Patent Proceedings

PATENTS ACT, 1992

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AN ACT TO MAKE NEW PROVISION IN RESPECT OF PATENTS AND RELATED MATTERS IN SUBSTITUTION FOR THE PROVISIONS OF THE PATENTS ACTS, 1964 AND 1966; TO ENABLE EFFECT TO BE GIVEN TO CERTAIN INTERNATIONAL CONVENTIONS ON PATENTS; AND TO PROVIDE FOR OTHER MATTERS CONNECTED WITH THE MATTERS AFORESAID. [27th February, 1992]

BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:

PART I

PRELIMINARY AND GENERAL

 

Short title and commencement.
1. —(1) This Act may be cited as the Patents Act, 1992 .

(2) Except as otherwise provided, this Act shall come into operation on such day as the Minister may by order appoint.

Interpretation.

2. —(1) In this Act, except where the context otherwise requires— “the Act of 1964” means the Patents Act, 1964 ;
“Agreement establishing the World Trade Organisation” means the Agreement establishing the World Trade Organisation done at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement which is for the time being in force in the State;
“applicant”, in relation to an application under this Act, means the person making the application and includes a person whose title has been registered under section 85 or in relation to whose title a direction has been given under that section and the personal representative of a deceased person by whom such an application is made;

“application for a European patent” means an application made under the European Patent Convention;

 Patents Amendment Act 2006 [31/2006]

‘appropriate court’ means—

(a) the District Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the District Court for actions in contract or tort,
(b) the Circuit Court, where the damages or the value of the other relief sought in any action to which the application relates is not liable to exceed such sum as stands specified by an enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and
(c) in any other case, the High Court;

“assignee” includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person;

“Board of Appeal” means a Board of Appeal referred to in Article 21 of the European Patent Convention;
“commercially worked” means the manufacture of the product or the carrying on of the process which is the subject of a patent in or by means of a definite and substantial establishment or organisation, and on a scale which is adequate and reasonable in all the circumstances;

“company” means a company within the meaning of section 2 of the Companies Act, 1963 , or any other body corporate whether incorporated inside or outside the State;

“the Controller” means the Controller of Patents, Designs and Trade Marks;

‘Controller’ means the Controller of Intellectual Property;

“Convention on International Civil Aviation” means the Convention on International Civil Aviation signed at Chicago on the 7th day of December, 1944;

“the Court” means the High Court and, in relation to proceedings to which section 66 applies, includes the Circuit Court;

“date of filing” means—

( a ) in relation to an application for a patent made under this Act, the date which is the date of filing of the application by virtue of the relevant provision of this Act, and

( b ) in relation to any other application, the date which, under the law of the country where the application is made or in accordance with the terms of a treaty or convention to which the country is a party, is to be treated as the date of filing the application or is equivalent to the date of filing an application in that country;

 

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

“date of priority” means the earliest date which has been claimed for priority purposes in accordance with section 26;

“designate” means—

(i) in relation to an application for a patent, designate (in pursuance of the European Patent Convention or the Treaty, as the case may be) the state or states in which protection is sought for an invention, and includes a reference to a country being treated as designated in pursuance of the European Patent Convention or the Treaty;
(ii) in relation to a patent, designate (in pursuance of the European Patent Convention) the state or states in which the patent has effect;

“director” includes any person occupying the position of director (by whatever name called) of any body corporate;

“divisional application” has the meaning assigned to it by section 24;

‘EEA Agreement’ means the Agreement on the European Economic Area signed at Oporto on 2 May 1992, as adjusted by all subsequent amendments to that Agreement:

‘EEA state’ means—

(a) a Member State (other than the State), or

(b) a state (other than a Member State) that is a contracting party to the EEA agreement; 
“Enlarged Board of Appeal” means the Enlarged Board of Appeal referred to in Article 22 of the European Patent Convention;
“the European list” means the list of professional representatives maintained by the European Patent Office in pursuance of the European Patent Convention;

“European patent” means a patent granted under the European Patent Convention;

“European Patent Bulletin” means the bulletin of that name published under the European Patent Convention;

“European Patent Convention” means the Convention on the Grant of European Patents signed at Munich on the 5th day of October, 1973 as amended for the time being;
“European Patent Office” means the office of that name established by the European Patent Convention;

