DPRR/13-14/10
Intellectual Property Bill
Memorandum by the Department for Business, Innovation and Skills for
the Delegated Powers and Regulatory Reform Committee
Introduction
1.
This memorandum identifies the provisions for delegated legislation in the Intellectual
Property Bill.
In respect of each power sought, the memorandum sets out:

The context and purpose of the power;

The justification for seeking the power;

The extent to which the power is novel, or draws on precedents;

The justification for the choice of Parliamentary scrutiny procedure proposed for the
power sought.
Background
2.
Part 1 of the Bill introduces changes to the UK design framework. These result from
work which followed the Hargreaves Review of Intellectual Property and Growth,
commissioned by the Prime Minister and published in May 2011. This review acknowledged
that the system for protecting designs was difficult for business to understand and to use
effectively. Consequently, the Intellectual Property Office (IPO) started a programme of
work to establish whether and, if so, how to improve the system. In September 2011, it
published a call for evidence and associated online survey. Responses to those, as well as the
results of IPO funded research, fed into an assessment of the need to reform the designs
framework, which the IPO published in December 2011. This was followed in July 2012 by a
consultation with proposals to amend the system. The clauses in relation to design have the
following purposes:

To amend and –where appropriate -simplify the existing legislative framework;
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
To provide an alternative avenue for appeals against a decision of the registrar, by
means of an “Appointed Person”;

3.
To provide for an opinions service, similar to that in operation for patents.
The IPO launched the patents opinions service in October 2005 to help businesses
resolve patent disputes by providing a quick and affordable assessment relating to the validity
or infringement of patents. A consultation issued in June 2012 proposed to expand the
opinions service to extend the questions on which a patent opinion may be sought, to expand
the service to offer opinions as to whether a Supplementary Protection Certificate is invalid
or infringed and to confer power on the IPO to initiate revocation action against a patent that
an opinion concludes is invalid. Part 2 of the Bill contains provisions that make a number of
technical amendments to the provisions of the Patent Act 1977. In addition Part 2 makes
provision for the extension of the current patents opinion service to cover additional matters
to those which it currently applies and the implementation into UK law of the provisions of
the Agreement on a Unified Patent Court made in Brussels on 19th February 2013
4.
Part 3 of the Bill introduces a requirement on the Secretary of State to report to
Parliament on the activities of the Patent Office, on an annual basis. It also includes
provision in relation to recognition of foreign copyright works and performances.
5.
The Department for Business, Innovation and Skills has considered the use of powers
in the Bill as set out below and is satisfied that they are necessary and justified.
PART 1: DESIGN
Clause 8: Accession to the Hague Agreement
Power conferred on: Secretary of State
Power exercised by: Order
Parliamentary procedure: Negative resolution procedure
Context and purpose
6.
Clause 8 inserts new section 15ZA into the Registered Designs Act 1949. This
enables the Geneva Act of the Hague Agreement Concerning the International Registration of
Industrial Designs, adopted by the Diplomatic Conference on 2 July 1999, to be given effect
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in the law of the UK, by order of the Secretary of State. The UK is not currently a signatory
to the Geneva Act. The Hague system enables the owner of an industrial design to get
protection in a number of countries by filing a single application with the International
Bureau of the World Intellectual Property Organisation.
Justification
7.
The order may in particular make provision relating to specified matters such as
communication of information to the International Bureau and payment of fees, as well as
amendments to the 1949 Act. The use of secondary legislation should enable the Secretary of
State to make such provision as he thinks fit for giving effect in the UK to the provisions of
the Geneva Act of the Hague Convention.
Procedure justification
8.
Although the power enables the amendment of primary legislation, the negative
resolution procedure was considered appropriate. Accession to the Hague Agreement will
offer stakeholders an alternative means of protection to their intellectual property right rather
than compelling them to do something. It is envisaged that any changes to the law will be
technical in nature, for example, providing for the making of applications for international
registrations at the IPO. Further, this provision is similar to section 54 of the Trade Marks Act
1994, which gives effect to the Madrid Protocol - an analogous international agreement for
trade marks – that is also subject to the negative resolution procedure.
