S.C.D.
Amendment Paper as at
Tuesday 15th June 2004
STANDING COMMITTEE D
New Amendments handed in are marked thus *
PATENTS BILL [LORDS]
NOTE
The Amendments have been arranged in accordance with the Resolution of the Programming Sub-Committee (14th June).
RESOLUTION OF THE PROGRAMMING SUB-COMMITTEE
The Programming Sub-Committee appointed by the Speaker in respect of the Bill agreed the following Resolution at its meeting on Monday 14th June (Sessional Order C relating to Programming)
That—
(1) during proceedings on the Patents Bill [Lords] the Standing Committee shall, in addition to its first meeting on Tuesday 15th June at 10.30 a.m. meet—
| (a) | on Tuesday 15th June at 2.30 p.m.; |
| (b) | on Thursday 17th June at 9.25 a.m. and 2.30 p.m.; |
(2) the proceedings shall be taken in the following order namely, Clauses 1 to 5, Schedule 1, Clauses 6 to 15, Schedules 2 and 3, Clauses 16 and 17, new Clauses, new Schedules, remaining proceedings on the Bill;
(3) the proceedings shall (so far as not previously concluded) be brought to a conclusion at 5 pm on Thursday 17th June.
Mr Gerry Sutcliffe has given notice of his intention to move a motion in the terms of the resolution of the Programming Sub-Committee [Sessional Order C(9) relating to Programming (28th June 2001)].
Malcolm Bruce
Brian Cotter
9
Clause 1, page 1, line 20, at end add—
'(5) The comptroller will undertake periodic review of the efficacy of subsection 1 above in providing protection against monopolisation of scientific discoveries in humane genome technology relating to subsection (1).".'.
Mr James Arbuthnot
1
Clause 1, page 1, line 20, at end add—
'(2) In section 1(1) of the 1977 Act, after paragraph (d) there is inserted—
| "(e) | the grant of a patent for it is not excluded by section 4A below;".'. |
Malcolm Bruce
Brian Cotter
11
Clause 4, page 3, line 7, at end insert—
'(2) In section 73 of that Act after subsection (3) there is inserted—
| (4) | The comptroller shall not take action under subsections (1) or (2) later than six months after the grant of a full patent unless the action falls within section 2 subsection (4). |
(3) In section 74 of that Act in subsection (1) after "in issue" insert "within six months of the grant of a full patent".'.
Malcolm Bruce
Brian Cotter
14
Clause 7, page 3, line 42, leave out 'national security' and insert 'the defence of the realm'.
Mr James Arbuthnot
5
Clause 12, page 6, line 35, leave out from beginning to 'for' and insert 'Relief under subsection 3(b) or (c) above (injunction, interdict or damages) shall not be granted'.
Mr James Arbuthnot
6
Clause 13, page 8, line 1, leave out from 'below' to end of line 3 and insert 'the proprietor and any exclusive licensee of the patent, and such other persons as may be prescribed who appear to have an interest in the matters to which the request for an opinion relates, shall be entitled under such conditions as may be prescribed to be parties to the proceedings before the comptroller under this section'.
Mr James Arbuthnot
8
Clause 13, page 8, leave out lines 4 to 19.
Mr James Arbuthnot
7
Clause 13, page 8, line 28, at end add—
'(4) In section 97(1) of that Act (appeals from the comptroller) after paragraph (d) there is inserted—
| "(e) | a decision under section 74A above.".'. |
Malcolm Bruce
Brian Cotter
10
Page 7, line 23, leave out Clause 13.
Malcolm Bruce
Brian Cotter
12
Page 8, line 29, leave out Clause 14.
Mr Gerry Sutcliffe
15
*Schedule 2, page 12, line 24, at end insert—
| | | 'In section 1 (patentable inventions), in subsection (1)(d), after "subsections (2) and (3)" there is inserted "or section 4A".'. |
Mr James Arbuthnot
3
Schedule 2, page 12, line 36, at end insert—
'(5A) In section 16 (publication of application), at the end there is inserted—
| "(3) | The Comptroller will keep confidential the address of any inventor or applicant (if also the inventor) if requested by the inventor to do so.".'. |
Mr James Arbuthnot
2
Schedule 2, page 13, leave out lines 27 to 29 and insert—
'(4) The Comptroller will keep confidential the address of any inventor or applicant (if also an inventor) if requested by the inventor to do so.'.
Mr James Arbuthnot
4
Schedule 2, page 15, line 6, at end insert 'and subject to section 24(4) (publication and certificate of grant)'.
NEW CLAUSES
Compulsory binding technical arbitration for new and existing patents
Malcolm Bruce
Brian Cotter
NC1
To move the following Clause:—
'(1) In section 14(2) of the 1977 Act, after paragraph (c) there is inserted—
| "(d) | an agreement that in the event of a dispute arising regarding infringement after any grant the matter shall be referred to technical arbitration before an independent expert or panel of experts from the appropriate field of invention approved by the comptroller;" |
(2) In section 61(1) of that Act, after "this Act" there is inserted "infringement must be determined by technical arbitration by an independent expert or panel of experts from the appropriate field of invention approved by the comptroller as defined in section 14(2)(d) and a determination report will be made available for public inspection; and should an alleged infringer fail to participate in technical arbitration as defined, then infringement will automatically be determined in favour of the proprietor of the patent and any subsequent civil court procedures are subject to section 106 (1); following the determination of infringement or otherwise by technical arbitration,".
