INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927

AN ACT TO MAKE PROVISION FOR THE GRANTING OF PATENTS FOR INVENTIONS, THE REGISTRATION OF DESIGNS AND TRADE MARKS, AND THE DEFINITION AND PROTECTION OF COPYRIGHT IN SAORSTÁT EIREANN. [20th May, 1927.]

BE IT ENACTED BY THE OIREACHTAS OF SAORSTÁT EIREANN AS FOLLOWS:—

PRELIMINARY.

1 Short title.

1.—This Act may be cited as the Industrial and Commercial Property (Protection) Act, 1927.

2 Commencement of Act.

2.—This Act shall come into operation on such day or days as may be fixed therefor by any order or orders of the Executive Council, either generally or with reference to any particular Part of this Act, and different days may be fixed for the commencement of different Parts of this Act, but so that no such day be later than six months after the passing of this Act.

3 Definitions.

3.—In this Act—

the word “patent” means letters patent for an invention;

the expression “British patent” means a patent granted by the Patent Office in London;

the word “patentee” means the person for the time being entered on the register as the grantee or proprietor of the patent;

the word “invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, and includes an alleged invention;

subject to the provisions of this Act, the words “inventor” and “applicant” respectively include the legal representative of a deceased inventor or applicant;

the word “design” means only the features of shape, configuration, pattern, or ornament applied to any article by any industrial process or means, whether manual, mechanical, or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle of construction, or anything which is in substance a mere mechanical device;

the word “article” means (as respects designs) any article of manufacture and any substance artificial or natural or partly artificial and partly natural;

the word “copyright” when used in relation to a design registered under Part III. of this Act means the exclusive right to apply the design to any article in any class in which the design is registered;

the expression “proprietor of a new or original design”—

• (a) where the author of the design, for good consideration, executes the design for some other person, means the person for whom the design is so executed, and

• (b) where any person acquires the design or the right to apply the design to any article either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired, and

• (c) in any other case means the author of the design,

and where the property in, or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person;

the expression “working on a commercial scale” means the manufacture of the article or the carrying on of the process described and claimed in a specification for 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;

the word “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof;

the expression “trade mark” means a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with, or offering for sale;

the word “controller” means the Controller of Industrial and Commercial Property appointed under this Act;

the expression “the Office” means the Industrial and Commercial Property Registration Office established pursuant to this Act;

the word “Journal” means the Official Journal of Industrial and Commercial Property issued by the controller pursuant to this Act;

the expression “the register” means the appropriate register kept pursuant to this Act;

the expression “British register” means the appropriate register kept in the Patent Office in London pursuant to the statutes relating to that Office;

the expression “Patent Office in London” means the office in London called the Patent Office and maintained under the statutes relating to the granting of patents for inventions and the registration of designs and trade marks in the late United Kingdom and in Great Britain;

the expression “late United Kingdom” means the late United Kingdom of Great Britain and Ireland;

the expression “self-governing British dominions” means and includes the Dominion of Canada, the Commonwealth of Australia, the Dominion of New Zealand, the Union of South Africa, and Newfoundland;

the expression “British dominions” includes Great Britain and Northern Ireland and (save where the context otherwise requires) the self-governing British dominions;

the expression “the Minister” means the Minister for Industry and Commerce;

the expression “Law Officer” means the Attorney-General of Saorstát Eireann;

the word “prescribed” means prescribed by general rules made under this Act;

the word “court” means the High Court of Justice in Saorstát Eireann.

4 Repeals.

4.—The Acts mentioned in the First Schedule to this Act are hereby repealed to the extent mentioned in the third column of the said Schedule.

PART I. ESTABLISHMENT OF INDUSTRIAL AND COMMERCIAL PROPERTY REGISTRATION OFFICE.

5 Establishment of Industrial and Commercial Property Registration Office.

5.—(1) There shall be established an Industrial and Commercial Property Registration Office for the purposes of this Act and such other purposes as may hereafter be assigned to it by the Oireachtas.

• (2) The Office shall be divided into two branches, namely—

• (a) a Patents Branch, in which shall be transacted and done all such business, matters, and things as are by this Act or otherwise by law directed to be transacted or done in the Office in relation to patents;

• (b) a Designs and Trade Marks Branch, in which shall be transacted and done all such business, matters, and things as are by this Act or otherwise by law directed to be transacted or done in the Office in relation to designs or in relation to trade marks;

• (3) The Office shall be under the immediate control of the Controller of Industrial and Commercial Property who shall act under the general superintendence and direction of the Minister.

6 Appointment of Controller of Industrial and Commercial Property.

6.—(1) The Executive Council shall as soon as may be after the passing of this Act and thereafter as occasion arises appoint a fit person to the office of Controller of Industrial and Commercial Property, who shall hold office for such time and on such terms as the Executive Council shall appoint.

• (2) Every person appointed to be controller under this Act shall receive such remuneration as the Minister for Finance shall determine.

• (3) Subject to his being in good health at the time of appointment and notwithstanding that he is appointed without a certificate from the Civil Service Commissioners, the controller shall, if appointed permanently, be deemed to be employed in the permanent Civil Service of Saorstát Eireann and there may be granted to him on retirement or to his legal personal representative on death such superannuation or other allowance or gratuity as might under the Superannuation Acts for the time being in force have been granted had he been in the permanent Civil Service of Saorstát Eireann.

• (4) Whenever the controller is temporarily unable to attend to his duties, or his office is vacant, the Minister may appoint a fit person to perform the duties of the controller under this Act during such inability or vacancy, and every person so appointed shall during his appointment have all the powers of the controller under this Act, and shall receive such remuneration, out of moneys to be provided by the Oireachtas, as the Minister shall, with the sanction of the Minister for Finance, direct.

