Compulsory Licences I

PATENTS ACT

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 IV

VOLUNTARY AND COMPULSORY LICENCES

Application for entry in register that licences of right are available.

68. —(1) At any time after the grant of a patent the proprietor of the patent may apply to the Controller for an entry to be made in the register to the effect that licences under the patent are to be available as of right, and where such an application is made, the Controller shall give notice of the application to any person entered on the register as being entitled to an interest in the patent, and if the Controller is satisfied that the proprietor of the patent is not precluded by contract from granting licences under the patent he shall make such entry.

(2) Where an entry is made under this section in the register the following provisions shall apply:

( a ) any person shall, at any time thereafter, be entitled as of right to a licence under the patent upon such terms as may, in default of agreement, be settled by the Controller on the application of the proprietor or the person requiring the licence,

( b ) the Controller may, on the application of the holder of any licence granted under the patent before the entry was made, order the licence to be exchanged for a licence of right upon terms to be settled as aforesaid,

( c ) if in proceedings for infringement of the patent (otherwise than by the importation of goods) (otherwise than by the importation of goods from a country which is not a member of the World Trade Organisation) the defendant undertakes to take a licence upon terms to be settled by the Controller as aforesaid, no injunction shall be granted against him, and the amount (if any) recoverable against him by way of damages shall not exceed double the amount which would have been payable by him as licensee if such a licence had been granted before the earliest infringement,

( d ) the renewal fees payable in respect of the patent after the date of entry shall be one half of the renewal fees which would be payable if the entry had not been made.

(3) The licensee under any licence of right granted by virtue of this section shall (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) be entitled to require the proprietor of the patent to take proceedings to prevent any infringement of the patent; and if the proprietor refuses or neglects to comply with a requirement under this subsection within two months after being so required, the licensee may institute proceedings for the infringement in his own name as if he were the proprietor, and in case such proceedings are initiated, the proprietor of the patent shall be made a defendant; provided that a proprietor who is so made a defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

(4) An application for an entry under this section shall contain a statement (to be verified in such manner as may be prescribed) that the proprietor of the patent to which the application relates is not precluded by contract from granting licences under the patent, and the Controller may require from the proprietor such further evidence in this regard as he may think necessary.

(5) All entries in the register under this section shall be published in the Journal and in such other manner (if any) as the Controller thinks desirable for bringing the entry to the notice of the public.

Cancellation of entry.

69. —(1) At any time after an entry has been made under section 68, the proprietor of a patent may apply to the Controller for cancellation of the entry, and where such an application is made and the balance paid of all renewal fees which would have been payable if the entry had not been made, the Controller may, if satisfied that there is no

 Patents Amendment Act 2006 [31/2006]

existing licence under the patent, or that all licensees under the patent have consented to such cancellation, cancel the entry.

(2) If, within the prescribed period after an entry has been made under section 68, any person claims that the proprietor of the patent concerned is, and was at the time when the entry was made, by a contract in which the claimant is interested precluded from granting licences under the patent, he may apply to the Controller for cancellation of the entry.

(3) Where the Controller is satisfied, on application made under subsection (2), that the proprietor of a patent is and was precluded in the manner mentioned in subsection (2), he shall cancel the entry referred to in that subsection, and thereupon the proprietor shall be liable to pay, within such period as may be prescribed, a sum equal to the balance of all renewal fees which would have been payable if the entry had not been made, and if the sum is not paid within the said period the patent shall cease to have effect on the expiration of the said period.

(4) Where an entry is cancelled under this section, the rights and liabilities of the proprietor of the patent to which the entry relates shall thereafter be the same as if the entry had not been made.

(5) The Controller shall advertise in the prescribed manner any application made to him under this section and within the prescribed period after publication of such advertisement notice of opposition to the cancellation sought may be given to the Controller by—

( a ) in the case of an application under subsection (1), any person, and

( b ) in the case of an application under subsection (2), the proprietor of the patent to which the application relates.

