Patent Overview
PATENTS ACT, 1992
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AN ACT TO MAKE NEW PROVISION IN RESPECT OF PATENTS AND RELATED MATTERS IN SUBSTITUTION FOR THE PROVISIONS OF THE PATENTS ACTS, 1964 AND 1966; TO ENABLE EFFECT TO BE GIVEN TO CERTAIN INTERNATIONAL CONVENTIONS ON PATENTS; AND TO PROVIDE FOR OTHER MATTERS CONNECTED WITH THE MATTERS AFORESAID. [27th February, 1992]
BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:
PART I
PRELIMINARY AND GENERAL
Short title and commencement.
1. —(1) This Act may be cited as the Patents Act, 1992 .
(2) Except as otherwise provided, this Act shall come into operation on such day as the Minister may by order appoint.
Interpretation.
2. —(1) In this Act, except where the context otherwise requires— “the Act of 1964” means the Patents Act, 1964 ;
“Agreement establishing the World Trade Organisation” means the Agreement establishing the World Trade Organisation done at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement which is for the time being in force in the State;
“applicant”, in relation to an application under this Act, means the person making the application and includes a person whose title has been registered under section 85 or in relation to whose title a direction has been given under that section and the personal representative of a deceased person by whom such an application is made;
“application for a European patent” means an application made under the European Patent Convention;
Patents Amendment Act 2006 [31/2006]
‘appropriate court’ means—
(a) the District Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the District Court for actions in contract or tort,
(b) the Circuit Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and
(c) in any other case, the High Court;
“assignee” includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person;
“Board of Appeal” means a Board of Appeal referred to in Article 21 of the European Patent Convention;
“commercially worked” means the manufacture of the product or the carrying on of the process which is the subject of a patent in or by means of a definite and substantial establishment or organisation, and on a scale which is adequate and reasonable in all the circumstances;
“company” means a company within the meaning of section 2 of the Companies Act, 1963 , or any other body corporate whether incorporated inside or outside the State;
“the Controller” means the Controller of Patents, Designs and Trade Marks;
‘Controller’ means the Controller of Intellectual Property;
“Convention on International Civil Aviation” means the Convention on International Civil Aviation signed at Chicago on the 7th day of December, 1944;
“the Court” means the High Court and, in relation to proceedings to which section 66 applies, includes the Circuit Court;
“date of filing” means—
( a ) in relation to an application for a patent made under this Act, the date which is the date of filing of the application by virtue of the relevant provision of this Act, and
( b ) in relation to any other application, the date which, under the law of the country where the application is made or in accordance with the terms of a treaty or convention to which the country is a party, is to be treated as the date of filing the application or is equivalent to the date of filing an application in that country;
Patents Amendment Act 2006 [31/2006]
Copyright and Other Intellectual Property Law Provisions Act 2019
“date of priority” means the earliest date which has been claimed for priority purposes in accordance with section 26;
“designate” means—
(i) in relation to an application for a patent, designate (in pursuance of the European Patent Convention or the Treaty, as the case may be) the state or states in which protection is sought for an invention, and includes a reference to a country being treated as designated in pursuance of the European Patent Convention or the Treaty;
(ii) in relation to a patent, designate (in pursuance of the European Patent Convention) the state or states in which the patent has effect;
“director” includes any person occupying the position of director (by whatever name called) of any body corporate;
“divisional application” has the meaning assigned to it by section 24;
‘EEA Agreement’ means the Agreement on the European Economic Area signed at Oporto on 2 May 1992, as adjusted by all subsequent amendments to that Agreement:
‘EEA state’ means—
(a) a Member State (other than the State), or
(b) a state (other than a Member State) that is a contracting party to the EEA agreement;
“Enlarged Board of Appeal” means the Enlarged Board of Appeal referred to in Article 22 of the European Patent Convention;
“the European list” means the list of professional representatives maintained by the European Patent Office in pursuance of the European Patent Convention;
“European patent” means a patent granted under the European Patent Convention;
“European Patent Bulletin” means the bulletin of that name published under the European Patent Convention;
“European Patent Convention” means the Convention on the Grant of European Patents signed at Munich on the 5th day of October, 1973 as amended for the time being;
“European Patent Office” means the office of that name established by the European Patent Convention;
Patents Amendment Act 2006 [31/2006] , S.I. 579/2015 European Communities (Patent Agents) Regulations 2015