7 Controller to be a corporation and have official seal.

7.—(1) The Controller of Industrial and Commercial Property shall be a corporation sole under that name with perpetual succession and an official seal, and may sue and be sued by the name aforesaid.

• (2) Impressions of the official seal of the Controller of Industrial and Commercial Property shall be judicially noticed and admitted in evidence.

8 Appointment of officers of controller.

8.—(1) The Minister shall appoint such persons to be officers of the controller, as, subject to the sanction of the Minister for Finance as to number, he may consider necessary for the purposes of this Act, and those officers 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.

9 Fees to be charged by controller.

9.—(1) There shall be charged by the controller and paid in respect of the grant of patents and the registration of designs, trade marks and artistic works, and applications therefor, and in respect of other matters in relation to patents, designs, trade marks and artistic works under this Act, such fees as may from time to time be prescribed by the Minister with the sanction of the Minister for Finance, so however that the fees prescribed in respect of the instruments and matters mentioned in the Second Schedule to this Act shall not exceed the fees respectively specified in that Schedule.

• (2) All fees charged by the controller under this section shall be collected and accounted for in such manner as shall be prescribed by the Minister, with the sanction of the Minister for Finance.

10 Controller to publish Official Journal and other documents.

10.—(1) The controller shall issue periodically an illustrated journal of patented inventions, registered designs, and registered trade marks to be called the Official Journal of Industrial and Commercial Property, and shall publish therein all such matters as are directed by this Act or otherwise by law to be published therein and such other matters and information as may appear to be useful or important to proprietors of patents, designs, trade marks, or copyright granted, registered, or subsisting in Saorstát Eireann.

• (2) The controller may issue periodically either in or as a supplement to the Journal or as a separate publication reports of—

• (a) cases relating to patents, designs, trade marks or copyright decided by courts of law in Saorstát Eireann, and

• (b) such cases relating to patents, designs, trade marks, or copyright decided by courts of law outside Saorstát Eireann as the controller may consider to be useful or important to proprietors of patents, designs, trade marks, or copyright granted, registered, or subsisting in Saorstát Eireann.

• (3) The controller may prepare and publish indexes, abridgments of specifications, catalogues and other works relating to inventions, patents, designs, and trade marks.

• (4) The controller shall make provision for keeping on sale copies of all documents which he is by this section directed or authorised to issue or publish, and also of all complete specifications (together with any accompanying drawings) of patents in force other than British Patents which by virtue of this Act are deemed to be patents granted under this Act.

PART II.—PATENTS.

11 Application for patent generally.

11.—(1) An application for a patent may be made by any person who claims to be the true and first inventor of an invention, whether he is or is not an alien, and whether alone or jointly with any other person.

• (2) The application must be made in the prescribed form, and must be left at, or sent by post to, the Office in the prescribed manner.

• (3) The application must contain a declaration or (if so prescribed) a statutory declaration to the effect that the applicant is in possession of an invention of which, so far as the applicant knows or has been able to ascertain, he, or in the case of a joint application, one at least of the applicants, is the true and first inventor, and for which he desires to obtain a patent.

• (4) Every application for a patent must be accompanied by either a provisional or a complete specification.

• (5) In the case of a joint application, the declaration required by this section must be made by all the applicants.

12 Application for patent in certain cases.

12.—(1) Any person or the legal representative or assignce of any person who applied after the 6th day of December, 1921 and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann for a patent or protection in respect of an invention shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for a patent in respect of the same invention and shall be entitled to have such application under this Act dated and treated as having been made as of the date of the first-mentioned application for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date to be borne by any patent granted pursuant to the said application under this Act, and determining whether the invention had been previously published in Saorstát Eireann or in Great Britain.

• (2) Any person or the legal representative or assignee of any person who has obtained between the 6th day of December, 1921 and the commencement of this Part of this Act protection for an invention in any British dominion (other than Great Britain and Northern Ireland) or foreign state to which the provisions of section 152 (which relates to international arrangements) of this Act are applied or declared to be applicable by order made under that section shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for a patent in respect of the same invention and shall be entitled to have the said application under this Act dated and treated as having been made as of the date of the application for protection of the invention in such British dominion or foreign state for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date to be borne by any patent granted pursuant to the said application under this Act, and determining whether the invention had been previously published in Saorstát Eireann or in Great Britain.

• (3) Any person who applies for a patent under the provisions of this section may at any time before the grant of such patent (hereinafter called the first-mentioned patent) or within such time after such grant as may be allowed by the controller apply to the controller for the revocation of any patent (hereinafter called the second-mentioned patent) which by virtue of this Act is deemed to be a patent granted under this Act and bears date as of any date between the 6th day of December, 1921 and the commencement of this Part of this Act and is for the same invention as that in respect of which the first-mentioned patent is applied for on the ground that the date of the application for the second-mentioned patent was subsequent to the date of an application made by the applicant for the first-mentioned patent to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann or in any such British dominion or foreign state as is mentioned in the foregoing sub-section for a patent or protection of the same invention and the controller may on such application for revocation revoke the second-mentioned patent on the ground aforesaid, but on no other ground.

• (4) An appeal shall lie to the law officer from every decision of the controller on an application for revocation under the foregoing sub-section.

• (5) The term limited in a patent granted pursuant to an application made under the provisions of sub-section (1) of this section for the duration of such patent shall be sixteen years from the date of the commencement of this Part of this Act, and for the purposes of the application of the Second Schedule to this Act to such patent the date of such patent shall be deemed to be the date of such commencement.

• (6) No fees shall be payable under this Act on any patent granted pursuant to an application made under the provisions of sub-section (2) of this section in respect of anything done or any period of time expired before the commencement of this Part of this Act.

13 Specifications of inventions.

13.—(1) A provisional specification must commence with the title of the invention and must describe the nature of the invention.

• (2) A complete specification must commence with the title of the invention and must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed and must end with a distinct statement of the invention claimed.