(6) Where a notice of opposition is given under subsection (5), the Controller shall notify the applicant before determining the application.

Compulsory licences.

70. —(1) At any time after the expiration of the period of three years, or such other period as may be prescribed, beginning on the date of the publication of notice of grant of a patent any person may apply to the Controller for a licence under the patent, or for an entry in the register to the effect that licences under the patent are to be available as of right, on one or more of the grounds specified in subsection (2).

(2) The grounds referred to in subsection (1) are the following:

( a ) that the invention which is the subject of the patent, being capable of being commercially worked in the State, is not being commercially worked therein or is not being so worked to the fullest extent that is reasonably practicable;

( b ) that a demand in the State for a product which is protected by the patent is not being met, or is not being met on reasonable terms, or is being met to a substantial extent by importation;

( c ) that the commercial working in the State of the invention which is the subject of the patent is being prevented or hindered by the importation of a product which is protected by the patent;

( d ) that by reason of the refusal of the proprietor to grant a licence or licences on reasonable terms—

(i) a market for the export of a product which is protected by the patent and is manufactured in the State is not being supplied; or

(iii) the working or efficient working in the State of any other invention which is the subject of a patent and which makes a substantial contribution to the art is prevented or hindered; or

(iii) the establishment or development of commercial or industrial activities in the State is unfairly prejudiced;

( e ) that by reason of conditions imposed by the proprietor upon the grant of licences under the patent, or upon the purchase, hire or use of the product or process which is the subject of the patent, the manufacture, use or sale of materials not protected by the patent or the establishment or development of commercial or industrial activities in the State is unfairly prejudiced;

( f ) that a condition which by virtue of section 83 is null and void has been included in a contract in relation to the sale or lease of, or licence to use or work, any product or process protected by the patent.

(3) Subject as hereinafter provided, the Controller may, on an application being made under this section, if satisfied that any of the grounds specified in subsection (2) are established, make an order in accordance with the application, and where the order is for the grant of a licence, it may require the licence to be granted upon such terms as the Controller thinks fit; provided that—

( a ) where the application is made on the grounds that the invention which is the subject of the relevant patent is not being commercially worked in the State or is not being worked to the fullest extent that is reasonably practicable, and it appears to the Controller that the time which has elapsed since the grant of the patent has for any reason been insufficient to enable it to be so worked, he may by order adjourn the application for such period as will, in his opinion, give sufficient time for the invention to be so worked;

( b ) an order shall not be made under this section for an entry in the register on the ground that a market for the export of the product which is protected by the relevant patent is not being supplied, and any licence granted under this section on that ground shall contain such provisions as appear to the Controller to be expedient for restricting the countries in which the product may be sold or used by the licensee;

( c ) no order shall be made under this section in respect of a patent on the ground that the working or efficient working in the State of another invention which is the subject of a patent is prevented or hindered unless the Controller is

satisfied that the proprietor of the patent of which the other invention is the subject is able and willing to grant to the proprietor of the patent and his licensees a licence in respect of that other invention on reasonable terms;

( d ) any licence granted under this section shall be both non-exclusive and non-transferable;

( e ) the terms of any licence so granted may be so framed as to preclude the licensee from importing into the State any goods the importation of which the proprietor of the patent has the right to prevent, and in case the said terms are so framed the proprietor of the patent and all licensees under the patent shall be deemed to have mutually covenanted against such importation;

( f ) in settling the terms of any licence granted under this section in respect of a patent which relates to food or medicine the Controller shall endeavour to secure that food and medicine shall be available to the public at the lowest prices consistent with the proprietors of patents deriving reasonable remuneration having regard to the nature of the inventions.

