Patentability
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.
Orders and rules.
3. —(1) Where a power to make orders or rules is conferred by this Act, such orders or rules may be made either as respects all, or as respects any one or more, of the matters to which the power relates, and different provisions may be made by any such orders or rules as respects matters which are of different classes or descriptions.
(2) Every order or rule made under this Act shall be laid before each House of the Oireachtas as soon as may be after it is made and if a resolution annulling the order or rule is passed by either such House within the next twenty-one days on which the House has sat after the order or rule is laid before it, the order or rule shall be annulled accordingly, but without prejudice to the validity of anything previously done thereunder.
(3) As soon as may be after any order or rule is made under this Act notice of the making thereof, and of the place where copies thereof may be obtained, shall be published in the Journal.
Patents Amendment Act 2006 [31/2006]
(4) The power to make an order includes power to amend or revoke the order, except in the case of an order under section 1 (2).
Expenses.
4. —The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas.
Repeals and transitional provisions.
5. —The Act of 1964 and the Patents (Amendment) Act, 1966 are hereby repealed, subject to the provisions of the First Schedule.
PART II
PATENTS GENERALLY
CHAPTER I
THE PATENTS OFFICE AND THE CONTROLLER
The Patents Office and the Controller of Patents, Designs and Trade Marks.
6. —(1) The Patents Office and the Controller of Patents, Designs and Trade Marks shall continue in being for the purposes provided for by this Act or any other enactment.
(2) The Controller of Patents, Designs and Trade Marks shall continue as a corporation sole with perpetual succession and an official seal which shall be judicially noticed and may sue and be sued by that name.
(3) The Patents Office shall be under the control of the Controller who shall be independent in the discharge of the functions conferred on him by this Act or any other enactment.
(3) The Office shall be under the control of the Controller who shall act under the general superintendence and direction of the Minister.
(4) References in any enactment to the Industrial and Commercial Property Registration Office and to the Controller of Industrial and Commercial Property shall continue to be construed respectively as references to the Patents Office and the Controller.
(5) The Patents Office continued in being by this section shall, from the commencement of section 42 of the Copyright and Other Intellectual Property Law Provisions Act 2019, cease to be known as the Patents Office and instead be known as the Intellectual Property Office of Ireland.
Intellectual Property (Miscellaneous Provisions) Act 1998 [28/1998] Copyright and Other Intellectual Property Law Provisions Act 2019
(6) The Controller of Patents, Designs and Trade Marks continued in being by this section shall, from the commencement of section 42 of the Copyright and Other Intellectual Property Law Provisions Act 2019, cease to be known as the Controller of Patents, Designs and Trade Marks and instead be known as the Controller of Intellectual Property.
Grant of patents.
7. The Controller shall grant patents subject to and in accordance with the provisions of this Act.
Extent of application of Part II.
8. —The subsequent provisions of this Part shall, in relation to short-term patents to which Part III applies, have effect subject to the provisions of that Part.
CHAPTER II
PATENTABILITY
Patentable inventions.
9. —(1) An invention in all fields of technology shall be patentable under this Part if it is susceptible of industrial application, is new and involves an inventive step.
(2) Any of the following in particular shall not be regarded as an invention within the meaning of subsection (1):
( a ) a discovery, a scientific theory or a mathematical method, ( b ) an aesthetic creation,
( c ) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer,
( d ) the presentation of information.
(3) The provisions of subsection (2) shall exclude patentability of subject-matter or activities referred to in that subsection only to the extent to which a patent application or patent relates to such subject-matter or activities as such.
(4) A method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body shall not be regarded as an invention susceptible of industrial application for the purposes of subsection (1). This provision shall not apply to a product, and in particular a substance or composition, for use in any such method.
(5) The Minister may by order modify any of the provisions of this section or of section 10 (other than paragraph (a)) or section 11 for the purpose of giving effect, in
Patents Amendment Act 2006 [31/2006]
relation to the patentability of inventions, to the European Patent Convention as amended by any international treaty, convention or agreement to which the State is or proposes to become a party.
(Deleted by 2006 Act)
Exceptions to patentability
10. —A patent shall not be granted in respect of—
(1) ( a ) an invention the publication or exploitation commercial exploitation of which would be contrary to public order or morality, provided that the exploitation shall not be deemed to be so contrary only because it is prohibited by law;
( b ) a plant or animal variety or an essentially biological process for the production of plants or animals other than a micro-biological process or the products thereof. thereof;
(c) a method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body.
(2) Subsection (1)(c) shall not apply to products, in particular substances or compositions, for use in any such method.
Novelty.
11. —(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public (whether in the State or elsewhere) by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application.
(3) Additionally, the content of a patent application as filed, of which the date of filing is prior to the date referred to in subsection (2) and which was published under this Act on or after that date, shall be considered as comprised in the state of the art.
(4) The provisions of subsections (1), (2) and (3) shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in subsection (4) of section 9 provided that its use for any method referred to in the said subsection (4) is not comprised in the state of the art.
(4) The provisions of subsections (2) and (3) shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in section 10(1)(c) provided that its use for any such method is not comprised in the state of the art.
(5) The provisions of subsections (2) and (3) shall also not exclude the patentability of any substance or composition referred to in subsection (4) for any specific use in any
Patents Amendment Act 2006 [31/2006]
method referred to in section 10(1)(c), provided that such use is not comprised in the state of the art.
Non-prejudicial disclosures.
12. —(1) For the application of section 11 a disclosure of the invention shall not be taken into consideration if it occurred not earlier than six months preceding the filing of the patent application and if it was due to, or in consequence of—
( a ) a breach of confidence or agreement in relation to, or the unlawful obtaining of the matter constituting, the invention, or
( b ) the fact that the applicant or his legal predecessor has displayed the invention at an international exhibition which is either official or officially recognised under the Convention on International Exhibitions signed at Paris on the 22nd day of November, 1928, or any subsequent treaty, convention or other agreement replacing that Convention:
Provided that the exhibitor states, when making the patent application, that the invention has been so displayed and files a supporting certificate within the period and under the conditions prescribed.
(2) The Minister may for the purpose of subsection (1) prescribe a period other than the six months specified in that subsection and circumstances other than those specified in paragraph (a) or (b) of that subsection where the Minister is satisfied that it is necessary to do so in order to give effect to any treaty or international convention to which the State is or becomes a party and the said subsection shall be construed accordingly.
(3) Where a statement appears in the Journal stating that an international exhibition specified in the statement is or was an international exhibition of the class referred to in subsection (1), then for the purposes of this section the statement shall be evidence that the international exhibition specified therein is or was an international exhibition of such class.
Inventive step.
13. —An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art, but if the state of the art also includes documents within the meaning of section 11 (3) those documents shall not be considered in deciding whether or not there has been an inventive step.
Industrial application.
14. —An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.