H—loa

for revocation of a patent. At the present time any decision of the Commissioner in •opposition proceedings is subject to an appeal to the Court, and this right would still be maintained. 104. We are aware that in paragraph 88 of the second interim report, the Swan •Committee considered that the Comptroller should not consider questions of utility. Their remarks were primarily directed to the ex parte examination of applications before the Patent Office, but in contested proceedings we see little difference between granting him jurisdiction to consider subject-matter and prior user on the one hand and utility and kindred technical defences on the other. 105. We further recommend that where the Court, on appeal in opposition proceedings, has substantially considered the question of validity and upheld the patent it should have power to grant a certificate of validity to take effect upon the actual grant of the letters patent. 106. By section 40 of the Patents, Designs, and Trade-marks Act, 1921-22, it is provided that in an action for infringement of a patent the Court may certify that the validity of any claim in the specification of the patent came in question ; and, if the Court so certifies, then in any subsequent action for infringement of such claim, the plaintiff in that action, on obtaining a final order or judgment in his favour, shall, unless the Court trying the action otherwise directs, have his full costs, charges, and expenses as between solicitor and client so far as that claim is concerned. We think that the ambit of this section should be extended to enable the Court to give a similar certificate in opposition proceedings in respect of any claim or claims which, after substantially considering the question of validity, it finds valid. The grant of such a certificate after the patentee had been put in jeopardy once would act as a substantial deterrent to any other person later desiring to attack the patent, inasmuch as, if he failed, he would be faced with the probability of having to pay costs and disbursements as between solicitor and client. 107. Under the British Law prior to 1949 it was necessary for an opponent to establish a locus standi, and this in certain cases he could not do unless he had a proprietary interest in a relevant patent or application, or an actual manufacturing or trading interest. Such interest had to come within the claims of the applicant's specification. We think it would be desirable to amend the New Zealand law by providing that a person who does not himself possess the requisite locus standi may enter an opposition provided that he has first obtained an opinion of Counsel to the effect that there appear to be good grounds for opposition. THE RESTRICTIVE USE OF PATENT RIGHTS 108. For the sake of brevity, we would state that in this part of our report, unless a contrary implication appears, when we use the term " compulsory licence " (which relates to a licence to a particular person or company) we intend to include the term " licences of right " (which relates to a right in any person or company to obtain a licence). 109. The Patents, Designs, and Trade-marks Act, 1921-22, and amendments, dealt with the restrictive use of patent rights in two main ways—firstly, by giving the ■Commissioner power to grant " licences of right " or " compulsory licences " under section 29 of the Act (as amended), or even to revoke the patent, and, secondly, by providing under section 43, subsection (1), of the Act that it should not be lawful in any contract in relation to the sale, or lease of, or licence to use or work, any article or process protected by a patent, to insert a condition, the effect of which would be—(a) To prohibit or restrict the purchaser, lessee, or licensee from using any article or class of articles, whether patented or not, or any patented process, supplied or owned by any person other than the seller, lessor, or licensor, or his nominees; or (b) To require the purchaser, lessee, or licensee to acquire from the seller, lessor, or licensor, or his nominees, any article or class of articles not protected by the patent . . .

29