Appendix F
Letter from the Trade Marks, Patents and Designs
Federation to the Clerk of the Committee
Proposal for the Regulatory Reform (Patents) Order
2004: National Security — proposed revision of sections
22, 23 and proposed new 23A, Patents Act 1977
1. Thank you for writing, on behalf of the House
of Commons Regulatory Reform Committee, to the Federation about
these proposals. We appreciate the opportunity to comment.
2. The Committee inquires (a) whether the amendments
are sufficient to maintain the necessary protection in the existing
law and (b) whether they have adequately taken into account the
reservations that our member companies have expressed.
3. As regards inquiry (a), in our comments on the
deregulation proposals we welcomed the intention to deregulate
and simplify the existing security provisions. We are pleased
that in future special procedures should only apply to patent
applications containing information prejudicial to the defence
of the realm where the applicant or inventor is resident in the
United Kingdom (though there are problems, discussed below, in
defining the technologies concerned). We are also pleased, subject
to comments below concerning offences, that self-regulation is
to be introduced so as to expedite the filing of patent applications
abroad.
4. Nevertheless, the detailed proposals shift the
burden of identifying information prejudicial to the defence of
the realm from the comptroller to the applicant, even though the
schedule of affected technologies is complex and unclear, introduce
new restrictions on the applicant's ability to communicate information
to others and introduce the possibility of criminal sanctions
(up to 2 years imprisonment) against applicants who make mistakes,
either in relation to the special filing procedure for UK patent
applications or in relation to filings abroad, including such
information. The proposed amendments appear to increase the protection
of the information involved and increase the burdens on patent
applicants.
5. Whether this protection is "necessary"
under the Patents Act might be questioned. Should
a special regime with possibly heavy criminal penalties be applied
to patent applicants? Detailed provisions such as those in sections
22 and 23 do not apply to the authors of the great mass of non-patent
technical literature published in the United Kingdom, and a substantial
number of foreign patent laws do not contain corresponding provisions.
The countries involved rely on their equivalents to the Official
Secrets Acts to guard against security breaches by patent applicants.
We consider that it would be appropriate to analyse, in the context
of deregulation, the need, if any, for patent applicants to be
subject to a special security regime. (We accept that systems
should be in place within the Patent Office for handling applications
and other material from UK residents that should be kept secret
under the Official Secrets Acts.)
6. As regards inquiry (b), we do not consider that
the amendments have taken our previous reservations into account
adequately:
— It is onerous to applicants, and contradictory
in what purports to be a deregulating instrument, that a new criminal
offence is introduced (in section 22 subsections 8A and 8B), of
failing to use a special procedure when filing a patent application
where the applicant "knows or reasonably should have known"
that the special procedure should have been used. How can the
matter of what the applicant "reasonably should have known"
be assessed, especially bearing in mind the complexity of the
schedule of specified classes of technology attached to the regulation
(see below)? The applicant might easily make a mistake in respect
of applications that have no obvious security implications or
where sensitive material is embedded deep in the patent specification.
Applicants who are not specialists in the military technology
field may be unaware of what is of interest to national security.
We consider, most strongly, that criminal sanctions should
only apply where the applicant has recklessly disregarded security
implications.
— A similar comment applies to the offence
defined by sub-section (3) and proposed new sub-section (3A) of
section 23, in relation to applications filed abroad.
— In our previous comments we expressed
concern about the length and lack of clarity of the schedule of
specified classes of technology to which the special filing provisions
apply. We are still concerned. The schedule is some 10 pages long
and contains 40 classes, each extensively subdivided. While many
of the technologies listed clearly have security implications,
many others seem innocuous and there are inconsistencies. To note
a few examples at random, while civil aircraft are excluded, many
non security aspects of aircraft engineering such as air conditioning,
de-icing, escape systems control systems, anti-vibration, and
fire extinguishing are included; alloys and ceramic materials
are included; protective clothing, controls, electrical apparatus
(such as small batteries); electronics and electronic circuitry;
engineering equipment, plastics, rubbers and glasses, low light
photography; range-finding. There are many other examples of technologies
listed in the schedule where the security interest may not be
clear. This uncertainty exacerbates the concerns noted above about
the possible prosecution of applicants who fail to appreciate
that an application may describe technology falling within the
schedule.
