House of Commons - Regulatory Reform

Select Committee on Regulatory Reform Second Report

4 Background

The present structure of UK patent law

18. The Patents Act 1977 deals with the process of the application for, and grant of, a UK national patent. The purpose of a patent is to protect the right to exploit an industrially-applicable new invention.The Department explains that a patent provides a patentee with the exclusive rights to enjoy the benefits of an invention, in return for telling the public (via an application filed at the Patent Office) enough about the invention for it to be put into use. The maximum term of a patent is limited to 20 years from the date an application is filed.[12]

19. Inventors who choose to take out a patent on their invention are obliged to do so within the terms of the 1977 Act and the Patents Rules (governing detailed aspects of the patent-granting process) made under it.[13]The Department indicates that failure to meet the requirements of the Patents Act can result in a loss of rights.The requirements are complex, and as the law presently stands some errors or failures cannot be rectified.

Taking out a patent: the present formalities

20. The Department has set out a brief explanation of current formalities requirements in annex D of the explanatory statement. These are summarised below.

21. A UK patent, which is a monopoly right to use an invention, is granted by the comptroller of the Patent Office.A patent is an intellectual property right, and a proprietor of a patent can sue any person who infringes the patent.

22. A successful claim for infringement of a patent may entitle the proprietor to an injunction prohibiting the use of the invention by the infringer; the delivery or destruction of any infringing articles or products; damages, or an account of the profits obtained by the infringer; and a declaration of the validity of the patent, and its infringement. Damages may be claimed for infringements after a patent has been granted, and in some circumstances may also be claimed for infringements following publication of the application.

23. UK patents have a maximum life of 20 years from the date on which an application is filed at the Patent Office. This period runs from the date of filing, rather than the date of grant, of the patent. After a period of five years from the date of filing has expired, an annual fee must be paid for the patent to continue.

24. The public interest requires eventual publication of the content of applications for patents, even before the patent is granted.The Patent Office will publish an application for a patent in respect of an invention once 18 months have elapsed from the date the application was filed.[14] This enables the public to learn about the invention, and to use it, providing that:

the permission of the proprietor of the granted patent is obtained (for instance, a proprietor can license a third party to use the invention); or
the granted patent has ceased (that is, 20 years have elapsed from the date of filing, or five or more years have elapsed and the patent has not been renewed); or
the application has not matured into a granted patent.[15]

Ceased patents and restoration

25. If the appropriate renewal fee is not paid within a certain period, the patent ceases.Ceased patents may be restored, but only on application within a certain time, and subject to certain conditions.

26. The rights of third parties over a ceased and restored patent are protected.Anybody who uses the invention between the date on which the patent ceased and the publication of an application for its restoration may continue to use the invention after the patent has been restored without fear of being sued for infringement.

Date of filing

27. The date of filing of a patent application is the date on which a specified minimum set of filing criteria are met, rather than the date on which an application complies with all the formal filing requirements.

28. After an application has received a date of filing, the applicant has a certain specified time within which he must supply all other items necessary for the application to be complete. If these are not supplied within the specified periods, the application is treated as withdrawn.

29. At present, if drawings are missing from an application they may be filed later, but the filing date will be changed to the one on which the missing drawing or drawings are filed.

Preliminary examination and search

30. The applicant must request a preliminary examination of the application, to ensure that the formal standards set out in the 1977 Act and the Patents Rules have been complied with.

31. The applicant must also request that the Patent Office performs a search, which establishes the novelty or otherwise of the application.In practice the preliminary examination and search are done at the same time, and a combined fee is paid in respect of both requests.

32. If the preliminary examination and search are not requested within a specified time period, the application is treated as having been withdrawn.

33. If the preliminary examination has demonstrated that the requirements of the application have not been met, the comptroller will specify a period within which the application can be brought into order.If it is not brought into order within that time, the application can be refused. The comptroller must give the applicant an opportunity of a hearing before an application is refused.The specified period for bringing the application into order cannot be extended formally, but the comptroller may re-specify the period.

34. An application which has been refused, or treated as withdrawn, cannot be reinstated or revived: contrast the position with ceased patents, which may be restored in certain circumstances on application.

Priority claims

35. An inventor submitting an application may claim priority for that application, based on an earlier application made for the same invention.A priority claim may only be granted if the earlier application was made less than 12 months before the date of filing of the later application.If a priority claim is successful, the later application is awarded a priority date.

36. The Department explains that many of the important time limits involved in the administration of the 1977 Act run from either the date of filing or the priority date.

National security

37. At present the Patent Office examines every application made under the 1977 Act to determine whether the information disclosed in it would be a threat to national security or public safety if it were disclosed.

38. If a UK resident files such an application, the comptroller can issue directions restricting the ability to communicate or publish the information in the application.[16]No patent can be granted on an application unless and until the directions have been revoked.It is an offence to ignore the comptroller's directions.

39. In addition, no UK residents may file a patent application abroad unless:

the application has been filed at the UK Patent Office not less than six weeks before the overseas application, and the comptroller has not issued a direction restricting publication of the application's contents, or has revoked a previously-issued direction; or
the applicant has obtained the permission of the comptroller to do so.

Contravention of these provisions is an offence, punishable by a fine or imprisonment for up to two years.