 

 

 Patents Amendment Act 2006 [31/2006] ,  S.I. 579/2015 European Communities (Patent Agents) Regulations 2015

“exclusive licence” means a licence from a proprietor of or applicant for a patent which confers on the licensee or on the licensee and persons authorized by him, to the exclusion of all other persons (including the proprietor of or applicant for the patent), any right in respect of the invention and “exclusive licensee” and “non-exclusive licence” shall each be construed accordingly;

“functions” includes powers and duties;

“international application for a patent” means an application made under the Treaty;

“inventor” means the actual deviser of an invention and “joint inventor” shall be construed accordingly;

“the Journal” means the Patents Office Journal;
“member of the World Trade Organisation” means a party to the Agreement establishing the World Trade Organisation;
“the Minister” means the Minister for Industry and Commerce; “the Office” means the Patents Office;
‘Office’ means the Intellectual Property Office of Ireland;

“the Paris Convention for the Protection of Industrial Property” means the convention of that name signed at Paris on the 20th day of March, 1883, as amended or supplemented by any protocol to that convention which is for the time being in force in the State;

“patent” means an exclusive right conferred pursuant to Part II or Part III;

‘patent agent’ except in section 94 has the meaning assigned to it by section 105 and a reference to a patent agent in this Act (except in section 94) or any other enactment shall be construed as including a reference to a patent attorney; 
“patent application” means an application under Part II or Part III for a patent;

“prescribed” means, in the case of proceedings before the Court the appropriate court, prescribed by rules of court, and, in any other case, prescribed by rules made under this Act;
“proprietor of the patent” means the person to whom the patent was granted or the person whose title is subsequently registered under section 85;
“published”—

( a ) in relation to any document which is required to be published under this Act, means made available to the public and includes the making available for inspection of the document as of right, at the Office and such other place (if

 Patents Amendment Act 2006 [31/2006] ,  S.I. 579/2015 European Communities (Patent Agents) Regulations 2015

any) as may be for the time being specified for the purpose by the Minister, by the public, whether on payment of a fee or not, and

( b ) in relation to any other document, matter, record or information which the Controller is authorized to publish means made available to the public and includes the making available of the document, matter, record or information in any form at the Office and such other place (if any) as may be for the time being specified for the purpose by the Minister, whether on payment of a fee or not;

“the register” means the Register of Patents or the register of patent agents, as may be appropriate;

“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference in this Act to a right in a patent includes a reference to a share in the patent;

“the Treaty” means the treaty known as the Patent Co-operation Treaty signed at Washington on the 19th day of June, 1970;

“TRIPs Agreement” means the Agreement on Trade- Related Aspects of Intellectual Property Rights annexed to the Agreement establishing the World Trade Organisation;
“Union of Paris for the Protection of Industrial Property” means the union established by the Paris Convention for the Protection of Industrial Property.

(2) In this Act, unless otherwise indicated—

( a ) a reference to a Part, section or Schedule is to a Part, section or Schedule of this Act,
( b ) a reference to a subsection is a reference to a subsection of the section in which the reference occurs.

 

 

 

PART VIII

PROCEEDINGS BEFORE THE CONTROLLER OR THE COURT

Exercise of discretionary power by Controller.

90. —Where any discretionary power is by or under this Act given to the Controller, he shall not exercise that power adversely to any applicant for or proprietor of a patent or to any party in any proceeding before him without giving that applicant, proprietor or party an opportunity of being heard as regards such exercise.

Costs and security for costs.
91. —(1) The Controller may, in any proceeding before him under this Act, order the payment to any party of such costs (if any) as he may consider reasonable, and direct how and by what parties they are to be paid, and any such order may be made a rule of court.

(2) If any party by whom notice of any opposition is given to the Controller under this Act or by whom an application is made to the Controller for the revocation of a patent or for the grant of a licence under a patent, or by whom notice of appeal is given from any decision of the Controller under this Act, neither resides nor carries on business in the State or in such other states as may be prescribed, the Controller, or, in the case of an appeal, the Court High Court, may require the party to give security for the costs of the proceedings and in default of a requirement under this subsection being complied

with the Controller or the Court High Court, as may be appropriate, may treat the opposition, application or appeal as abandoned.