(4) The Controller shall, in determining whether to make an order in pursuance of an application under this section, take account of the following matters, that is to say—

( a ) the nature of the relevant invention, the time which has elapsed since the grant of the patent and the measures already taken by the proprietor or any licensee to make full use of the invention;

( b ) the ability of any person to whom a licence would be granted under the order to work the invention to the public advantage; and

( c ) the risks to be undertaken by that person in providing capital and working the invention if the application is granted;

but he shall not be required to take account of matters subsequent to the making of the application.

(5) An application under this section may be made by any person notwithstanding the fact that he is already the holder of a licence under the patent, and no person shall be estopped from alleging any of the matters mentioned in subsection (2) by reason of any admission made by him, whether in such a licence or otherwise, or by reason of his having accepted such a licence.

(6) Section 68 (3) shall apply to a licence granted in pursuance of an order under this section as it applies to a licence granted by virtue of section 68.

(a) that—

(i) a demand in the State for the subject matter of the patent is not being met or is not being met on reasonable terms, or

(ii) a demand in the State for a product which is protected by the patent is being met by importation other than from a member of the World Trade Organisation;

(b) that the establishment or development of commercial or industrial activities in the State is unfairly prejudiced.

(2) If an invention protected by a patent (in this section referred to as ‘the second
patent’) cannot be exploited in the State without infringing rights deriving from another patent (in this section referred to as ‘the first patent’) the proprietor of the second patent may apply to the Controller for a licence under the first patent to the extent necessary for the exploitation of the invention concerned, provided that such invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the first patent.

(3) Where an application is made under this section, if the Controller is satisfied—

(a) that any of the grounds specified in subsection (1) are established, or

(b) that an invention protected by a patent cannot be exploited without infringing rights deriving from the first patent as referred to in subsection (2), the Controller may make an order in accordance with the application and, where the order is for the grant of a licence, the order may require the licence to be granted upon such terms as the Controller thinks fit, provided that:

(i) any licence granted shall be nonexclusive;

(ii) any licence granted shall be predominantly for the supply of the market in the State;

(iii) any licence granted may only be assigned with the prior authorisation of the Controller and with that part of the enterprise or goodwill which uses the patented invention and, in the case of a licence granted on an application under subsection (2) in respect of the first patent, the licence may only be assigned by the proprietor of the second patent in conjunction with the assignment of the second patent;

(iv) a licence shall only be granted subject to the payment to the proprietor of the patent of adequate remuneration in the circumstances of the case, taking into account the economic value of the licence;

(v) the scope and duration of the licence shall be limited to the purpose for which it is granted;

(vi) any licence granted on an application under subsection (1) in respect of a patent which relates to semi-conductor technology shall only be for public non-commercial use;

(vii) no order shall be made on an application under subsection (2) unless the proprietor of the second patent is able and willing to grant the proprietor of the first patent and the licensee of that proprietor a cross- licence, on reasonable terms, to use the invention claimed in the second patent.

(4) The Controller shall, in determining whether to make an order pursuant to an application under this section, take account of the following matters, namely—

(a) the nature of the relevant invention, the time which has elapsed since the grant of the patent and the measures already taken by the proprietor or any licensee to make full use of the invention,

(b) the ability of any person to whom a licence would be granted under the order to exploit the patent to the public advantage, and

(c) the risks to be undertaken by that person in providing capital and exploiting the patent if the application is granted.

(5) Section 68(3) shall apply to a licence granted pursuant to an order under this section as it applies to a licence granted by virtue of section 68.

Provisions as to compulsory licences.

71. —(1) Where the Controller is satisfied, on application made under section 70, that the manufacture, use or sale of materials not protected by the relevant patent is unfairly prejudiced by reason of conditions imposed by the proprietor of the patent upon the grant of licences under the patent, or upon the purchase, hire or use of the product or process which is the subject of the patent, he may, subject to the provisions of that section, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.

(2) Where an application under section 70 is made by a person being the holder of a licence under the relevant patent, the Controller may, if he makes an order under section 70 for the grant of a licence to the applicant, order the existing licence to be cancelled, or may, if he thinks fit, instead of making such an order, order the existing licence to be amended.

