Patent Applications

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.

 

 

 

CHAPTER III

APPLICATIONS

 Patents Amendment Act 2006 [31/2006]

Right to apply for patent.

15. —Any person may make an application for a patent either alone or jointly with another.

Right to patent.

16. —(1) The right to a patent shall belong to the inventor or his successor in title, but if the inventor is an employee the right to a patent shall be determined in accordance with the law of the state in which the employee is wholly or mainly employed or, if the identity of such state cannot be determined, in accordance with the law of the state in which the employer has his place of business to which the employee is attached.

(2) If two or more persons have made an invention independently of each other, the right to a patent for the invention shall belong to the person whose patent application has the earliest or earlier (as may be appropriate) date of filing, but this provision shall apply only if the earliest or earlier application has been duly published under this Act.

(3) For the purposes of proceedings before the Controller the applicant shall be deemed to be entitled to exercise the right to the patent.

Mention of inventor.

17. —(1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any specification of a patent granted for the invention and shall also have a right to be so mentioned, if practicable, in any published patent application for the invention.

(2) Unless he has already given the Controller the information hereinafter mentioned, an applicant shall within the prescribed period file with the Controller a statement—

( a ) identifying the person or persons whom he believes to be the inventor or inventors, and

( b ) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent,

and if he fails to do so, the application shall be deemed to be withdrawn.

(3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time request the Controller to make a finding to that effect; and if the Controller does so, he shall accordingly amend the register and any undistributed copies both of the published patent application and of the specification of the granted patent.

Making of application.

18. —(1) Every application for a patent under this Part shall be filed at the Office in the prescribed manner and be in the prescribed form.

(2) A patent application shall contain—

( a ) a request for the grant of a patent;

( b ) a specification containing a description of the invention to which the application relates, one or more claims and any drawing referred to in the description or the claim or claims; and

( c ) an abstract.

(3) Every application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which such fee may be paid.

Disclosure of invention.

19. —(1) A patent application shall disclose the invention to which it relates in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

(2) Without prejudice to the generality of subsection (1), rules may prescribe the circumstances in which an application for a patent for an invention which requires for its performance the use of a micro-organism biological material is to be treated for the purposes of this Act as complying with that subsection and may specify other provisions, in relation to such applications.

Claims.

20. —The claim or claims shall define the matter for which protection is sought, be clear and concise and be supported by the description.

Unity of invention.

21. —(1) A patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
(2) Without prejudice to the generality of subsection (1), rules may provide for treating two or more inventions as being so linked as to form a single general inventive concept for the purpose of this Act.

Abstract.

22. —(1) The abstract shall only serve for use as technical information; it may not be taken into account for any other purpose and in particular it may be used neither for the purpose of interpreting the scope of the protection sought nor for the purpose of applying section 11 (3).

(2) The Controller may determine whether the abstract adequately fulfils its purpose and if, in his opinion, it does not, he may reframe it so that it does.

Date of filing application.

23. —(1) The date of filing of a patent application shall be the earliest date on which the applicant paid the filing fee and filed documents which contain—

( a ) an indication that a patent is sought;

 SI 247/2000 European Communities (Legal Protection of Biotechnological Inventions) Regulations

( b ) information identifying the applicant; and

( c ) a description of the invention even though the description does not comply with the requirements of this Act or with any requirements that may be prescribed.

(2) If the Minister prescribes a later date for payment of the filing fee under section 18 (3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in that subsection are filed.

(3) If any drawing referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and—

( a ) if the applicant makes any such request, the date of filing the drawing shall be so treated;

( b ) if the request is not made, any reference to the drawing in the application shall be deemed to be deleted.

(4) If any drawing referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing within the prescribed period, and—

( a ) if the drawing is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application;

( b ) if the drawing is not so filed, any reference to the drawing in the application shall be deemed to be deleted.

(5) If in the case of an application which has a date of filing by virtue of the foregoing provisions of this section, or is deemed to have a date of filing accorded to it by virtue of section 24 or 81, one or more claims or the abstract has not been filed within the relevant prescribed period, the application shall be deemed to have been withdrawn at the end of that period.

