1. BP
p.l.c. is the holding company of one of the world's largest petroleum
and petrochemicals groups. BP's main activities are exploration
and production of crude oil and natural gas; refining, marketing,
supply and transportation; and manufacturing and marketing of
petrochemicals. BP has a growing activity in gas and power and
in solar power generation. BP has well-established operations
in Europe, North and South America, Australasia and Africa.
2. BP operates in 100 countries and has research
or development activities in a number of locations. Often the
research and development teams consist of nationals or residents
of more than one state. Also, teams are encouraged to draw on
the expertise of colleagues within the BP group of companies and
external collaborators around the world. As a consequence, it
is not unusual for inventions arising out of these activities
to have inventors and/or owners from more than one state. BP
therefore has to take care that in filing patent applications
it complies with the national security provisions in the relevant
states.
3. The UK Patent Office has always provided a very
responsive service when asked to provide permission to allow a
filing abroad. Nevertheless, the need to make a request introduces
a delay in the filing procedure.
4. According to the explanatory document less than
0.5% of the patent applications filed at the UK Patent Office
contain information the disclosure of which would prejudice the
safety of the realm and these originate from a small number of
highly specialised applicants who are fully aware of the nature
of their work. Consequently, the proposed changes should have
little or no impact on the protection provided in the existing
law.
5. BP acknowledges the need for individual states
to have powers to protect sensitive subject matter that might
present a security concern. However, we share the view expressed
in the Consultation Paper that the present provisions in the UK
are unnecessarily burdensome.
6. As far as we are aware, BP has never been refused
permission to file abroad when a request has been made and has
only rarely received directions under section 22. On those occasions
when directions have been issued it has generally been apparent
from the nature of the invention and/or wording used in the specification
that such directions might be issued.
7. It is acknowledged in the Explanatory Document
(6.206) that the new procedure is more complicated. As mentioned
above, the existing provisions of section 22 and 23 of the Patents
Act 1977 are in our view unnecessarily burdensome. However, from
an applicant's perspective they do have the attraction of being
simple. Since all applications must be filed in the UK unless
permission is granted to file outside the realm and all applications
are scrutinised by the Patent Office, the applicant can be sure
that no criminal offence will be committed.
8. In the Explanatory Document (C39) it is acknowledged
that applications might be filed in the incorrect manner unwittingly,
and that in such circumstances a criminal sanction would be disproportionate.
It is also stated that the subsection relating to the criminal
sanctions has been drafted to make it clear that criminal sanctions
will only apply when the failure is by a person who knows or ought
reasonably to have known that the application should have been
filed in that manner.
9. We suggest that it would be easier, and more appropriate,
to determine whether someone deliberately, negligently or recklessly
filed an application, or caused an application to be filed, in
contravention of the provisions of sections 22 and 23 than to
determine whether, when doing so, they "ought reasonably
to have known" that it should be filed in accordance with
the law. We have been informed by the Patent Office that it is
proposed to further amend sections 22(8A) and 23(3A) to restrict
the criminal offence to those who know or are reckless as to whether
a patent application should be filed in the prescribed manner.
This latter amendment would overcome our concerns.
10. The Schedule to the Regulatory Reform (Patents)
Order 2004 contains the list of matters the publication of which
might be prejudicial to the defence of the realm. It is considered
unlikely that the Schedule will apply to many BP applications.
However, the clarity of the Schedule is crucial to the ability
of applicants to comply with the National Security requirements.
Applicants and agents are likely to err on the side of caution
and make applications in the prescribed manner or seek the guidance
of the Comptroller where there is uncertainty.
11. The proposed amendments have improved the clarity
of the list of matters the publication of which might be prejudicial
to the defence of the realm. The Annex is quite long and there
remain some areas that appear to lack clarity. For example, Class
8(a) of Part 2 of the Schedule lists "High temperature
alloys". As no temperature is given it is not clear
whether subject matter relating to an alloy developed for say
furnace tubes is technology adapted for military use.
However, it is believed that there will be relatively few applications
where there is doubt and in these cases, guidance can be sought
under S23A.
12. It is appreciated that the proposal has been
amended (S 22(1C)) to make it clear that the comptroller can give
authority to disclose information contained in an application
to which subsection 22(1) applies. This is important to enable
a research team comprising individuals in different countries
and employed by different legal entities (perhaps of the same
group of companies) to continue to collaborate during this period.
13. As mentioned above, it has been extremely useful
to be able to obtain clearance under the existing section 23(1)
for filing abroad from the Security Section of the Patent Office.
This has been a quick, relatively informal procedure. The proposed
section 23A provides for a person unsure whether or not section
22(1) applies to seek guidance from the comptroller. If this
procedure proves to be as responsive as the present process it
will be greatly appreciated by applicants and their representatives.
14. It is noted that the manner of seeking guidance
under section 23A is not specified. In the past, when we have
required authorisation to file abroad, it has been our practice
to send to the Patent Office all or an appropriate part of the
patent specification. There does not appear to be any requirement
that the prescribed manner of filing required by section 22(1B)
should be followed in respect of an application for guidance.