Evidence before Controller.

92. —(1) In any proceeding under this or any other enactment before the Controller, (including proceedings under the Trademarks Act 1996, and the Industrial Designs Act, 2001) evidence shall be given by statutory declaration in the absence of directions to the contrary; but in any case in which the Controller thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by such declaration.

(2) Any such statutory declaration in pursuance of subsection (1) may in the case of an appeal be used in lieu of evidence on affidavit, but if so used shall have all the incidents and consequences of evidence on affidavit.

(3) The Controller may for the purposes of any of the functions assigned to him by this Act or by any other enactment do all or any of the following things—

( a ) summon witnesses to attend before him;

( b ) examine on oath or affirmation (which he is hereby authorized to administer) or permit the examination on oath or affirmation of the witnesses attending before him;

( c ) require any such witness to produce to him any document relevant to the proceedings and which is within his power to produce;

( d ) permit evidence to be given on affidavit or other sworn testimony instead of, or in addition to, evidence given by statutory declaration, or orally.

(4) A witness summons under this section shall be signed by the Controller.

(5) A witness before the Controller shall be entitled to the same immunities and privileges as if he were a witness before the Court High Court.

(6) If any person—

( a ) on being duly summoned as a witness before the Controller makes default in attending, or

( b ) being in attendance as witness refuses to take an oath or affirmation duly required by the Controller to be taken, or to produce any document which is within his power to produce and which is duly required by the Controller to be produced by him, or to answer any question to which the Controller may properly require an answer,

he shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £1,000 class C fine.

 SI 6/1996 Trademarks Act
 SI 39/2001 Industrial Designs Act
 Patents Amendment Act 2006 [31/2006]
Copyright and Other Intellectual Property Law Provisions Act 2019

Right of audience before Controller.

93. —Any party to a proceeding before the Controller under this Act may be represented by counsel or a solicitor, or by a patent agent who is for the time being registered in the register within the meaning of Part X, or may appear before the Controller in person or be represented by any other person, whom he desires to represent him, being a person to whom section 106 (3) applies.

Privileged communications.

94. —(1) A communication to which this section applies shall be privileged from disclosure in any proceeding (including a proceeding before the Controller or competent authority under the European Patent Convention or the Treaty) to the same extent as a communication between client and solicitor is privileged in any proceeding before a court in the State.

(2) This section applies to a communication—

( a ) between a person, or person acting on his behalf and a solicitor or patent agent, or person acting on his behalf, or

( b ) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a solicitor or patent agent
in relation to any matter concerning the protection of an invention, patent, design or technical information or any matter involving passing off.

(3) In this section “patent agent” means a person registered as a patent agent in the register of patent agents, a company or partnership lawfully practising as a patent agent in the State or a person or partnership who satisfies the condition mentioned in subsection (1) or (3) of section 125.

(3) In this section ‘patent agent’ means-
( a ) a person registered as a patent agent in the register of patent agents,

( b ) a company or partnership lawfully practicing as a patent agent in the State

( c ) a person to whom section 106(3) applies, or
( d ) a person or partnership who satisfies the condition mentioned in subsection (1) or (3) of section 125.

Assessors.

 SI 39/2001 Industrial Designs Act
 SI 141/2006 European Communities (Patent Agents) Regulations Copyright and Other Intellectual Property Law Provisions Act 2019

95. —(1) In an action or proceedings for infringement or revocation of a patent, or other proceedings under this Act, the Court appropriate court may, if it thinks fit, and shall, on the request of all parties to the proceedings, call in the aid of an assessor specially qualified in the opinion of the Court appropriate court, and try the case wholly or partially with his assistance.

(2) The Supreme Court may, if it thinks fit, in any proceedings before it relating to a patent application or a patent call in the aid of an assessor as aforesaid.

(3) The remuneration, if any, to be paid to an assessor under this section shall be determined by the Court by the appropriate court or the Supreme Court, as may be appropriate, and be paid as part of the expenses incurred by the Minister in the administration of this Act.

Appeals from decisions of Controller.