23. —(1) The date of filing of a patent application shall be taken to be the earliest date on which the applicant paid the filing fee and filed documents which contain—

(a) an indication that a patent is sought,

(b) information identifying the applicant or information sufficient to enable that person to be contacted by the Office, and

(c) (i) a description of the invention for which a patent is sought even where the description does not comply with other requirements of this Act or with any requirements that may be prescribed, or

(ii) a reference, complying with any relevant requirements that may be prescribed, to a previously filed application made by the applicant or the applicant’s predecessor in title.

(2) It is immaterial for the purposes of subsection (1)(c)(i) whether the description of the invention concerned is in, or is accompanied by a translation into, a language accepted by the Office in accordance with any requirements that may be prescribed.

(3) If the Minister prescribes a later date for payment of the filing fee under section 18(3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in subsection (1) are filed.

(4) Where documents filed at the Office do not satisfy all of the conditions specified in subsection (1), the Controller shall as soon as practicable after the filing of those documents notify the applicant of the further documents required to be filed in order for the application to have a date of filing.

(5) Where documents filed at the Office satisfy all the conditions specified in subsection (1), the Controller shall as soon as practicable after the filing of the last of those documents notify the applicant of—

(a) the date of filing the application, and

(b) the requirements that must be complied with, and the periods within which they are required by this Act or rules made under this Act to be complied with, if the application is not to be treated as having been withdrawn.

(6) If any drawing or a part of a description referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing or that part of the description was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and—

(a) if the applicant makes any such request, the date of filing the drawing or that part of the description shall be so treated,

(b) if the request is not made, any reference to the drawing or that part of the description in the application shall be deemed to be deleted.

(7) If any drawing or part of a description referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing or that part of the description within the prescribed period, and—

(a) if the drawing or part of the description is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application,

(b) if the drawing or part of the description is not so filed, any reference to the drawing or part of the description in the application shall be deemed to be deleted.

(8) Where the applicant, subsequent to the date of filing under subsection (1), files a missing part of the description or a missing drawing, subsection (6)(a) or (7)(a) shall not apply where—

(a) on or before the date which is the date of filing the application under subsection (1) a declaration is made under section 26(1) in, or in connection with, the application, and

(b) the applicant makes a request for subsection (6)(a) or (7)(a), as the case may be, not to apply and that request complies with the prescribed requirements and is made within the prescribed period.

(9) An application which has a date of filing under this section or is deemed to have a date of filing accorded to it by virtue of section 24 or 81 shall be treated as withdrawn where any of the following applies:

(a) the filing fee has not been paid within the prescribed period;
(b) one or more claims or the abstract has not been filed within the relevant prescribed period;

(c) where a reference to a previously filed application has been filed as referred to in subsection (1)(c)(ii), the applicant fails to file at the Office—

(i) a description of the invention for which a patent is sought, before the end of the prescribed period,

(ii) a copy of the application referred to, complying with the relevant prescribed requirements, before the end of the prescribed period.

(10) This section applies to patent applications filed on or after the coming into operation of this section.

Divisional application.

24. —A patent application (a “divisional application”) which—

( a ) is in respect of subject-matter which does not extend beyond the content of an earlier application as filed, and

( b ) complies with the relevant requirements (including procedure and time limits) specified in the rules,

shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority.

Priority right.

25. —(1) A person who has duly filed in or for the State, or in or for any other state party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the World Trade Organisation, an application for a patent or for the registration of a utility model or for a utility certificate or for an inventor’s certificate, or his successors in title, shall enjoy, for the purpose of filing a subsequent patent application under this Act in respect of the same invention, a right of priority

 Patents Amendment Act 2006 [31/2006]

during such period as may be prescribed, subject to compliance with any prescribed conditions and the payment of any prescribed fee.

(2) Every filing that is equivalent to a regular national filing under the national law of the state where it was made (including the State), or under bilateral or multilateral agreements, shall be recognised as giving rise to a right of priority.

