Paras
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No.
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Question
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Answer
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1 - 2
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Q1
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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.
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Apart from the very specific protection given to third parties by sections 20B(4) to (6) and 117A(4) to (6), when an application is reinstated or resuscitated it is treated as if it never ceased. Sections 20B(2) and 117A(2) make clear that any transactions (sales, licences, mortgages etc.) done during the lapse are treated as valid, and section 20B(3) and 117A(3) make clear that damages can be claimed under section 69 for any infringement which started before the application was terminated. In particular, stopping and then re-starting an act which previously infringed will not enable an earlier infringer to acquire third party immunity.
In short, only innocent third parties who first start (or prepare to start) a potentially infringing act after an application has been terminated can claim the third party protection of sections 20B(4) to (6) and 117A(4) to (6) when a patent is granted on a reinstated or resuscitated application.
The burden on infringing third parties (viz:- the liability to damages for acts of infringement) is considered to be fair and proportionate with respect to the benefit conferred on the applicant (viz:- the ability to claim damages against an infringer). Similarly, the benefit conferred on innocent third parties (viz:- the ability to continue whatever they started without risk of infringement) is likewise considered to be fair and proportionate to the burden imposed on the applicant (viz:- the inability to claim damages against protected third parties). These burdens/benefits are comparable to those which have for long been imposed/conferred by section 28A when a patent is restored, and no objections have been raised by any of the interested parties during the consultation process.
It is regretted that this was not made clear in the explanatory document.
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Q2
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If so, please explain how the Department assesses these new burdens against the tests in the Regulatory Reform Act.
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Q3
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If not, please explain why the Department does not share the Committee's view.
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3 - 4
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Q4
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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?
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Because withdrawal is irrevocable, the Patent Office does not treat it lightly. The guidance given in the Manual of Patent Practice is:-
"An intimation of withdrawal will not be acted on by the Patent Office unless it is clear and unqualified and in writing, and from a person with the authority to make the withdrawal. The withdrawal request may be by paper or electronic communication."
It is not intended to change this practice.
Accordingly, 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.
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Q5
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If so, explain how this result is achieved by section 117(1).
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5
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Q6
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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?
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Corrections made under section 117 are at the discretion of the comptroller, and cannot be refused without first giving the applicant an opportunity to be heard (see section 101 of the Patents Act 1977).
Hearings decisions are always effected by what is called an order of the comptroller, and this does not need to be specified in the legislation.
However, most corrections requested under section 117 are either obvious once the error has been pointed out, or can be supported by simple and direct documentary evidence (such as an extract from an official record or a letter of instruction). Such corrections are currently allowed administratively, and are acknowledged by issue of an official letter to the applicant, a copy of which is also placed on the official file. A record of the correction will also be incorporated in the patents register. This procedure is considered appropriate for allowing resuscitation where termination of the application has not be made known to the public.
To ensure parity with the restoration procedure under existing section 28, the proposed draft Regulatory Reform Order will be amended to require resuscitation to be made by order whenever section 117(3) applies and third party protection becomes available.
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Q7
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Does the Department considered 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?
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6
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Q8
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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.
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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 any specific provisions for further establishing that agreement if the request for withdrawal contains an error.
Resuscitation (where a positive action is requested in error by the sole applicant, or by all the applicants jointly) is different from reinstatement/restoration (where an act of omission by the applicant(s) or proprietor(s) has resulted in the Office terminating an application). In the latter situation, the Office does not know whether the person who failed to proceed obtained the agreement of the other joint applicants, and the provision that the comptroller can (in suitable cases) give leave for a single applicant to request reinstatement/restoration is considered justified. If at least one applicant has a continuing intention to proceed, the application can go ahead.
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Q9
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If so, please explain the absence of an express provision on this point (compare with new section 20A(4) and section 28(2). Is it contemplated that this matter will be dealt with in the Patent Rules?
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7
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Q10
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Please explain the inclusion of the word direct in new section 20A(1) (inserted by article 8).
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The word direct is imported from article 12 of the Patent Law Treaty. Paragraph 12.02 of the explanatory notes to the treaty (WIPO paper PT/DC/48 Prov) reads:-
"12.02 Paragraph (1), introductory words The phrase that failure has a direct consequence of causing a loss of rights with respect to an application or a patent is intended to cover the situation where a failure to comply with the time limit causes a loss of rights with respect to the ability to obtain or maintain a patent. For example, where failure to comply with a time limit in respect of filing a copy of the earlier application in relation to the filing date requirements concerning a missing part of the description has a direct consequence of the loss of the earlier filing date which, in turn, has the indirect consequence of the refusal of the application on the grounds of prior publication, a Contracting Party is not obliged to provide, under article 12, for reinstatement of the loss of rights resulting from that refusal."
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8
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Q11
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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?
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It is accepted that the present draft of section 22(1C), (1D) and (1G) could be improved. To this end, we propose to amend subsection (1C) so that it only applies to applications that are filed in the manner prescribed for the purposes of subsection (1B).
