Select Committee on Regulatory Reform Second Report



6 Compliance of the proposal with Standing Order No. 141(6) criteria applying to individual provisions

Proposal A: Date of filing

Purpose of the proposal

57. Proposal A would amend the provisions of the 1977 Act insofar as they relate to the date of filing of a patent application at the Patent Office. Reforms to three separate areas of the present regime are envisaged:

Proposed change A1: criteria for date of filing

58. The award of date of filing of a patent application is a critical element of the process of granting a patent. The date of filing is not the date on which an application fully complies with all the formal application requirements, but the date upon which a specified set of minimum criteria are met.[29] Several time periods run from the date of filing:

  • the specified time periods within which all other items necessary to complete the application must be filed;
  • the maximum lifetime of the patent (presently 20 years);
  • the date from which fees for the renewal of the patent fall due (annually from the fifth year following the date of filing).

59. The present conditions which have to be satisfied before an application can be given a date of filing are set out in section 15(1) of the 1977 Act. They are as follows:

i.  Intent: An indication that a patent is being sought;

ii.  Identification: An identification of the applicant or applicants for the patent;

iii.  Description: A description of the invention for which a patent is being sought;

iv.  Fee: A filing fee (presently set at nil).

60. The proposal would replace the existing requirements with new or re-enacted requirements (set out in article 5 of the draft Order) as follows:

i.  Intent: An indication that a patent is being sought (a re-enacted requirement);

ii.  Identification: Two alternative forms of identifying an applicant: either the identity of the applicant (the present condition) or a means of contacting the applicant (considered a less onerous condition);

iii.  Description: Two alternative forms of describing the invention: either something which is, or appears to be, a description of the invention for which a patent is being sought, or a reference to an earlier application;

iv.  Fee: The requirement for a filing fee is to be removed. The Department proposes to replace this with an application fee, discussed at paragraph 103 below.

61. In addition, provision is made for the comptroller to notify an applicant:

a)  if any of the conditions for securing a date of filing of the application are not met, and if so what else must be filed in order for the application to have a date of filing (proposed new section 15(3));

b)  if all conditions have been complied with, the date of filing and the further requirements which must be complied with and the time periods within which they must be fulfilled if the application is not to be treated as withdrawn.

Identification

62. The alternative requirement is to be found in new section 15(1)(b), inserted by article 5 of the draft order. This provides that an application shall identify the applicant or provide a means of contacting him. New section 15(2)(a), similarly inserted by article 5, ensures that an application will not be refused a date of filing even if the identity of the applicant is given in a foreign language or a non-Roman character set. The Department states that if only a means of contacting the applicant is given, the fuller details of the applicant (necessary to associate the applicant with the application) may be provided later, under rules which are already prescribed.[30]

Description

63. New section 15(1)(c)(i), inserted by article 5, provides that a patent application shall contain either:

  • something which is or appears to be a description of an invention for which a patent is sought, or
  • a reference to an earlier application.

Again, new section 15(2)(a) ensures that an application will not be refused a date of filing even if the description is in a foreign language or a non-Roman character set.

64. A description is necessary for an application to be given a date of filing, as patents are only valid in respect of matter which was disclosed in the application on the date of filing.[31] The Department states that no amendment of an application is allowed if it results in the application disclosing matter extending beyond that disclosed in the application as filed.[32] If a description is initially provided in a language not accepted by the Patent Office, the Patents Rules require a translation to be provided at a later date before the application can proceed.[33]

65. The other alternative requirement, allowing an application to qualify for a date of filing by reference to an earlier application, will require an applicant to file two further items at a later date:

  • a description of the invention for which an application is sought; and
  • a certified copy of the earlier application.[34]

New section 15(10)(a)(i) and (ii), inserted by article 5 of the draft order, imposes this requirement. A consequential amendment has been made to section 76 to ensure that an application will not be allowed to proceed unless any matter which is present in the late-filed description and which cannot be found in the earlier application to which reference is made is excluded.[35]

Removal or reduction of burdens

66. While the proposal removes a number of the burdens associated with the present formalities, it also re-enacts one of them and replaces a number of others with new requirements, discussed below.

67. The only burden to be removed entirely under this heading is the formal requirement that a filing fee be paid. At present the filing fee is set at nil.[36] The Department argues that abolishing it will prevent it being revalued in the future. The proposal envisages replacing the filing fee with an application fee (see paragraph 103 below).

Re-enactment of a burden

68. The Department has indicated that one of the existing burdens on applicants is to be re-enacted in this part of the proposal, namely the requirement that an applicant must indicate that a patent is being sought. This is considered necessary, as the Patent Office administers several different types of intellectual property right besides patents (e.g. the registration of copyright, trade marks, and designs).

69. The Department considers that this re-enacted burden is fair and proportionate. We agree.

Imposition of new burdens: proportionality

70. The proposed new burdens to be imposed by proposal A in respect of filing formalities are:

  • supplying information allowing the applicant to be contacted (as an alternative to supplying the identity of the applicant); and
  • filing something which appears to be a description of the invention for which a patent is sought or, alternatively, filing a reference to an earlier application (as alternatives to filing a description of the invention).

71. In both cases the alternative requirements appear less burdensome than the requirements in the existing law. The Department states that where they require additional documentation to be filed within certain time limits, those limits are to be set commensurate with time limits which have to be observed for other comparable elements of the application.[37]

72. The Department argues that both are fair and proportionate. The requirement that the applicant provide a means of contact is essential in order that the comptroller can contact the applicant to notify any defect in the application (under new section 15(3)), and, if the initial formal requirements are met, to notify the applicant of the date of filing awarded and any further requirements which must be complied with (under new section 15(4)).