The UK's international obligations

The Patent Law Treaty

40. The Department explains that there is a strong international aspect to patents.Most countries have their own intellectual property regimes.In addition, international and intergovernmental organisations have been established to administer patents, for example the World Intellectual Property Organisation (WIPO) and the European Patent Organisation (EPO).The Department states that the broad sweep of most national and international patent regimes are similar, but that details of practice may differ from country to country.

41. The UK is a signatory to the WIPO Patent Law Treaty (PLT), signed in Geneva in July 2000.The Treaty is aimed at harmonising the formal requirements of patents laws in the national legislation of those states who are contracting parties.The Department explains that the PLT defines a basket of requirements for formal patent application procedures, from which contracting parties may select requirements to implement in national legislation. The effect of this is to encourage contracting parties to reform their patent legislation, thereby levelling the international playing field.

42. The UK wishes in due course to ratify the PLT.Before the PLT can be ratified, UK national legislation must be reformed to remove elements which are inconsistent with the PLT.This is one purpose of the proposed regulatory reform order. The Government is also using the proposed order to remove other restrictions which it considers unnecessary or over-burdensome from the existing law.

The European Patent Convention

43. The European Patent Convention (EPC) is administered by the European Patent Office (EPO), the executive body of the European Patent Organisation.The European Patent Organisation is not an EU institution, but a free-standing body the aim of which is to establish a uniform patent system in Europe.

44. The EPO is not formally a contracting party to the PLT.It nevertheless had observer status at the negotiations for the treaty, where it took an active part.It is understood that the PLT is as a consequence compatible with the requirements of the EPC.

45. The European Union has indicated that it would in the future like to adopt a Community patent.It is likely that this will be achieved by adoption of the present European Patent Convention, to be administered by the EPO as at present.

Implementation and associated legislative change

46. It is intended that the reforms contemplated will come into force in December 2004.The Department explains that this delay is necessary to enable the appropriate adjustments to be made to the Patent Office mainframe computer.

The Patents Bill [Lords]

47. The proposed regulatory reform order will, among other things, amend the Patents Act 1977 to render its formalities provisions compatible with the formalities requirements of the Patent Law Treaty.The Department has indicated that a number of other amendments to the 1977 Actare necessary in order to implement other changes to patents law. These include the necessary amendments to comply with the substantive provisions of the PLT, and amendments to reflect the recent revision of the EPC.[17]These amendments are not considered appropriate to be made by regulatory reform order, and are to be made by primary legislation.

48. The Patents Bill [Lords] was introduced in the House of Lords on 15 January 2004.[18] A number of its provisions make consequential amendments to the regulatory reform order. The rationale for amendments are set out in full in a table supplied by the Department.[19] The principal amendments proposed in the Bill are as follows:

i. Paragraph 3(3) of Schedule 1 to the Bill would extend to European patent applications those rights, freedoms and protections established by the Order for the reinstatement of UK patent applications.[20]

ii. Paragraphs 5 and 16 of Schedule 2 to the Bill would ensure that, in cases where patents are reinstated[21] or resuscitated[22], the Crown is not liable for any payment to the patent proprietor if the Crown has used an invention in good faith during periods where a patent application for that invention has been terminated and reinstated or withdrawn and resuscitated.[23] The Department did not believe it was appropriate to make these amendments to primary legislation by means of regulatory reform order.

iii. Clause 14(3) brings into effect paragraph 6 of Schedule 2 to the Bill. This would provide that the Schedule to the Order would cease to have effect, and that the list of technologies prescribed in that Schedule would subsequently be made by means of rules to be prescribed by the Secretary of State. The Department explains that this is to allow greater flexibility in maintaining the list of technologies.[24] The Department has now indicated that these provisions in the Bill are unnecessary, as it intends to drop the associated provisions from the Order.[25]

49. The Department states that UK patent law will be made compliant with the provisions of the PLT by the amendments to the 1977 Act effected by the proposed Order, and by associated changes to the Patents Rules. Once the appropriate amendments have been made to primary and secondary legislation, the Government will initiate the diplomatic procedures necessary for formal ratification of the PLT to take place.[26]

Patents Rules

50. A number of provisions of the proposed RRO are to be supplemented by means of amendments to the Patents Rules.For example, the statutory extension of time which it is proposed to give applicants who are unable to complete the application requirements within the time limit specified by the comptroller is provided for in the RRO, but will only be specified by means of amendments to the Rules.

51. The explanatory statement does not set out in terms what amendments to the Patents Rules will be necessary to give effect to the proposals in the draft Order. The Department has now identified which of the provisions of the draft Order will require further prescription in secondary legislation, and has indicated, in respect of each of these provisions, how the Government intends to amend or supplement the Patents Rules.[27]

Transitional provisions and Departmental implementation strategy

52. Articles 24 and 25 of the draft Order appear to make adequate provision for transitional arrangements and the treatment of applications which are pending when the Order comes into force.

53. The Department has indicated that the entry into force of the Order, if approved, will be in December 2004, in order to allow time for the reprogramming of the Patent Office's mainframe computer.The reprogramming is to be carried out by a mainframe software development team within the Patent Office, and not by external contractors.[28]

12 Explanatory statement, para 4.03 Back

13 Presently S.I. 1995/2093, as amended (see above, footnote 10) Back

14 Patents Act 1977, s. 16 Back

15 Explanatory statement, annex D, para D05 Back

16 Patents Act 1977, section 22 Back

17 Explanatory statement, para 4.21 Back