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Division No. 4

CONTENTS

Attlee, E.
Baker of Dorking, L.
Bridgeman, V.
Brookeborough, V.
Byford, B.
Carnegy of Lour, B.
Cope of Berkeley, L.
Dixon-Smith, L.
Fookes, B.
Glenarthur, L.
Laird, L.
Lamont of Lerwick, L.
Lyell, L.
MacGregor of Pulham Market, L.
Monro of Langholm, L.
Naseby, L.
Norton of Louth, L.
O'Cathain, B.
Patten, L.
Reay, L.
Renfrew of Kaimsthorn,
L.
Rotherwick, L. [Teller]
Seccombe, B. [Teller]
Sharples, B.
Shaw of Northstead, L.
Thomas of Gwydir, L.
Waddington, L.
Windlesham, L.

NOT-CONTENTS

Acton, L.
Amos, B. (Lord President of the Council)
Andrews, B.
Ashley of Stoke, L.
Barker, B.
Bassam of Brighton, L.
Berkeley, L.
Brooke of Alverthorpe, L.
Brookman, L.
Campbell-Savours, L.
Carter, L.
Chandos, V.
Clark of Windermere, L.
Clarke of Hampstead, L.
Cohen of Pimlico, B.
Dahrendorf, L.
David, B.
Davies of Coity, L.
Davies of Oldham, L. [Teller]
Dean of Thornton-le-Fylde, B.
Dixon, L.
Eatwell, L.
Elder, L.
Evans of Parkside, L.
Evans of Temple Guiting, L.
Farrington of Ribbleton, B.
Faulkner of Worcester, L.
Filkin, L.
Finlay of Llandaff, B.
Fyfe of Fairfield, L.
Gibson of Market Rasen, B.
Golding, B.
Gordon of Strathblane, L.
Goudie, B.
Graham of Edmonton, L.
Greaves, L.
Grocott, L. [Teller]
Harris of Haringey, L.
Harrison, L.
Haskel, L.
Hilton of Eggardon, B.
Hogg of Cumbernauld, L.
Howie of Troon, L.
Hoyle, L.
Hughes of Woodside, L.
Hunt of Kings Heath, L.
Janner of Braunstone, L.
Jones, L.
Layard, L.
Lea of Crondall, L.
Livsey of Talgarth, L.
Lockwood, B.
Lofthouse of Pontefract, L.
Macdonald of Tradeston, L.
McIntosh of Haringey, L.
McIntosh of Hudnall, B.
MacKenzie of Culkein, L.
Maddock, B.
Mar and Kellie, E.
Masham of Ilton, B.
Massey of Darwen, B.
Miller of Chilthorne Domer, B.
Newby, L.
Palmer, L.
Pendry, L.
Phillips of Sudbury, L.
Pitkeathley, B.
Radice, L.
Ramsay of Cartvale, B.
Razzall, L.
Rendell of Babergh, B.
Robertson of Port Ellen, L.
Rooker, L.
Sainsbury of Turville, L.
Scotland of Asthal, B.
Shutt of Greetland, L.
Simon, V.
Smith of Clifton, L.
Smith of Leigh, L.
Steel of Aikwood, L.
Stone of Blackheath, L.
Symons of Vernham Dean, B.
Taylor of Blackburn, L.
Thomson of Monifieth, L.
Thornton, B.
Triesman, L.
Turnberg, L.
Walmsley, B.
Warwick of Undercliffe, B.
Whitaker, B.
Whitty, L.
Wigoder, L.
Woolmer of Leeds, L.

Resolved in the negative, and amendment disagreed to accordingly.

23 Mar 2004 : Column 672

8.21 p.m.

Clause 13 [Opinions by Patent Office as to validity or infringement]:

Earl Attlee moved Amendment No. 6:


    Page 7, line 29, at end insert—


"( ) The examiner shall seek comment from any third party proprietor, licensee or alleged infringer before giving an opinion adverse to that party."

The noble Earl said: 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

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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.

Lord Sainsbury of Turville: 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

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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

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inform how we draw up the secondary legislation to follow from the Bill. With this reassurance, I would ask them to withdraw this amendment.


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