73. The Department believes that the requirement that the application contains something which appears to be a description of the invention is necessary, since patents are only valid in respect of the matter disclosed at the date of filing. The description therefore establishes the extent of the validity of the eventual patent. It is argued that the new burden imposed is no more onerous than the burden it replaces.[38]

74. The alternative requirement, that the application contain a reference to an earlier application, will require an applicant to file, at a later date, the description of the invention for which an application is sought, together with a certified copy of the earlier application.[39] The Patent Office argues that this burden is necessary in order to provide for a comparison between the earlier application to which reference is made and the description filed later, the purpose of this comparison being to ensure that no additional matter is accepted in the later description.[40] It therefore believes that the new burden is proportionate to the benefits which are provided, namely that an applicant is able to apply for a date of filing by reference to a previous application.

75. We consider that the new burdens are proportionate to the benefits they confer.

76. New sections 15(3) and (4) will oblige the comptroller to notify the applicant of the date of filing awarded, and of any matters which, if left outstanding, would result in the application being treated as withdrawn. This reflects current best practice in the Patent Office. The Department believes that the reflection of such practice in legislation would be beneficial.[41]

PLT compliance

77. The Department has indicated that the provisions concerning intent, identity and description set out above reflect the relevant articles of the Patent Law Treaty.[42]

Effect on necessary protections

78. The Department believes that these proposals do not remove any necessary protections from either the applicant or any third parties.[43]

79. The new regime will allow for a description of an invention to be submitted in a foreign language or a non-Roman character set. If a description is provided in a language not accepted by the Patent Office, it is contemplated that the Patents Rules will require a translation to be provided at a later date to enable the application to proceed.[44] The new regime does not remove a level of protection for third parties: until publication, the application will not be in the public domain, and when it is published, the description will be in a language which was accepted by the Patent Office or, where it was not, it will have been translated.

80. We consider that necessary protections are retained.

Effect on rights and freedoms

81. The Department believes that these proposals do not prevent applicants or third parties from exercising their existing rights in relation to patents and applications for patents.[45] We do not consider that this proposal would prevent any person from continuing to exercise any right or freedom which he might reasonably expect to continue to exercise.

Proposed change A2: filing of missing drawings or parts of the description

82. Once a patent application has been given a date of filing, restrictions are placed on the amount of material which can be added to it. An application which has received a date of filing, but later has material added to it, will have its date of filing amended from the original date to the date on which the missing material was added.

83. At present, only drawings which are referred to in the original application, but which are missing on the date of filing, may be added to the application. The Department explains that where the missing drawings are essential to an application, this avoids the need to withdraw an application and start the filing process anew.[46]

84. Once the preliminary examination has been conducted, the Patent Office may notify the applicant if any drawings are found to be missing from the application. In practice, the Patent Office informally notifies an applicant if, during the process of awarding a date of filing, it becomes aware that any drawing is missing from the application as filed. Drawings which are discovered to be missing during the preliminary examination may be added to the application subsequently, whereupon the date of filing of the application is amended to the date on which the additional drawings are filed.[47]

85. The Department proposes to liberalise the regime, to allow not only drawings but also parts of a description which were missing from an earlier application to be filed after the original date of filing. These are now termed 'missing parts'.

86. Two provisos are to apply to the subsequent filing of missing parts:

  • if missing parts are filed, the date of filing of the application will be changed to the date of filing of the missing parts;
  • the applicant may choose to withdraw the missing parts, in order to allow the application to revert to its original date of filing.

87. An applicant who makes a priority claim on filing an application—that is, claims that the application relates to a matter which was the subject of an earlier application—and can show that a missing part was present in that earlier application will be allowed to retain the filing date originally given to the application. The Department states that a certified copy of the earlier relevant application will have to be filed in order to enable the missing parts to be substantiated.[48]

Removal or reduction of burdens

88. We consider that the proposal removes burdens. The Department claims that the proposed new provisions are 'significantly more beneficial' to applicants, and therefore less restrictive (and presumably less burdensome). They will allow applicants to file any missing part of an application without having to re-start the application process, and they will allow a date of filing to be retained if it can be shown that the missing material was present in an earlier application.

Imposition of new burdens: proportionality

89. The Department proposes to impose new burdens on the filing of additional material after a date of filing has been given. New section 15(6) will provide that the date of filing must be amended to the date of filing of the missing parts of the application, unless the missing parts can be demonstrated to be completely contained in an earlier application from which priority is claimed.[49]

90. The Department explains that this restriction—changing the date of filing to the date on which missing parts are added—is necessary to ensure that no protection may be given to matter which is added to the application after the filing date. It stresses the necessity of a well-established date of filing to the integrity of the patents process.[50]

91. The Department proposes that the filing of missing parts should be subject to time limits (to be established by Patents Rules): first, up to the date of the preliminary examination; then (should that examination uncover deficiencies) up to two months after being notified by the comptroller that the preliminary examination has uncovered deficiencies in the application.

92. The Department considers that these new burdens on applicants wishing to file missing parts are fair and proportionate. It states that "these aspects of the proposed Order add little additional burden but offer much improved relief."[51] We consider that the new burdens are proportionate to the benefits expected to result from them.

PLT compliance

93. The Department has indicated that this aspect of the proposal will enable UK law to comply with the relevant articles of the Patent Law Treaty.[52]

Effect on necessary protections

94. The Department believes that this proposal will not remove any necessary protections from either the applicant or any third parties.[53] The proposed new arrangements do not substantively affect the protections provided against new matter being included in an application after the date of filing. We agree that this proposal retains necessary protection.

Effect on rights and freedoms

95. The Department believes that this proposal will not prevent anyone from exercising any existing rights or freedoms. We agree.