96. —(1) An appeal to the Court High Court shall lie from any decision or order of the Controller other than a decision under section 22 (2) or section 28 (5).

(2) Any appeal under this Act which concerns a patent application which has not been published shall be heard in private.

(3) In any appeal under this Act the Controller shall be entitled to appear or be represented and be heard in support of his decision and shall appear if so directed by the Court High Court.

(4) In any appeal under this Act the Court High Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.

(5) Rules of court for the conduct of appeals under this Act may include provisions for the appointment of scientific advisers to assist the Court the High Court and for regulating the functions of such advisers; and the remuneration of any such scientific adviser shall be defrayed out of moneys provided by the Oireachtas.

(6) (a) Save where otherwise provided in this Act and subject to paragraph (b), an appeal, except by leave of the Court High Court, from an order or decision of the Controller shall not be entertained unless notice to the Court High Court is given within the period of three months beginning on the date of the order or decision appealed against.

(b) Where a written statement of the grounds of the order or decision of the Controller, in the exercise of his discretionary power, has been requested in the prescribed manner and within the prescribed period by a party to the proceedings, the period of three months shall begin on the date on which the written statement is furnished to the party requesting it.
(7) An appeal to the Supreme Court from a decision of the Court the High Court under this section shall lie only on a question of law.

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

(8) In an appeal under this Act the Controller shall not be awarded or be ordered to pay costs.

PART IX

THE CONTROLLER: SUPPLEMENTARY PROVISIONS

Appointment of Controller.

97. —(1) ( a ) The Government shall appoint as occasion arises a fit person to the office of Controller who shall hold office on such terms and conditions as the Government shall, at the time the appointment is made, determine.

( b ) The person holding the office of Controller immediately before the commencement of this section shall continue to hold that office on the same terms and conditions, including conditions as to superannuation or other allowance or gratuity, as those on which he held the office theretofore.

(1) (a) The Government shall appoint as occasion arises a person to the office of Controller for a term of 5 years on such terms and conditions as shall be specified by the Government when making the appointment.

(b) A person appointed under paragraph (a) of this subsection, whose term of office expires otherwise than by reason of the person being removed from office, shall be eligible for reappointment.

(c) Notwithstanding paragraphs (a) and (b) of this subsection, a person appointed to the office of Controller shall retire on attaining the age of 65 years.

(d) Without prejudice to paragraphs (a), (b) and (c) of this subsection, the person holding office as Controller, immediately before the commencement of this section, shall hold that office on the same terms and conditions, including conditions as to superannuation or other allowance or gratuity, as specified by the Government when making his appointment to that office.
(2) The Controller shall receive such remuneration as the Minister for Finance shall determine.
(3) The Controller shall be a civil servant in the Civil Service of the State.
(3) Subject to the Controller being in good health at the time of appointment and notwithstanding that the Controller is appointed without a certificate from the Civil Service Commissioners, the Controller shall, during his term of office, be deemed to be employed in the Civil Service of the State.

(3A) The Office shall be located at such a place in the State as may be designated from time to time by the Minister, and the functions of the office of Controller shall be

 Intellectual Property (Miscellaneous Provisions) Act 1998 [28/1998]

discharged at that place, subject to such exceptions as the Minister may from time to time specify in writing.

(4) Whenever the Controller is temporarily unable to attend to his duties or his office is vacant, the Minister may appoint a person to perform the duties of the Controller during such inability or vacancy, and every person so appointed shall for as long as the appointment remains in force have all the powers of the Controller under this Act and as otherwise determined by law and shall receive such remuneration as the Minister shall, with the sanction of the Minister for Finance, direct.

(4A) Notwithstanding subsection (1), the Government may remove from the office of Controller a person who has become incapable through ill-health of effectively performing the duties of Controller or for stated misbehaviour or whose removal appears to the Government to be necessary for the effective performance of the functions of Controller.

(5) The Controller may authorize any of his officers to exercise any of his functions under this Act or any other enactment and any such function shall, when exercised for the purpose of such enactment, be deemed to have been exercised by the Controller.

(5) Any act or thing directed to be done by or to the Controller under this Act or any other enactment may be done by or to any officer authorised by the Minister.