(3) In this section “a regular national filing” means any filing that establishes the date on which the application was filed, whatever may be the outcome of the application.

( 4 ) ( a ) A subsequent application for the same subject-matter as a previous first application and filed in or in respect of the same state (including the State) shall be considered as the first application for the purposes of determining priority if, and only if, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without having been open to public inspection and without having left any rights outstanding, and has not served as a basis for claiming right of priority.

( b ) Where, pursuant to this subsection, a subsequent application is considered as a first application, the first application may not thereafter serve as a basis for claiming a right of priority.

(5) If the first filing has been made in a state which is not a party to the Paris Convention for the Protection of Industrial Property or which is not a party to the Agreement establishing the World Trade Organisation subsections (1) to (4) shall apply if the Government makes an order to that effect under this subsection consequent upon bilateral or multilateral agreements under which the State grants on the basis of a first filing made in or for that state and subject to conditions equivalent to those laid down in the said convention, a right of priority having equivalent effect.

(6) In this section a ‘state party to the Agreement establishing the World Trade Organisation’ means a member of the World Trade Organisation and, for the purposes of subsection (5), every country or territory shall be taken to be a state in the case of which an order may be made under that subsection.

Claiming priority.

26. —(1) An applicant desiring to take advantage of the priority of a previous application shall file, in the prescribed manner and within the prescribed period, a declaration of priority. Rules made under this Act may require the filing of a copy of the previous application and, if the language of the latter is a foreign language, a translation in English.
(2) Multiple priorities may be claimed in respect of a patent application, notwithstanding the fact that they originated in different states, and, where appropriate, multiple priorities may be claimed for any one claim, and where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority.

 

Patents Amendment Act 2006 [31/2006]

(3) If one or more priorities are claimed in respect of a patent application, the right of priority shall cover only those elements of the patent application which are included in the application or applications whose priority is claimed.

(4) If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted if the documents of the previous application as a whole specifically disclosed such elements.

Effect of priority right.

27. —(1) The right of priority shall have the following effect, namely, the date of priority shall be regarded as being the date of filing of the patent application for the purposes of subsections (2) and (3) of section 11 and section 16 (2).

(2) Where a patent application is filed and the priority of a previous application is claimed under section 26, then, notwithstanding anything contained in this Act, the patent application and any patent granted in pursuance of it shall not be invalidated by reason only of the fact that any subject-matter disclosed in the previous application was made available to the public at any time after the date of filing of the previous application.

Publication of application.

28. —(1) A patent application shall be published in the prescribed manner as soon as practicable after the expiry of the period of eighteen months beginning on the date of filing, or, if priority has been claimed, beginning on the date of priority; provided that at the request of the applicant the application may be published before the expiry of the period aforesaid.

(2) Subject to subsection (3), a patent application shall not be published if, before the termination of the technical preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn.

(3) A patent application which forms the basis for a divisional application under section 24 shall be published with its divisional application unless it has already been published under subsection (1).

(4) The Controller shall advertise the date of publication of a patent application in the Journal.

(5) The Controller may cause to be omitted from the published patent application— ( a ) statements or other matter contrary to public order or morality;
( b ) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person; provided that mere comparisons with the prior art shall not be considered disparaging per se.

CHAPTER IV

PROCEDURE UP TO GRANT

Search report.

29. —(1) If a patent application under this Part has a date of filing, includes one or more claims and is not withdrawn or deemed to be withdrawn the Controller shall, on the request of the applicant made within the prescribed time, accompanied by the prescribed fee (in this section referred as the ‘section 29 fee’), cause a report incorporating a written opinion as to patentability to be prepared in relation to the invention (in this section and section 30 referred to as the ‘section 29 report and
opinion’). Rules made under this Act may specify who shall prepare the section 29 report and opinion (including any part thereof) and the scope thereof. (“the search fee”) cause a search to be undertaken in relation to the invention and a report (a “search report”) of the results of the search to be prepared. The rules may specify by whom the search report shall be prepared and the scope thereof.
(2) If it appears, in the course of the search, that an application discloses more than one invention the search shall be conducted in relation only to the first invention specified in the claims. A search may however be conducted in relation to the additional invention, or inventions, if the applicant, within the time allowed by the Controller, submits a request to that effect accompanied by the search fee.

