My Lords, the amendment stands in my name and that of my noble friend Lord Lyell. Before speaking to the amendment, it may be helpful to the House if I explain why we are not pursuing our concerns about what are now Clauses 10 and 13. It would be preferable for another place to receive and debate the Bill more or less as the Government intended.
Returning to the amendment, its objective is to increase certainty and to keep UK patent law as closely as possible in line with the practice of the European Patent Office. The 1997 Act has a "same effect" proviso, similar to that in Clause 2(5), to bring the UK law into line the that of Europe. It applies to specified sections only. Without the amendment, the proviso will not apply to new subsection (1)(1) of the 1997 Act, although it will apply to others. Slight and unnecessary differences between UK and European law make matters more complicated, and hence more expensive, for UK inventors. The amendment would make it less likely that the laws would diverge.
It might make sense to apply the proviso even more widely. It is not clear how the sections to which it will apply differ from the rest. I beg to move.
My Lords, if I may, I shall preface my remarks with one or two words about Clause 1. The present position is that methods of treatment or diagnosis are not considered to be patentable because they are not, in the words of the 1977 Act, "capable of industrial application". That was regarded as an undesirable position to uphold in the revised European Patent Convention, since medical methods are not patentable in the interests of public health. Thus, Clause 1 makes clear that inventions consisting of such medical methods cannot be patented and conforms with how such methods are dealt with under the revised EPC. The scope of the exclusion will remain the same as that under current provisions.
Clause 1 also concerns the patentability of substances and compositions that are to be used in medical methods. In particular, an invention may comprise taking a known substance, which has already been used in a medical method, and finding a new medical use for that substance. Clause 1 does not extend the availability of patent protection in respect of such inventions, but it does allow such inventions to be patented in a more simple and direct form than is possible at present.
New Section 4A, inserted by Clause 1, is drafted to implement articles 53(c), 54(4) and 54(5) of the revised EPC. I agree with the noble Lord that legal certainty for users is important and that any discrepancy between practice under the EPC and practice in the UK should be minimised. Noble Lords want to ensure that new Section 4A falls within the scope of Section 130(7) of the 1977 Act, but the amendment is unnecessary, because that is already the case.
If noble Lords turn to the Act, they will see that Section 130(7) applies to Sections 2 to 6. It states that the following sections are covered: from 1(1) to (4) and Sections 2 to 6. That would already include new Section 4A, so there is no doubt that the new section will have, as nearly as practicable, the same effect as the corresponding provisions of the revised European Patent Convention.
I trust that, with that explanation, the noble Earl will withdraw the amendment.
moved Amendment No. 2:
After Clause 6, insert the following new clause—
In section 13 of the 1977 Act (mention of inventor), after subsection (1) there is inserted—
"(1A) When the applicant for a patent is not the inventor or joint inventor of the invention, the inventor or joint inventor shall have a right not to have their names and addresses mentioned on any patent granted for the invention and shall also have a right not to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right not to be so mentioned in accordance with rules in a prescribed document.""
My Lords, the amendment had a good run through in Grand Committee. I fear that, having listened to the Minister explain why the amendment was not being accepted by the Government, I must return to it on Report. For many people, this Bill is somewhat dry—albeit at this relatively late hour, the attendance in the House indicates the dryness of the topic. It is nice to see the noble Lord, Lord Haskel, in his place, adding to the general jollity of the occasion.
Of all the points made and amendments tabled to the Bill, this is the one that goes wider than the dry dust of patent legislation. What we are talking about here is potential threats to the lives of inventors if names and addresses appear on patent applications. We are aware that in applications made by bio-science companies, there is currently a practice, especially by animal welfare extremists, of putting the individual's personal details on the Internet and in other public media. That means that the development of the Internet has significantly increased the risk for inventors who, as we know, have had significant threats to their lives.
My amendment would make a small step to protect those inventors, especially in those the field of bio-science. In every other field, in which there is no possible life-threatening implication to having their name published, most inventors would be delighted to have their name published, because it goes to their credit for their career. So my amendment does not say that no one should have their names and addresses mentioned; it simply gives the right to an inventor who is worried—that is likely to be in the bio-science area—to have his name excluded.