This amendment will mean that an application, to which subsection (1) applies, but which has not been filed securely, will only be restricted from further disclosure if directions are made under subsection (1E). In other words, subsection (1C) will have no impact on applicants who do not file their application in the prescribed manner. The criminal sanction imposed by subsection (8A)(a) should be sufficient to ensure that applications are filed securely where such filing is appropriate.
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Q12
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If so, what is the reason for this?
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Q13
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If not, should the words under subsection (1G) below be omitted from subsection (1D)(b)?
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9
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Q14
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Please explain why the Department believes that the negative resolution procedure is an appropriate one for Parliamentary scrutiny of any subordinate provision orders which may be made under article 23(2) of the proposed order.
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It is accepted that part 1 of the Schedule will not need to be amended once the Order has been made. Therefore, article 23 will be amended so that only the matters specified in part 2 of the Schedule are designated as subordinate provisions.
It is considered that due to the technical nature of the content of part 2 of the Schedule, the negative resolution procedure is the most efficient use of Parliamentary resources.
The opportunity is also taken to inform the Committee that it is intended to modify the wording of part 1 of the Schedule. The new wording it is wished to adopt is as follows-
"This Schedule applies to an application for a patent if-
(a) the application contains information which relates to military technology or for any other reason its publication might be prejudicial to the defence of the realm, and
(b) the information is about a product, process, method or any other form of technology which is listed in the specified classes in Part 2 of this Schedule."
The change of wording has been adopted following further discussions between Parliamentary Counsel, the Patent Office, the Ministry of Defence, members of the Department dealing with Export Control and others. During these discussions it became clear that some of the references included in the original draft of part 1 of the Schedule were unnecessary. These references have now been removed and it is believed that the new draft is more straightforward and clearer than that in the present proposed draft Order.
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Q15
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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.
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10
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Q16
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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.
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Section 22(2) was a new provision in the 1977 Act which provides the comptroller power of his own motion to give directions prohibiting publication of an application (or restricting the information contained in it) if it appears to him that the application contains information the publication which might be prejudicial to the safety of the public. At the time, disclosure of information which may assist terrorists was not considered to be prejudicial to the defence of the realm.
Unless the Secretary Of State decides that the restriction should be maintained, any directions made by the comptroller under this power automatically expire not later than three months after the end of the normal period for a patent application to be published. A quicker decision is possible if, as allowed by section 22(6)(b), the applicant gives his consent to the Secretary of State for earlier inspection of the application. Accordingly, no significant inconvenience to the applicant can be caused by these provisions unless the nature of the invention warrants maintenance of the restrictions. To date no Secretary Of State has chosen to maintain any restrictions imposed by the comptroller of his own motion to protect the safety of the public.
The last occasion on which directions were issued under section 22(2) was about eighteen months ago. The application concerned an anti-theft device which caused disproportionate injury to the person taking the property. The directions are still in force because consent has not been given for the Secretary of State to inspect the application, but it is anticipated that they will be revoked.
Times have changed, and the distinction between "safety of the public" and "defence of the realm" has, as a matter of practice, become blurred. It is now felt, particularly at the Ministry of Defence, that any information, the publication of which might assist terrorists, would in itself be prejudicial to the defence of the realm, and will be caught by section 22(1).
Nevertheless, in the light of the questions posed by the Regulatory Reform Committee this question has been revisited, and it is now considered that there may still remain an area of "safety of the public" which falls outside the general umbrella of "defence of the realm" and still requires the comptroller to be able to issue directions of his own motion, albeit that they will continue to expire automatically unless the Secretary Of State decides otherwise.
To this end suitable amendments to the draft Order will be proposed.
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Q17
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Please indicate for what reason the Department believes it necessary to remove all references to the safety of the public from the 1977 Act.
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Q18
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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 differences not to be reflected in the amending legislation.
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Q19
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Please indicate the last occasion on which the comptroller issued directions under section 22(2) of the Patent Act1977, concerning an application which contained material considered to be prejudicial to the safety of the public, and what class of material was at issue.
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11
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Q21
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How soon does the Government intend to bring forward a Patents Bill?
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It is proposed to introduce the Patents Bill sometime in the present session of Parliament.
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Q22
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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?
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Some aspects of the WIPO Patent Law Treaty require changes to the Patents Act 1977 and the proposed draft order will make those changes.
Other aspects of the Treaty can be effected by rule changes alone.
Revisions to the Patents Rules 1995 will effect both those changes that are required to complement the changes made to the Act by the Regulatory Reform Order, and the other rule changes required to achieve compatibility with the Treaty.
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Q23
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When does the Government expect to be able to ratify the Treaty?
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The UK will commence the formal diplomatic procedures necessary to ratify the WIPO Patent Law Treaty once the Patents Act 1977 and Patents Rule 1995 have been appropriately amended.
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12
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Q24
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Please identify which of the provisions of the draft Order will require further prescription in secondary legislation (i.e. by amendment to the Patent Rules).
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Please see the attached further table of "Answers to Questions 23 and 24".
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Q25
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Please indicate, in respect of each of these provisions, how the government intends to amend or supplement the Rules.
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13
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Q26
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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.
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Three "Change Requests" specifying the details of the changes that need to be made have been raised by the business representatives and impacted by the mainframe software development team. The changes will be carried out by the Patent Office, not by external contractors.
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