“exclusive licence” means a licence from a proprietor of or applicant for a patent which confers on the licensee or on the licensee and persons authorized by him, to the exclusion of all other persons (including the proprietor of or applicant for the patent), any right in respect of the invention and “exclusive licensee” and “non-exclusive licence” shall each be construed accordingly;
“functions” includes powers and duties;
“international application for a patent” means an application made under the Treaty;
“inventor” means the actual deviser of an invention and “joint inventor” shall be construed accordingly;
“the Journal” means the Patents Office Journal;
“member of the World Trade Organisation” means a party to the Agreement establishing the World Trade Organisation;
“the Minister” means the Minister for Industry and Commerce; “the Office” means the Patents Office;
‘Office’ means the Intellectual Property Office of Ireland;
“the Paris Convention for the Protection of Industrial Property” means the convention of that name signed at Paris on the 20th day of March, 1883, as amended or supplemented by any protocol to that convention which is for the time being in force in the State;
“patent” means an exclusive right conferred pursuant to Part II or Part III;
‘patent agent’ except in section 94 has the meaning assigned to it by section 105 and a reference to a patent agent in this Act (except in section 94) or any other enactment shall be construed as including a reference to a patent attorney;
“patent application” means an application under Part II or Part III for a patent;
“prescribed” means, in the case of proceedings before the Court the appropriate court, prescribed by rules of court, and, in any other case, prescribed by rules made under this Act;
“proprietor of the patent” means the person to whom the patent was granted or the person whose title is subsequently registered under section 85;
“published”—
( a ) in relation to any document which is required to be published under this Act, means made available to the public and includes the making available for inspection of the document as of right, at the Office and such other place (if
Patents Amendment Act 2006 [31/2006] , S.I. 579/2015 European Communities (Patent Agents) Regulations 2015
any) as may be for the time being specified for the purpose by the Minister, by the public, whether on payment of a fee or not, and
( b ) in relation to any other document, matter, record or information which the Controller is authorized to publish means made available to the public and includes the making available of the document, matter, record or information in any form at the Office and such other place (if any) as may be for the time being specified for the purpose by the Minister, whether on payment of a fee or not;
“the register” means the Register of Patents or the register of patent agents, as may be appropriate;
“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference in this Act to a right in a patent includes a reference to a share in the patent;
“the Treaty” means the treaty known as the Patent Co-operation Treaty signed at Washington on the 19th day of June, 1970;
“TRIPs Agreement” means the Agreement on Trade- Related Aspects of Intellectual Property Rights annexed to the Agreement establishing the World Trade Organisation;
“Union of Paris for the Protection of Industrial Property” means the union established by the Paris Convention for the Protection of Industrial Property.
(2) In this Act, unless otherwise indicated—
( a ) a reference to a Part, section or Schedule is to a Part, section or Schedule of this Act,
( b ) a reference to a subsection is a reference to a subsection of the section in which the reference occurs.
PART VI
PROPERTY IN PATENT APPLICATIONS AND PATENTS CONTRACT CONDITIONS
Nature of patent applications and patents.
79. —Subject to section 80, the rules of law applicable to the ownership and devolution of personal property shall apply in relation to patent applications and patents as they apply in relation to other choses in action.
Co-ownership of patent applications and patents.
80. —(1) Where a patent is applied for by, or is granted to, two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in common in the patent application or patent, as the case may be.
(2) Subject to the provisions of this section where two or more persons are entered in the register as applicants for or proprietors of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to do in respect of the invention concerned for his own benefit without accounting to the others any act which would, apart from this sub-section, amount to an infringement of the patent application or patent concerned.
(3) Subject to any agreement for the time being in force, a licence under a patent or a published patent application shall not be granted, and a share in a patent or in any such application shall not be assigned, except with the consent of all persons, other than the licensor or assignor, who are entered in the register as applicants for or proprietors of the patent.
(4) Subject to the provisions of this section, where two or more persons are entered in the register as applicants for or proprietors of a patent, any other person may supply one of those persons with means, relating to an essential element of the relevant invention, for putting the invention into effect, and the supply of those means by virtue of this section shall not amount to an infringement of the patent application or patent.