Clause 9: Power to make rules relating to the inspection of documents kept at the IPO
in connection with a registered design
Power exercised by: Rules
Parliamentary procedure: Negative
Context and purpose
9.
The current system for inspecting documents held at the IPO is slow, bureaucratic and
out of step with modern business practice so this clause makes provision for a more
accessible and streamlined process to enable businesses and individuals to view and receive
relevant information from a registered designs file via an online database. Clause 9(5) inserts
subsections (6) and (7) into section 22 of the Registered Designs Act 1949, which provide for
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the cases or circumstances in which documents held at the Patent Office in connection with a
registered design may not be inspected, to be prescribed in secondary legislation (rules). It
also provides that such rules may confer a discretion on the registrar.
Justification
10.
There are two reasons for providing for a power to make provision by rules rather
than through primary legislation. First, the use of secondary legislation allows for the rules to
set out in sufficient detail the cases or circumstances in which documents held at the IPO in
connection with a registered design may not be inspected. Restrictions inherent in the primary
legislative programme make it difficult to achieve this level of detail on the face of the Bill.
11.
Secondly, using rules allows these provisions to be future-proofed, in that they may
be amended in future without the need to amend primary legislation.
Procedure justification
12.
Given the detailed and administrative nature of the rules, it is considered that the
negative procedure is appropriate.
Clause 11: Design opinions service
Power conferred on: Secretary of State
Power exercised by: Regulations
Parliamentary procedure: Negative resolution procedure
Context and purpose
13.
This clause inserts new section 28A into the Registered Designs Act 1949 and new
section 249A into the Copyright, Designs and Patents Act 1988 and enables the Secretary of
State to make provision, by regulations, for a design opinions service. The opinions service,
which will be similar to the existing patent opinions service, is intended to provide an
informal, expeditious and cost effective aid to pursuing litigation: it will help businesses
decide whether there is a case to answer before pursuing any dispute more formally through
the courts. The regulations will set out the operation and details of the service, including the
scope of the service, cases where the registrar does not have to furnish an opinion, fees for
using the service and the appeals procedure.
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Justification
14.
In order to allow greater flexibility, it is sensible to provide that the detailed provision
in relation to the Opinions Service should be set out in regulations, rather than on the face of
the Bill. Restrictions inherent in the primary legislative programme make it difficult to
achieve this level of detail on the face of the Bill.
Procedure justification
15.
The making of regulations is to be subject to the negative parliamentary procedure,
which is considered to be an appropriate level of scrutiny for such provision.
Clause 12: Use of directions by the registrar
Power conferred on: Registrar of Designs/Secretary of State
Power exercised by: Directions published in the prescribed manner
Parliamentary procedure: The giving of directions: none;
Publication in the prescribed manner: negative resolution
procedure
Context and purpose
16.
This clause allows the registrar to issue directions: (a) in relation to hours of business
and excluded days, rather than these matters being governed by secondary legislation; and (b)
in relation to the content and layout of forms. Similar to patents and trade marks, the manner
in which such directions are to be published are to be prescribed by rules (Rules are made by
the Secretary of State – see sections 36 and 37 of the Registered Designs Act 1949. These are
subject to negative resolution procedure) This is to ensure that the public continue to be well
informed of changes to the IPO’s hours and days of business and the details of the forms,
with ample notice. In practice, there will be a rule in the relevant secondary legislation for
registered designs, setting out a requirement to publish on the IPO website and the official
journal.
Justification
17.
It is appropriate that such detail be set out in secondary legislation, rather than on the
face of primary legislation. Restrictions inherent in the primary legislative programme make
it difficult to achieve this level of detail on the face of the Bill.
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Procedure justification
18.
Rules made under section 36 of the Registered Designs Act 1949 are subject to the
negative parliamentary procedure (see section 37(4)). This is considered an appropriate level
of scrutiny for such provision.
19.
By way of precedent, section 80 of the Trade Marks Act 1994 enables the registrar to
give directions specifying hours of business and business days of the Patent Office for the
purpose of carrying on business under the Act. In relation to forms, there is similar provision
set out in section 123(2A) of the Patents Act 1977, which states that the comptroller may set
out in directions any forms which is required by rules and any such directions are to be
published in the prescribed manner.
