My Lords, Clause 17 will allow the Intellectual Property Office to share patent information on unpublished patent applications with patent offices outside the United Kingdom on a confidential basis for their use in processing similar patent applications filed with them. This will help speed up international patent processing. I hope that noble Lords will bear with me, as I have much to say in speaking to this amendment.
Amendment 25E would place various restrictions on the circumstances in which information may be sent to a patent office outside the United Kingdom. First, the amendment would introduce a requirement that the other patent office must quote the application number of a UK patent application when it requests information. It is absolutely the intention that information will be shared with other offices only where they have specified what information is required and in relation to which patent application, identified by the application number. It is for this reason that Clause 17 applies to such information as that office requests and only in accordance with the agreements made by the Intellectual Property Office. This is the approach taken when the IPO provides information to the European Patent Office in accordance with Section 118(3)(a) of the Patents Act and the European Patent Convention.
Secondly, the amendment would restrict the arrangements so that information could be shared only when an application had been filed abroad following
a UK application. In practice, it is only when the other office is dealing with an application, which follows on from a UK application, that it will be able to gain any benefit from seeing the results of the UK work.
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Thirdly, the amendment would restrict the work-sharing arrangements so that information could be shared only 12 months after an application had been filed at the UK office. Restricting the provision in this way is likely to detract from the usefulness of the information to other offices as they may not receive the information in time for the completion of their own search and examination work on related applications filed in that office. None the less, I can reassure noble Lords that, in practice, the first opportunity at which useful information can be shared is after completion of the search by the UK office. Indeed, the existing arrangements with the European Patent Office operate in this manner. Requests from another office will therefore in practice not be made until after the applicant has filed a later application in that office that follows on from the UK application.
Fourthly, the amendment would restrict the work-sharing arrangements so that they apply to the UK search and examination results only. Work sharing will be of the greatest benefit if the context of the search and examination work conducted by the UK office is also shared. It will therefore be useful to that other office if the IPO is able to share, for example, the claims of a patent application that define the invention. That will enable the other office to work most efficiently with the information provided by the UK. I can assure noble Lords present today that the types of information to be shared extend only to that information likely to reduce duplication. I also suggest that requirements such as what information can be shared are far more suitable for inclusion in the working agreements between the IPO and the other office than for primary legislation. I have already referred to the existing arrangements with the European Patent Office and remind noble Lords that the details are not set out in primary legislation.
Fifthly, the amendment would require the IPO to inform each applicant that a request for information had been made in relation to their application and what information was being shared. I appreciate that it is essential that patent applicants must be provided with a full and complete explanation along the lines of the following: what information is being shared; from what point onwards; with which other offices it is being shared; and what restrictions are in place on the use of that information. That will enable patent applicants to make fully informed decisions about their filing strategies. I reassure noble Lords that my officials at the IPO intend to provide such information on the IPO’s website, which will provide applicants with sufficient notice of future plans to enable them to make fully informed decisions about their filing strategies. For example, the website will explain to applicants that the work-sharing arrangements will not share any information until a search has been completed. Providing this general information will mean that there is no need to inform applicants on an individual basis.
Finally, the amendment would require an approved list to be created, as the noble Lord mentioned, by statutory instrument, listing to which offices the IPO may send information. The schedule to the Bill removes the need for the Government to introduce secondary legislation simply to update lists of countries. To introduce the requirement here would be inconsistent with the aim of simplifying processes under the Bill. None the less, as I have already explained, I appreciate that it is essential that patent applicants must be provided with full and complete explanations of the work-sharing arrangements as and when they are agreed so that they can make fully informed decisions about their filing strategies. Providing an approved list in legislation of potential countries for future work-sharing arrangements is likely to lead to confusion for other offices and patent applicants. A country may be included on that approved list even though no work-sharing arrangements are yet in place or even being considered. Users will therefore still need to refer to the IPO’s website to confirm the details of any existing or forthcoming work-sharing arrangements.
I trust that my somewhat lengthy explanations have provided sufficient reassurances for noble Lords. In the light of my comments, I ask that the noble Lord, Lord Stevenson, withdraws his amendment.