(5) Where a product is sold by one of two or more persons who are entered in the register as applicants for or proprietors of a patent in respect of the product, the purchaser and any person claiming through him shall be entitled to deal with it in the same manner as if the product had been sold by a sole applicant for or sole proprietor of a patent relating to the product.
(6) Nothing in subsection (1) or (2) shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.
Determination of entitlement to patents, etc.
81. —(1) Any person may refer to the Court appropriate court the question whether, by operation of law or otherwise, he is entitled (alone or jointly with any other person) to any patent granted or to be granted in the State for an invention, and the Court appropriate court may make such order (including an order of apportionment) for giving effect to its decision as it considers expedient.
(2) The Court appropriate court on a reference under this section, or in the exercise of any declaratory or other jurisdiction, shall not determine a question whether a patent was granted to a person not entitled to be granted the patent if the reference was made or the action was commenced after the end of the period of two years beginning on the date of the grant, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer or assignment of the patent to him, that he was not entitled to the patent.
(3) An order under this section shall not be made so as to affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.
(4) When the Court appropriate court finds on a reference under this section, or in the exercise of any declaratory or other jurisdiction, that a patent was granted to a person who was not entitled to be granted that patent (whether alone or with other persons) and on an application made under section 57 the Court appropriate court or Controller makes an order by reason of the persons not being so entitled for the conditional or unconditional revocation of the patent, the Court appropriate court or Controller may order that the person by whom the application was made or his successor in title may make a new patent application—
( a ) in the case of unconditional revocation, for the whole of the matter comprised in the specification of that patent, and
( b ) in the case of conditional revocation, for the matter which in the opinion of the Court appropriate court or the Controller should be excluded from the specification by amendment under section 38,
and when such a new application is made, it shall be treated as having been filed on the date of filing of the application for the patent to which the reference or other proceedings relate and shall have the benefit of any right to priority.
(5) A new patent application shall not be allowed to be filed under subsection (4) in respect of subject-matter which extends beyond the content of the original patent application.
Effect of change of proprietorship.
82. —(1) Where there is a complete change of proprietorship of a patent as a result of an order of the Court appropriate court transferring the patent to one or more persons none of whom immediately before the transfer had a proprietary interest in the patent (on the ground that the patent was granted to a person who was not entitled to be granted the patent), then, subject to subsection (2), licences and other rights which, as regards the relevant patent, were in force immediately before such transfer shall lapse upon the entry in the register of the name of the person or persons entitled to the patent.
(2) Where an order referred to in subsection (1) is made, the Controller shall notify the person or persons registered as proprietor or proprietors of the relevant patent and their licensees (if any) of whom he is aware, of the making of the order, and where the proprietor or proprietors or such a licensee acting in good faith has, before the commencement of the proceedings in which the order is made, used the invention within the State or made effective and serious preparations to do so, he may continue such use if, but only if, he requests, within the period prescribed, a non-exclusive licence under the patent from the new proprietor whose name is entered in the register.
(3) A licence granted under subsection (2) shall be for a reasonable period and upon reasonable terms and failing agreement between the parties concerned the terms of the licence shall be determined by the Controller.
Avoidance of certain conditions in contracts.
83. —(1) It shall not be lawful to include in any contract in relation to the sale or lease of, or licence to use or work, any product or process which is the subject of a patent application or patent a condition which, directly or indirectly, would—
( a ) prevent or restrict a party to the contract from using any product or process, whether or not the subject of a patent application or patent, which in either case is supplied or owned by any person other than a party to the contract or his nominee;
( b ) require any such party to acquire from any other such party, or his nominee, any product which is not the subject of a patent application or a patent;
and any such condition, if so included, shall be null and void; provided that this subsection shall not apply if—
(i) the party seeking to rely on the condition proves that at the time the contract was entered into the party which the condition purports to bind had the option of purchasing the relevant product or obtaining a lease or
licence in relation thereto on reasonable terms, without the conditions described in paragraphs (a) and (b) of this subsection; and
(ii) the contract entitles the party to the contract which the condition purports to bind to relieve himself of his liability to observe the condition on giving to the other party three months notice in writing and on the payment of compensation for such relief, in the case of a purchase, of such sum, or in the case of a lease or licence, of such rent or royalty for the residue of the term of the contract, as may be fixed by an arbitrator appointed by the Minister.