Proposed change A3: terminating deficient applications

96. The Department indicates that at present 45 per cent of applications do not pass beyond the stage where they are accorded a date of filing.[54] Such applications are taken to be withdrawn either

  • once a certain period of time passes after the date of filing, and the claim (or claims) or abstract of the application has not been filed; or
  • if an applicant fails to request, and pay the fee for, a preliminary examination and search of the application.

Many applicants choose actively not to proceed with their applications, and therefore do not provide the subsequent information (a claim of originality or an abstract of the invention) necessary for an application to proceed. In many cases this course of action is beneficial to the applicant, as the content of the application is never published. The applicant may therefore make another application for the same invention later on.[55]

97. The proposal will in effect make provision for termination of deficient applications under the new filing arrangements, with certain modifications. New section 15(10), to be inserted by article 5 of the draft order, will provide that at the end of a prescribed period (to be laid down in Patents Rules), an application which has received a date of filing shall be treated as withdrawn unless the applicant submits the following materials:

  • a claim (or claims) and an abstract in respect of the application;
  • where a reference to an earlier relevant application has been filed (see proposal A1 above), a description of the invention and a certified copy of the prior application;
  • the appropriate application fee;
  • a request for a search (under section 17 of the Act) and the appropriate search fee.

Re-enactment of a burden

98. The Department indicates that the existing burdens imposed by the requirements to file a claim or claims and an abstract of the application will be re-enacted, as will the burden imposed by the requirement to request a search. We assume that the burden of the payment of a search fee will also be re-enacted.

Imposition of new burdens: proportionality

99. The proposal would impose new burdens on an applicant. In order to ensure that an application is not treated as withdrawn, the applicant has to comply with the following additional requirements (imposed by new section 15(10)) within the prescribed period:

  • payment of the application fee (new section 15(10)(b)); and
  • provision of a description, and a certified copy of the earlier application (where an application refers to an earlier application) (new sections 15(10)(a)(i) and (ii)).

100. The Department argues that these new burdens are proportionate, in that they provide an applicant with a simple way of withdrawing an application (by failing to observe the formalities), while also providing that patent applications which an applicant wishes to pursue are dealt with expeditiously.[56] It is argued that the burdens on the applicant—of paying an application fee, and, where necessary, providing a copy of an earlier application—are proportionate to the benefit the applicant receives in terms of the service from the Patent Office.[57] We agree.

Proposal B: Application formalities

Purpose of the proposal

101. Proposal B would amend the provisions of the 1977 Act insofar as they relate to the formalities of filing an application. Reforms to four separate areas of the present regime are envisaged:

Proposed change B1: fees and withdrawals

102. At present, the 1977 Act requires a fee to be paid at two stages of the application process:

103. The Department proposes to replace this fee structure with a new two-stage structure. Under this structure the following fees would be payable:

  • an application fee, payable within a specified time period (to be prescribed in Patents Rules) following the date of filing, and before the preliminary examination is carried out; and
  • a search fee, payable within the same period, when an applicant requests a search on an application.

104. The Department appears to propose that the total fee payable by an applicant who wishes to take an application through to the search stage will not change. The Department indicates that the new application fee will be set at a level appropriate for preliminary examination.[58] No indication has been given as to the proportion of the total sum which is to be charged as an application fee and that which is to be charged as a search fee.

Imposition of new burden: proportionality

105. The requirement to pay the new application fee constitutes a burden on the applicant, as the fee must be paid before the preliminary examination can be carried out. If the application fee is not paid within the prescribed period, the application is to be treated as having been withdrawn (see paragraph 97 above).

106. The Department argues that the requirements surrounding the payment of the new application fee are reasonable. The requirement on the applicant to pay an application fee enables the Patent Office to recover some of the cost of the preliminary examination; the requirement that the fee be paid within the same time presently allowed for filing of claims, abstract, search request and payment of search fee ensures that the application is formally acceptable before proceeding to the search stage; and the condition that the application is deemed to be withdrawn if the application fee is not paid within the prescribed period is similar to the other requirements which apply to deemed withdrawals. The Department also considers that the requirement is beneficial to the applicant, as it allows the applicant either to choose the point during the prescribed period when it is convenient for the Patent Office to begin the preliminary examination of the application, or to trigger the withdrawal of the application (and its non-publication) by not paying the fee.[59]

107. The Department considers the new burden to be proportionate to the benefit which is expected to result from its creation. We agree.

Proposed change B2: correction of erroneous withdrawals

108. Under section 14(9) of the 1977 Act, the withdrawal of a patent application is irrevocable: "An application for a patent may be withdrawn at any time before the patent is granted and any withdrawal of such an application may not be revoked."

109. The comptroller has the power, under section 117 of the 1977 Act, to correct errors in patent applications. The Department envisages circumstances where an application might be withdrawn in error (for instance, where an application number is misquoted, or an applicant's representative misinterprets instructions).[60]

110. The Department argues that there is a doubt as to whether the comptroller's power to correct errors necessarily extends to the correction of mistakes made when requesting the withdrawal of a patent application. This means that an application withdrawn in error may not necessarily be allowed to proceed once the error is identified.

111. The Department states that any inability to correct erroneous withdrawals could constitute a burden on an applicant, in two ways:

  • if the application was erroneously withdrawn before publication, the applicant would be able to make another application, but might not be able to claim any priority valid for the original application;
  • if the application was erroneously withdrawn after publication, the applicant would be unable to make another application, as the public would be aware of the application's contents: the public might in fact be encouraged to use the application without fear of sanction.

112. In order to resolve the doubt created by section 14(9), the Department proposes a new section 14(10), to be inserted by article 4 of the draft Order, to make it clear that section 14(9) does not affect the comptroller's power under section 117(1) to correct an error or mistake in a withdrawal of an application for a patent.

