Appendix G
Letter from QinetiQ to the Clerk of the Committee
Proposal for the Regulatory Reform (Patents) Order
2004: request for further information
I am writing to express extreme concern with the
text enclosed with your letter of 12 December to Ms Jennifer Carlton
at Intellect concerning the proposed amendments to Sections 22
and 23 of the Patents Act 1977. This response is made on behalf
of QinetiQ but I believe others in the defence industry have similar
concerns.
One would assume from the title of the order that
the proposed amendments are to reduce the administrative burden
on patent applicants, but the effect is in many respects quite
the opposite.
At present the Patent Office screens all patent applications
for matter the publication of which might be prejudicial to the
defence of the realm or the safety of the public. Section 22
provides for the comptroller to make orders prohibiting publication
or further communication of such material. If such an order is
made the matter is reviewed by the Secretary of State (in most
cases the Secretary of State for Defence) as a result of which
the order may be maintained or cancelled. We understand that
at least half of the orders imposed by the Patent Office are cancelled
when referred to the Secretary of State.
Section 23 provides that no application for patent
protection outside the UK may be made by a person resident in
the UK unless either (a) an application has been made within the
UK at least 6 weeks earlier and no prohibition order has been
made; or (b) a permit is obtained from the Patent Office.
We are aware that Section 23 is burdensome to applicants
whose inventions are never likely to give rise to a prohibition
order and also to the Patent Office in issuing permits. We would
therefore support a proposal to limit the application of Section
23 to inventions in certain defined fields. Any definition would
catch applications which turn out to be unclassified, but in such
cases the applicant would be in no worse position than under the
current law and all other applicants would benefit.
However the changes to Section 22 are far more onerous
than the present law. Applicants would have to file in an "approved
manner" applications many of which would in the end attract
no prohibition order. We are advised that such applications would
need to be filed by post or hand, removing the option to file
by FAX or, in future, electronically. The implication of this
is loss of at least one day of "priority" which may
seem trivial, but could result in invalidity of the eventual patent.
Worse still, under proposed Clause 22(1C) it would
be an offence to communicate to any person (technically including
the Secretary of State for Defence) any information included in
such a patent application even if unclassified or even cleared
for publication by MOD unless consent of the comptroller is obtained.
This would apply in all such case unless or until a decision
not to impose a secrecy order is communicated to the applicant,
whereas at present a more limited restriction applies only if
a prohibition order is made. In effect the new provision is "guilty
until proven innocent" and will impose significant burden
on both applicants and the comptroller.
The implication of this would be to prevent the common
practice of filing a patent application a few days (often 1 day)
before publication or disclosure to a fellow defence contractor.
The effect of the proposals is that filing a patent application
could turn an otherwise innocent publication or disclosure into
a criminal offence.
In our view use of the Patent Act to control publication
of information prejudicial to the defence of the realm is in any
event inappropriate. Such control should be based on the Official
Secrets Acts and Export Controls rather than the originator's
decision to file a patent application. However given that such
provisions exist in the present act we believe the order should
be limited to removing administrative burden and not creating
a new burden. Hence the amendments to Section 22 should be dropped,
but those to Section 23 should proceed, referring of course to
the present Section 22. Proposed Section 23A should be retained
in modified form to make clear that a person may seek confirmation
that a proposed application is not caught by Section 23 even in
cases of doubt.
5 January 2004
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