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] [Chairman Cont] Office. We take 20 per cent by comparison. In terms of our domestic applications we process almost as many now as we did back in 1978, but about 20 per cent of the total finally end up in the European Patent Office. The distinction really is I think between smaller companies who really regard the United Kingdom as their market and larger companies particularly in this area of technology who see the world as their market and therefore would want to go to the European Patent Office for a single patent. 296. So the distinction, international, European Patent Office, and domestic, United Kingdom, seems to be broadly the case, except that there are some overlaps? (Mr Hartnack) Yes, there are some overlaps, Mr Chairman. It really depends on the company’s view, and most of our applications come from companies, of the commercial potential of their invention and the amount of money that they are prepared to pay to obtain patent protection round the world. In the pharmaceutical industry in terms of fundamental patent breakthroughs then one would expect the company to seek global protection. Even in the pharmaceutical area we do take applications both from UK companies and from overseas companies, although not very many, and the reasons for that may be to do with a view of a narrow market for the product or alternatively it may be a view of the quality of examination that we do in this country and therefore the likelihood of the applicants being able to enforce their rights in the courts. Sir Gerard Vaughan 297. How do we stand in this country in relation to the American patent situation? (Mr Hartnack) \n terms of numbers, do you mean? 298. No, in terms of availability of getting patents. Do countries here have to go through us and the European Patent Office and the American Patent Office or do they go to America first because it is perhaps a wider patent? Is there a lot of conflict? It is a very broad question, I realise that. What is the situation? (Mr Hartnack) Essentially patents are national ones and therefore you tend initially to seek rights in the country in which you work or live, so that Americans would seek initial rights in America and by and large British companies would seek initial rights in this country although they might go to the European Patent Office to get a bundle of European rights. 299. Could you, for example, have a development in this country which is not patented here yet but is patented in the States? (Mr Hartnack) It is theoretically possible but unlikely, and it does depend on the residence of the inventor. Cheryl Gillan 300. Are there any differences that could be simply highlighted between, say, the USA patent regime and the United Kingdom patent regime which would perhaps disadvantage UK companies or individuals? [ Continued (Mr Hartnack) There is a fundamental difference between the United States approach and our own approach. We in common with almost all other countries adopt a first to file system. The Americans adopt a first to invent system. This means that for practical purposes if you have lodged a patent application at our Office and sent us £25, then on the day that you lodge it you are given a date and for practical purposes if you are the first person to have lodged an application covering that technology on that date then you are deemed to be the inventor. In the United States it is possible to argue—even though you have published what you have invented—it is still possible to argue that you were the first to invent because that is the nature of their system. Sir Trevor Skeet 301. But is that fair because you have one year’s grace for the inventor, and should we not adopt that system here? (Mr Hartnack) There are a lot of pros and cons in both directions, Mr Chairman. The first con in terms of the USA approach is that it is very expensive and time consuming to prove that you were the first. In the United Kingdom all you need, as I say, is a stamp from the Patent Office saying that your application was received on a particular date. In the United States you might have to prove by reference to research records that you were in fact the first person who invented, and that could involve lengthy court proceedings. Mr Batiste 302. How often would a patent be likely to be accepted by one or other of your office or the European Patent Office and refused by the other? (Mr Hartnack) It is pretty unlikely because our law is harmonised with that of the European Patent Office. The 1977 Patents Act incorporates provisions quite specifically that are in the European Patent Convention. We also, for example, have people like Mr Hoptroff or Mr Wood going from our Office to meetings at the European Patent Office on patent harmonisation, patent practice, patent classification and so on. At the highest level, after a patent has gone through to grant and then through opposition proceedings it is conceivable that a different view could be taken as between the European Patent Office’s board of appeal and the United Kingdom courts, but in terms of the basic mechanisms for granting patents I think that it is unlikely. 303. So the law is the same, the practices are the same. Why did you then say in your opening comments that some people might choose the British - over the European Patent Office on the grounds of the thoroughness of examination? Where would that difference in procedure creep in? Presumably it is on the basis that it would be more likely to be defensible in a court if they had gone to the Office that examined more thoroughly? (Mr Hartnack) The issue in my mind is the issue of claims. The essence of a patent is that you describe what it is that you have invented in technical terms and you then make a number of claims. Now it is the process of, in effect, negotiation between the