113. The Department has also set out how the rights of third parties are to be protected, in cases where an application has been withdrawn after publication.[61] If a published application is withdrawn, the comptroller will issue a notice to that effect. Third parties will therefore be aware both of the description of the invention and of the fact that it has been withdrawn, and may begin to work or use the invention, in much the same way as a third party might begin to work or use an invention in respect of which a patent has ceased or expired.

114. New section 117A is intended to provide a system whereby withdrawn applications may be resuscitated, with appropriate notification. It is intended to ensure that the application may proceed as if it had never been withdrawn. It is also intended to provide protection for third parties who may have used the application, or made 'effective and serious preparations' to use it, in the period between the publication of a notice of withdrawal and the publication of a notice correcting the withdrawal. In such circumstances a third party will be able to continue using the application, or to use the application if he has made preparations to use it, but will not be able to be licensed to use it.

Removal of burden

115. The Department has stated that the amendment may be seen either as the removal of a burden (in that it will enable applicants to claim relief for erroneous withdrawals under section 117) or the correction of an anomaly (in that the legislation does not make it clear that section 14(9) does not preclude the application of section 117). We consider that the absence of an express power to correct errors in such circumstances constitutes a burden on an applicant, and therefore that the provision of such a power constitutes the removal of a burden.

Imposition of new burden: proportionality

116. The Department has identified one new burden which will be imposed on applicants. New section 117A(4) provides that a third party who has begun to use an invention between the withdrawal and resuscitation of an application for a patent for that invention will be able to continue to use it, even if a patent is subsequently granted to the applicant. The Department considers that this new burden is "a proportionate consequence of the public becoming aware of the withdrawal and the request for correction".[62] We consider that this new burden is proportionate to the benefit to the applicant of the resuscitation of an application erroneously withdrawn.

117. New section 117A(3) addresses the issue of claims for damages which may be made by an applicant in respect of the infringement of a granted patent in the period between application and grant. The Department explains that the comptroller, or the court, may adjust damages to reflect infringements of a patent which are deemed to have occurred between publication and grant. The effect of the new section is to restrict the scope of the damages claimable by a patentee for an infringement of an application withdrawn and resuscitated. Damages may be awarded only if the infringement continues or repeats one which happened before the withdrawal.[63] The Department considers that this provision, which may be considered a burden on a patentee, is a "necessary consequence" of being able to correct a mistaken withdrawal. We consider that the provision constitutes a burden, but that the burden is proportionate.

118. We considered whether the provision might not impose a further new burden, not expressly identified by the Department, in that it imposes a new liability to damages on third parties who begin to use an invention before the withdrawal of an application. The Department considers that this is fair and proportionate with respect to the benefit conferred on the applicant, being akin to the burden on third parties presently imposed by section 28A of the 1977 Act in respect of the restoration of a patent.[64] We concur with the Department's view.

Effect on necessary protections

119. The Department has set out the protection which it proposes to give to third parties in the explanatory statement.[65] This protection is also briefly described at paragraphs 113 and 114 above. The Department considers that the proposed requirement on the comptroller to publish a notice of a request to correct an erroneously-withdrawn application, together with the provisions which protect the rights of third parties to continue to use inventions if they have begun to use them in the period between withdrawal and resuscitation, continues necessary protections in an appropriate manner. We agree.

Drafting issues

120. The comptroller's power to correct mistakes in section 117(1) of the Act extends to correcting "any error of translation or transcription, clerical error or mistake in any specification of a patent or application for a patent filed in connection with a patent or application for a patent or any document filed in connection with a patent or such an application". It was not clear to us whether this provision would extend to a case where a representative intended to withdraw the application but would not have done so if he had not misinterpreted the applicant's instruction.

121. In response to the Committee's questions on this point,[66] the Department indicated that this case would be covered by section 117(1)

if an agent or representative prepares and issues a written request for withdrawal which can be shown to be contrary to the expressed wish of the applicant, the whole document and all that it contains is considered to be a mistake.[67]

122. In a further response, the Department elaborated upon its earlier response as follows:

Regardless of the state of mind of the representative at the time of drafting and issuing a letter of withdrawal, if the resulting letter as despatched is contrary to the expressed intentions of the applicant it erroneously represents those intentions. If a clerical error is a mistake made in the carrying out of clerical duties, the Patent Office would regard the creation and issue of such a letter as being a clerical error, and section 117(1) would therefore be applicable.[68]

123. We consider that the Department's interpretation of the provisions is tenable. As the Patent Office intends to act accordingly, we do not propose to take the matter further.

124. New section 117A (to be inserted by article 21 of the draft order) deals with the effects of resuscitation of an erroneously-withdrawn application where the comptroller has used his powers under section 117(1). It was not clear to us whether the correction of an error or mistake in a withdrawal of an application would have the effect of automatically resuscitating the application without an express order for resuscitation by the comptroller.

125. In response to our questions on this point, the Department has undertaken to amend the draft order to provide for an administrative procedure for resuscitated applications analogous to that which presently operates in respect of restored applications under section 28 of the 1977 Act. Where section 117(3) applies to an application for resuscitation, and third party protection is available, the Department now intends that resuscitation should be made by an express order of the comptroller. We recommend that the draft order be amended accordingly.

126. New sections 117(3) and 117A(1) refer to the comptroller acting to correct an erroneous withdrawal in response to a request. Neither section 117 (as amended) nor new section 117A specify whether, in cases where applications are made by two or more persons jointly, a request for correction may, with the comptroller's leave, be made by one of the applicants without joining the others. By contrast, new section 20A(4) expressly provides for a request for the reinstatement of a joint application to be made at the instance of one applicant only: where the application for a patent is made by two or more persons jointly, a request for reinstatement, may (with the comptroller's leave) be made by one or more of those persons without joining the others. Section 28(2) contains a similar provision in relation to the restoration of lapsed patents.