The two arguments made by the Government were that this is of course a finely balanced argument and that those of us who table amendments perhaps make the case too strongly and do not recognise the balance of the argument. That does not mean that we do not think we are right, but we recognise that that argument is finely balanced.
The first argument is that when the Government consulted, they received an adverse response to that suggestion, especially from the patent industry—the agents—who all said that that would make it difficult to perform proper searches and would make their lives much more difficult. That may make their life more difficult, but that is not quite the same as the life-threatening risks to inventors in the small number of cases where the right would be exercised. So I am not persuaded by that argument. I understand it, and I understand what the patent agency community said—it is a perfectly respectable argument; but it does not override the need for the Government to give certain inventors the ability to have that protection. The second argument made is that other countries, especially the United States, do not have this protection. As I understand it, in the United States, the inventor must be the applicant. Again, that is fine, but the inventor does not have to choose to put the application forward. If an inventor who is working for XYZ Ltd or XYZ plc fears that if the application is made, his or her life will be under threat, he or she does not have to do it. So, again, there is a self-protection provision. He or she can say to his or her employer, "Actually, I am not prepared to make this application because I think that if I do, my life could be in danger". Again, I do not think that that is a satisfactory argument. So I urge the Government to think again. I suspect that when the matter went out to consultation, they may have been minded to go down that route.
The third argument used in this regard—the Minister will no doubt use it—is that the intention is to involve the option for addresses not to be disclosed. That is all very well, but with modern search engines, as I said in Grand Committee, with a name like mine, or that of the noble Earl, Lord Attlee, you would not need to be a nuclear physicist of utmost renown to be able to discover where we live. Smith might be harder, or even Sainsbury—they might get the wrong Sainsbury—but the ability to exclude addresses does not really give the protection that any inventor needs in terms of confidentiality. I hope that the Minister has had an opportunity to think about what we discussed in Grand Committee. I beg to move.
My Lords, I am afraid that I omitted to put my name to the amendment proposed by the noble Lord, Lord Razzall, but I fully support his reasoning, and I would support him if he chose to test the opinion of the House.
We are living in different times. In the 1950s, the noble Earl, my grandfather, used to go home by public transport, and everyone knew where he lived. It is now easy to work out an address, given a name, especially if it happens to be Razzall or Attlee, as mentioned by the noble Lord. It is true that other countries require the name and address of an inventor to be published, but there will be other significant differences in their legal system. They will have other checks and balances to protect the individual. If we stop making the release of the inventor's name compulsory, other countries might consider whether their arrangements need to be reviewed.
The Minister will point to the requirement of researchers to know the inventor's name. The noble Lord, Lord Razzall, suggested that it would be a small number of inventors who would want to keep their names confidential. In Committee, I suggested that it should be possible to give an inventor who requests it an anonymous reference number. Of course, once he starts using that reference number, he must keep using it. Most inventors would want their names to be published—in fact, it is thought that is the reason behind the significant number of patent applications. However, there will always be some who desire privacy. In Grand Committee, the Minister said that the public had a right to know the inventor's name, as part of the deal when the state bestows a right in the form of a patent. It is important to remember that the applicant enjoys the right, not the employee inventor, who normally gets only his usual reward as an employee, except if he is enjoying compensation under Section 40. I support the amendment proposed by the noble Lord, Lord Razzall.
My Lords, the noble Lord, Lord Razzall, argued in Committee and again today that there is a balance to be struck between the right of the public at large to have access to information that is relevant to patents, and the right of a more limited group of individuals to have their personal details protected. Other noble Lords supported his view. I have had time to reflect on the arguments put to me in Committee, and I have listened carefully to the points made by the noble Lord today.
I remain of the view that it will be only of fairly limited benefit to an inventor if he can have his name and address kept confidential in the UK. In many cases, patents will have been applied for in other countries where the inventor's details will be made public. The noble Lord, Lord Razzall, was somewhat dismissive of this point in Committee and again today, on the rather curious argument that you did not have to apply for a patent, but with patents, particularly in the biosciences, almost the first place you go to is America to do that. That does not stop it from being an obviously relevant point.
