| Paras
| Q No.
| Question
| Answer
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1-5
|
1A
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[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."]
Does the Department agree that this matter requires clarification?
|
Regardless of the state of mind of the representative at the time of drafting and issuing a letter of withdrawal, if the resulting letter as despatched is contrary to the expressed intentions of the applicant it erroneously represents those intentions. If a clerical error is a mistake made in the carrying out of clerical duties, the Patent Office would regard the creation and issue of such a letter as being a clerical error, and section 117(1) would therefore be applicable.
This interpretation and application of section 117(1) would, we believe, be user-friendly, practical, and legally sound.
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6-7
8-9
|
2A
|
[In relation to a request to correct an error mistake in a withdrawal of an application for a Patents, the Department's response to Questions eight and nine 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.]
Please explain why no provision is made for a single applicant to request an error or mistake in a withdrawal made in respect of the joint application to be corrected and for the application to be resuscitated in relation to that applicant.
|
Section 28 (restoration) and proposed section 20A (reinstatement) become appropriate where the applicant or applicants (or his or their representative) have failed to do something within the time allowed, and as a result the patent (or, as a case may be the application) has ceased or been terminated because of an act of omission. Where a representative was nominated at some earlier stage but has clearly failed to act it may be that he has not received instructions or, perhaps, has not been paid, and it cannot be assumed that he continues to represent the interests of the (or all) applicants.
The kind of correction under section 117 which is enabled by proposed Section 14(10) only becomes appropriate where a mistake has been made in an act of commission (i.e. where the applicant or applicants or his or their representative has actively requested an application to be withdrawn). In such a case it can be assumed that where a representative is employed he remains both active and interested and takes care to act in accordance with the wishes of the (or all the) applicants.
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|
3A
|
The Department is invited to comment on the responses which have been received from consultees.
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In response to belated representations made by interests, and having regard to the outcome of a recent meeting with those interests, this approach is no longer considered appropriate.
Please see the answers to questions 8A to 11A below.
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|
4A
|
A number of consultees have indicated that 'reckless behaviour' would be the acceptable limits of behaviour which would be subject to criminal sanction. If the Department were to accept such a test, please indicated what way the sections concerned may be amended in order to take this definition into account.
| |
|
5A
|
What effect would a change in the test to reckless behaviour' have on the operation of the Order?
| |
10
|
6A
|
The Department is invited to comment on the responses which have been received from consultees.
|
This provision will now only apply to advice relating to what can and cannot be filed abroad without permission (see answers to questions 8A to 11A below).
The Patent Office have for long given permission to file abroad. On the basis of existing experience it is envisaged that such inquiries will normally be initiated by an informal approach made in broad and general terms.
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|
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. It is envisaged that requests for guidance should themselves be filed in a secure manner?
| |
11-12
|
8A
|
The Department is invited to comment on the responses which have been received from consultees.
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In response to belated representations made by interests, and having regard to the outcome of a recent meeting with those interests, this approach is no longer considered appropriate.
The revised proposals no longer require any amendment to be made to section 22. Accordingly the existing provisions with respect to safety of the public will be retained in their original form, and no new burdens or offences will be created.
Section 23 will be deregulated so as to allow applications which do not relate to national security matters to be filed abroad without either obtaining permission from the comptroller or first filing an application in the UK. It will be made clear that it will be a defence against contravention of this section that the applicant neither knew nor believed that an application related to national security matters.
For the assistance of the public, that part of proposed new section 23A which relates to section 23 will be retained.
Because these revisions rely on reforms which are within the scope of the more elaborate original proposals, wide consultation is not thought to be necessary. The approval of all respondents who expressed concerns with respect to the original national security provisions will nevertheless be sought.
The overall effect of the revised proposals will be a reduction in the burden currently imposed by section 23 without any concomitant increase in the burdens imposed by section 22.
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9A
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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.
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10A
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In the light of the assessment made by DIWG, please indicate whether the Department still considers that the burdens 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, paragraph 6.210)?
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|
11A
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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.
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