• (3) The controller may, whenever he considers it desirable so to do, require that suitable drawings shall be supplied with the specification (whether provisional or complete) or at any time before the acceptance thereof, and such drawings when supplied shall be deemed to form part of the specification.

• (4) Whenever the invention in respect of which an application for a patent is made is a chemical invention, such typical samples and specimens as may be prescribed shall, if in any particular case the controller considers it desirable so to require, be furnished to the controller before the acceptance of the complete specification.

14 Proceedings upon application.

14.—(1) The controller shall refer every application for a patent to an examiner.

• (2) If the examiner reports that the nature of the invention is not fairly described, or that the application, specification, or drawings have not been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the invention, the controller may refuse to accept the application or require that the application, specification, or drawings be amended before he proceeds with the application; and in the latter case the application shall, if the controller so directs bear date as from the time when the requirement is complied with.

• (3) Where the controller refuses to accept an application or requires an amendment, the applicant may appeal from his decision to the law officer, who shall, if required, hear the applicant and the controller, and may make an order determining whether and subject to what conditions (if any) the application shall be accepted.

• (4) The controller shall, when an application has been accepted, give notice thereof to the applicant.

15 Provisional protection.

15.—Where an application for a patent in respect of an invention has been accepted, the invention may during the period between the date of the application and the date of sealing such patent be used and published without prejudice to the patent to be granted for the invention; and such protection from the consequences of use and publication is in this Act referred to as provisional protection.

16 Time for leaving complete specification.

16.—(1) If the applicant does not leave a complete specification with his application, he may leave it at any subsequent time within nine months from the date of the application: Provided that where an application is made for an extension of the time for leaving a complete specification, the controller shall, on payment of the prescribed fee, grant an extension of time to the extent applied for but not exceeding one month.

• (2) Unless a complete specification is so left the application shall be deemed to be abandoned.

17 Comparison of provisional and complete specifications.

17.—(1) Where a complete specification is left after a provisional specification, the controller shall refer both specifications to an examiner.

• (2) If the examiner reports that the complete specification has not been prepared in the prescribed manner, the controller may refuse to accept the complete specification until it has been amended to his satisfaction.

• (3) If the examiner reports that the invention particularly described in the complete specification is not substantially the same as that which is described in the provisional specification the controller may—

• (a) refuse to accept the complete specification until it has been amended to his satisfaction; or

• (b) (with the consent of the applicant) cancel the provisional specification and treat the application as having been made on the date at which the complete specification was left, and the application shall have effect as if made on that date:

Provided that where the complete specification includes an invention not included in the provisional specification, the controller may allow the original application to proceed so far as the invention included both in the provisional and in the complete specification is concerned, and allow an application for the additional invention included in the complete specification to be made and treated as an application for that invention made on the date at which the complete specification was left.

• (4) An appeal shall lie from the decision of the controller under this section to the law officer, who shall, if required, hear the applicant and the controller, and may make an order determining whether and subject to what conditions (if any) the complete specification shall be accepted.

18 Time for acceptance of complete specification.

18.—(1) If a complete specification is not accepted within the period of fifteen months from the date of the application or, where that period is extended under this section, before the expiration of the last extension of such period the application shall at the expiration of such period or such extension thereof (as the case may be) become void.

• (2) In any case in which an application for a British patent was pending when the complete specification was left, the controller may grant without the payment of any fee such extension or series of extensions of the said period of fifteen months as he shall think fit, but no such extension shall be granted unless the same is applied for before the expiration of the said period or the last previous extension thereof (as the case may be).

• (3) In any case not coming within the foregoing sub-section the controller shall, on application therefor being made to him and the prescribed fee being paid before the expiration of the said period of fifteen months, grant such extension, not exceeding three months, of the said period of fifteen months as is so applied for.

• (4) Whenever an appeal from a decision of the controller in relation to the complete specification is pending at the expiration of the said period of fifteen months or any extension thereof made under this section, the controller shall on application made to him therefor at any time grant without the payment of any fee an extension or further extension (as the case may be) of such period until the expiration of twenty-one days after the final decision of such appeal.

19 Documents to accompany specifications.

19.—(1) Every provisional specification must be accompanied by a statement as to whether the applicant has or has not applied for a British patent for the invention described in that specification and, if he has not so applied, a further statement as to whether he does or does not intend so to apply.

• (2) Every complete specification must be accompanied by a statement as to whether the applicant has or has not applied for a British patent for the invention claimed in the specification and, if he has so applied, a further statement as to whether such application has been granted, is still pending, or has been refused.

• (3) A complete specification which is accompanied by a statement that a British patent for the invention has not been applied for shall be accompanied also by a statutory declaration made by a person who is registered either in the register of patent agents kept under this Act or in the register of patent agents kept in London or in the register of clerks kept under this Act that he has made a search and investigation in the Office or in the Patent Office in London or in some other place for the time being authorised in that behalf by rules made under this Act for the purpose of ascertaining whether the invention claimed in the complete specification has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of the application and left in the Patent Office in London pursuant to an application for a patent in the late United Kingdom made during the period commencing fifty years before the application under this Act and ending on the date of the commencement of this Part of this Act and that he is satisfied as a result of such search and investigation that the said invention had not been wholly or in part claimed or described in any such specification so published and left as aforesaid.

• (4) A complete specification which is accompanied by a statement that a British patent for the invention claimed in the specification had been applied for and granted shall be accompanied by a certified copy of the complete specification on which such British patent was granted together with the prescribed proof of the acceptance of the last-mentioned specification by the Comptroller-General of the Patent Office in London.

• (5) Whenever a complete specification is accompanied by a statement that a British patent for the invention has been applied for and that such application is still pending, the applicant shall, if the complete specification left in the Patent Office in London pursuant to the application for the British patent be accepted by the Comptroller-General of the Patent Office in London, lodge a certified copy of the last-mentioned complete specification together with the prescribed proof of the acceptance of such specification by the said Comptroller-General within one month after such acceptance.