In light of what I have heard from the noble Lords opposite, both today and in Committee, I am prepared to provide the limited benefit that will result from changing UK practice in this respect. We will therefore bring forward an amendment at Third Reading that will ensure that an inventor may have his name and address kept confidential at the patent office in appropriate circumstances. This amendment may simply make one or two minor adjustments to the 1977 Act, which will clear the way for the necessary procedures to be set out in secondary legislation. We will be looking carefully at the drafting necessary to achieve this. It will not become possible for a patent applicant or patent holder to keep his name and address confidential, but we will no doubt wish to consult users of the patent systems before setting out the detailed mechanism in rules. I hope that the noble Lord will accept our undertaking and withdraw his amendment.
My Lords, the objective of this amendment is to make the law clearer and lift vague and unnecessary burdens from industry and its advisers. Under current law, Section 22 of the 1977 Act gives the comptroller power to control publication of information in patent specifications if to do so would be prejudicial to the defence of the realm or the safety of the public. To allow for this, Section 23 provides that patent applicants must not file abroad until six weeks after filing in the UK without special leave. To make life easier, the Bill as amended abolishes the six-week period for all information not prejudicial to national security or the safety of the public. This is most welcome. However, it is not completely clear what is meant by the safety of the public. No doubt it overlaps largely with national security. If it overlaps completely, it is redundant, and if not, what else does it include? Many applications include information that is capable of misuse; for example, toxicity data for drugs or pesticides. The problem is that applicants may have to err on the side of caution and adhere to the Section 23 provisions, thus negating the Government's laudable deregulation aims.
The Minister will say that the safety of the public has been in the Act since 1978, and has not caused problems. That is a reference to Section 22, the power of the comptroller to restrict the release of information. The comptroller must make the judgement on behalf of the applicant's Section 23 notification, if I may put it that way. The Bill as drafted will require the applicant to make that judgment, but he may not be well equipped to do so. I beg to move.
My Lords, as I said in Grand Committee, the provisions now in Clause 7 would provide considerable benefit for UK residents wishing to file patent applications in other countries. The existing general restrictions on the filing of such applications in Section 23 of the 1977 Act would be deregulated by this clause. They would only apply where the application contained information which, if published, might be prejudicial to national security or the safety of the public. The noble Earl, Lord Attlee, asked what the distinction between those might be. I have also sought to satisfy myself as to what the distinction might be. To be candid, it is not easy to give detailed examples, but it is certainly the case that the security services believe that the comprehensive nature of the two expressions covers every kind of eventuality that could be conceived. That is advice that it would be better to take. Therefore, retention of references to the safety of the public in Section 22 and including it in Section 23 achieves that. It is possible to come up with some sorts of hypothetical examples, but that would not be particularly sensible.
The effect of the amendment would be to further limit the application of Section 23, and it would remove restrictions where publishing the information in the application might be prejudicial to the safety of the public. As I hope I made clear in Committee, an important reason for referring to both national security and the safety of the public in this section is for parity with Section 22 of the 1977 Act. It provides continuity in that sense. Section 22, which sets out procedures restricting or prohibiting publication of information in patent applications filed at the UK patent office has, for more than 25 years, covered information prejudicial to the safety of the public and information that is required to be restricted for the defence of the realm.
It is true that the provision in Section 22 relating to the safety of the public has been invoked on few occasions. Although there may be relatively few circumstances in which the provision might be needed, an application could contain information that might not fall within the ambit of national security but could be of a nature such as to necessitate prohibition, in order to protect the public. Moreover, we cannot always predict the future direction of innovation or the ingenuity of inventors, so we would want to ensure that the provision could serve a more important purpose in safeguarding the public in the future.
In order to ensure that no necessary protection for the public is lost—now and until the next time that we have an opportunity to update patents law—the simple and safe solution is to follow the precedents and retain the provision in this form. I hope that, in the circumstances, the noble Earl, Lord Attlee, and the noble Lord, Lord Lyell, who is also rightly associated with it—he is not in his place this evening—will feel that it is appropriate to withdraw the amendment.
