The Secondary Legislation Scrutiny Committee of the House of Lords has recently considered the draft of “The Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016” as part of the passage of this draft Statutory Instrument through Parliament. The proposed Order (here) makes certain changes to the UK Patents Act 1977 to give effect to the UPC Agreement and EU legislation on the Unitary patent.  The Secondary Legislation Scrutiny Committee’s Twenty Fourth Report (here, 11 February 2016) reports on the draft Order, commenting in particular on the proposed introduction into UK patent law of two new exceptions to infringement (in Articles 27(c) and 27(k) of the UPC Agreement, relating to plant breeders’ use of patented biological material and interoperability of computer software, respectively), and to the explanation given by the government’s Department for Business, Innovation and Skills (BIS).  

The exception relating to plant breeders’ use of patented biological material would apply to all patents valid in the UK, and the Secondary Legislation Scrutiny Committee reports that the BIS had informed them that the UK plant breeding industry supported that proposal (the exception already existing for national patents in Germany, France and the Netherlands – the three largest plant breeding nations). However, the computer software exception, which relates to use of information from decompiling software to allow interoperability, would not be introduced for UK national patents, and the Report’s Appendix 1 (here) contains a letter from Baroness Neville-Rolfe (the Parliamentary Under Secretary of State for the BIS and the Minister for IP) to Lord Trefgarne (the Scrutiny Committee’s Chairman) explaining the government’s decision.  The letter explains that because the government’s consultation on the draft legislation highlighted concerns that the computer software exception may be interpreted too broadly it was decided to introduce a “safe haven” for national patents and to review this after five years.  Reasons why this different treatment of national patents is not incompatible with the European Patent Convention (a concern raised by a member of the House of Lords and some commentators) are annexed to the letter. To address another concern raised by a member of the House of Lords, the letter also explains the draft Order’s proposed amendment to the contributory infringement provision (section 60(2) Patents Act 1977) to implement Article 26 of the UPC Agreement.