(3) In section 61(1) of that Act, after "a patent" there is inserted "subject to section 106(1) below.".
(4) In section 61(5) of that Act, after "dtermined by" there is inserted "technical arbitration as defined in section 14(2)(d) he may decline to deal with it and the independent expert or panel of experts from the appropriate field of invention approved by the comptroller" and "the court, he may decline to deal with it and the court" is omitted.
(5) In section 70(1) of that Act, after "(4) below," there is inserted "have the question of infringement determined by an independent expert or panel of experts from the appropriate field of invention approved by the comptroller," and "bring proceedings in the court against the person making the threats," is omitted.
(6) In section 70(2) of that Act, after "satisfies the", there is inserted "independent expert or panel of experts" and "court" is omitted.
(7) In section 71(1) of that Act, after "be made by the", there is inserted "independent expert or panel of experts from the appropriate field of invention approved by" and "court or" is omitted.
(8) In section 71(2) of that Act after "made by the", there is inserted "independent expert or panel of experts" and "comptroller" is omitted.'.
Two patent grant system
Malcolm Bruce
Brian Cotter
NC2
To move the following Clause:—
'(1) After section 17(7) of the 1977 Act there is inserted—
| "(8) | If the patent application has satisfied all the conditions of the preliminary search and any supplemental search, the comptroller will issue a preliminary patent. |
| (9) | On issue of a preliminary patent, the comptroller will also issue an option for a substantive examination which shall remain valid for a period of three years from the date of grant of the preliminary patent. |
| (10) | In the event that the inventor or joint inventors as described in section 7 subsection (2) above exercise their rights under subsection (9) above within 30 days of the grant of the preliminary patent, a substantive examination will take place without undue delay. |
| (11) | Neither the Secretary of State nor any officer— |
| (a) | shall be taken to warrant the validity of any preliminary patent granted under this Act or any treaty or international convention to which the United Kingdom is a party; or |
| (b) | shall incur any liability by reason of or in connection with any preliminary examination or investigation required or authorised by this Act or any such treaty or convention, or any report or other proceedings consequent on any such preliminary examination or investigation.".'. |
(2) Section 116 of that Act is omitted.
(3) In section 18(2) of that Act, after "view of" there is inserted "the state of the art and".
(4) In section 18 of that Act in subsection (4) after "him a" insert "full".'.
Costs, expenses and taxation
Malcolm Bruce
Brian Cotter
NC3
To move the following Clause:—
'For section 106 of the 1977 Act there is substituted—
| (1) | In proceedings before the Court brought under section 61 by a party determined as infringing the patent by an expert or panel of experts from the appropriate field of invention approved by the comptroller, that party assumes responsibility for all reasonable costs and expenses of both parties, irrespective of the Court's ultimate decision on infringement. |
| (2) | Costs and expenses under section 106 subsection (1) above must be submitted to the Court for approval within seven days of receipt and approved or otherwise by the court within 30 days thereafter. |
| (3) | Should any payment not be made directly by the party bringing any such action within 30 days of each approval by the Court, the case will automatically be determined in favour of the owner of the patent. |
| (4) | In proceedings before the Court brought under section 61 by a party determined as infringing the patent by an independent expert or panel of experts from the appropriate field of invention approved by the comptroller, that party cannot offset or claim any of the costs or expenses, as defined in section 106 subsection (1), against any form of UK taxation irrespective of the Court's ultimate decision on infringement. |
| (5) | In proceedings before the Court brought under section 61 by a party determined as infringing the patent by an independent expert or panel of experts from the appropriate field of invention approved by the comptroller, the owner of the patent will not be liable for any form of UK taxation on any awards made by the Court.'. |
ORDER OF THE HOUSE [7TH JUNE 2004]
That the following provisions shall apply to the Patents Bill [Lords]—
Committal
1. The Bill shall be committed to a Standing Committee.
Proceedings in Standing Committee
2. Proceedings in the Standing Committee shall (so far as not previously concluded) be brought to a conclusion on Thursday 17th June 2004.
3. The Standing Committee shall have leave to sit twice on the first day on which it meets.
Consideration and Third Reading
4. Proceedings on consideration shall (so far as not previously concluded) be brought to a conclusion one hour before the moment of interruption on the day on which those proceedings are commenced.
5. Proceedings on Third Reading shall (so far as not previously concluded) be brought to a conclusion at the moment of interruption on the day on which proceedings on consideration are commenced.
6. Sessional Order B (programming committees) made on 28th June 2001 shall not apply to proceedings on consideration and Third Reading.
Other proceedings
7. Any other proceedings on the Bill (including any proceedings on consideration of Lords Amendments or on any further messages from the Lords) may be programmed.