PART 2: PATENTS
Clause 15: Patent opinions service
Power conferred on: Secretary of State
Power exercised by: Rules
Parliamentary procedure: Negative resolution procedure
Context and purpose
20.
Section 74A currently provides that a person may request the comptroller to issue an
opinion in two cases; (1) whether a particular act constitutes an infringement of the patent or
(2) whether the invention is not patentable because it is not new or it does not involve an
inventive step (corresponding to the conditions in section 1(1)(a) and (b) of the Patents Act).
Clause 15 amends current section 74A of the Patents Act 1977, so that the Intellectual
Property Office may issue an opinion “on a prescribed matter” in relation to patents, rather
than being restricted to the two circumstances set out above. Thus it is intended that opinions
may additionally be issued on the grounds for patentability in paragraphs (c) and (d) of
section 1(1) and the grounds specified in paragraphs (c) to (e) of section 72(1) (which confers
a power on the court or the comptroller to revoke a patent on certain grounds).
Justification
21.
Whilst this policy could be delivered by amending section 74A(1) to refer to each of
those grounds, in order to provide greater flexibility for the future, Clause 15 confers a power
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on the Comptroller to issue opinions on such matters as may be prescribed in the Patents
Rules. Section 123 of the Patents Act contains a general power for the Secretary of State to
make rules for regulating the business of the Patent Office in relation to patents. In the first
instance it is envisaged that Rules made in pursuance of this power would specify the
grounds currently identified in section 74A(1) and include the additional grounds specified
above. In addition Clause 15(3) applies the provisions relating to patent opinions to
Supplementary Protection Certificates.
Procedure justification and precedent
22.
Rules made under section 123 of the Patents Act are subject to the negative
parliamentary procedure (see Section 124(2)). This is considered an appropriate level of
scrutiny for this delegated power.
Clause 16: Unified Patent Court
Power conferred on: Secretary of State
Power exercised by: Order
Parliamentary procedure: Affirmative resolution procedure
Context and purpose
23.
The Agreement for the Unified Patent Court was signed on the 19th February 2013.
The Agreement together with EU Regulations 1257/2012 and 1260/2012 will, when they
enter into force, create the possibility of applying through the European Patent Office (a nonEU body established in Munich) for a single patent (a patent with unitary effect) which is
enforceable throughout the territory of those Member States which are participating in the
scheme. The Agreement creates a trans-national court structure which exercises jurisdiction
over the patent with unitary effect. This new patent system will run in parallel with national
patent systems. It is also possible to apply to the European Patent Office for a bundle of
national patents in countries specified in the patent application. Ultimately the court
agreement provides for jurisdiction over these patents to be transferred to the Unified Patent
Court.
Justification
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24.
The power is limited to implementing the Agreement in the United Kingdom and
aligning the law relating to UK national patents to the provisions in the Agreement, for
example those provisions that deal with infringement. Much of the detail is of a kind that is
more appropriately dealt with in secondary legislation, such as the making of consequential
amendments to UK legislation.
Procedure justification and precedent
25.
Given that there may be amendments to primary legislation, the power is subject to
the affirmative resolution procedure.
Clause 18 and paragraph 6 of the Schedule: European Patent (UK): payment of renewal
fee following restoration
Power conferred on: Secretary of State
Power exercised by: Rules
Parliamentary procedure: Negative
Context and purpose
26.
Clause 18 and paragraph 6 of the Schedule make provision for the payment of fees in
relation to European Patents where the patent is revoked and subsequently restored. The
clause allows the Secretary of State to prescribe by Rules the period within which the
payment of such fees must be made
Justification
27.
The period for the making of payments of fees in the circumstances described is a
matter of detail that is best left to secondary legislation.
Procedure justification and precedent
28.
This is an extension of the existing powers to make rules in relation to patents
conferred by section 123 of the Patents Act 1977
PART 3: MISCELLANEOUS
Clause 21: Recognition of foreign copyright works and performances
Power conferred on: HM the Queen
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Power exercised by: Order in Council
Parliamentary procedure: Negative resolution procedure
Context and purpose
29.