127. In response to our questions on this point, the Department explains that, in the light of current Patent Office practice in relation to withdrawal of an application, an express provision for correcting an error or mistake in a withdrawal of a joint applicant by one applicant only is considered to be unnecessary:

When withdrawal of an application is requested by joint applicants who have not appointed a representative, it is current Patent Office practice to confirm that all named applicants are in agreement before the withdrawal is processed. Where a representative has been appointed, the Patent Office assumes that he represents the joint wishes of the applicants. On the basis that applications are only withdrawn with the knowledge and agreement of all applicants, it is not considered necessary to make specific provisions for further establishing that agreement if the request for withdrawal contains an error.[69]

128. The Department notes that the procedures for restoration (section 28) and reinstatement (new section 20A) of applications are necessitated as the result of an act of omission or neglect on the part of the applicant. By contrast, the Department argues, the proposed procedure for resuscitation in new section 117A is only necessitated as a result of an act of commission, that is to say a deliberate act of withdrawal.

129. In the light of the Department's explanation, and the fact that the need for an express provision for correction of a withdrawal of a joint application at the request of one applicant only was not an issue raised on consultation, we do not propose to take this matter further.

Proposed change B3: preliminary examination

130. At present an applicant for a patent must formally request a preliminary examination of a submitted application. The Department states that the purpose of the preliminary examination is:

a)  to determine whether the application complies with the formal requirements which are specified in rule 31 of the Patents Rules, whether it complies with most of the formal requirements specifying how the text and drawings are to be presented, and whether an address for legal service of papers has been provided; and

b)  to determine whether other matters relating to the date of filing and any priority claims made by the applicant are properly in order.[70]

131. Under section 17(3) of the 1977 Act, an applicant whose application is found to be deficient following the preliminary examination is given an opportunity, within a period which the comptroller specifies, to make observations and to amend the application to rectify the inadequacies. No additional material may be added to the application. If the inadequacies are not rectified, the application may be refused.

132. The Department considers that the formal requirement on an applicant to request a preliminary examination constitutes a burden. Moreover, the Patent Law Treaty provides that an applicant is entitled to be notified of the formal defects contained in an application. The Department therefore proposes that the preliminary examination of an application should be carried out automatically, once the application fee is paid (see paragraph 103).

133. The Department proposes to set out the requirements for preliminary examination in a new section 15A, to be inserted into the 1977 Act by article 5 of the draft order. The new section will tidy up existing legislation by restating the requirements on an examiner which are presently contained in the Patents Rules[71] and elsewhere in the 1977 Act.[72]

134. The Department believes that in one respect the amendment lifts a burden on the applicant, in that it removes the necessity of requesting a preliminary examination. On another respect, however, it imposes a new burden, in that an application fee is to be charged (in place of the combined preliminary examination and search fee).

Imposition of new burden: proportionality

135. The Department argues that the preliminary examination regime is proportionate to the benefit which is expected to ensue from it, namely the reliable publication of matter contained in patent applications. It argues that this is in the public interest, as it allows other users of the patent system to rely on the information thus published.[73] We agree.

Effect on necessary protections

136. The Department believes that the preliminary examination regime will not result in any loss of necessary protection. We agree.

Proposed change B4: search and substantive examination

137. The enactment of the requirements for preliminary examination envisaged by proposal B3 require consequential amendments to section 17 of the 1977 Act, where the preliminary examination requirements are presently stated. The Department proposes to restate, in new section 17(1), the criteria which an application must satisfy to be referred for a search, namely:

138. We consider that the proposed change is consequential upon the proposed reform of the preliminary examination regime, and therefore appropriate to be made.

Proposal C: Extension of time limits

Purpose of the proposal

139. Proposal C is intended to amend the procedures provided for by the 1977 Act where applicants are offered an opportunity to remedy defects in their application which have been discovered during the course of the preliminary examination or the substantive examination. Amended applications must be submitted within a certain time limit, which is specified by the comptroller.

140. At present the comptroller specifies a time period within which an applicant may submit an amended application. Although representations may be made to the comptroller requesting an extension of the time period, and the comptroller may subsequently re-specify the time period, the applicant or patentee has no right to a guaranteed extension of the time period, or a right to apply for a retrospective extension after the time period has expired. Article 11 of the PLT provides for such rights.

141. The Department therefore proposes to insert a provision which provides for an additional right to a once-only extension of a prescribed minimum period (not less than two months, to be prescribed in Patents Rules). In addition, the applicant will also be able to request further extensions at the discretion of the comptroller.

Removal of a burden

142. The Department states that applicants who have failed to meet a time limit specified by the comptroller will no longer have to rely on the comptroller re-specifying the period.[75] Instead, applicants who have failed to meet a time limit will have a right to a once-only extension of the time period.

143. Although the Department does not expressly state that this removes a burden on applicants, we consider that the removal of an applicant's reliance on the comptroller's discretion to re-specify a time period within which defects in an application must be corrected constitutes the removal of a burden.

Imposition of new burden: proportionality

144. The right to a once-only extension of time for correcting defects in an application may involve a new burden in that the applicant will have to make a request for the extension which complies with relevant requirements of Patents Rules. The Department indicates that they intend setting a time limit within which a request for an extension will have to be made and that a fee may be payable.

145. The Department considers that it is reasonable and proportionate to set a time limit after which the relief is no longer guaranteed and to seek a contribution to the Patent Office's costs of dealing with requests. On the basis that the requirement to request an extension in accordance with requirements of Patents Rules constitutes a new burden for the purposes of the Regulatory Reform Act, we consider that it is proportionate to the benefits it is expected to bring in promoting the efficiency of the patent system.