My Lords, I thank the Minister for his response. He said that the two phrases would cover every eventuality. That is what worries me. Applicants will play safe, and my fear is that the deregulation will not work as well as the Minister intends.
I am also not convinced that the Minister has grasped all my points, but I do not think that it matters. I beg leave to withdraw the amendment.
moved Amendment No. 4:
Page 6, leave out lines 25 to 28 and insert—
(i) the patent alleged to be infringed is not shown by the claimant to be invalid in a relevant respect, or
(ii) the patent alleged to be infringed is shown by the claimant to be invalid in a relevant respect and the defendant or defender proves that the time of making the threat he had no basis for believing the patent to be invalid in that respect.""
My Lords, the objective of the amendment is to hold the balance between honest patentees who believe that their legitimate rights are being infringed and honest third parties who are entitled to continue lawful activities without harassment.
The object of Section 70 is to prevent powerful patentees oppressing small traders by claiming dubious rights that the latter cannot afford to contest. It also hinders all patentees, large and small, from enforcing legitimate rights. There is no point in having rights that cannot be asserted. It should be possible to challenge apparent infringers without having to issue a writ first.
The useful reforms of the legal system brought about by the noble and learned Lord, Lord Woolf, emphasise the importance of reasonable discussion to achieve settlement. Section 70 obstructs such discussions. Just as threats may be issued oppressively or for purely tactical reasons, so may actions for threats. Suing a lawyer for issuing threats on behalf of his client can drive a wedge between the client and his adviser and deny the client justice. Although lawyers may find it convenient to be exempted completely from threats actions, the provision might also allow them to evade the intentions of Section 70. That is why I opposed the amendment tabled by the noble Lord, Lord Razzall, on that point in Grand Committee.
The amendment would allow patentees and their lawyers to issue threats believed in good faith to be justified. The burden would be on the issuer of the threats to prove his good faith. I beg to move.
My Lords, I am grateful to the noble Earl for the explanation of the thinking behind the amendment. Taking the amendment at face value, as it is on the Marshalled List, I find it puzzling. It would involve substituting our proposed new Section 70(4)(b) with some new wording. The new wording does not follow from the wording of the proposed new subsection (4)(a), either grammatically or logically. I strongly suspect that the noble Earl's intention is to replace existing subsection (2)(b) of Section 70. The noble Earl's proposed paragraph (b)(i) reproduces the wording of subsection (2)(b). The proposed paragraph (b)(ii) then adds to that existing wording.
I am helped in that piece of deduction—I hope that it is correct—by having seen a paper from the Chartered Institute of Patent Agents that contains exactly that proposal. My reply will therefore reflect the proposal put forward in that paper. I think that it mirrors the noble Earl's proposal.
The amendment proposes an additional way in which a patent holder may successfully defend himself against an action for making unjustified threats. The patent holder may genuinely believe that he has a valid patent and that it is being infringed. If he is sued for making threats against someone, the court may find that the acts under dispute amount to infringement of the patent. In that case, the patent holder is excused, as no unjustified threats were made. However, in those circumstances, the court may also find that the patent is invalid. If so, the patent holder is robbed of his defence and is found to have made unjustified threats, despite the fact that he was right in his assessment that infringement was taking place.
I agree that that seems unfair and may dissuade a genuine patent holder who has correctly assessed that infringement is taking place from seeking to resolve the dispute. As I understand it, the amendment addresses the apparent unfairness. If the court has found that the acts under dispute would have constituted infringement but also that the patent is invalid, the patent holder will not be held liable for making unjustified threats, provided that he shows that he genuinely had no reason for realising that his patent was invalid.
The point was not raised with us during the consultation. Had it been, we would, I think, have welcomed it. I am therefore prepared to agree an amendment that addresses the noble Earl's concerns and will table such an amendment at Third Reading. In other words, we have put the most favourable interpretation that we can on the noble Earl's amendment and will table amendments to take action on the point. We could not be more helpful than that, and I hope that the noble Earl will withdraw his amendment on that basis.
My Lords, we return to the issue of the meaning of the phrase "best endeavours", in what is now Clause 12.
