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.
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