• (6) Subject to the provisions of the next following sub-section (when applicable) the controller shall not accept a provisional specification or a complete specification unless and untill the provisions of the foregoing sub-sections of this section (so far as the same are applicable) have been complied with.

• (7) Where—

• (a) a complete specification contains a statement that a British patent for the invention has been applied for and that such application is still pending, and

• (b) such application is refused,

the applicant shall give notice of such refusal to the controller and thereupon the controller shall refuse to accept the application unless and until the applicant proves—

• (i) by the prescribed evidence that such refusal was made on grounds other than that the invention claimed in the complete specification has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of the application and left in the Patent Office in London pursuant to an application for a patent in the late United Kingdom made during the period commencing fifty years before the application and ending on the date of the commencement of this Part of this Act, and

• (ii) by such statutory declaration as is mentioned in sub-section (3) of this section, that the invention has not been wholly or in part claimed in any such specification as is mentioned in the foregoing paragraph (i).

• (8) A refusal by the controller under the foregoing sub-section to accept an application shall be subject to appeal to the law officer.

20 Investigation of specifications published subsequent to application.

20.—(1) Where an application for a patent has been made and a complete specification has been left, the examiner shall, in addition to the other inquiries which he is directed to make by this Act, make a further investigation for the purpose of ascertaining whether the invention claimed in the specification has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of the application, and left pursuant to any application for a patent made in Saorstát Eireann under this Act.

• (2) If on investigation it appears that the invention has been wholly or in part claimed or described in any such specification, the applicant shall be informed thereof, and the applicant may, within such time as may be prescribed, amend his specification, and the amended specification shall be investigated in like manner as the original specification.

• (3) If the controller is satisfied that no objection exists to the specification on the ground that the invention claimed therein has been wholly or in part claimed or described in a previous specification as before mentioned, he shall, in the absence of any other lawful ground of objection, accept the specification.

• (4) If the controller is not so satisfied, he shall, unless the objection is removed by amending the specification to the satisfaction of the controller, determine whether a reference to any, and, if so, what prior specifications ought to be made in the specification by way of notice to the public:

Provided that the controller, if satisfied that the invention claimed has been wholly and specifically claimed in any specification to which the investigation has extended, may, in lieu of requiring references to be made in the applicant specification as aforesaid, refuse to grant a patent.

• (5) An appeal shall lie from the decision of the controller under this section to the law officer.

21 Investigation of specifications published previous to application.

21.—(1) In addition to the investigation under the last preceding section, the examiner shall make an investigation for the purpose of ascertaining whether the invention claimed has been wholly or in part claimed in any specification published on or after the date of the application and deposited pursuant to a prior application.

• (2) Where on such further investigation it appears that the invention claimed has been wholly or in part claimed in any such specification, the applicant shall, whether or not his specification has been accepted or a patent granted to him, be afforded such facilities as may be prescribed for amending his specification, and in the event of his failing to do so the controller shall, in accordance with such procedure as may be prescribed, determine what reference, if any, to other specifications ought to be made in his specification by way of notice to the public.

• (3) For the purposes of this section an application shall be deemed to be prior to another application if the patent applied for when granted would be of prior date to the patent granted pursuant to that other application.

• (4) An appeal shall lie from the decision of the controller under this section to the law officer.

• (5) The investigations and reports required by this and the last preceding section shall not be held in any way to guarantee the validity of any patent, and no liability shall be incurred by the Minister or the controller or any officer of the Minister or the controller by reason of or in connection with any such investigation or report or any proceedings consequent thereon.

22 Advertisement on acceptance of complete specification.

22.—On the acceptance of the complete specification the controller shall advertise the acceptance; and the application and specifications, with the drawings (if any), shall be open to public inspection.

23 Effect of acceptance of complete specification.

23.—After the acceptance of a complete specification and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the complete specification: Provided that an applicant shall not be entitled to institute any proceedings for infringement until a patent for the invention has been granted to him.

24 Opposition to grant of patent.

24.—(1) Any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the Office of opposition to the grant of the patent on any of the following grounds:—

• (a) that the applicant obtained the invention from the opponent, or from a person of whom he is the legal representative; or

• (b) that the invention was published in any complete specification, or in any provisional specification followed by a complete specification, deposited in the Patent Office in London pursuant to an application made in that Office within a period commencing fifty years before the date of the application for the patent the grant of which is being opposed and ending on the date of the commencement of this Part of this Act; or

• (c) that the invention was before the date of the application published in any complete specification, or in any provisional specification followed by a complete specification, deposited in the Office pursuant to an application made under this Act or has been made available to the public by publication before the date of the application in any document (other than any such specification as is mentioned in this clause or any British specification published before the commencement of this Part of this Act) published in Saorstát Eireann or published prior to the establishment of Saorstát Eireann in the late United Kingdom; or

• (d) that the invention has been claimed in any complete specification for a patent in Saorstát Eireann which though not published at the date of the application for the patent the grant of which is opposed was deposited pursuant to an application for a patent which is or will be of prior date to such patent; or

• (e) that the nature of the invention or the manner in which it is to be performed is not sufficiently or fairly described and ascertained in the complete specification; or

• (f) that the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification; or

• (g) that in the case of an application for a patent made under the provisions of sub-section (1) or sub-section (2) of section 12 (which relates to applications for patents in certain cases) of this Act, the invention claimed or described in the complete specification is not the same invention as the invention which was the subject of the application to the Minister for Economic Affairs of the late Provisional Government of Ireland or the Minister for Industry and Commerce of Saorstát Eireann or was the subject of the protection in the British dominion or foreign state (as the case may be); or

• (h) that in the case of an application under the provisions of this Act relating to foreign and British dominion patents the specification describes or claims an invention other than that for which protection has been applied for in the foreign state or British dominion and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the application in the foreign state or British dominion and the leaving of the application in Saorstát Eireann;

but on no other ground.