Effect on necessary protections

146. At present, the comptroller may refuse an application if the applicant has failed to comply with the specified requirements within the period specified by the comptroller. Where there is no satisfactory response to an objection by the comptroller, the application is allowed to run on until it is administratively taken to be withdrawn.[76] The Patent Office intends to continue this practice.

147. Where the applicant has been offered a pre-refusal hearing, however, the date of termination of the application is the date on which the comptroller issues his decision to refuse the application. Once the application has been terminated (rather than taken to be withdrawn), the only recourse the applicant will have will be to request reinstatement under new sections 20A and 20B. These provisions will provide protection for third parties who use, or prepare to use, the invention which is the subject of the terminated application between the date of termination and the date of reinstatement.

148. The Department considers that these provisions do not remove necessary protections for third parties who may use, or prepare to use, an invention after an application for a patent has been terminated. It also considers that no existing rights and freedoms are affected by the reforms, which are intended to formalise existing practice 'in a legally certain manner.'[77] We concur.

Proposal D: Reinstatement of applications

Purpose of the proposal

149. Proposal D is intended to provide for a limited right of reinstatement of a patent application where it has been terminated because a deadline has been missed. Some other patent law jurisdictions allow extensions where a deadline has been missed in circumstances amounting to force majeure. No such principle applies in the UK, and the Department considers that this disadvantages applicants for UK patents.

150. The PLT harmonises reinstatement provisions to provide redress in cases where an application has been terminated because of an unintended failure to meet a deadline. The Department indicates that the draft order is intended to reflect the provisions of article 12 of the PLT.

151. New section 20A, to be inserted by article 8 of the draft order, makes provision for the reinstatement of an application which has been terminated by the comptroller for failure to comply with requirements of the Patents Act or Patents Rules. The application may be reinstated if the applicant makes a request to that effect, the request complies with requirements to be made in Patents Rules, and the comptroller is satisfied that the applicant's failure to comply with the requirements was unintentional.

152. It is intended to replace rule 110 of the Patents Rules (which provides for the comptroller to extend time limits) in order to remove any legal uncertainty which might be caused by overlap between rule 110 and new section 20A. The Department also states that new section 20A cannot be used to reinstate applications which were terminated through missing a time limit imposed in association with judicial or quasi-judicial proceedings, or to 'double bank' a reinstated application.[78]

153. New section 20B provides mandatory protection of third parties who may use, or prepare to use, an invention in the period between the termination of an application to patent the invention and its reinstatement if the application had previously been published. The terms of protection of third parties are similar to those proposed for third parties affected by the resuscitation of erroneously-withdrawn applications (see paragraphs 113 and 114 above). New section 20B will also clarify the scope for the award of damages under section 69 of the 1977 Act, where damages are claimed for infringement of a granted patent in the period between application and grant.

154. An amendment to section 28 of the 1977 Act, to be made by article 12 of the draft order, will ensure that a patent which has lapsed through an unintentional failure to pay a fee shall be restored on payment of any unpaid renewal fee or additional fee. This is intended to bring the provisions for restoration of lapsed patents into line with those for the resuscitation of erroneously-withdrawn applications and the restoration of terminated applications. The Department considers that this amendment may be treated as the removal of a burden and the imposition of a lesser one.

Removal of a burden

155. The new right to apply for reinstatement of a terminated application, in cases where it can be demonstrated that there was an unintended failure to comply with the necessary requirements, removes a burden on those applicants who are prevented through no fault of their own from complying with such requirements. Such applicants presently have their applications terminated with no right to apply for relief.

IMPOSITION OF NEW BURDEN: PROPORTIONALITY

156. The Department indicates that the following conditions will apply to an applicant requesting reinstatement:

157. These conditions constitute new burdens on the applicant. The Department considers that these burdens are proportionate to the benefit which would result from the provisions for reinstatement. It believes that the conditions placed on the reinstatement process are reasonable and necessary: they guard against the reinstatement process being used to delay the grant of a patent,[79] they remove uncertainty for third parties wishing to pursue terminated applications,[80] and they guard against an abuse of the right (for instance, by someone deciding not to pursue an application which was to be terminated, allowing it to be terminated and then changing their mind).[81] We consider that the new burdens imposed by this proposal are proportionate to the benefit resulting from their creation.

158. The change which is proposed to section 28 of the 1977 Act, providing for the restoration of lapsed patents to be treated in a similar manner to the resuscitation of erroneously-withdrawn applications and the reinstatement of terminated applications, removes a burden and imposes a lesser one in its place, as it enables an applicant to restore a lapsed patent if he always intended to pay the fee for restoration, but was unable to do so through no fault of his own. The Department considers this to be proportionate. We agree.

Proposal E: Priority claims

Purpose of the proposal

159. Proposal E is intended to amend the 1977 Act to provide more flexibility in the time in which an applicant may make a declaration of a claim to priority on a patent application, to allow for extensions of time where an applicant has unintentionally failed to make a priority claim within the period prescribed for making such claims.[82] The proposal would define the extra time which may be allowed for the priority claim to be declared, and the conditions which must be met in order that extra time might be granted.

160. The Department explains that neither the provisions of proposal C (extension of time limits) nor proposal D (reinstatement of applications) are appropriate for providing relief for an applicant who has missed a time limit which is associated with a claim for priority of an application. This is because none of the periods which are associated with priority claims are specified by the comptroller, and because failure to meet a time limit associated with a priority claim does not result in the termination of an application.[83]

161. In order to reflect the provisions of Article 13(1) Patent Law Treaty, which envisages relief for missing a time limit associated with a priority claim, new provisions must be made in the 1977 Act and in the Patents Rules. Article 3 of the draft Order amends section 5(2) of the 1977 Act to allow more flexibility in the time a declaration of priority can be made, to define the extra time which is to be allowed and to specify the conditions which must be met for a late claim to priority to be accepted.