(6) An authorization under subsection (5)—

( a ) may be made subject to such directions as the Controller may specify,

( b ) shall, while in force, not prevent the discharge by the Controller of the functions thereby delegated, and

( c ) may at any time be modified or revoked by the Controller.

(6) An authorisation under subsection (5)—

(a) may be made subject to such directions as the Minister may specify, and

(b) may at any time be modified or revoked by the Minister.

Appointment of officers of Controller.
98. —(1) The officers of the Controller shall be appointed by the Minister and there shall be such number of officers as the Minister, with the sanction of the Minister for Finance, may consider necessary and those persons shall hold office upon such terms and be remunerated at such rates and in such manner as the Minister for Finance may sanction.

(2) The salaries or remuneration of the Controller and his officers and such other expenses of carrying this Act into effect as may be sanctioned by the Minister for Finance shall be paid out of moneys provided by the Oireachtas.

 Intellectual Property (Miscellaneous Provisions) Act 1998 [28/1998]

(3) Persons who immediately before the commencement of this section were officers of the Controller shall continue to hold office under this Act on the same terms and conditions (subject to the provisions of this Act) as theretofore.

Fees.

99. —(1) There shall be charged by the Controller and paid in respect of matters relating to applications for and the grant and renewal of patents or other matters determined by law as coming within the functions of the Controller, such fees as may from time to time be prescribed by the Minister with the sanction of the Minister for Finance.

(2) All fees charged by the Controller under this section shall be collected and accounted for in such manner as shall be determined by the Minister with the consent of the Minister for Finance.

(3) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this section.

Official Journal and publication of information.

100. —(1) The Controller shall issue periodically a journal to be known as the Patents Office Journal (which is referred to in this Act as “the Journal”) in which he shall include all matters which he is directed by this Act or otherwise by law to publish in the Journal and also such matters and information as appear to him to be useful or important in relation to patents or applications for patents and other matters for which he is responsible under this Act or otherwise by law and references in any enactment to the Official Journal of Industrial and Commercial Property shall each be construed as including a reference to the Journal.

(2) The Controller may prepare for publication and publish such matters, records and information as appear to him to be useful or important in relation to inventions, designs, patents, trade marks, copyright and patent and trade mark applications whether the matters, records or information originate within the State or elsewhere.

(3) The Controller shall make provision for the sale of copies of all documents which he is, by law, directed to issue or publish and may make such provision as he deems expedient for the sale of copies of other documents, information or records which he is by law authorized to publish.

Certain reports to be privileged.

101. —Except as provided by this Act or as prescribed by the Minister, reports of the Controller and officers of the Controller made under this Act or under any other enactment for the administration of which the Controller is responsible shall not be published or be open to public inspection and shall not be liable to production or inspection in any legal proceedings unless the Court appropriate court or any officer having power to order discovery in such proceedings certifies that such production or inspection is desirable in the interests of justice and ought to be allowed.

Controller may apply to Attorney General for advice.

102. —The Controller may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act or of any other enactment for the administration of which he is responsible, apply to the Attorney General for advice in the matter.

Annual report.

103. — The Controller shall prepare a report in respect of each year ending 31st December respecting the execution by or under him of this Act and of any other enactment for the administration of which he is responsible and he shall cause the report to be laid before each House of the Oireachtas within 6 months following the end of the year to which it relates. The report shall include, in respect of the year to which it relates, particulars of all rules made in that year under or for the purposes of the said Act or enactments and an account of all fees, salaries and allowances, and other money received and paid under the Act or enactments.

103.
(1) Subject to subsections (2) to (4), the Controller shall, as soon as practicable but, in any case, not later than 5 months after the end of each year, make a report in writing to the Minister of the Controller’s activities under-

(a) this Act, and

(b) each other enactment for the administration of which the Controller is responsible.

(2) The report shall include, in respect of the year to which it relates, particulars of all rules made in that year under or for the purposes of this Act or other enactment referred to in subsection (1)(b) and an account of all fees, salaries and allowances, and other money, received and paid under this Act or such other enactment.

(3) The Minister shall ensure that a copy of the report is laid before each House of the Oireachtas not later than 6 months after the end of the year to which the report relates.

