Appendix I
Letter from the Clerk of the Committee to the
Patent Office
Proposal for the Regulatory Reform (Patents) Order
2004: additional request for information
Thank you for your letter of 19 December 2003 in
response to the Committee's request for further information about
the proposal for the order. There are some points on which the
Committee would like further clarification, and these are set
out below.
You will know that the Committee has also written
to a number of the consultees who expressed reservations about
the Patent Office's proposals insofar as they concerned the proposed
new regime for dealing with applications, disclosure of the contents
of which might be prejudicial to national security. The Committee
sought the consultees' views on the redrafted provisions in the
proposal laid before Parliament. I understand that all the consultees
have copied to you their responses to the Committee. I nevertheless
enclose copies of each response. The Committee would welcome
the Patent Office's views on the specific points raised by the
consultees, which I will also summarise below.
Correction of erroneous withdrawals
In its response to the Committee's questions (QQ
4 and 5 of 5 December) the Patent Office has stated that, under
the proposed arrangements for resuscitation of erroneously withdrawn
applications, "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."
In relation to the case where a representative intended
to withdraw the application but would not have done so if he had
not misinterpreted the applicant's instruction, it is not clear
to the Committee whether the representative's misinterpretation
would be regarded as a clerical error or mistake in the document
of withdrawal for the purposes of section 117(1). Given that the
representative intended to withdraw the application, it is arguable
that the representative's misinterpretation is not a "clerical
error or mistake in … any document filed in connection with
… an application."
Q 1A Does the Department agree that this matter
requires clarification?
The Committee asked (QQ 8 and 9) whether the request
to correct an error or mistake in the withdrawal of an application
made by two or more persons jointly might be made by one or more
of those persons without joining with the others, in the absence
of an express provision on this point (comparing new section 20A(4)
in respect of requests for reinstatement and section 28(2) in
respect of requests for restoration.) The Patent Office has stated
that when withdrawal of an application is requested by joint applicants
who have not appointed a representative, it is the Office's practice
to confirm that all named applicants are in agreement before the
withdrawal is processed.
In relation to a request to correct an error or mistake
in a withdrawal of an application for a patent, the Department's
response to Questions 8 and 9 indicates that the current Patent
Office practice makes it unnecessary to include a provision corresponding
to sections 20A(4) and 28(2). Where a representative has been
appointed, the Patent Office assumes that he represents the joint
wishes of the applicants. Suppose, however, that the withdrawal
by the representative is not in accordance with the joint wishes
of the applicants and that one applicant has a continuing intention
to proceed.
Q 2A Please explain why no provision is made
for a single applicant to request an error or mistake in a withdrawal
made in respect of a joint application to be corrected and for
the application to be resuscitated in relation to that applicant.
National security provisions: test for the
application of criminal sanctions
In the proposed new sections 22 and 23, it is proposed
that a criminal sanction be imposed for filing in an insecure
manner, or filing abroad, a patent application which falls within
the national security categories set out in the schedule to the
proposed order.
The Patent Office has proposed that the criminal
sanction should apply where the applicant "knows, or ought
reasonably to have known" that an application should have
been filed in the prescribed manner, or filed first in the UK
(new sections 22 (8A) and 23 (3A)). Consultees have suggested
that the test for the criminal sanction ought to be amended to
demonstrably reckless behaviour or actions which are taken deliberately.
Q 3A The Department is invited to comment
on the responses which have been received from consultees.
Q 4A A number of consultees have indicated
that 'reckless behaviour' would be the acceptable limit of behaviour
which would be subject to criminal sanction. If the Department
were to accept such a test, please indicate in what way the sections
concerned might be amended in order to take this definition into
account.
Q 5A What effect would a change in the test
to 'reckless behaviour' have on the operation of the order?
National security provisions: scope of matters
covered by the Schedule
The Committee is aware of the concerns raised by
several consultees over the length and lack of clarity of part
2 of the Schedule to the proposed order, which lists the specified
classes of product, process, method or technology in respect of
which applications must be filed in a secure manner. Some consultees
have welcomed the proposed statutory provision of guidance in
new section 23A.
Q 6A The Department is invited to comment
on the responses which have been received from consultees.
Q 7A Please indicate the manner in which statutory
guidance from the Comptroller on a patent application which may
be subject to the prescribed manner of filing is to be requested.
Is it envisaged that requests for guidance should themselves
be filed in a secure manner?
National security provisions: filing practice
and disclosure of applications
A number of consultees have disagreed with the Patent
Office's assertion in the explanatory statement that the new burden
on applicants required to file by the secure manner is no more
onerous than the previous regime.
The Defence Industry Working Group has noted that
a present practice within the defence industry is to apply for
a patent for a military technology application immediately prior
to disclosure at a conference, an exhibition or a meeting with
commercial partners. Under the present regime, disclosure of
the contents of an application may be made up to the point where
the Comptroller issues directions, if indeed directions are to
be issued. Under the proposed system, it is argued, disclosure
of a securely-filed application will effectively be prohibited
for a period of up to six weeks (the period within which the Comptroller
must issue directions), and therefore defence companies will be
inhibited in their commercial activities in ways which they are
not at present.
Q 8A The Department is invited to comment
on the responses which have been received from consultees.
Q 9A Please indicate whether the Department
agrees with the assessment, made by the Defence Industries Working
Group (DIWG) and others, of the likely impact of the proposed
secure filing regime on the present working practices of the industry.
Q 10A In the light of the assessment made
by DIWG, please indicate whether the Department still considers
that the burden of prohibition on disclosure of a securely-filed
application pending directions from the Comptroller "will
not be significantly more onerous" than the burden it replaces
(explanatory statement, para. 6.210)?
Q 11A If the burden is considered no more
onerous, please explain why not; and if the burden is considered
a more onerous one, please indicate whether, and how, the Department
considers that it still meets the tests of proportionality, fair
balance and desirability set out in the Regulatory Reform Act.
The Department is also invite to take the opportunity
to make observations on any other comments made by the consultees
in response to the Committee's request.
I would be grateful to receive your response to the
above questions, together with any further information the Department
believes would be helpful to the Committee, not later than Wednesday
21 January. I am copying this letter to the Clerk of the
House of Lords Committee on Delegated Powers and Regulatory Reform,
and would be grateful if, as before, you would copy your response
to her.
Again, please don't hesitate to contact me should
you require any additional information or clarification concerning
the Committee's request.
14 January 2004
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