— We also previously expressed concern
about the additional restrictions on revealing the contents of
applications to associates before directions are issued. This
concern remains.
7. The proposed new section 23A concerning guidance
by the comptroller is a welcome advance and appears to meet our
previous comment that it should be possible for applicants to
refer doubtful cases to the comptroller (security section) for
advice.
8. The explanatory document from the Department of
Trade and Industry includes assertions that we consider to be
questionable. The general tenor of the explanation in section
6 of the document is that the applications concerned will originate
from a small number of highly specialised applicants who will
be fully aware that they must use special procedures, and that
other applicants will not be burdened (see e.g., paragraphs 6.170,
6.184, 6.188). It is explicitly stated that the new burden will
only apply to a few applicants (paragraph 6.184) and it is implied
(e.g., in paragraph 6.181) that the applications concerned will
only relate to "military" technology.
9. However, all applicants, not just
those specialising in military work, will need to be aware of
the content and scope of the schedule of technologies to which
the special provisions apply, both for domestic and foreign filings.
As pointed out above, the schedule is complex and embraces many
technologies that may have no obvious security implications. Administering
it, and the threat of new criminal sanctions, will be a significant
new burden on all applicants.
10. We would of course be pleased to discuss our
concerns with the Committee if that would be helpful.
23 December 2003
Further letter from the Trade Marks, Patents and
Designs Federation to the Clerk of the Committee
Proposal for the Regulatory Reform (Patents) Order
2004
1. TMPDF wrote to you on 23rd December
and has promised further comments by today, following its Council
meeting on Friday 9 January 2003.
2. The key object of the reform is practically to
exclude from the application of Sections 22 and 23 inventions
whose publication or disclosure would be not prejudicial
to the defence of the realm. This would be of great benefit
to, for instance, the oil industry and the packaging industry.
3. However, our defence-industry members have pointed
out that the order as presently drafted increases the regulation
on them to the point where it "will inhibit commercial activity
in the defence area". (Details and examples are given in
the letter to you from Tim Martin, Secretary of the Defence Industries
Working Group dated 9 January 2004.)
4. Anxious to provide a means of meeting defence
industry concerns while allowing other industries still to benefit
from deregulation, we have devised a simple proposal which we
think would satisfy every one. It would leave the extent of
regulation in the defence area unchanged while significantly deregulating
other areas.
5. Our proposal in its entirety is this:-
(i) Section 23 is amended so that applies only
to the technologies in the Schedule.[136]
(ii) Section 22 is amended to require applicants
when filing patent applications to indicate whether or not they
are covered by the Schedule of technologies.
6. Note that on our proposal there would be no
requirement to file applications that are covered by the Schedule
in any prescribed special manner. This is because the majority
of applications covered by the Schedule will be known by the applicants
to be unclassified. (Under the present arrangements, applicants
who know applications to be classified file directly in the Security
Section of the Patent Office, and would continue to do so.)
The indication whether or not the patent application is covered
by the Schedule will allow the Security Section to focus its Section
22 efforts.
7. There should be no penalty for an applicant
who incorrectly states that an application is covered by
the Schedule. A reckless failure to identify an application covered
by the Schedule could be an offence.
8. Our other comments are unchanged.
9. We hope that you find the above a constructive
and valuable contribution, and are at your disposal for further
discussions.
12 January 2004
136 This helps industries like oil and packaging. It
also reduces the workload on the Patent Office in dealing with
requests for foreign filing permits.It remains important, however,
that the Patent Office should continue to respond very rapidly
to those requests for foreign priority filing permits that are
nevertheless made. Back
| 