71. —(1) Where an order for the grant of a licence or for an entry in the register has been made pursuant to an application under section 70, any person may apply to the Controller to amend or cancel the order on the grounds that the circumstances which led to the order have changed or have ceased to exist and are unlikely to recur.

(2) Where the Controller is satisfied that the circumstances referred to in subsection
(1) have changed or have ceased to exist and are unlikely to recur, the Controller may order the amendment or cancellation of the existing order upon such terms as the Controller thinks fit, including, in particular, terms which provide for the protection of the interests of the licensee concerned.

(3) Section 73 shall, in so far as it is applicable, apply in relation to an application under subsection (1).

(4) Where, following an application under subsection (1), an order is amended, subsections (1), (2) and (3) shall, in so far as they are applicable, apply in relation to the order so amended.

Licences, etc. on application of Minister of Government.

72. —(1) At any time after the expiration of the period of three years beginning on the date of the publication of notice of grant of a patent, or such other period as may be prescribed under section 70 (1), any Minister of the Government may apply to the Controller upon any one or more of the grounds specified in section 70 for an entry in the register to the effect that licences under the patent are to be available as of right, or for the grant to any person specified in the application of a licence under the patent, and the Controller may, if satisfied that any of those grounds are established, make an order in accordance with the application.

(2) Sections 70 (3) and 71 shall, so far as applicable, apply in relation to an application and an order made under this section as they apply in relation to an application and an order under section 70.

Procedure on applications under sections 70 and 72.

73. —(1) Every application under section 70 or 72 shall specify the nature of the order sought by the applicant and shall contain a statement (to be verified in such manner as may be prescribed) setting out the nature of the applicant’s interest (if any) and the facts upon which the application is based and shall be accompanied by evidence indicating that the applicant sought to obtain a licence from the proprietor of the patent but has been unable to obtain such a licence on reasonable terms and within a reasonable time.

(1A) The Controller may, when so requested by the applicant, dispense with the evidence referred to in subsection (1)—

(a) where there exists a national emergency or other circumstances of extreme urgency, or

(b) in the case of an application for a licence for public non-commercial use:

Provided that the proprietor of the relevant patent has been informed as soon as reasonably practicable of the intention of the applicant to apply to the Controller for a licence under the patent.
(2) Where the Controller is satisfied, upon consideration of any application referred to in subsection (1), that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the proprietor of the relevant patent and any other persons appearing from the register to be interested in the patent in respect of which the application is made, and shall advertise the application in the Journal.

 Patents Amendment Act 2006 [31/2006]
 Patents Amendment Act 2006 [31/2006]

(3) The proprietor of the relevant patent or any other person desiring to oppose an application referred to in subsection (1) may, within such time as may be prescribed, give to the Controller notice of opposition.

(4) A notice of opposition given under this section shall contain a statement (to be verified in such manner as may be prescribed) setting out the grounds on which the relevant application is opposed.

(5) Where a notice of opposition is duly given under this section, the Controller shall notify the applicant and shall, subject to the provisions of section 74 with respect to arbitration, determine the question.

Appeals and references to arbitrator.

74. —(1) On any appeal from any order made by the Controller in pursuance of an application under section 70 or 72 section 70, 71 or 72 the Attorney General shall be entitled to appear and be represented.

(2) Where an application is opposed and either— ( a ) the parties consent; or
( b ) the proceedings require a prolonged examination of documents or any scientific or local investigation which cannot, in the opinion of the Controller, conveniently be made before him,

the Controller may at any time order the whole proceedings, or any question or issue of fact arising therein, to be referred to an arbitrator agreed on by the parties, or, in default of agreement, appointed by the Controller.

(3) Where the whole proceedings are referred under this section, section 35 of the Arbitration Act, 1954 (which relates to the statement of cases by arbitrators for the decision of the Court), shall not apply to the arbitration; but *unless the parties otherwise agree before the award of the arbitrator is made, an appeal to the Court High Court shall lie from the award.