162. The Department indicates that the time limits it proposes are sufficient to ensure that a priority claim is determined by the time an application is to be published (i.e. no later than 18 months from the date of filing). It indicates that the Patents Rules will be amended to ensure that relief is dependent on the application not having been published on the date when relief is requested, and conditional on the applicant relinquishing any request for accelerated publication.

REMOVAL OF A BURDEN

163. The proposal will remove the present burden on an applicant which results from the lack of provision in present legislation for a late claim to priority, where this has been missed unintentionally.

IMPOSITION OF NEW BURDEN: PROPORTIONALITY

164. The Department indicates that a new requirement is to be placed on applicants requesting allowance of a priority claim on a late-filed application. The request will have to be made in a prescribed manner (which may include a fee comparable to that presently payable for an application for an extension of time[84]) and within a prescribed time, and the applicant will have to demonstrate that the failure to file a priority claim within twelve months of the application from which priority was claimed was an unintentional mistake.[85]

165. The Department considers that the burdens are proportionate to the benefit conferred. It argues that the requirement to demonstrate unintentional failure to claim priority within twelve months guards against the applicant changing his mind; the need to make the request in a prescribed manner is unavoidable, as the procedure is not a routine one; and the requirement to pay a fee is reasonable to cover the cost of the extra resources required by the Patent Office. We consider that the new burden is proportionate to the benefit conferred.

Proposal F: National security

Purpose of the proposal

166. Proposal F is intended to reform the regime applying to patent applications whose contents, if disclosed, would prejudice national security. This is primarily in order to reduce a burden on applicants and patent agents resident in the UK who are presently restricted in the manner in which they can file any patent application overseas.

Subsequent amendment

167. Since the proposal for the order was laid before Parliament, the Department has indicated that in the light of representations received it does not intend to proceed with one element of proposal F. As a consequence it intends to revise the provisions of the draft order dealing with this proposal at second stage.[86]

168. We have nevertheless examined the proposal before the House as it presently stands. We discuss the handling of this aspect of the proposal further in paragraphs 215 to 237 below.

National security: present arrangements

169. The patent application process, as it presently operates, places a restriction on any person resident in the UK who wishes to file a patent overseas, irrespective of whether the application, if disclosed, would in fact prejudice national security. Persons resident in the UK may not at present file, or cause to be filed, an application for a patent outside the UK unless the application has previously been filed in the UK at least six weeks previously, or the comptroller's permission has been obtained.

170. In both instances the requirements are designed to allow the application to be examined for material which may have national security implications, and to give the comptroller or the Secretary of State the opportunity, under section 22 of the 1977 Act, to issue directions restricting the publication or communication of the contents of the application.

171. As the explanatory statement points out, this constitutes a burden on UK patent agents, who are by definition resident in the UK. Such agents cannot act immediately on instructions from foreign nationals to file applications in other jurisdictions. The explanatory statement gives examples of a resident of France, who is prevented from retaining a UK agent to file a patent application in the English language in the Irish Republic, and a resident of the USA who cannot retain a UK agent to file an application at the European Patent Office.[87] The Department proposes to remove the general restriction on UK residents seeking to file patents abroad.

Identification of applications containing sensitive material

172. All applications received at the Patent Office are presently examined to determine whether they contain any material which, if disclosed, would be prejudicial to national security. These include applications made to the Patent Office in its capacity as a receiving office for European patent applications (under the European Patent Convention) and international patent applications (under the Patent Cooperation Treaty).[88]

173. If material thought to be prejudicial "to the security of the realm or the safety of the public" is discovered, the comptroller may issue directions which restrict the disclosure of the contents of the application. This does not mean that the application cannot proceed to the point of grant, although both the publication of the application and the grant of the patent are delayed until the direction has been revoked. Once the direction is revoked, the application may proceed to publication and grant, and any processing periods which have been truncated because a direction was in force may be extended by the comptroller.[89]

174. Any person ignoring a direction made by the comptroller shall be liable to a fine or to imprisonment,[90] although the Department states that no prosecutions have been brought under this provision of the 1977 Act.[91]

Proposed amendments to section 22: filing in a secure manner

175. In the proposal before the House, the Department has sought to impose a restriction on applications from UK residents which contain "sensitive information" (defined in this context as information relating to military technology, or technology designed or adapted for use in the development or production of military technology, or information the publication of which is capable of having an adverse effect on national security or the security of members of the UK armed forces.) To this end, the Department proposed to reassign the responsibility for determining the military or national security implications of applications from the Patent Office to the individual applicant.

176. Article 9 of the draft order makes substantial amendments to section 22 of the 1977 Act relating to the handling of sensitive material. The new provisions apply to the following categories of application:

i.  applications required to be made in a secure manner because of an agreement between the applicant and a Government department (or its agent);

ii.  applications filed with the written permission of a country outside the UK, in accordance with previously-established agreements between that country and the UK; and

iii.  applications where the applicant or inventor is within the UK, and the schedule to the proposed order applies to the application by virtue of the nature of the information which the application contains (i.e. reference to sensitive technologies).

177. Any application falling within at least one of the categories above must be filed in a special prescribed manner (presumably to be set out in Patents Rules). The Department indicates that the minimum prescription will be for the application to be prepared in hard copy and delivered to the Patent Office in a double envelope. Filing of sensitive applications by electronic means will not be permitted. The 1977 Act has recently been amended to allow for electronic filing of patent applications, and e-filing based on public key encryption will shortly be allowed.[92] The Department states that this technology will satisfy commercial confidentiality concerns, but is not considered sufficiently secure for the type of sensitive application envisaged here.