(2) If it appears, in the course of the preparation of the section 29 report and opinion, that an application discloses more than one invention, the section 29 report and opinion shall be prepared in relation only to the first invention specified in the claims. A further section 29 search and opinion may be prepared in relation to any additional invention if the applicant, within the time allowed by the Controller for the purpose, submits a request to that effect accompanied by the section 29 fee.

(3) The Controller shall send a copy of the search report section 29 report and opinion to the applicant and, unless the application is withdrawn within a prescribed period, shall publish it.

(4) If the application is not withdrawn, the Controller shall allow the applicant an opportunity to amend the application in the light of the search report or reports. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary, the application may be refused by the Controller. In the case of an application to which subsection (2) applies, such application shall be amended so as to confine it to one invention only.

(4) If the application is not withdrawn, the Controller shall allow the applicant an opportunity to amend the application in the light of the section 29 reports and opinions. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, to submit either amendments to the application or a statement setting out the applicant’s reasons why the applicant considers that no such amendments are necessary, the application may, subject to

Knowledge Development Box (Certification of Inventions) Act 2017

section 90, be refused by the Controller. An application to which subsection (2) applies shall be amended so as to confine it to one invention only.

(5) If the applicant, in pursuance of subsection (4), submits amendments or a statement referred to in that subsection within the prescribed period, the Controller shall cause a substantive examination of the application to be carried out. Such substantive examination shall have regard to the application as originally filed together with any amendments or statement furnished under subsection (4) and shall investigate if the application complies with the requirements of this Act and of rules made under this Act.

Use of foreign specification or search report.

30. —(1) In lieu of making the request provided for in section 29 (1), an applicant for a patent under this Part may, within the time, prescribed for the purpose of section 29 (1), submit a statement to the Controller that an application for a patent for the same invention has been made in a prescribed foreign state or under the provisions of any prescribed convention or treaty and where such a statement is submitted the applicant shall submit, within the prescribed period, such evidence as may be prescribed of either—

( a ) the results of the search carried out on the said application, or

( a ) the results of the equivalent (or, taken together, the equivalents), in that prescribed foreign state or under the provisions of that prescribed convention or treaty (as the case may be), to a section 29 report and opinion prepared in respect of such application, or

( b ) the grant of a patent in pursuance of the said application.

(2) The applicant shall, if so required by the Controller, also furnish to the Controller within the prescribed time such information as may be prescribed with regard to the filing of foreign applications for protection of the invention for which a patent is sought.

(3) The evidence submitted under subsection (1) shall be accompanied by the prescribed fee. Unless the application is subsequently withdrawn within a prescribed period the evidence shall be published by the Controller.

(4) Where the evidence submitted is that referred to in subsection (1) (a) the Controller shall, unless the application is withdrawn, allow the applicant an opportunity to amend the application in the light of that evidence. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary, the application may be refused by the Controller.

(5) Where the evidence submitted is that referred to in subsection (1) (b) the Controller shall, unless the application is withdrawn, allow the applicant an opportunity to amend the application in the light of that evidence. The applicant shall in particular submit such amendments as are required to the specification so that the subject-matter claimed therein does not extend beyond that of the evidence. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the

prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary the application may be refused by the Controller.

(4) Where the evidence submitted is that referred to in subsection (1)(a) or (b), the Controller shall, unless the application is withdrawn, allow the applicant an opportunity to amend the application in the light of that evidence. The applicant shall in particular submit such amendments as are required to the specification so that the subject-matter claimed therein does not extend beyond that of the evidence. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, to submit either amendments to the application, or a statement
setting out the applicant’s reasons why the applicant considers that no such amendments are necessary, the application may, subject to section 90, be refused by the Controller.

