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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    [Mr Batiste Cont] examiner and the applicant on the claim that very often leads either to a broad set of claims being granted or a relatively narrow set. An applicant might like a very broad set of claims because it gives him a broader monopoly, but on the other hand it is easier to attack that broad monopoly and therefore an applicant might like two bites in effect, one patent to grant broad claims and another one which is more restrictive and less likely to be attacked in court. 304. May I then come back to my original question which was, how does this difference in practice creep in between you and the European Patent Office where you might get broad claims granted in one and narrow claims granted in the other? (Mr Hartnack) The practice is the same, but all examiners are human and all examiners have to act independently. They do not act under my direction on particular applications: they deal with applicants as individuals. 305. So if a claim is actually going into your office and in the European Patent Office at the same time would the respective examiners in the two officers liaise with each other in order to come up with a common result? (Mr Hartnack) To my knowledge that has never happened. Derek Wood might like to say. (Mr Wood) It never happens at all, Mr Chairman. Dr Lynne Jones 306. May I just come in here on a quick point, Mr Chairman. Why do you need a separate British Patent Office, why could you not just be a decentralised office of the European Patent Office? (Mr Hartnack) It is a question that has been put to me before, Mr Chairman! Chairman 307. Iam not a bit surprised! (Mr Hartnack) Essentially the European Patent Office covering the companies in the single market deals with 17 countries, the whole of the European Community bar Finland, plus Switzerland plus Monaco and Liechtenstein. It offers one a patent for the whole of Europe and one has the advantage of dealing with a single bureaucracy rather than 17 bureaucracies if one goes through the European Patent Office. However, to get a typical bundle of European patents you would pay about 9,000 Deutschemarks, say £4,000. For a British patent, admittedly covering only one country, you would pay a mere £285, say 500 or 600 Deutschemarks, and if your market is in practice just the United Kingdom then you do not need the whole of Europe, and therefore our purpose is to support small and medium sized companies. Sir Gerard Vaughan 308. Mr Hartnack, what you have been telling us sounds very reassuring and good news. Are you telling the Committee that the present system is satisfactory from your point of view and that it is reasonably efficient? (Mr Hartnack) I believe so. 194404 A*3 309. Really? (Mr Hartnack) Yes. 310. You would not want to see it changed at all? (Mr Hartnack) I believe that national offices being local and near the applicant are of particular value to small and medium sized firms. Sir Gerard Vaughan: If you do have thoughts on this, maybe you could either write to us, if the chairman agrees, or come back later in your answers, because we have understood that you think all is well. Dr Bray 311. The Patent Office does not exist in a vacuum; there is on the one hand the legislation of the Government and on the other hand the courts. The balance between these is presumably different in the United States and the United Kingdom and Europe. How influential is the United Kingdom Patent Office? Let me give you a specific issue, Mr Hartnack, on the very fraught issue of patenting genes which has been extensively debated by scientists and scientific bodies. I am not aware of any public contribution having been made by the UK Patent Office? (Mr Hartnack) | am not sure that there has been a public contribution made by the European Patent Office either. They have held a forum but they have not entered into a general public debate on the matter. The way in which we try to operate is through consultation with the interests, and we have, for example, a Standing Advisory Committee on Intellectual Property which debates all issues relating to intellectual property and tries to take in interests as broad as the CBI, the patent and trademark agents, the small firms representatives and so on, so we operate through these consultative procedures rather than through public debate. 312. But did the Patent Office play any part at all in the discussions between the Medical Research Council and the national institute? (Mr Hartnack) I attended a meeting very early on in that process where the Medical Research Council and other main players on that issue were present and my opinion was sought, yes. Mrs Campbell 313. I should like to ask you about something that you put in your memorandum. You made it quite clear there that the patent examination relies upon a search of the Patent Office database. I wonder whether you can explain to us how the database is maintained and also what technical qualifications patent examiners have to enable them to judge the novelty and utility of a patent application’s claims on the basis of the material that they recover from the database? Have they got the expertise to reject claims which are wider than the basic invention warrants? (Mr Hartnack) 1 certainly believe so, Mr Chairman, but perhaps I could ask the gentleman responsible for it to answer, Mr Wood. (Mr Wood) Mr Chairman, may we take the second question first about the qualifications of patent examiners. Some of them will have a degree in a relevant science and in this particular area of