• (2) Where such notice is given the controller shall give notice of the opposition to the applicant, and shall, on the expiration of those two months, after hearing the applicant and the opponent, if desirous of being heard, decide the case.

• (3) The decision of the controller shall be subject to appeal to the law officer, who shall, if required, hear the applicant and the opponent, if the opponent is, in his opinion, a person entitled to be heard in opposition to the grant of the patent, and shall decide the case; and the law officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the law officer with the consent of the Minister for Finance may determine.

25 Grant and sealing of patent.

25.—(1) If there is no opposition, or, in case of opposition, if the determination is in favour of the grant of a patent, a patent shall, on payment of the prescribed fee, be granted to the applicant, or in the case of a joint application to the applicants jointly, and the controller shall cause the patent to be sealed with his official seal:

Provided that where—

• (a) an applicant has agreed in writing to assign a patent when granted to another party or a joint applicant and refuses to proceed with the application; or

• (b) disputes arise between joint applicants as to proceeding with an application;

the controller on proof of such agreement to his satisfaction, or if satisfied that one or more of such joint applicants ought to be allowed to proceed alone, may allow such other party or joint applicant to proceed with the application, and may grant a patent to him, so however that all parties interested shall be entitled to be heard before the controller, and an appeal shall lie from the decision of the controller under this proviso to the law officer.

• (2) A patent shall be sealed as soon as may be, and not after the expiration of eighteen months from the date of application: Provided that—

• (a) where the controller has allowed an extension of the time within which a complete specification may be left or accepted, a further extension of four months after the said eighteen months shall be allowed for the sealing of the patent;

• (b) where the sealing is delayed by an appeal to the law officer, or by opposition to the grant of the patent, the patent may be sealed at such time as the law officer or the controller as the case may be may direct;

• (c) where the patent is granted to the legal representative of an applicant who has died before the expiration of the time which would otherwise be allowed for sealing the patent, the patent may be sealed at any time within twelve months after the date of his death;

• (d) where an application for a British patent was pending when the complete specification was deposited, the controller may, without the payment of any fees, extend by such period or periods as he thinks fit the time allowed by this section for sealing the patent;

• (e) where for any reason a patent cannot be sealed within the period allowed by this section, that period may, on payment of the prescribed fee and on compliance with the prescribed conditions, be extended to such an extent as may be prescribed.

26 Abandoned or void application.

26.—Where an application for a patent has been abandoned, or become void, the specifications and drawings (if any) accompanying or left in connection with such application, shall not, save as otherwise expressly provided by this Act, at any time be open to public inspection or be published by the controller.

27 Date of patent.

27.—Except as otherwise expressly provided by this Act, a patent shall be dated and sealed as of the date of the application: Provided that no proceedings shall be taken in respect of an infringement committed before the acceptance of the complete specification.

28 Effect and form of patent.

28.—(1) Subject to the provisions of this Act every patent granted under this Act and sealed with the official seal of the controller shall operate and have effect and shall be expressed to operate and have effect—

• (a) to confer on the person to whom the same is granted his executors, administrators and assigns (in this sub-section collectively referred to as the grantee) the full, sole, and exclusive right, power and authority by himself, his agents or licensees at all times so long as the patent remains in force to make, use, exercise, and vend in Saorstát Eireann the invention in respect of which the patent is granted;

• (b) to confer on the grantee the sole right to have and enjoy the whole profit and advantage from time to time accruing by reason of the said invention during such period as the patent remains in force;

• (c) to prohibit all persons whatsoever in Saorstát Eireann while the patent remains in force from making use of or putting in practice the said invention or any part thereof, or in anywise imitating the same, or in anywise representing or pretending themselves to be the inventors of the said invention or of the said invention with any addition thereto or subtraction therefrom without the consent, licence or agreement of the grantee in writing under his hand and seal;

• (d) to make all persons who, while the patent remains in force, shall, in Saorstát Eireann, in anywise infringe any right, power, or authority expressed in the patent to be thereby conferred on the grantee or do any act, matter, or thing the doing of which is expressed in the patent to be thereby prohibited, answerable according to law to the grantee for such infringement or the doing of such act, matter, or thing.

• (2) Every patent shall be in the prescribed form and shall be granted for one invention only, but the specification may contain more than one claim; and it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.

29 Effect of existing British patents.

29.—(1) Every patent granted by the Patent Office in London before the commencement of this Part of this Act shall have and be deemed always to have had in Saorstát Eireann during the period between the 6th day of December, 1921, or the date of such patent (whichever is the later) and the commencement of this Part of this Act the same force and effect as such patent had during that period in Great Britain, but from and after the commencement of this Part of this Act every such patent shall (notwithstanding that it bears a date prior to the passing of this Act or to the commencement of this Part of this Act) be deemed to be a patent granted under this Act as of the date such patent actually bears and shall have immediately on the commencement of this Part of this Act the same force and effect in Saorstát Eireann as such patent had in Great Britain immediately before such commencement and shall thenceforth have and be subject to all privileges, liabilities and incidents conferred or imposed by this Act or otherwise by law on patents granted under this Act.

• (2) No fees shall be payable under this Act on any such patent as is mentioned in the foregoing sub-section in respect of anything done or any period of time expired before the commencement of this Part of this Act, but the like fees shall be payable on every such patent in respect of everything done and every period of time expiring after the commencement of this Part of this Act as would have been payable if such patent had been a patent granted under this Act on the date actually borne by such patent notwithstanding that such date is prior to the passing of this Act or to the commencement of this Part of this Act.