(4) Where a question or issue of fact is referred under this section, the arbitrator shall report his findings to the Controller.

Supplementary provisions as to licences.

75. —(1) Any order under this Act for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.

(2) An order may be made on an application under section 70 or 72 section 70, 71 or 72 for an entry in the register to the effect that licences under the relevant patent are to be available as of right notwithstanding any contract which would have precluded the

* Arbitration Act 2010
Copyright and Other Intellectual Property Law Provisions Act 2019
 Patents Amendment Act 2006 [31/2006]

making of such an entry in respect of the patent on the application of the proprietor of the patent under section 68, and any such order shall for all purposes have the same effect as an entry made in pursuance of an application under section 68.

(3) No order shall be made in pursuance of any application under section 70 or 72 section 70, 71 or 72 which would be at variance with the Treaty establishing the European Economic Community or with the TRIPs Agreement.

PART V

USE OF INVENTIONS FOR THE SERVICE OF THE STATE

Assignment of invention, application, or patent to Minister of Government.

76. —(1) Any inventor, or any applicant for or proprietor of a patent, may (either for or without valuable consideration) make to a Minister of the Government, and such Minister may take on behalf of the State, an assignment of the whole of or any share or interest in the benefit of an invention, of a patent application therefor, or of any patent obtained or to be obtained therefor, and where a Minister of the Government takes any such assignment, such Minister may do, or, as may be appropriate, join in doing, on behalf of the State, all or any of the following things, that is to say—

( a ) develop and perfect such invention,

( b ) form or promote an incorporated company or an unincorporated association of persons to develop and perfect such invention,

( c ) sell or lease any such patent application or patent or grant licences under any such application or patent on such terms as he shall, with the agreement of the Minister for Finance, think proper,

( d ) form or promote an incorporated company or an unincorporated association of persons to work commercially any such invention,

( e ) do all such things as may be necessary for the maintenance or preservation of any such application or patent or be otherwise incidental to the ownership thereof.
(2) Every Minister of the Government shall, before the 1st day of April in every year, lay before each House of the Oireachtas a report of every (if any) exercise by him during the year ending on the previous 31st day of December of the several powers conferred on him by paragraph (c) or (d) of subsection (1) and also, if and so far as he considers it to be in the public interest, of any or all of the powers conferred by paragraph (a), (b) or (e) of subsection (1).

(3) All expenses incurred by a Minister of the Government under this section shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas.

Right to use inventions for service of State.

77. —(1) A patent and a patent application shall have to all intents the like effect as against the State as it has individual; provided that any Minister of the Government may, by himself or by such of his officers, servants or agents as may be authorized in writing by him or by any other person acting on his behalf at any time after the making of an application for a patent, do for the service of the State any of the following acts in the State in relation to an invention which is the subject of the application or patent, without the consent of the applicant for or the proprietor of the patent, that is to say—

( a ) where the invention is a product, make, use, import or stock the product or dispose of or sell or offer to dispose of or sell it to any person;

( b ) where the invention is a process, use it or do in relation to any product obtained directly by means of the process anything mentioned in paragraph (a);
( c ) supply or offer to supply to any person any of the means, relating to an essential element of that invention, for putting the invention into effect.

(2) Any thing done by virtue of subsection (1) in relation to an invention which is the subject of an application or a patent, is subsequently in this section and in section 78 referred to as “use of the invention” and the doing of any such thing shall not amount to an infringement of the application or patent concerned.

(3) Use of an invention under this section shall be subject to such terms as may, either before or after the use thereof, be agreed on, with the approval of the Minister for Finance, by any Minister of the Government and the applicant for or the proprietor of the patent relating to the invention, or, in default of agreement, as may be settled in the manner hereinafter provided, and the terms of any agreement or licence concluded between such applicant or proprietor and any person other than a Minister of the Government shall not operate to prevent or regulate the use of the invention for the service of the State.

