Restrictions on Applications for Patents Overseas

Elsewhere in this blog I have mentioned a discussion forum called IPR Talk which belongs to Ideas 21. Some weeks ago I prompted a discussion on the forum about the Commission's proposals for a directive to extend criminal liability for intellectual property infringement which I discussed in more detail in our other blog (see "Porridge for Patent Infringement" IP/it-Update 22 Aug 2005).

That discussion broadened out when one of the subscribers to IPR Talk complained of several aspects of our patent law. One of his complaints went as follows:

"I cannot submit my innovations to an international show, exhibition or competition. As I am a UK citizen, it is criminal offence to do so. Punishable by up to two years in jail."

This observation surprised one of the regulars in the forum who asked for clarification. That elicited the following response:

"I've been advised (by a patent lawyer) that even contacting a patent lawyer and discussing my innovations may be against the law! Ergo, submitting them for publication or showing them to the public via an exhibition is well off the righter
(sic) scale."

The person who asked for clarification suggested asking me for an explanation. Since this is an issue upon which the law has recently changed and since it may well interest people who are not registered in the IPR Talk forum I decided to respond in full here.

In order to prevent technology that could affect the security of the UK leaving the country, the comptroller (that is to say, the head of the Patent Office) has power under s.22 of the Patents Act 1977 as amended to prevent or restrict publication of an application for a patent that contains information that might be prejudicial to the defence of the realm or public safety. These restrictions can include prohibiting an application for a European patent or an application under the Patent Co-operation Treaty.

Since these provisions could be circumvented by applying for a patent outside the UK, s.23 (1) of the 1977 Act precluded applications overseas without the written authority of the comptroller unless an application had been made for a patent in the UK at least 6 weeks before the foreign application and the comptroller had not seen fit to impose any of the restrictions mentioned in the previous paragraph. Non compliance with that section is an offence punishable by fine or up to 2 years imprisonment under s.23 (3).

S.23 (1) as it stood applied to all inventions whether they had any relevance to national security or public safety or not. The section has now been modified with effect from the beginning of this year by s.7 of the Patents Act 2004 which restricts applications for patents outside the UK only where the application

"(a) ......... contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or

(b) the application contains information the publication of which might be prejudicial to the safety of the public."

Furthermore, a person can now be convicted under s.23 (3) only if he or she knows that filing the application, or causing it to be filed, would contravene that section or he or she is reckless as to whether filing the application, or causing it to be filed, would contravene this section.

As with anything that appears on this blog, I should be glad to answer any questions that may arise on +44 (0)870 990 5081 or john.lambert@nipclaw.com.