Patent Proceedings

Person Entitled

An application may be made to the court for the resolution of any question relating to the ownership of a patent. The court may make a declaration.

Where the court decides that a patent was granted to a person who is not entitled to it, it may make an order for the conditional or unconditional revocation of the patent. They make an order that the person by whom the application was made may make a new patent application in relation to the same invention.

When patents are co-owned, it is presumed that each owner can exercise the patent rights to the extent consistent with the other’s ownership. A licence generally requires the consent of all co-owners.  These arrangements can be changed by a contract between the co-owners.

Void Conditions

It is not lawful to include in any contract in relation to the sale lease of, or licence to use or work, any patented product or process (or which is the subject of a patent application)  condition which, directly or indirectly, would—

• 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;
• 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;

Any such condition, if so included, is void.

The above does not apply if 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; and
• the contract entitles the party to the contract 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.

Any contract, lease or licence relating to the use or work on any patented product or process which (or subject of one or more patent applications) may, at any time after the patent has or ceased to be in force, may be terminated 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.

Title

Where a person becomes entitled to a patent under an assignment as mortgagee by death or automatically by reason of law or share in a patent or an application for a patent licensee or otherwise, he shall apply to the intellectual property office in the prescribed form for registration of this title or notice of his interest on the register.

The office, upon proof of title that the person in question has an interest concerned, shall register that interest. This may involve changing the registered owner or, in the case of an interest less than full ownership, noting of the interest on the register. An application may be made to cancel an interest, such as a mortgage licence, upon proof that it no longer applies.

The High Court, on application by a person who is aggrieved by an alleged error in the register, may make an order correcting it. It may decide any other question necessary for that purpose.

There is a provision for giving notice of the proceedings and the outcome to the controller. The certificate by the controller in relation to an entry is presumptive proof of the contents of the register.

Proceedings

After a patent application is published, the controller, on request being made in a prescribed manner and payment where prescribed, may give the person making the request such information as may be prescribed and may permit them to inspect documents relating to the patent, subject to restrictions and limitations thereby prescribed.

In proceedings before the controller, no discretionary power is to be exercised without giving the party adversely affected the opportunity to make representations in relation to the proposed exercise of power. It may make orders in relation to costs incurred in proceedings.

If a party by whom notice of opposition is given to the controller or in an application made to revoke a patent, or by whom notice of appeal is given from a decision of the controller does not reside in a carry on business in the state or other EU states, the controller may require security for costs.

The court, in a case for infringement or revocation of a patent, may, if it thinks fit and shall, if the parties request, call in aid  an assessor specially qualified in the opinion of the court to assist. The remuneration payable to the assessor is determined by the court.

There is an appeal to the High Court in relation to the decisions of the controller with certain exceptions. Appeals relating to unpublished patents are to be held in private.

Evidence

Generally, evidence in proceedings before the controller is by way of statutory declaration in the absence of directions to the contrary. The controller may require evidence to be given orally.

The controller may summons witnesses and examine them on oath. He may require the production of documents by witnesses. Witness summonses may issue.

A person giving evidence is subject to the same immunities, privileges and obligations as a witness before the High Court. Breach of requirements to attend to give evidence or produce documents et cetera, constitutes an offence.

Parties to proceedings before the controller may be represented by a solicitor, barrister a patent agent.

Patent Agents

Whenever any act is to be done in relation to a patent or patent procedure, the act may be done by a patent agent. There is a register of patent agents. Patent agents must be registered. A person may not hold himself out as a patent agent without being registered. EEA register patent agents may be recognised for certain purposes.

A person who is resident in the state or an EEA state or has a place of business there, possesses the prescribed educational professional qualifications and complies with conditions shall be eligible to be registered as a patent agent.

There are provisions for the removal and suspension of patent agents for misconduct. Procedures apply.

The Minister makes regulations in relation to requirements applicable to becoming a patent agent, including education and professional qualifications, evidence of establishment and fees which may be charged.