Proposed UK Patent Law Reform

Article by Mr Gordon Harris and Ms Bonita Trimmer

Following a comprehensive public consultation process, the UK government published a report earlier this month (13 November 2003) indicating which of the numerous amendments to the UK Patents Act 1977 put forward jointly by the Patent Office and Department of Trade & Industry last year, it now intended to include in a proposed Patent Act (Amendment) Bill.

The main purpose of the proposed bill is to give effect to the changes to the wording of the European Patent Convention adopted by the EPO Administrative Council on 28 June 2001. However the government also took the opportunity to consider further changes including proposals that are entirely unrelated to the EPC 2000 but will address certain enforcement and post grant issues that have caused some concern in the UK.

The intention is for all these amendments to take effect around the same time as the provisions of the EPC 2000, which will not come into force until up to two years after another 11 Contracting States ratifies or accedes to it (bringing the total to the required 15). Therefore it is unlikely that we will feel the force of the government's current thinking for some years (we do not even have any draft wording to consider yet). However, it is worth highlighting now a few of the more radical and in some cases innovative changes proposed not least because the judiciary will be aware of the solutions proposed to some of UK's most perplexing patent law issues.

No More Discretion To Refuse Amendment

The government hopes that provision will be made in the 1977 Act to make it clear that neither the Comptroller nor the Court has any discretion to refuse an application to amend an EP (UK) or GB patent where the substantive grounds for refusal do not apply. Therefore the applicant's conduct will no longer be relevant when such an application is being considered. This will apply to all requested amendments and not just limiting ones. Such a provision will accordingly do more than simply reverse the Court of Appeal's judgment in the Kimberly-Clark Worldwide Inc v Procter & Gamble Ltd [2000] RPC 422.

This proposed reform was welcomed by many as likely to decrease the cost and delay of amendment proceedings that now require extensive disclosure frequently of privileged materials. However the government also acknowledged the concern that this change may mean there will be little incentive in the future for patentees to acknowledge the need...