• (3) Every patent granted by the Patent Office in London after the commencement of this Part of this Act and bearing date as of a day prior to such commencement shall (notwithstanding that it bears a date prior to the passing of this Act or to the commencement of this Part of this Act) be deemed to be a patent granted under this Act as of the date such patent actually bears and accordingly every such patent shall have the like force and effect in Saorstát Eireann as it would have had if it had been granted under this Act as of the date it actually bears but with and subject to all privileges, liabilities, and incidents conferred or imposed by this Act on patents granted under this Act.

• (4) No fees shall be payable under this Act on any such patent as is mentioned in the next foregoing sub-section in respect of anything done or any period of time expired before the actual grant of the patent, but the like fees shall be payable on every such patent in respect of everything done and every period of time expiring after the actual grant of the patent as would have been payable on such patent if such patent had been a patent granted under this Act on the date borne by such patent notwithstanding that such date is prior to the passing of this Act or to the commencement of this Part of this Act.

• (5) In every case in which a complete specification has been accepted by the Comptroller-General of the Patent Office in London before the commencement of this Part of this Act (whether before or after the passing of this Act) and the patent pursuant thereto has not been sealed and the time for such sealing has not expired at the commencement of this Part of this Act, the applicant for such patent shall during the time between the date of such acceptance or the 6th day of December, 1921 (whichever date is the later) and the sealing of the patent or the expiration of the time for sealing have and be deemed always to have had the like privileges and rights in Saorstát Eireann as if a patent for the invention had been granted to him under this Act on the date of the application to the Patent Office in London for such patent notwithstanding that such last-mentioned date is prior to the passing of this Act or to the commencement of this Part of this Act, but the said applicant shall not be entitled to institute in Saorstát Eireann any proceedings for infringement until a patent which by virtue of this section is deemed to be a patent granted under this Act has been granted to him for the invention.

• (6) No fees shall be receivable in the Office in respect of any such patent as is mentioned in this section unless or until certified copies of the entries in the British register relating to the patent have been furnished to the controller for registration and a copy of the complete specification on which the British patent was granted has been lodged with the controller, but the failure to lodge such copies shall not relieve from the liability to pay any fees or from the consequences of the non-payment thereof.

• (7) The holder of a patent which by virtue of this section is deemed to be a patent granted under this Act shall not be entitled to apply for or be granted under this Act any other patent for the invention for which such first-mentioned patent was granted.

30 Fraudulent applications for patents.

30.—(1) A patent granted to the true and first inventor shall not be invalidated by an application in fraud of him, or by provisional protection obtained thereon, or by any use or publication of the invention subsequent to that fraudulent application during the period of provisional protection.

• (2) Where a patent has been revoked by the court on the ground that it has been obtained in fraud of the true and first inventor, or where the grant has been refused or revoked on the ground that the applicant or patentee obtained the invention from another person, the controller may, on the application of the true inventor made in accordance with the provisions of this Act, grant to him a patent for the whole or any part of the invention in lieu of and bearing the same date as the patent so revoked, or as would have been borne by the patent if the grant thereof had not been refused:

Provided that no action shall be brought for any infringement of the patent so granted committed before the actual date when such patent was granted.

31 Single patent for cognate inventions.

31.—(1) Where the same applicant has put in two or more provisional specifications for inventions which are cognate or modifications one of the other, and has obtained thereby concurrent provisional protection for the same, and the controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may accept one complete specification in respect of the whole of such applications and grant a single patent thereon.

• (2) Such patent shall bear the date of the earliest of such applications, but in considering the validity of the same, and in determining other questions under this Act, the court or the controller, as the case may be, shall have regard to the respective dates of the provisional specifications relating to the several matters described therein.

32 Term of patent.

32.—The term limited in every patent for the duration thereof shall, save as otherwise expressly provided by this Act, be sixteen years from its date.

33 Effect of failure to pay fees.

33.—(1) A patent shall, notwithstanding anything therein or in this Act, cease if and whenever the patentee fails to pay a prescribed fee in relation thereto within the prescribed time or, where that time is extended under this section, within such extension of that time.

• (2) The controller may on the application at any time of the patentee under a British patent which by virtue of this Act is deemed to have been granted under this Act and without the payment of any additional fee extend for any period not exceeding six months from the commencement of this Part of this Act the prescribed time for the payment of the first fee which becomes payable under this Act in respect of such British patent.

• (3) In any case not coming within the foregoing sub-section the controller shall on the application at any time of the patentee and payment by him of such additional fee as shall be prescribed extend for such period not exceeding three months as is so applied for the prescribed time for the payment of any prescribed fee in relation to any patent.

• (4) If any proceeding is taken in respect of an infringement of the patent committed after a failure to pay any fee within the prescribed time, and before any enlargement thereof, the court before which the proceeding is taken may, if it thinks fit, refuse to award any damages in respect of such infringement.

34 Extension of term of patent.

34.—(1) A patentee may, after advertising in manner provided by rules of the court his intention to do so, present a petition to the court praying that his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent:

Provided that the court may in its discretion extend such period within which such a petition may be presented.

• (2) Any person may give notice to the court of objection to the extension.

• (3) On the hearing of any petition under this section the patentee and any person who has given such notice of objection shall be made parties to the proceeding, and the controller shall be entitled to appear and be heard, and shall appear if so directed by the court.

• (4) The court, in considering its decision, shall have regard to the nature and merits of the invention in relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case.

• (5) If it appears to the court that the patentee has been inadequately remunerated by his patent, the court may by order extend the term of the patent for a further term not exceeding five years, or, in exceptional cases, ten years, or may order the grant of a new patent for such term as may be specified in the order and containing any restriction, conditions, and provisions the court may think fit.

35 Patents of addition.

35.—(1) When a patent for an invention has been applied for or granted under this Act or a patent is by virtue of this Act deemed to be a patent granted under this Act, and the applicant or the patentee, as the case may be, applies for a further patent in respect of any improvement in or modification of the invention, he may, if he thinks fit, in his application for the further patent, request that the term limited in that patent for the duration thereof be the same as that ofthe original patent or so much of that term as is unexpired.