(5) If the applicant, in pursuance of subsection (4), submits amendments or a statement referred to in that subsection within the prescribed period, the Controller shall cause a substantive examination of the application to be carried out. Such substantive examination shall have regard to the application as originally filed together with the evidence furnished under subsection (1) and any amendments or statement furnished under subsection (4) and shall investigate if the application complies with the requirements of this Act and of rules made under this Act.

(6) Any amendment or statement submitted in pursuance of subsections (4) and (5) or section 29 (4) shall, where a duly authorized patent agent acts on behalf of the applicant, be submitted by such agent.

 

Observations by third party on patentability 30A. —

(1) Where an application for a patent has been published but a patent has not been granted to the applicant, any other person may make observations in writing to the Controller on the question of whether the invention is a patentable invention, stating reasons for the observations, and the Controller shall consider the observations in accordance with rules made under this Act.

(2) A person who makes observations under this section does not, by reason only of those observations, become a party to any proceedings under this Act.

Refusal or grant of patent.

31. —(1) If it appears to the Controller, following the substantive examination and investigation carried out in pursuance of section 29(5) or 30(5), that an application does not comply with a requirement of this Act or the rules made thereunder, (other than and in particular the requirements of sections 9 (1), 11, 13, 14, 19 and 20 ) the Controller shall so inform the applicant and if the applicant, within the time specified by the Controller, fails to satisfy the Controller that the said requirement is complied with or to amend the application so as to comply therewith the Controller may, subject to section 90, refuse the application.

Knowledge Development Box (Certification of Inventions) Act 2017 Copyright and Other Intellectual Property Law Provisions Act 2019

(2) Nothing in subsection (1) shall preclude the Controller from refusing, or requiring amendment of, a patent application by reference to any requirement of a section mentioned in that subsection which may be specified in rules.

(2) If the Controller finds that the application as originally filed or as amended in accordance with subsection (1) complies with the requirements of this Act and of rules made under this Act, the Controller shall grant the patent.

(3) A patent shall not be granted by the Controller until he has requested the applicant to pay the prescribed fee for the grant of a patent and the applicant has paid the said fee within the prescribed time. If the said fee is not so paid, the application shall be deemed to be withdrawn.

(4) The grant of a patent shall be notified to the applicant in the prescribed form.

(5) Where two or more patent applications for the same invention having the same date of filing or the same date of priority are filed by the same applicant or his successor in title, the Controller may on that ground refuse to grant a patent in respect of more than one of the applications.

Amendment of application.

32. —(1) At any time before a patent is granted under this Act an applicant may, in accordance with the prescribed conditions, amend the application of his own volition.

(2) Any amendment made under this section or under section 29, 30 or 31 shall be invalid to the extent that it extends the subject matter disclosed in the application as filed.

(3) The Controller may refuse an amendment under this section if, in his opinion, it ought properly to have been submitted under the provisions of section 29 or 30.

(4) Where an amendment of an application under this section or under section 29, 30 or 31 involves alterations to the specification or any drawing the applicant shall, if requested to do so, file a fresh specification or drawing, as the case may require, within the time specified by the Controller.

Withdrawal of application.

33. —(1) At any time before a patent is granted under this Act the applicant may withdraw in writing his application and any such withdrawal may not be revoked.

(1A) Subsection (1) does not affect the power of the Controller under section 110 to correct an error or mistake in the withdrawal of an application.
(2) Where a patent application is withdrawn under this section, or is deemed under this Act to have been withdrawn, or is refused under any provision of this Act, the following provisions shall apply:

 Patents Amendment Act 2006 [31/2006]

( a ) if the application has been published under section 28, the provisions of section 11 (3) shall continue to apply as regards the application;

( b ) the applicant shall continue to enjoy the right of priority under section 25 which he enjoyed immediately before such withdrawal or refusal;

( c ) no other right may be claimed under this Act in relation to the application.

Notification of grant; publication of specification.