(4) Nothing in this section shall be construed as requiring the Controller to include in the report information the inclusion of which would, in the opinion of the Controller, be likely to prejudice the performance of the Controller’s functions under this Act or other enactment referred to in subsection (1)(b).

Hours of business and excluded days.

104. —(1) Rules made by the Minister under section 114 may specify the hour at which the Office shall be deemed to be closed on any day for the purpose of the transaction by the public of business under this Act or such other business as may by law be made a function of the Controller or of any class of such business, and may specify days as excluded days for any such purposes.

 

Knowledge Development Box (Certification of Inventions) Act 2017

(2) Any business done under this Act on any day after the hour specified as aforesaid or on a day which is an excluded day, in relation to business of that class, shall be deemed to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day, the time shall be extended to the next following day not being an excluded day.

 

PART X

PATENT AGENTS

Authorized agent may act.

105. —(1) Subject to rules under section 109 (2) or 114, whenever under this Act any act has to be done by or to any person in connection with a patent or any procedure relating to a patent or the obtaining thereof, the act may be done by or to an agent (in this Act referred to as a “patent agent”) of such person duly authorized in the prescribed manner.

(2) A person duly authorized by another person under subsection (1) to act as his patent agent may (subject to any provision to the contrary in any agreement between the patent agent and that person) on giving notice to the Controller and the other person, cease to act as patent agent for the other person.

Unauthorized claim to be patent agent.

106. —(1) The register which, immediately before the commencement of this section, was known as the register of patent agents shall continue to be known as such and to be maintained by the Controller (which register is in this Part referred to as “the register”).

(2) Subject to the subsequent provisions of this section—

( a ) a person acting for gain shall not, either alone or in partnership with any other person, practise, describe himself or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is for the time being registered as a patent agent in the register, or, in case he is a member of a partnership holding itself out as patent agents, unless he and all his partners are so registered;
( b ) a company acting for gain shall not practise, describe itself or hold itself out or permit itself to be described or held out as aforesaid unless every director of the company and, if the company has a manager who is not a director, that manager, is registered as aforesaid.

(2) Subject to the subsequent provisions of this section—

( a ) a person established in the State shall not carry on the business of acting as a patent agent in the State unless that person is for the time being registered in the register;

( b ) a person acting for gain shall not practise, describe himself or hold himself out as a registered patent agent or patent agent, or permit himself to be so described or held out, unless that person is for the time being registered in the register. 
(3) The Minister may, at his discretion, permit any person not registered as aforesaid, upon application made by that person, to act on behalf of others for the purpose of obtaining patents subject to any conditions he considers appropriate.

(3) Notwithstanding subsection (2) but subject to subsections (3A) to (3D), a person established in a Member State of the European Community an EEA state (other than the State) and qualified under the law of that state to act as a patent agent in that state –

(a) may carry on the business of acting as patent agent for others in connection with a patent or any procedure relating to a patent or the obtaining thereof, and
(b) may, accordingly, be the subject of an authorization referred to in section 105(1).

(3A) On or before the first occasion on which a person acts, in reliance on subsection (3), on behalf of another before the Controller in connection with a patent or any procedure relating to a patent or the obtaining thereof, the person shall provide to the Controller such evidence as may be prescribed relating to –

(a) the person’s being established in another Member State of the European Community EEA state,

(b) the person’s being qualified under the law of that state to act as a patent agent in that state, and

(c) whichever of the following is appropriate –

(i) the person’s nationality, or

(ii) the person’s falling within paragraph (b) of the definition of ‘person’ in subsection (3E).

(3B) In acting, in reliance on subsection (3), on behalf of another in connection with a patent or any procedure relating to a patent or the obtaining thereof, the person shall use the applicable professional title (if any) but its use in the State shall be subject to the following requirements –

(a) the title is to be expressed in the official language or one of the official languages of the Member State EEA state referred to in subsection (3), and

(b) in a case where the language in which the title is expressed is also an official language of the State, the use of the title is not such as is likely to be understood as indicating that the person is a patent agent registered under this Act.

 S.I. 579/2015 European Communities (Patent Agents) Regulations 2015

(3C) It shall be sufficient compliance with subsection (3B)(b) if the use of the title concerned is accompanied by an indication of the Member State EEA state in which the person concerned is established as a patent agent.