• (2) Where an application containing such a request is made, a patent (hereinafter referred to as a patent of addition) may be granted for such term as aforesaid.

• (3) A patent of addition shall remain in force so long as the patent for the original invention remains in force, but no longer, and in respect of a patent of addition no fees shall be payable for renewal:

Provided that, if the patent for the original invention is revoked, then the patent of addition shall, if the court or controller so orders, become an independent patent, and the fees payable, and the dates when they become payable, shall be determined by its date, but its duration shall not exceed the unexpired term of the patent for the original invention.

• (4) The grant of a patent of addition shall be conclusive evidence that the invention is a proper subject for a patent of addition, and the validity of the patent shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

36 Restoration of lapsed patents.

36.—(1) Where any patent has become void owing to the failure of the patentee to pay any prescribed fee within the prescribed time, the patentee may apply to the controller in the prescribed manner for an order for the restoration of the patent.

• (2) Every such application shall contain a statement of the circumstances which have led to the omission of the payment of the prescribed fee.

• (3) If it appears from such statement that the omission was unintentional and that no undue delay has occurred in the making of the application, the controller shall advertise the application in the prescribed manner, and within such time as may be prescribed any person may give notice of opposition at the Office.

• (4) Where such notice is given the controller shall notify the applicant thereof.

• (5) After the expiration of the prescribed period the controller shall hear the case and issue an order either restoring the patent or dismissing the application: Provided that in every order under this section restoring a patent such provisions as may be prescribed shall be inserted for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent had been announced as void in the Journal.

• (6) An appeal shall lie from the decision of the controller under this section to the court.

37 Amendment of specification by controller.

37.—(1) An applicant or a patentee may at any time, by request in writing left at the Office, seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of, and the reasons for, the proposed amendment.

• (2) The request and the nature of the proposed amendment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any person may give notice at the Office of opposition to the amendment.

• (3) Where such a notice is given the controller shall give notice of the opposition to the person making the request, and shall hear and decide the case.

• (4) Where no notice of opposition is given, or the person so giving notice of opposition does not appear, the controller shall determine whether and subject to what conditions, if any, the amendment ought to be allowed.

• (5) The decision of the controller in either case shall be subject to an appeal to the law officer, who shall, if required, hear the person making the request to amend and, where notice of opposition has been given, the person giving that notice, if he is, in the opinion of the law officer, entitled to be heard in opposition to the request, and, where there is no opposition, the controller, and may make an order determining whether and subject to what conditions (if any) the amendment ought to be allowed.

• (6) No amendment shall be allowed that would make the specification, as amended, describe an invention substantially larger than or substantially different from the invention described by the specification as it stood before amendment.

• (7) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall be advertised in the prescribed manner, and shall in all courts and for all purposes be deemed to form part of the specification:

Provided that a court shall be entitled in construing a specification as amended to refer to the specification as accepted and published.

• (8) This section shall not apply when and so long as any action for infringement or proceeding before the court for the revocation of a patent is pending.

38 Amendment of specification by the court.

38.—In any action for infringement of a patent or proceedings before a court for the revocation of a patent, the court may by order allow the patentee to amend his specification by way of disclaimer, correction, or explanation in such manner, and subject to such terms as to costs, advertisements, or otherwise, as the court may think fit:

Provided that no amendment shall be so allowed that would make the specification, as amended, describe an invention substantially larger than, or substantially different from, the invention described by the specification as it stood before the amendment, and where an application for such an order is made to the court notice of the application shall be given to the controller, and the controller shall have the right to appear and be heard, and shall appear if so directed by the court.

39 Restriction on damages where specification amended.

39.—Where an amendment of a specification by way of disclaimer, correction, or explanation, has been allowed under this Act, no damages shall be given in any action in respect of the use of the invention before the date of the decision allowing the amendment, unless the patentee establishes to the satisfaction of the court that his original description was framed in good faith and with reasonable skill and knowledge.

40 Provisions as to patents indorsed “licences of right.”

40.—(1) At any time after the sealing of a patent the controller shall, if the patentee so requests, cause the patent to be indorsed with the words “licences of right,” and a corresponding entry to be made in the register, and thereupon—

• (a) any person shall at any time thereafter be entitled as of right to a licence under the patent upon such terms as, in default of agreement, may be settled by the controller on the application of either the patentee or the applicant:

Provided that any licence the terms of which are settled by agreement shall be deemed, unless otherwise expressly provided, to include the terms and conditions specified in paragraphs (c) and (d) of this sub-section as if they had been imposed by the controller thereunder in like manner as if the terms had been settled by the controller;

• (b) in settling the terms of any such licence the controller shall be guided by the following considerations—

• (i) he shall, on the one hand, endeavour to secure the widest possible user of the invention in Saorstát Eireann consistent with the patentee deriving a reasonable advantage from his patent rights,

• (ii) he shall, on the other hand, endeavour to secure to the patentee the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in Saorstát Eireann,

• (iii) he shall also endeavour to secure equality of advantage among the several licensees, and for this purpose may, on due cause being shown, reduce the royalties or other payments accruing to the patentee under any licence previously granted:

Provided that, in considering the question of equality of advantage, the controller shall take into account any work done or outlay incurred by any previous licensee with a view to testing the commercial value of the invention or to securing the working thereof on a commercial scale in Saorstát Eireann;

• (c) any such licence the terms of which are settled by the controller may be so framed as to preclude the licensee from importing into Saorstát Eireann any goods the importation of which, if made by persons other than the patentee or those claiming under him, would be an infringement of the patent, and in such a case the patentee and all licensees under the patent shall be deemed to have mutually covenanted against such importation;

• (d) every such licensee shall be entitled to call upon a patentee to take proceedings to prevent the infringement of the patent, and if the patentee refuses, or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were patentee, making the patentee a defendant. A patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings. Service on him may be effected by leaving the writ at his address for service given on the register;

• (e) if in any action for infringement of a patent so indorsed the infringing defendant is ready and willing to take a licence upon terms to be settled by the controller, no injunction against him shall be awarded, and the amount recoverable against him by way of damages (if any) shall not exceed double the amount which would have been recoverable against him as licensee if the licence had been dated prior to the earliest infringement:

Provided that this paragraph shall not apply wherethe infringement consists of the importation of infringing goods;

• (f) the renewal fees payable by the patentee of a patent so indorsed shall, as from the date of the indorsement, be one moiety only of the fees which would otherwise have been payable.

