Schedule 1paragraph 9, sub-paragraph (4) Section 7 – Restrictions on applications abroad by United Kingdom residents
52.This section amends section 23 of the 1977 Act, with the effect that the restrictions on UK residents filing patent applications abroad only apply to a UK resident who files an application abroad, the publication of which might prejudice national security or the safety of the public. The section also limits the existing criminal offence (set out in present section 23(3)) so that a person is only liable where he knows that, or is reckless as to whether, he is contravening the restrictions.
53.Subsection (1) amends section 23(1) by limiting its application to situations where new section 23(1A) applies. Existing section 23(1) prohibits a person resident in the UK from filing, or causing to be filed, a patent application abroad without written permission from the comptroller of the Patent Office, unless an application for the same invention has been filed in the Patent Office. If such an application has been filed not less than six weeks earlier, and there are no directions in force prohibiting or restricting publication, or the communication of the information in the application, then the person may file an equivalent application abroad. Such directions are given where publication of the information might be prejudicial to the defence of the realm (although this is changed to “prejudicial to national security” by paragraph 8 of Schedule 2) or might be prejudicial to the safety of the public. Thus existing section 23 prevents an application being filed in another country until it has been assessed whether or not this would amount to the communication of sensitive information. If the assessment is that publication or communication of the information would be prejudicial, then directions would be imposed under section 22 and an application could not be filed outside the UK. However, very few applications are assessed to be prejudicial to the defence of the realm (only 100 or so out of 25,000 to 30,000 applications annually). The effect of making existing section 23(1) only apply where new section 23(1A) – having the effect explained below – applies therefore lifts the restrictions in section 23 from the vast majority of UK residents wishing to file a patent application outside the UK.
54.Subsection (2) inserts new section 23(1A), which sets out the circumstances in which section 23(1) continues to apply. The first circumstance (section 23(1A)(a)) is where an application contains information which relates to military technology or for any other reason its publication might be prejudicial to national security. The second circumstance (section 23(1A)(b)) is where an application contains information which if published might be prejudicial to the safety of the public. Thus, where applications are not about information relating to national security or the safety of the public, the restrictions in section 23 on filing applications abroad no longer apply.
55.Subsection (3) inserts a new section 23(3A) which limits the circumstances in which a person is liable for the criminal offence provided by existing section 23(3). The criminal offence applies where a person files, or causes to be filed, a patent application in contravention of section 23. The scope of this offence is narrowed as a result of the limitation of the scope of section 23 by the changes made by subsections (1) and (2) above. However, new section 23(3A) also limits culpability for the offence to only two situations. The first is where a person knows that filing the application, or causing it to be filed, would contravene section 23. The second is where a person is reckless as to whether filing the application, or causing it to be filed, would contravene section 23. This provides a safeguard where a person acting in good faith believes that the restrictions in section 23 (as amended) do not apply to his patent application, but he is wrong. Thus a person will not be guilty of a criminal offence as a result of a mistake made in good faith.