I remind the House that Clause 12 provides for the insertion of new subsections into Section 70 of the Patents Act 1977. They give a defence in threats proceedings, when a person finds that he needs to resort to pursuing secondary infringers—often retailers or wholesalers. The defence is that he has used his "best endeavours" to determine who was the primary infringer or importer.
In support of his argument, the noble Lord, Lord Triesman, referred to the IBM case, decided in the Court of Appeal. It is true that the finding watered down the phrase "best endeavours", but I understand that, previously, it meant "to the point of commercial ruin". However, it still meant that IBM was expected to appeal a planning decision which, presumably, it reluctantly agreed with.
I believe that the Bill as drafted will not achieve what the Minister desires and that Clause 12 will be far less valuable. If my amendment is agreed to, the patent holder will still be obliged to try very hard to identify the primary infringer. However, the courts will be able to take into consideration all the circumstances and the reasonableness of the patent holder's actions. I beg to move.
My Lords, I support my noble friend Lord Attlee, who has raised an interesting point. I will not weary your Lordships tonight with the case of IBM; I think it was Mr Justice Laddie who had things to say about it.
My noble friend has argued his case cogently—I think there is, or can be, some difficulty with the interpretation of "best endeavours" or other words in quite how far the patent holder or the defendant will go in these cases. Perhaps the Minister can explain. I think that my noble friend's amendment has merit, and we are looking for clarity.
My Lords, it was clear in Committee that the noble Earl, Lord Attlee, had reservations about the best endeavours threshold setting too high a standard. In particular, he was concerned that it would, as he put it, hit SMEs hardest. I recall that the noble Lord, Lord Lyell, also expressed his concern about this point in Committee. I have listened carefully to the arguments put forward again this evening.
As my noble friend Lord Triesman made clear in Committee, the intention of our best endeavours threshold is not to set an impossibly high standard. If we thought that it did so, we would not be putting it forward. Neither is it our intention to set a threshold which is easier for some to achieve than others. In particular, we would not wish to weigh the scales unfairly against the small or medium-sized patent holder. However, I am not convinced that this is what the threshold actually does.
The wording in Clause 12(4) makes it clear that the person concerned—I emphasise that point—must use his best endeavours. It does not measure his best against an absolute standard. Instead, the standard that he must attain is to make the efforts that a prudent, determined and reasonable person in his position would make. Since this is the case, the circumstances in which he finds himself—that includes the resources that are available to him—are an important consideration.
The endeavours that a multinational firm can make may well, when all the circumstances are considered, go further than the endeavours that can be made by a small business with five employees. So the person concerned will not necessarily be required to match what someone else with more time, money and resources could do. He must do his best to track down the alleged primary infringer, but that does not necessarily mean that he is required to do more than he is reasonably capable of doing.
I hope that, with those words, I have been able to allay the fears of noble Lords opposite in this respect and that they will agree that the current wording achieves the right balance without being unreasonably hard on any particular person or size of business.
My Lords, the amendment relates to opinions given by the Patent Office on what is now Clause 13. We believe that the proposed system would be open to abuse and undesirable outcomes if official opinions were given by the Patent Office without the knowledge of third parties. There could be a ridiculous situation in which the Patent Office has correctly given an opinion that a patent is being infringed but the alleged infringer knows that the patent is invalid by reason of very clear prior art. If the alleged infringer knew that an infringement opinion was being sought, he could easily apply for a validity opinion himself.
The amendment states:
"The examiner shall seek comment from any third party proprietor, licensee or alleged infringer before giving an opinion adverse to that party".
If the examiner believes that the person seeking the opinion has no case, there will be no need to trouble other parties. I beg to move.
My Lords, before considering the amendment tabled by the noble Earl, Lord Attlee, and the noble Lord, Lord Lyell, I should first like to make some general points regarding the proposed opinion procedure, partly in response to comments made in our debate in Grand Committee.