(3D) If there is no applicable professional title, then the person, in acting as mentioned in subsection (3B), shall indicate that the person possesses the applicable qualifications and those qualifications shall be expressed in the official language or one of the official languages of the Member State EEA state referred to in subsection (3).

(3E) In this section –

‘applicable professional title’, in relation to a person, means the professional title that, by virtue of the person’s being qualified to act as a patent agent in the Member State EEA state referred to in subsection (3), the person is entitled to use in that state;

‘applicable qualifications’ , in relation to a person, means the qualifications that the person must possess, under the law of the Member State EEA state referred to in subsection (3), so as to be qualified to act as a patent agent in that state;

‘person’ means –

(a) in the case of an individual, a national of a Member State of the European Community an EEA state, and

(b) in the case of a person which is not an individual, a company or firm (within the meaning of Article 48 of the Treaty establishing the European Community) formed in accordance with the law of a Member State of the European Community and having its registered office, central administration or principal place of business within the European Community an EEA state and having its registered office, central administration or principal place of business within an EEA state. 
(4) The legal personal representative of a deceased patent agent may carry on the business or practice of the deceased patent agent for a period not exceeding three years from the death of the patent agent, or for such further period (if any) as the Court appropriate court allows, if he is authorized by the Court appropriate court to manage the business or practice or employs another person who is so authorized to manage the business or practice on his behalf.

(5) Any person who contravenes any provision of this section shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £500 class D fine in the case of a first offence, and in the case of a second or subsequent offence,
£1,000 a class C fine.

(6) Notwithstanding section 10 (4) of the Petty Sessions (Ireland) Act, 1851, proceedings for an offence under this section may be begun at any time within twelve months from the date of the offence.

 SI 141/2006 European Communities (Patent Agents) Regulations
 S.I. 579/2015 European Communities (Patent Agents) Regulations 2015 Copyright and Other Intellectual Property Law Provisions Act 2019

(7) Nothing in this Act shall be construed as prohibiting solicitors from taking such part in proceedings under this Act as has heretofore been taken by solicitors in connection with a patent or any procedure relating to a patent or the obtaining thereof.

(8) A patent agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by persons not legally qualified), by reason only of the preparation by him of a deed assigning the right to make an application for a patent, or the property in a patent application or a patent, or any document (not being a deed) for use in proceedings under this Act before the Controller or the Court appropriate court.

Entitlement to be registered as patent agent.

107. —(1) Any person who—
( a ) resides in the State or in such other state as maybe prescribed,

( b ) has a place of business in the State,
( b ) has a place of business in the State or in such other state as may be prescribed,”.

( c ) possesses the prescribed educational and professional qualifications, and

( d ) complies with the prescribed conditions,

shall be eligible to be registered in the register and a partnership shall be so eligible if every partner thereof is registered in accordance with the provisions of this section and a person or partnership so eligible shall on application in the prescribed form and manner and on payment of the prescribed fee be so registered.

107.—(1) Any person who—

(a) resides in the State or in an EEA state,

(b) has a place of business in the State or in an EEA state,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be registered in the register and a person so eligible shall, on application in the prescribed form and manner and on payment of the prescribed fee, be so registered. 
(2) Persons and partnerships whose names were entered in the register under the Act of 1964 immediately before the commencement of this Act shall be deemed to be registered in the register.

 S.I. 579/2015 European Communities (Patent Agents) Regulations 2015

Removal from register or suspension of registration of patent agents. 108.—(1) Any person registered in the register who applies to the Controller to be removed from the register may be removed by the Controller.

(2) Where, in the opinion of the Controller, a person registered in the register ceases to be eligible to be registered or has been guilty of conduct disgraceful to that person in his capacity as a patent agent the Controller may decide that the name of that person should be erased from the register or that during a period of specified duration registration of his name in the register should not have effect, but no such decision shall be made without giving that person an opportunity of being heard.

(3) On making a decision under subsection (2), the Controller shall forthwith send by post to the person to whom the decision relates, at his address as stated in the register, a notice in writing stating the decision, the date thereof and the reason therefor.