(2) In any proceedings under this Act no person shall be estopped from applying for or obtaining relief by reason only of any admission made by him as to the reasonableness of the terms offered to him under paragraph (i) of the proviso to subsection (1).
(3) Any contract for or relating to a lease of or a licence to use or work any product or process which, at the time when the contract is made, is the subject of one or more patent applications or one or more patents may, at any time after the patent or all of the patents, as may be appropriate, by which the product or process was protected or the patent or patents, as may be appropriate, resulting from such application or applications, has or have ceased to be in force, be determined by either party to the contract on giving three months notice in writing to the other party to the contract notwithstanding anything to the contrary contained in that or in any other contract.
(4) The inclusion by the proprietor of or applicant for a patent in a contract of any condition which by virtue of this section is null and void shall be available as a defence to an action for infringement of the patent or application to which the contract relates brought while that contract is in force.
(5) Nothing in this section shall—
( a ) affect any condition in a contract whereby a person is prohibited from selling any goods other than those of a particular person; or
( b ) be construed as validating any contract which would, apart from this section, be invalid; or
( c ) affect any right of determining a contract or conditions in a contract exercisable independently of this section; or
( d ) affect any condition in a contract for the lease of or licence to use a product which is the subject of a patent application or patent, whereby a party to the contract reserves to himself or his nominees the right to supply such new parts of the product as may be required to put or keep it in repair.
PART VII
REGISTER OF PATENTS; EVIDENCE OF REGISTER, DOCUMENTS, ETC.
Register of patents.
84. —(1) There shall continue to be kept at the Office a register to be known as the Register of Patents in which there shall be entered particulars of published patent applications, of patents in force, of assignments and transmissions of, and of licences under, patents and published applications, and notice of all matters which are required by or under this Act to be entered in the register and of such other matters affecting the validity or proprietorship of published applications and patents as the Controller thinks fit.
(2) Rules under this section may make provision for the register, or entries or reproductions of entries in it, to be open to inspection by the public at all convenient times and for copies of any entry in the register to be given to any person requiring them on payment of the prescribed fee.
(3) Rules under this section may make provision for the register, entries therein and reproductions thereof to be made and kept in any form whether by means of writing, printing, lithography, photography, electromagnetism or any electronic or other mode of retaining, storing or reproducing information.
(4) The register shall be prima facie evidence of any matters required or authorized by or under this Act to be entered therein.
(5) No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.
Assignment, etc. of patent applications and patents.
85. —(1) Where a person becomes entitled by assignment or transmission, operation of law or any other mode of transfer to an interest in a published patent application or a patent, or to a share in such an application or patent, or becomes entitled as mortgagee, licensee or otherwise to any other interest in such an application or patent he shall apply to the Controller in the prescribed manner for the registration of his title as applicant or co-applicant, proprietor or co-proprietor, or, as the case may be, of notice of his interest, in the register.
(2) An application for the registration in the register of the title of any person becoming entitled by assignment to a published patent application or a patent, or a share in such an application or patent, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in such an application or patent, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to the instrument by which the assignment is made.
(3) Where application is made under subsection (1) or (2) for the registration of the title of any person, the Controller shall, upon proof of title to his satisfaction—
( a ) that the person is entitled to an interest in a published patent application or a patent, or a share in such an application or patent, register him in the register as applicant or co-applicant for the patent, or proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or event by which he derives title; or
( b ) that the person is entitled to any other interest in the application or patent, enter in the register notice of his interest, with particulars of the instrument (if any) creating it.
(4) An entry in the register that a person has an interest in a published patent application, or in a patent by virtue of a mortgage, licence or other instrument, may be cancelled by the Controller if he is satisfied, upon an application’s being made in the prescribed manner by the person registered as applicant for the patent or proprietor of the patent, that such interest has ceased, and in case the Controller is so satisfied he shall note in the register the cancellation of such entry.
(5) Subject to the provisions of this Act relating to co-ownership of patent applications and co-ownership of patents, and subject also to any rights vested in any other person of which notice is entered in the register, the person registered as applicant for a patent or proprietor of a patent shall have power to assign, grant licences under, or otherwise deal with the application or patent, and to give effectual receipts for any consideration for any such assignment, licence or dealings; provided that any equities in respect of the application or patent may be enforced in like manner as equities arising in respect of any other personal property.