The noble Earl, Lord Attlee, spoke in Committee of his concern that proposed new Section 74B(2)(d) was not compliant with TRIPS or Article 6 of the European Convention on Human Rights. However, let me reassure the noble Earl that the proposed new section does not contravene either TRIPS or the convention. The provision is in place to remove any overlap or confusion with existing procedures. It ensures that, in those instances where there will already be a sufficient means of challenging the outcome of a review, an automatic right of appeal from the new procedure for review of an opinion by the Patent Office can be excluded. The power will be exercised only in appropriate cases.
In Committee, the noble Earl, Lord Attlee, stated of opinions that,
"I am of the view that the only use would be as a sanity check".—[Official Report, 8/3/04; col. GC 377.]
I agree wholeheartedly with the idea that opinions will help to introduce greater sanity into the area of patent enforcement. What is needed is a procedure which, because of its non-binding nature, can be used at any stage in the life of a patent to help the patent holder or a third party in their decision-making processes and which does not compel them to act in a particular way.
It is for that reason that the Patent Office is best placed to be the provider of such opinions. The Patent Office has an excellent reputation for the quality of its work granting patents, as evidenced by its recent success in achieving the international ISO 9001:2000 quality accreditation, and is experienced in dealing with issues of validity and infringement. The advantages of the opinion procedure, which is a generally rapid, paper-based procedure, militate strongly against making it a binding one. This is to ensure that, precisely because the Patent Office is, as the noble Lord, Lord Razzall, said in Committee,
"an organ of the state",—[Official Report, 8/3/04; col. GC 374.]
a patent holder or third party will have every right to ignore the opinion if he so chooses. In our various discussions with the patent judges on this issue, they could see a greater need for a non-binding opinion process that could assist in the early settlement of disputes rather than the need for another binding litigation procedure.
I now turn to the amendment itself, which would make a change to new Section 74A(5) to require an examiner to obtain comment from a number of parties likely to be affected prior to issuing an adverse opinion. As I said in Committee and at Second Reading, much of the detail for the opinion procedure will be laid down in secondary legislation following further consultation with stakeholders on implementation. However, in order to ensure that the maximum benefit is derived from the opinion process, it has always been our intention to ensure that the request for an opinion is widely notified. This would ensure that those who are directly affected, for example, the patent holder, as well as those who have an interest can all submit their comments and observations for consideration by the examiner. However, at all times, we must make sure that the key advantages of the opinion procedure—its low cost and its speed—are not compromised.
There are a number of steps that we can take in order to ensure that a request for an opinion is widely advertised and notified. Clause 13(3) ensures that notification of the request for an opinion and of the outcome of the opinion can be made on the patents register. Any party who has an interest in a particular patent, such as the patent holder, a licensee or a third party competitor of the patent holder, can ask to be informed whenever such an entry on the register is made. This is a service that the Patent Office can provide upon payment of the appropriate fee.
In the case where the requester is not the patent holder we envisage that the Patent Office will notify the patent holder directly that a request for an opinion as to the validity or infringement of his patent has been received. We also propose to consult on whether or not it would be appropriate for the Patent Office to notify directly any party identified by the requester as having an interest. They could then be invited to submit observations on the question at issue within the appropriate time limit.
It is also proposed to notify all requests for an opinion in the Patents & Design Journal, which records the progress and status of all patent applications and granted patents and is readily available in electronic as well as paper form.
I hope that this will reassure noble Lords that requests for opinions will be widely notified and that all parties who have an interest will be able to be involved before the examiner issues an opinion. I believe that this will ensure that the interests of all, including the public interest, are safeguarded and will avoid the type of uncontested pre-emptive strike referred to by the noble Lord, Lord Razzall, in Grand Committee.
It is appropriate, and more consistent with what happens for other procedures under the 1977 Act, for details of the procedure to be laid out in secondary legislation, the Patent Rules. I would therefore ask noble Lords to accept my reassurance that their concerns will inform how we draw up the secondary legislation to follow from the Bill. With this reassurance, I would ask them to withdraw this amendment.
My Lords, I thank the Minister for his reference to the concerns that I raised at Grand Committee. Our concerns about the opinions provisions still remain. However, I thank the Minister for his interesting and illuminating reply. I think that it meets my concerns, I hope that it does, and I beg leave to withdraw the amendment.