(4) On giving notice to the Controller in the prescribed manner, a person to whom a decision under this section relates may, within the period of 21 days, beginning on the date of the decision, apply to the Court High Court for cancellation of the decision and if he so applies—

( a ) the Court High Court, on hearing the application, may either—

(i) cancel the decision, or

(ii) declare that it was proper for the Controller to make a decision under this section in relation to such person and either (as the Court High Court may consider proper) direct the Controller to erase his name from the register or direct that during a specified period (beginning not earlier than 7 days after the decision of the Court High Court) registration of his name in the register shall not have effect.

( b ) If at any time the Controller satisfies the Court High Court that such person has delayed unduly in proceeding with the application, the Court High Court shall, unless it sees good reason to the contrary, declare that it was proper for the Controller to make a decision under this section in relation to such person and either (as the Court High Court may consider proper) direct the Controller to erase his name from the register or direct that during a specified period (beginning not earlier than 7 days after the decision of the Court High Court) registration of his name in the register shall not have effect.

(5) The Controller shall not be awarded or be ordered to pay costs on an application under this section.

(6) Where a person to whom a decision of the Controller under this section relates does not, within the period of 21 days beginning on the date of the decision, apply to the Court High Court for cancellation of the decision, the Controller may apply ex parte to the Court High Court for confirmation of the decision and, if the Controller so applies, the Court High Court on the hearing of the application shall, unless it sees good reason to the contrary, declare accordingly and either (as the Court High Court may consider proper) direct the Controller to erase the name of such person from the register or direct that during a specified period (beginning not earlier than 7 days after the

decision of the Court High Court) registration of his name in the register shall not have effect.

(7) The decision of the Court the High Court on an application under this section shall be final, save that, by leave of the Court the High Court or the Supreme Court, an appeal, by the Controller or the person concerned, from the decision shall lie to the Supreme Court on a specified question of law.

(8) ( a ) On erasing the name of a person from the register the Controller shall forthwith send by pre-paid post to such person, at his address as stated in the register, notice in writing of the erasure.

( b ) Where a direction is given under this section that during a specified period registration of the name of a person in the register shall not have effect, the Controller shall, before the commencement of that period, send by pre-paid post to such person, at his address as stated in the register, notice in writing of such direction.

(9) The name of any person which has been erased from the register may at any time be restored to the register by direction of the Controller but not otherwise, and when a person’s name is so restored to the register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by such person for registration if he was then being registered for the first time) as he thinks fit.

(10) Where the registration of a person in the register has ceased to have effect under this section for a period of specified duration, the Controller may, if he so thinks fit, on application made to him by such person, by direction terminate the suspension.

Rules relating to patent agents.

109.—(1) The Minister may make rules for the management of the register and may by such rules prescribe any matter or thing referred to in section 107 or 108 as prescribed, and in particular may so prescribe the educational and professional qualifications and the conditions (including conditions relating to nationality or citizenship) for eligibility for registration in the register, and the maximum fees which may be charged by any person registered in the register for such services in connection with the obtaining of patents as may be specified in such rules.

109. —(1) The Minister may make rules for the management of the register and may by such rules prescribe any matter or thing referred to in section 107 or 108 as prescribed, and in particular may so prescribe-

(a) the educational and professional qualifications and the conditions (including conditions relating to nationality or citizenship) which must be satisfied for eligibility for registration in the register;

(b) the conditions which must be satisfied by a partnership, body corporate or unincorporated body of persons for eligibility for registration in the register, including conditions relating to:

(i) evidence of establishment as a partnership, body corporate or unincorporated body;

(ii) evidence that a patent agent established in an EEA state (other than the State) is acting as a patent agent in accordance with the law of that State;

(iii) evidence that the partnership, body corporate or unincorporated body is performing the services of a patent agent in the State;

and

(c) the maximum fees which may be charged to any person registered in the register for such services in connection with the obtaining of patents as may be specified in such rules. 
(2) Rules under this section may authorize the Controller to refuse to recognise as agent in respect of any business under this Act any person who does not satisfy the requirements of section 106.

(3) Rules under this section may authorize the Controller to refuse to recognise as agent in respect of any business under this Act a company or firm of which any director or manager or any partner (as the case may be) is an individual whom the Controller could refuse to recognise as an agent.

 

District Court Rules