Appendix A
Letter from the Clerk of the Committee to the
Patent Office
Proposal for the Regulatory Reform (Patents) Order
2004: request for further information
Thank you for your appearance before the Committee
on Tuesday, and for the extremely helpful briefing you and your
colleagues from the Patent Office and the Department for Trade
and Industry gave on the proposal.
The Committee considered the proposal at its subsequent
meeting and resolved to seek further information from the Department.
The issues which concern the Committee are set out below, together
with questions arising from them, under the relevant categories
for consideration set out in the Regulatory Reform Act and the
Committee's Standing Order.
Whether the proposal satisfies the conditions
of proportionality between burdens and benefits set out in sections
1 and 3 of the Regulatory Reform Act 2001 (S.O. No. 141(6)(k))
1. New section 117A(3), to be inserted by article
21 of the draft Order, imposes a new liability to damages for
acts done between withdrawal and resuscitation if they are a continuation
or repetition of an earlier infringement. This appears to the
Committee to constitute a new burden on third parties, but has
not been identified as such by the Department in its explanatory
statement.
2. The same point arises on new section 20B(3), to
be inserted by article 8.
Q1 Please indicate whether the Department
shares the Committee's view that new sections 117A(3) and 20B(3)
will impose a burden on third parties.
Q2 If so, please explain how the Department
assesses these new burdens against the tests in the Regulatory
Reform Act.
Q3 If not, please explain why the Department
does not share the Committee's view.
Whether the proposal requires elucidation (S.O.
No. 141(6)(h))
3. New subsection 14(10), inserted by article 4,
is intended to make an exception from the provisions of section
14(9). The Department has explained that it is intended to extend
the comptroller's present power to correct errors or mistakes
in applications, conferred by section 117(1) of the Act, to the
circumstance where a patent application is erroneously withdrawn.
4. The comptroller's present power 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 or any document filed
in connection with a patent or such an application". The
Committee considers that as presently drafted it may not extend
to one of the circumstances envisaged by the Department in the
consultation document (paragraph 3.046), where it is stated that
section 117 would cover cases where an application for a patent
is withdrawn in error, for example as a result of misquoting the
application number, or a representative misinterpreting the applicant's
instructions.
Q4 Is it contemplated that section 117(1)
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?
Q5 If so, explain how this result is achieved
by section 117(1).
5. New section 117A (to be inserted by article 21
of the draft Order) makes provision for the resuscitation of an
erroneously-withdrawn application, where the comptroller has used
his powers under section 117(1).
Q6 New section 117A(1)(b) (inserted by article
21) refers to a case where an application has been resuscitated
in accordance with a request to the comptroller to correct an
error or mistake in a withdrawal of an application for a patent.
Is it contemplated that the application would be automatically
resuscitated on the correction of the error or mistake, or that
the comptroller would have to make an express order for resuscitation?
Q7 Does the Department consider that an express
provision on this point should be included, particularly given
the reference in new section 117A(2) to "the period between
the application being withdrawn and its resuscitation"?
6. New sections 117(3) and 117A(1) refer to the comptroller
acting to correct an erroneous withdrawal in response to a request.
Q8 In relation to new sections 117(3) and
117A(1), please explain whether, in a case where an application
for a patent was made by two or more persons jointly, the request
to correct an error or mistake in a withdrawal of that application
may (with the leave of the comptroller) be made by one or more
of those persons without joining the others.
Q9 If so, please explain the absence of an
express provision on this point (compare new section 20A(4) and
section 28(2)). Is it contemplated that this matter will be
dealt with in the Patents Rules?
7. Article 8 inserts new section 20A, which provides
for the reinstatement of applications. New section 20A(1) refers
to an application for a patent being refused as a direct
consequence of a failure to comply with a requirement of the 1977
Act or the Patents Rules.
