Appendix D
Letter from BAE Systems PLC to the Clerk of the
Committee
Proposal for the Regulatory Reform (Patents) Order
2004: request for further information
BAE SYSTEMS has examined the Proposal for the Regulatory
Reform (Patents) Order and the associated consultation and explanatory
documents. Our initial views have been expressed via the Chartered
Institute of Patent Agents, the Trade Marks Patents and Designs
Federation and Intellect.
We have now studied the proposal in greater detail
and have uncovered a fundamental objection to the provisions relating
to National Security. BAE SYSTEMS plc is primarily a defence
company and consequently we have come to the conclusion that as
a result of the application of new Section 22 sub-section (1B)
and particularly in view of its dependence on sub-section (1A)(b)
it will be essential for us to file all patent applications
in respect of inventions arising within our UK business at the
UK Patent Office "in the prescribed manner" to ensure
avoidance of criminal sanctions. This conclusion stems from the
necessarily generic nature of the technology listed in Part 2
of the Schedule to the proposed Order coupled with the preamble
in Part 1 lines 1 to 3.
We believe other UK defence companies, and many non-defence
companies, will reach the same conclusion and as a result there
will be a sea-change in the number of patent applications filed
directly with and to be processed by the Security Section of the
Patent Office which is not the objective of the proposed reform.
The above conclusion highlights a fundamental flaw
in the proposal for S22; it will no longer be possible for us
to protect a military technology invention by means of urgent
patent action immediately prior to disclosure at, say, a conference,
an approved defence exhibition, or at a meeting with potential
business partners, without transgressing sub-section 22(1C) and
committing a criminal offence. This is an unacceptable restriction
on the commercial freedoms of defence contractors such as ourselves.
We estimate that at least 20% of our patent applications
are filed urgently as a result of an imminent disclosure of the
above sort. Under present arrangements no criminal offence is
committed under the Patents Act by such early post
filing disclosures even within the initial 6 week period, but
this would not be the case under the proposed reform.
We are surprised that the Ministry of Defence has
not spotted this serious fault in the proposal; the Secretary
of State for defence apparently could be unable to make early
disclosure of its inventions to contractors or other Governments
without the authority of the Comptroller of the Patent Office
(S22(1C)), surely an unacceptable constraint on its business.
We urge the Committee to review and revise paragraph
9 of the draft proposal which currently risks alienating the defence
industry from the Patent System.
23 December 2003
Further letter from BAE Systems PLC to the Clerk
of the Committee
Proposal for the Regulatory Reform (Patents) Order
2004: request for further information
Further to my letter of 23 December I now write to
draw your attention to another of BAE SYSTEMS's concerns regarding
the provisions relating to National Security. As stated in my
earlier letter, we have concluded that as a result of the application
of new Section 22 sub-section (1B) BAE SYSTEMS will feel obliged
to file all patent applications in respect of inventions arising
within our UK business at the UK Patent Office "in the prescribed
manner".
It appears from the explanation of the Regulatory
Reform (Patents) Order at paragraph 6.216 that the meaning of
"prescribed manner" is that secure applications will
have to be on paper and contained in double envelopes. Although
the explanation goes on to say that "in the future it may
be possible for such applications to be made by secure electronic
communications" we are concerned that apparently the recent
amendment of the Patents Act (by the Patents Act 1977 (Electronic
Communications Order 2003) SE2003/512)) to allow the electronic
filing of patent applications will not be available to us until
a secure manner of electronic filing which relies on public key
encryption is allowed. This will disadvantage our company particularly
with respect to situations where urgent filing of patent applications
is necessary.
We wish to press the Committee to modify the proposal,
or at least the associated procedural rules, to allow the fax
filing of patent applications in respect of inventions which the
company knows or has reasonable grounds for knowing are or will
be classified at an MOD security classification of RESTRICTED
or less.
In your response to our suggestions we would be grateful
if you would indicate how the details of "the prescribed
manner" are to be promulgated. We assume that these will
be detailed in an amendment to the rules made by the Comptroller
in exercise of his powers under the Patents Act 1977. It would
be useful if a draft of the rule change was available for study
and comment including the mechanism by which the prescribed manner
can be amended from time to time by the Comptroller e.g. so that
the prescribed manner can progress from paper and double envelope
filing to the use of secure electronic communications in the future.
24 December 2003
Further letter from BAE Systems PLC to the Clerk
of the Committee
Proposal for the Regulatory Reform (Patents) Order
2004
1. We wrote to you about this on 23 and 24 December
2003. Thank you for your response dated 19 January 2004.
2. As a result of reviewing comments from other
companies and bodies, and as a result of meetings with government
officials on Wednesday, 21 January 2004, BAE SYSTEMS' view has
crystallised and can be expressed very concisely.
3. The proposal presently before the Regulatory
Reform Committee has the following characteristics:-
(i) Burdens presently imposed by Section 23 of
the Act in relation to the filing of patent applications abroad
are reduced.
(ii) Under Section 22 as proposed, the burdens
in relation to publication and communication of information are
increased.
4. We believe that there is no valid logical
connection between 3(i) and 3(ii) above. Accordingly, we believe
that the Minister would be wrong to be of the opinion that the
tests of Section 3(2)(a) and 3(2)(b) of the Regulatory Reform
Act 2001 were met by the present proposal. We consider that the
present proposal is not one that should proceed under the Regulatory
Reform Act. Our comments above would apply to any amended proposal
in which the burdens on publication and communication were increased.
5. We would like to know whether we will have
the opportunity to comment on any proposals for amendment.
6. We look forward to hearing from you.
23 January 2004
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