Clause 21(4) of the Bill substitutes a new section 159 into the Copyright, Designs and
Patents Act 1988, which includes a power to make provision by Order in Council, in relation
to the application of Part I of the 1988 Act, to countries to which it does not extend. The
purpose of this provision is to make the statutory scheme less complex, in particular the
secondary legislation made under section 208, which is not easy to follow.
30.
Linked to this, Clause 21(6) amends section 206 of the 1988 Act so that provision
may be made by Order in Council restricting the application of Part 2 to a country which
qualifies by virtue of membership of the Rome Convention. This is to cover the possibility
that declarations have been made by that country restricting the application of its obligations
under the Rome Convention or under the WIPO Performances and Phonograms Treaty. In
addition the power also enables Part 2 to be extended to any country notwithstanding that it is
not a party to the Rome Convention.
Justification
31.
There is an existing power to make provision by Order in Council in the current
section 159, so it is appropriate that the new section 159 should contain the same power.
Procedure justification and precedent
32.
The negative procedure is appropriate here, mirroring (for section 159) the current
position. It is considered that this is the appropriate level of Parliamentary scrutiny, given the
limited, uncontroversial nature of the changes to which such Orders in Council relate.
Existing section 159 provides a precedent for such a power.
Clause 21(8): Power to amend in consequence of changes to international law
Power conferred on: Secretary of State
Power exercised by: Order
Parliamentary procedure: Affirmative
Context and purpose
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33.
Clause 21(8) inserts new section 212A into the Copyright, Designs and Patents Act
1988, which provides for a power to make amendments by Order, so that part 2 may be
amended in the event that there are changes to the underlying international law in the area of
performance rights– for example, in the event that the Rome Convention is replaced by some
other international agreement.
Justification
34.
The power is being taken in order to ensure that there is scope to amend primary
legislation, to reflect the changes brought about in international law in relation to
performance rights.
Procedure justification
35.
This power is subject to the affirmative resolution procedure in view of the fact that it
allows amendments to be made to primary legislation, as is fitting for a Henry VIII power.
PART 4: GENERAL
Clause 22: Power to make consequential provision
Power conferred on: Secretary of State
Power exercised by: Order
Parliamentary procedure: Affirmative where the order changes primary legislation,
otherwise negative
Context and purpose
36.
Clause 22 confers a power on the Secretary of State by order to make provision in
consequence of this Bill, which may include amending, repealing, revoking or modifying any
enactment, as well as transitional, transitory or saving provision in connection with the
commencement of provision made by the order. In addition the Clause enables transitional,
transitory or saving provision to be made.
37.
The clause makes it clear that “enactment” includes legislation made Northern Ireland
and by the Scottish Parliament and the National Assembly for Wales.
Justification
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38.
This power to make consequential provision is provided in order to ensure that any
consequential amendment which has not yet been identified as being required and
amendments to secondary legislation, may be made as necessary. This power is confined to
provisions that are consequent on provisions in the Bill.
Procedure justification
39.
The Parliamentary procedure to be followed, depends on the content of the order. If
the order amends or repeals any provision of primary legislation, it may not be made unless a
draft has been laid before and approved by each House of Parliament, as is fitting for a Henry
VIII power. If the order does not amend or repeal primary legislation, the negative resolution
procedure applies, which is considered appropriate given that such an order would be giving
effect to the detailed consequences of organisational changes expressly provided for in
primary legislation.
Clause 23: Commencement.
Powers conferred on: Secretary of State
Power exercised by: Order
Parliamentary procedure: None
Context and purpose
40.
This clause provides that the provisions come into force on whatever day the
Secretary of State by order appoints.
Justification
41.
The commencement power will enable the Secretary of State to commence the principal
provisions of the Bill at an appropriate time.
Procedure justification
42.
The Department considers that the power to make commencement orders need not be
subject to any Parliamentary procedure as the power sets the date of when the new provisions
will come into force. The substance of the provisions will be debated during the passage of the
Bill.
Department for Business, Innovation and Skills
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Thursday, 18 April 2013
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