomalies, and enabling the Act to be administered in conformity with the World Intellectual Property Organisation Patent Law Treaty, we are happy on these Benches to support it.
§ Lord Lyell
My Lords, I wonder if I might take one minute of your Lordships' time. I congratulate the noble Lord, Lord Triesman, for taking such care in explaining the law of patents.
The noble Lord, Lord Shutt, could not have spoken a truer word. From the end of January 1977—I think it was 24 January—until some time in July of that year, I occupied the position roughly similar to that of my noble friend Lady Miller. I am neither a lawyer, nor a barrack-room lawyer, nor an expert. I am a mere accountant. I always love to tease my noble neighbour that I am a poor country boy from Angus and a mere accountant, but that did not stop me from assisting my noble friend Lord Belstead with the 1977 Patents Bill, which later became the Patents Act. The noble Lord, Lord Triesman, will be gratified to know that in those days the speakers included the Lord Chancellor and the noble and learned Lord, Lord McCluskey, who was here for an earlier matter and has now fled the coop—perhaps for good reason; I know not. The Labour government's Minister was in attendance with a full panoply and representatives of the Patent Office. Those of us on these Benches were briefed from the patent agents. I confirm to the noble Lords, Lord Triesman and Lord Shutt, that it was an extremely detailed and complicated Act, but it did not faze anyone in the accountancy profession, let alone Back-Benchers.
I really want to congratulate the noble Lord, Lord Triesman. I reiterate the thanks given by my noble friend Lady Miller to his department for the clear Explanatory Notes. I wonder whether he could confirm something either quickly tonight or at a later stage. I was invited to look, and did look, at the Explanatory Notes, and my attention was drawn to page 5 of the order. I think that he mentioned Article 5 and the new Section 15A on preliminary examination. Subsection (8)(b) says:As a result of the observations, the comptroller is satisfied that the formal requirements have been complied with".It seems to me that this is doing exactly what is spelled out in the Explanatory Notes. Where there is a fairly small or one hopes not particularly significant error—the Latin word that we used in 1977 was lacuna—that can be corrected without major complication or indeed any complication, and that above all will not harm the rights of third parties, the patent applicant will be protected. 1206 I apologise that I have gone into even a third minute. I am most grateful to the noble Lord, Lord Triesman. I commend him in proposing the order, and I wish it all success.
§ Lord Triesman
My Lords, I start by confirming that that is precisely the position. If I have misunderstood any part of it, I will most certainly write. I believe that I have the same understanding. I was also grateful for the Notes, because I am not a lawyer, just a humble mathematician ploughing a trade in economics. I feel that I understood it, despite its complexity, reasonably well. I am grateful to all noble Lords who have taken part in the brief debate.
On Question, Motion agreed to.