• (2) The controller shall, before acting on any request to indorse a patent made by the patentee under this section, advertise such request in the Journal, and shall satisfy himself that the patentee is not precluded by contract from making such request, and for that purpose shall require from the patentee such evidence, by statutory declaration or otherwise, as he may deem necessary:

Provided that a patentee shall not be deemed to be so precluded by reason only of his having granted a licence under the patent where the licence does not limit his right to grant other licenees.

• (3) Any person, alleging that a request under this section has been made contrary to some contract in which he is interested, may apply to the controller within the prescribed time and in the prescribed manner, and the controller, if satisfied of the truth of such allegation, shall refuse to indorse the patent pursuant to the request, or shall cause the indorsement, if already made, to be cancelled.

Any order under this sub-section shall be subject to appeal to the court.

• (4) All indorsements of patents under this section shall be entered on the register of patents and shall be published in the Journal and in such other manner as the controller may deem desirable for the purpose of bringing the invention to the notice of manufacturers.

• (5) If at any time it appears that in the case of a patent so indorsed there is no existing licence the controller may, if he thinks fit, on the application of the patentee and on payment by him of the unpaid moiety of all renewal fees which have become due since the indorsement, after due notice cancel the indorsement, and in that case the patentee's rights and liabilities shall be the same as if no such indorsement had been made.

41 Revocation of patents by court.

41.—(1) Revocation of a patent may be obtained on petition to the court.

• (2) Every ground on which a patent might formerly at common law have been repealed by scire facias shall be available by way of defence to an action of infringement and shall also be a ground of revocation under this section.

• (3) A petition for revocation of a patent may be presented—

• (a) by the law officer or any person authorised by him; or

• (b) by any person alleging—

• (i) that the patent was obtained in fraud of his rights, or of the rights of any person under or through whom he claims, or

• (ii) that he, or any person under or through whom he claims, was the true inventor of any invention included in the patent, or

• (iii) that he, or any person under or through whom he claims an interest in any trade, business, or manufacture, had publicly manufactured, used, or sold, within Saorstát Eireann, before the date of the patent, anything claimed by the patentee as his invention.

42 Revocation of patents by controller.

42.—(1) Any person who would have been entitled to oppose the grant of a patent, or is the successor in interest of a person who was so entitled, may, within one year from the grant of the patent, apply to the controller for an order revoking the patent on any one or more of the grounds on which the grant of the patent might have been opposed:

Provided that when an action for infringement or proceedings for the revocation of the patent are pending in any court, an application under this section shall not be made except with the leave of the court.

• (2) The controller shall give notice of the application to the patentee, and after hearing the parties, if desirous of being heard, may make an order revoking the patent or requiring the specification relating thereto to be amended by disclaimer, correction, or explanation, or dismissing the application; but the controller shall not make an order revoking the patent unless the circumstances are such as would have justified him in refusing to grant the patent had the proceedings been proceedings in an opposition to the grant of a patent.

• (3) A patentee may at any time by giving notice in the prescribed manner to the controller offer to surrender his patent, and the controller may, if after giving notice of the offer and hearing all parties who desire to be heard he thinks fit, accept the offer, and thereupon make an order for the revocation of the patent.

• (4) Any decision of the controller under this section shall be subject to appeal to the court.

43 Prevention of abuse of monopoly rights.

43.—(1) Any person interested may at any time apply to the controller alleging in the case of any patent that there has been an abuse of the monopoly rights thereunder and asking for relief under this section.

• (2) The monopoly rights under a patent shall be deemed to have been abused in any of the following circumstances:—

• (a) if at any time after the expiration of three years, in the case of a British patent which is by virtue of this Act deemed to have been granted under this Act, from the commencement of this Part of this Act, or in the case of any other patent, from the date of the application for the patent, the patented invention (being one capable of being worked in Saorstát Eireann) is not being worked within Saorstát Eireann on a commercial scale, and no satisfactory reason can be given for such non-working:

Provided that, if an application is presented to the controller on this ground, and the controller is of opinion that the time which has elapsed since the date of the patent has by reason of the nature of the invention or for any other cause been insufficient to enable the invention to be worked within Saorstát Eireann on a commercial scale, the controller may adjourn the application for such period as will in his opinion be sufficient for that purpose;

• (b) if the working of the invention within Saorstát Eireann on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by the patentee or persons claiming under him, or by persons directly or indirectly purchasing from him, or by other persons against whom the patentee is not taking or has not taken any proceedings for infringement;

• (c) if the demand for the patented article in Saorstát Eireann is not being met to an adequate extent and on reasonable terms, regard being had amongst other circumstances, to the potential demand that might be evoked if the patented article were sold at a lower price;

• (d) if the price at which the patented article is sold is, having regard to all the circumstances, unreasonably high in comparison with that at which the article is sold in other countries;

• (e) if, by reason of the refusal of the patentee to grant a licence or licences upon reasonable terms, the trade or industry of Saorstát Eireann or the trade of any person or class of persons trading in Saorstát Eireann, or the establishment of any new trade or industry in Saorstát Eireann is prejudiced, and it is in the public interest that a licence or licences should be granted;