178. A criminal sanction applies to anyone who knew, or who ought reasonably to have known, that the special manner of filing ought to have been used, but failed to use it. The proposed penalties available on conviction are a fine (for summary conviction) or imprisonment for not more than 2 years or a fine or both (for conviction on indictment).[93] These penalties are similar to the penalties presently available on conviction for failing to comply with directions given by the comptroller (section 22(9) of the 1977 Act).

179. The specific regime to apply to the publication or communication of the contents of any application within the meaning of new section 22(1) of the 1977 Act is set out in the explanatory statement.[94] The Department acknowledges that the new procedure is more complicated, although it is expected to affect far fewer applications.[95]

180. A list of technologies in respect of which patent applications may be considered to contain 'sensitive information' is set out on the schedule to the draft order. The Department has proposed that this list should be amendable by means of a subordinate provisions order, although the Patents Bill [Lords] will provide for the eventual repeal of the Schedule and its replacement by rules prescribed by the Secretary of State. This matter is discussed at greater length below.[96]

181. New section 22(1I), inserted by article 9 of the draft order, provide that the Secretary of State shall inform the comptroller of technologies which are not listed in the schedule, and about which publication of information might be prejudicial to the defence of the realm. Having received such notification from the Secretary of State, the comptroller may, on receipt of an application which contains such information, issue directions prohibiting or restricting the further communication of such information.


29   For a fuller summary of the present formalities requirements, see Annex D of the explanatory statement. Back

30   The rules are prescribed under section 14(1)(a) of the 1977 Act: explanatory statement, para 6.032 Back

31   Explanatory statement, para 6.033 Back

32   Ibid.: section 76 of the 1977 Act Back

33   Explanatory statement, para 6.036 Back

34   Certification is a requirement to be imposed by amendment of the Patents Rules: see explanatory statement, para 6.037 Back

35   New section 76(1A), inserted by article 5 of the order Back

36   The filing fee was originally intended to recover (in part) the costs of document reception. The Patent Office now believes that the levy of a filing fee is counterproductive for a number of reasons, namely that it hinders the applicant's ability to obtain a date of filing, it discourages small applicants (individual inventors or SMEs) from filing applications and it makes it difficult to file by fax or by electronic means (consultation document, paras. 3.015-3.016). Back

37   Explanatory statement, para 6.037 Back

38   Explanatory statement, para 6.033 Back

39   Requirements provided for by new sections 15(10)(a)(i) and (ii) Back

40   Explanatory statement, para 6.034 Back

41   Explanatory statement, paras 6.039-6.040 Back

42   Articles 5(1)(i) to (iii) and 5(2): explanatory statement, para 6.026 Back

43   Explanatory statement, para 6.029 Back

44   Explanatory statement, para 6.036 Back

45   Explanatory statement, para 6.029 Back

46   Explanatory statement, para 6.043 Back

47   Patents Act 1977, section 15(3)(a) Back

48   Explanatory statement, para 6.060 Back

49   Explanatory statement, para 6.054 Back

50   Explanatory statement, para 6.057 Back

51   Explanatory statement, para 6.064 Back

52   Articles 5(5), 5(6) and 5(7): explanatory statement, para 6.047 Back

53   Explanatory statement, para 6.048-6.053 Back

54   Explanatory statement, para 6.066 Back

55   Ibid. Back

56   Explanatory statement, para 6.070 Back

57   Explanatory statement, para 6.071 Back

58   Explanatory statement, paras 6.079 and 6.084 Back

59   Explanatory statement, para 6.087 Back

60   Consultation document, para 3.047 Back

61   Explanatory statement, paras 6.092-6.097 Back

62   Explanatory statement, para 6.098 Back

63   Explanatory statement, paras 6.099-6.100 Back

64   Appendix B, annex 2, paras 1-2 Back

65   Explanatory statement, paras 6.092-6.097 Back

66   Appendix A Qq 4-5; Appendix I, Q1A Back

67   Appendix B, annex 1, paras 3-4 Back

68   Appendix J, annex 1, paras 1-5 Back

69   Appendix J, annex 1 Back

70   Explanatory statement, para 6.103 Back

71   S.I. 1995/2093, rule 23 Back

72   Explanatory statement, paras 6.107-6.109 Back

73   Explanatory statement, para 6.112 Back

74   Explanatory statement, para 6.116 Back

75   Explanatory statement, para 6.122 Back

76   Explanatory statement, para 6.126 Back

77   Explanatory statement, para 6.128 Back

78   Explanatory statement, para 6.137 Back

79   Explanatory statement, para 6.147 Back

80   Ibid., para 6.148 Back

81   IbidBack

82   The prescribed period is presently set at 12 months from the date of filing. Back

83   Explanatory statement, para 6.152 Back

84   Prescribed in the Patents Rules 1995 (S.I. 1995/2093), rule 110 Back

85   Explanatory statement, para 6.166 Back

86   Appendix J, annex 1, paras 11-12 Back

87   Explanatory statement, para 6.179 Back

88   Explanatory statement, para 6.193 Back

89   Explanatory statement, para 6.194 Back

90   Section 22(9) of the 1977 Act Back

91   Explanatory statement, para 6.196 Back

92   Explanatory statement, para 6.157 Back

93   New subsection 22(8B), inserted by article 9 of the draft Order. Back

94   Explanatory statement, paras 6.202-6.204 Back

95   Explanatory statement, para 6.206 Back

96   See paras 243-246 Back


 
previous page contents next page

House of Commons home page Parliament home page House of Lords home page search page enquiries index

© Parliamentary copyright 2004
Prepared 17 February 2004