Human genetics : minutes of evidence, Wednesday 8 February 1995 ... / Science and Technology Committee.

  • Great Britain. Parliament. House of Commons. Select Committee on Science and Technology
Date:
[1995], ©1995
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Licence: Open Government Licence

Credit: Human genetics : minutes of evidence, Wednesday 8 February 1995 ... / Science and Technology Committee. Source: Wellcome Collection.

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    8 February 1995] [Continued However, British patents are obtained more quickly than European patents, so some companies do sometimes file nationally in one or two important European countries in addition to the European Patent Office, so as to be able to pursue infringers at an earlier date. The situation will be different in some other branches of technology, eg for the inventor of the improved mousetrap, but even then, the EU means that overwhelmingly commercial enterprises are thinking of exploitation, and hence patent protection, on at least that sort of scale. The UK Patent Office used to have a useful function in providing a search or examination service or option under the operation of the European Patent Convention and Patent Co-operation Treaty, but those functions have been effectively removed or relinquished, to the regret of many in this country. 2. (From Anne Campbell) Does the Patent Office have the qualifications and expertise to examine patent claims which are too broad? It has the legal obligation to do so, but it is questionable whether in practice it does so effectively. In this respect, it is probably not very different from the EPO. As the Comptroller said; examiners are human, and can get it wrong. The Comptroller was however in error in saying that all decisions of the Patent Office can be challenged in the courts. Specifically, undue breadth of patent claim is not per se a ground of invalidity after grant (the same goes for patents granted by the EPO). This is a matter of growing concern, in this country in particular, and there are moves afoot to try and have the patent law (here and at the EPO) amended to remove this oddity, and thereby open up to re-examination the decisions of the all-too-human examiners as regards the granting of patent claims which lack adequate support. 3. (From Cheryl Gillan) Is it reasonable to grant patents for “the last piece in the jigsaw”? At first sight it seems unreasonable that the entire monopoly should go to the one who completes the job, building upon the probably much greater of work of those who went before. However, if the earlier workers are unhappy about this, they should have kept their results to themselves until they had progressed the work to the point where a patent application could be filed. I know that this looks as though it is inhibiting early disclosure of scientific results (it probably is), but this is how commercial enterprises conduct their business. If scientists choose not to operate in the commercial environment and manner, then it could be said that they have largely removed themselves from the debate as to how commercial enterprises should deal with each other (which is what patents are basically about). (That is of course an over-simplification, but it will do as a starting point for further discussion.) 4. (From Cheryl Gillan) Are there any changes needed in the patent law? The Comptroller thought probably not. I think that there are some. I have mentioned the introduction of post-grant challenge to patents on the ground of lack of support and undue breadth of claim. Also (following up a supplementary question from Sir Trevor Skeet), I think one might introduce a more stringent “utility” requirement (rather as they have in USA), not so much to deal with existing patents, but to deal with the case of patent claims directed to DNA (or other substances) for which there is no known or demonstrable practical usefulness. (I am not necessarily advocating this, as I am not sure how real the problem will turn out to be; but the existing requirement for “industrial applicability” in the present European patent laws will be completely ineffective for that purpose.) I also think that the compulsory licence provisions of the patent law could be looked at as a means to try and provide a greater degree of certainty that useful “downstream” inventions will be permitted commercial exploitation on reasonable terms. This will however be hotly opposed by many established research-based companies; and it is likely to founder for political rather than objective considerations. It would also be no good if it were done unilaterally; it would need an international agreement, since the exploitation of this technology is international and not parochial. Article 31 of the TRIPS agreement deals with compulsory licences, but its provisions are pretty anodyne, and more likely to hinder than help in providing the kind of commercial certainties which I have indicated. 5. (From Dr Lynne Jones) Why should genes be patentable, rather than the process by which the gene was discovered or the process by which it is subsequently used? The process by which the gene was discovered is generally irrelevant to any meaningful patent protection. It is of largely historical interest only; it is done only once; and it is not industrially exploitable in any obvious manner. The process (usually more than one of them) by which the gene can be used certainly is patentable.