(6) Rules under this Act may require the supply for the purposes of this section to the Controller for filing at the Office of copies of such deeds, licences and other documents as may be prescribed.
(7) Except for the purposes of an application to amend the register under section 86, a document in respect of which no entry has been made in the register under subsection
(3) shall only be admitted in any court as evidence of the title of any person to a patent application or patent or share of or interest in a patent application or patent if the court so directs.
(8) If the Controller is satisfied, on a claim made in the prescribed manner at any time before a patent is granted, that, by virtue of any assignment or agreement made by the applicant or one of the applicants, or by a decision under section 81, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Controller shall direct that the application shall proceed in the name of the claimant or in the names of the claimant and the applicant or each of the other such applicants, according as the case may require; provided that no such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of two or more joint patent applicants except with the consent of the other joint applicant or each of the other such applicants.
Power of Court to amend register.
86. —(1) Subject to subsection (7), the Court High Court may, on the application in the prescribed manner of any person aggrieved by the non-insertion in, or omission from, the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining in the register, or by an error or defect in any entry in the register, make such order for making, expunging, or varying such entry as it may think fit.
(2) The Court High Court may in any proceedings under this section decide any question that it may be necessary or expedient to decide in connection with the amendment of the register.
(3) The prescribed notice of any application under this section shall be given to the Controller, who shall have the right to appear and be heard thereon, and shall appear if so directed by the Court High Court.
(4) Unless otherwise directed by the Court High Court, the Controller may, in lieu of appearing and being heard, submit to the Court High Court a statement in writing, signed by him, giving particulars of the proceedings before him in relation to the matter in issue, or of the grounds of any decision given by him affecting the same, or of the practice of the Office in like cases, or of such matters relevant to the issues, and within his knowledge as Controller, as he shall think fit, and such statement shall be deemed to form part of the evidence in the proceedings.
(5) In the case of fraud in the registration or transmission of a patent application or a patent, the Controller may apply on his own motion to the Court High Court under this section.
(6) Any order of the Court High Court for the amendment of the register shall provide for service of notice of the amendment on the Controller in the prescribed manner and on receipt of any such notice the Controller shall amend the register in accordance with the terms of the order to which the notice relates.
(7) Any application under this section (other than an application by the Controller) may, at the option of the applicant, be made in the first instance to the Controller, and in such case the Controller shall have all the powers of the Court High Court under this section to decide the matter.
Certificate of Controller and certified copies of documents to be evidence.
87. —(1) A certificate purporting to be under the hand of the Controller as to any entry, matter, or thing which he is authorized by this Act to do, or by any rules made thereunder, to make or do, shall be prima facie evidence of the entry having been made, and of the contents thereof, or, as may be appropriate, of the matter’s or thing’s having been done or left undone.
(2) Copies or extracts, purporting to be certified by the Controller or an officer of the Controller and sealed with the seal of the Controller, and purporting to be of or from applications for patents, patents, or other documents or books in the Office, or of or from registers kept there shall be admitted in any legal proceedings as prima facie evidence without further proof or production of the originals.
Information about and inspection of patent applications and patents.
88. —(1) After publication of a patent application under section 28 the Controller shall, on a request’s being made in the prescribed manner and on payment of the prescribed fee, give the person making the request such information as may be prescribed and permit him to inspect such documents, relating to the application or to any patent granted in pursuance of the application, as may be specified in the request subject, however, to any prescribed restrictions.
Copyright and Other Intellectual Property Law Provisions Act 2019
(2) Subject to subsection (3), until a patent application is published under section 28, documents or information constituting or relating to the application shall not, without the consent of the applicant, be published or communicated to any person by the Controller.
(3) Subsection (2) shall not prevent the Controller from—
( a ) sending the European Patent Office information which it is his duty to send that office under the European Patent Convention; or
( b ) publishing or communicating any prescribed bibliographic information about an unpublished patent application; or
( c ) giving information as to whether an unpublished patent application has been either withdrawn or is deemed to be withdrawn.
Request for search.
89. —The Controller may, on a request being made to him in the prescribed manner by any person, and on payment of the prescribed fee, cause a search to be made as regards any product, process or apparatus specified by the person making the request and amongst such categories of documents as are so specified, being categories of documents which for the time being stand prescribed for the purposes of this section and cause to be furnished the results of such search to the person.