34. —(1) The Controller shall as soon as practicable after a patent has been granted publish a notice of the grant in the Journal.

(2) At the same time as the publication of the notice of a grant, the Controller shall publish a specification of the patent containing the description and claims, and drawings (if any), and also such matters and information as appear to him to be useful or important.

Continuation in force of applications.

35. —(1) A pending application shall lapse at the end of the period prescribed for the payment of any renewal fee if the fee is not paid, within that period or within that period as extended under this section.

(2) The period prescribed for payment of any renewal fee shall be extended by such period, not being a period of more than six months, as may be specified in a request made in that behalf by the applicant to the Controller if the request is made and the prescribed additional fee paid before the expiration of the period of extension so specified.

(3) The provisions of section 37 shall apply to an application to which this section relates as if the references in that section to a patent and the proprietor of a patent were references to a patent application and the applicant for a patent, respectively.

Reinstatement of applications.

35A.—(1) This section shall not apply to a patent application which has lapsed by reason of the failure to pay any renewal fee and section 35(3) shall continue to apply to any such application.

(2) Where an application for a patent is refused or is treated as having been withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of this Act or rules made thereunder within a period which is prescribed or specified by the Controller, subject to subsection (3), the Controller shall reinstate the application only if—

(a) the applicant requests the Controller to do so,

(b) the request complies with the prescribed requirements, and

(c) the Controller is satisfied that the said failure to comply occurred despite reasonable care having been taken to so comply.

(3) The Controller shall not reinstate the application if the period referred to in subsection (2) is prescribed or specified by the Controller—

(a) in relation to any proceedings before the Controller pursuant to Part VIII,

(b) for the purposes of section 25(1), or

(c) for the purposes of a request under this section or section 118A.

(4) Where the application for a patent was made by 2 or more persons jointly, a request under subsection (2) may, with the leave of the Controller, be made by one or more of them without joining the others.

(5) Where the application has been published under section 28 and it appears to the Controller that reasonable care was taken to comply with the requirement within the prescribed period or, as the case may be, the period specified by the Controller, the Controller shall publish notice of a request under subsection (2) in the Journal and within the prescribed period any person may give notice to the Controller of opposition thereto.

(6) If notice of opposition is duly given under this section, the Controller shall notify the applicant and determine the question.

(7) Where an application is reinstated under this section the applicant shall comply with the requirement referred to in subsection (2) within the further period specified by the Controller in making the order to reinstate the application, which further period shall not be less than 2 months.

(8) Where the applicant fails to comply with subsection (7) the application shall be treated as having been withdrawn on the expiration of the period referred to in that subsection.

Effect of reinstatement.

35B.—(1) Where an application is reinstated under section 35A—

(a) anything done under or in relation to the application during the period between termination and reinstatement shall be treated as valid,

(b) in a case where the application has been published under section 28 before its termination, anything done during the period referred to in paragraph (a), which would have constituted an infringement of the rights conferred by publication of the application if the termination had not occurred, shall be treated as an infringement of those rights if it was a continuation or repetition of an earlier act infringing those rights,

(c) in a case where the application has been published under section 28 before its termination and, after the termination and before publication of a notice of request for its reinstatement, a person—

(i) began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application if the termination had not taken place, or

(ii) made, in good faith, effective and serious preparations to do such an act, the person shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the reinstatement of the application and the grant of the patent.

(2) Paragraph (c) of subsection (1) does not extend to granting a licence to any person to do an act referred to in that paragraph.

(3) If the act referred to in paragraph (c) of subsection (1) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by the said paragraph (c) may—

(a) authorise that act to be done by any partner of that person for the time being in that business, and

(b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it.

(4) Where a product is disposed of by any person to another person in exercise of a right conferred by paragraph (c) of subsection (1) or by subsection (3), that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the applicant.

(5) In this section ‘termination’, in relation to an application, means—

(a) the refusal of the application, or

(b) the application is treated as having been withdrawn.

Rules of the Superior Courts

Patents, Designs, Trade Marks and Copyright