(4) Where an invention which is the subject of any patent or application for a patent has, before the date of filing, or, where priority is claimed, the priority date of the application, been duly recorded in a document by, or been tried by or on behalf of any Minister of the Government (such invention not having been communicated directly or indirectly by the applicant for or the proprietor of the relevant patent), any Minister of the Government or such of his officers, servants or agents as may be authorized in writing by him, may use the invention so recorded or tried for the service of the State free of any royalty or other payment to the applicant for or the proprietor of the patent, notwithstanding the existence of the application or patent, and, if in the opinion of such Minister the disclosure to the applicant or the proprietor, as the case may be, of the document recording the invention or the evidence of the trial thereof would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of such applicant or proprietor or to any independent expert mutually agreed upon.

(5) Where any use of an invention is made by or with the authority of a Minister of the Government under this section, then, unless it appears to such Minister that it would be contrary to the public interest so to do, the Minister shall notify the applicant for or the proprietor of a patent (if any) relating to the invention as soon as practicable after the
use is begun and furnish him with such information as to the extent of the use as he may from time to time reasonably require.

(6) In the case of any dispute as to or in connection with the use of an invention under this section or the terms therefor, or as to the existence or scope of any record or trial referred to in subsection (4), the matter shall be referred to the Court appropriate court for decision, and the Court appropriate court shall have the power to refer the whole matter or any question or issue of fact arising thereon to be heard by an arbitrator upon such conditions as it may direct; the Court appropriate court or arbitrator in settling the dispute shall be entitled to take into consideration any benefit or compensation which the applicant for or proprietor of a patent (if any) relating to the invention or any other person interested in such application or in such patent may have received directly or indirectly from the State in respect of such application or patent.

(7) In any proceedings under this section the Minister of the Government who is a party to the proceedings may—

( a ) put in issue the validity of the relevant patent without applying for its revocation;

( b ) if the proprietor of a patent is a party to the proceedings, apply for revocation of the patent upon any ground upon which a patent may be revoked under section 58.

(8) The right to use an invention for the service of the State under the provisions of this section shall include a power to dispose of or sell, or offer to dispose of or sell, any products made in pursuance of such right which are no longer required for the service of the State.

(9) Any person who acquires products disposed of or sold in the exercise of powers conferred by this section and any person claiming through him shall have power to deal with the products in the same manner as if they had been made pursuant to a patent held on behalf of the State.

(10) In this section “service of the State” means a service financed out of moneys charged on or advanced out of the Central Fund or moneys provided by the Oireachtas or by a local authority for the purposes of the Local Government Act, 1941 .

Use of inventions pursuant to section 77; supplementary provisions.

78. —(1) During any period when an order under subsection (2) (a) is in force the power exercisable in relation to an invention by a Minister of the Government, or a person authorized by a Minister of the Government under section 77, shall include power to use the invention for any purpose which appears to such Minister to be necessary or expedient—

( a ) for the maintenance of supplies and services essential to the life of the community;

( b ) for securing a sufficiency of supplies and services essential to the well- being of the community;

( c ) for promoting the productivity of commerce and industry, including agriculture;

( d ) generally for ensuring that the whole resources of the community are available for use and are used, in a manner best calculated to serve the interests of the community;

( e ) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any country or territory other than the State that is in grave distress; or

( f ) for ensuring the public safety and the preservation of the State.

( 2 ) ( a ) Where the Government are of opinion that, owing to the existence of exceptional circumstances, it is desirable in the interests of the community that a power conferred by subsection (1) shall be available, they may by order declare that the power shall be available.

( b ) Where an order under paragraph (a) of this subsection is for the time being in force and the Government are of the opinion that the exceptional circumstances referred to in that paragraph no longer exist, they shall by order revoke the first-mentioned order.