Q10 Please explain the inclusion of the word
"direct" in new section 20A(1) (inserted by article
8)
8. The Committee was concerned to understand the
effect of the provisions of new section 22(1) in certain circumstances.
Q 11 In relation to an application which is
not in the prescribed form, the effect of subsection (1D)(b) of
new section 22(1) (inserted by article 9(4)) is that the prohibition
in subsection (1C) will only end when the comptroller gives directions
under subsection (1E). Is it intended that the comptroller should
not be able to notify the applicant that he has decided not to
give any such directions?
Q12 If so, what is the reason for this?
Q13 If not, should the words "under subsection
(1G) below" be omitted from subsection (1D)(b)?
Whether the proposal includes provisions to
be designated in the draft order as subordinate provisions (S.O.
No. 141(6)(n))
9. The Department proposes that the Schedule to the
Order should be amendable by means of a subordinate provisions
order subject to the negative procedure.
Q14 Please explain why the Department believes
that the negative resolution procedure is an appropriate one for
Parliamentary scrutiny of any subordinate provisions orders which
may be made under article 23(2) of the proposed order.
Q15 Subordinate provisions orders made under
article 23(2) of the proposed order may amend part 1 of the Schedule
(which defines the patent applications to which the Schedule applies)
and part 2 (which defines the specified classes of technology
for the purpose of part 1). Please explain why it is necessary
to make provision for amendment of part 1 by subordinate provisions
order.
Other matters arising from the Committee's
consideration (S.O. No. 141(5))
10. The Committee considered that the background
to the proposed removal of express provisions concerning the safety
of the public should be explained more fully than had been the
case in the explanatory statement.
Q16 Please explain for what reason the Department
believes that the term 'safety of the public' is now encapsulated
within the definition of 'defence of the realm', given that no
definition of 'defence of the realm' is to be found in the draft
Order.
Q17 Please indicate for what reason the Department
believes it necessary to remove all references to 'the safety
of the public' from the 1977 Act.
Q18 Please explain why there is a substantive
difference in treatment of applications containing material potentially
'prejudicial to the defence of the realm' (s. 22(1) of the 1977
Act) and applications containing material potentially 'prejudicial
to the safety of the public' (s. 22(2) of that Act), and why that
difference is not to be reflected in the amending legislation.
Q19 Please indicate the last occasion on which
the comptroller issued directions under section 22(2) of the Patent
Act 1977, concerning an application which contained material considered
to be prejudicial to the safety of the public, and what class
of material was at issue.
11. The Department has indicated that further legislation
is envisaged to amend the 1977 Act in respect of the substantive
requirements of patent law, and that this is to be achieved by
means of a Patents Bill.
Q21 How soon does the Government intend to
bring forward a Patents Bill?
Q22 Are the changes to the 1977 Act to be
made by the proposed order sufficient to enable the UK to ratify
the Patent Law Treaty?
Q23 When does the Government expect to be
able to ratify the Treaty?
12. The explanatory statement has not set out what
amendments to the Patents Rules will be necessary to give effect
to the proposal. Without an indication of the proposed amendments
to the Rules, the Committee cannot establish what the precise
effect of the proposal will be.
Q24 Please identify which of the provisions
of the draft Order will require further prescription in secondary
legislation (i.e. by amendment to the Patents Rules).
Q25 Please indicate, in respect of each of
these provisions, how the Government intends to amend or supplement
the Rules.
13. 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.
Q26 Please outline the arrangements which
are being made for the reprogramming of the Patent Office mainframe
computer, and indicate whether the reprogramming is being carried
out by the Patent Office or an external contractor.
I would be grateful to receive your response to the
above questions, together with any further information the Department
believes would be helpful to the Committee, not later than Friday
19 December. I am copying this letter to the Clerk of the
House of Lords Committee on Delegated Powers and Regulatory Reform.
Could I ask you to copy your response to her?
Please don't hesitate to contact me should you require
any additional information or clarification concerning the Committee's
request.
5 December 2003
| 
