LegalizePatents Act , 1964
PART I. Preliminary and General.
1 Short title and commencement.
1.—(1) This Act may be cited as the Patents Act, 1964.
(2) This Act shall come into operation on such day as the Minister may by order appoint.
2 Interpretation.
2.—In this Act, unless the context otherwise requires—
“the Act of 1927” means the Industrial and Commercial Property (Protection) Act, 1927;
“applicant”, in relation to an application, means the person making the application and includes a person in whose favour a direction has been given under section 22 of this Act, and the personal representative of a deceased applicant;
“article” includes any substance or material, and any plant, machinery or apparatus, whether affixed to land or not;
“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;
“commercially worked” 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 Controller” means the Controller of Patents, Designs and Trade Marks appointed under this Act;
“convention application” has the meaning assigned to it by subsection (3) of section 6 of this Act;
“convention country” has the meaning assigned to it by subsection (1) of section 93 of this Act;
“the Court” means the High Court;
“date of filing”, in relation to any document filed under this Act, means the date on which the document is filed or, where it is deemed by virtue of any provision of this Act or of rules made thereunder to have been filed on any different date, means the date on which it is deemed to be filed;
“exclusive licence” means a licence from a patentee which confers on the licensee, or on the licensee and persons authorised by him, to the exclusion of all other persons (including the patentee), any right in respect of the invention, and “exclusive licensee” shall be construed accordingly;
“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 and also any new method or process of testing applicable to the improvement or control of manufacture;
“the Journal” means the journal issued by the Controller pursuant to section 81 of this Act;
“the Minister” means the Minister for Industry and Commerce;
“the Office” means the Patents Office established by the Act of 1927 and continued in being by section 77 of this Act;
“patent” means letters patent for an invention;
“patent of addition” means a patent granted in accordance with section 28 of this Act;
“patentee” means the person or persons for the time being entered on the register of patents as grantee or proprietor of the patent;
“prescribed” means, in the case of proceedings before the Court, prescribed by rules of court, and, in any other case, prescribed by rules made under this Act;
“priority date” has the meaning assigned to it by section 10 of this Act;
“published” means made available to the public by the written or spoken word or by public use, or in any other way.
3 Orders and rules.
3.—(1) Where a power to make orders or rules is conferred by any provision of 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 provision relates; and different provisions may be made by any such orders or rules as respects different classes of cases to which the orders or rules apply.
(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 subsequent twenty-one days on which that 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) Every order or rule made under this Act shall be advertised twice in the Journal.
4 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.
5 Transitional provisions and repeals.
5.—(1) The transitional provisions contained in the Second Schedule to this Act shall have effect for the purposes of this Act.
(2) Subject to the said transitional provisions, the enactments specified in the First Schedule to this Act are hereby repealed to the extent specified in the third column of that Schedule.
PART II. Application, Investigation, Opposition, etc.
6 Persons entitled to apply for patent.
6.—(1) An application for a patent may be made by any person who claims—
(a) to be the true and first inventor of the invention to which the application relates, or
(b) that the true and first inventor of the invention to which the application relates has assigned to him the right to make the application,
and may be made either alone or jointly with another person.
(2) Notwithstanding the provisions of subsection (1) of this section, application for a patent may be made by a person who has applied in a convention country for protection for the invention to which the application for the patent relates or by a person to whom such person has assigned the right to make the application for the patent.
(3) An application for a patent under subsection (2) of this section (in this Act referred to as a convention application) shall be made during such period (not being less than twelve months) as may be prescribed commencing on the date of the relevant application for protection or, in the case of more than one application, the date of the first such application.
(4) An application for a patent may be made by the personal representative of a person who, immediately before his death was entitled to make such an application.
7 Application for patent.
7.—(1) An application for a patent shall be made in the prescribed form and shall be filed at the Office in the prescribed manner.
(2) If the application (not being a convention application) is made by virtue of an assignment of a right to apply for a patent, there shall be furnished with the application or within such period after the filing of the application as may be prescribed a declaration signed by the person claiming to be the true and first inventor or by the personal representative of such person stating that he assents to the making of the application.
(3) An application (other than a convention application) shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor, and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes him to be the true and first inventor.
(4) A convention application shall specify the date on which and the convention country in which the application for protection for the invention to which the convention application relates, or the first application for protection was made, and shall state that no application for protection has been made in a convention country in respect of that invention before that date by the applicant or any person from whom he derives title.
(5) Where applications for protection have been made in one or more convention countries in respect of two or more inventions that are cognate or of which one is a modification of another, a single convention application may, subject to the provisions of section 9 of this Act, be made in respect of those inventions at any time within the period prescribed under subsection (3) of section 6 of this Act commencing on the date of the first of the said applications for protection:
Provided that the fee payable on the making of any such application shall be the same as if separate applications had been made in respect of each of the said inventions, and the requirements of the last foregoing subsection shall in the case of any such application apply separately to the applications for protection in respect of each of the said inventions.
(6) Without prejudice to the provisions of subsection (4) of this section, every application for a patent shall give such information as may be prescribed.
8 Complete and provisional specifications,
8.—(1) Every application for a patent (other than a convention application) shall be accompanied by either a complete specification or a provisional specification; and every convention application shall be accompanied by a complete specification.
(2) Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application and if the complete specification is not so filed the application shall be deemed to be abandoned:
Provided that the complete specification may be filed at any time after twelve months but within fifteen months from the date aforesaid if a request to that effect is made to the Controller and the prescribed fee paid on or before the date on which the specification is filed.
(3) Where two or more applications accompanied by provisional specifications have been filed in respect of inventions which are cognate or of which one is a modification of another, a single complete specification may, subject to the provisions of this and the next following section, be filed in pursuance of those applications, or, if more than one complete specification has been filed, may with the leave of the Controller be proceeded with in respect of those applications.
(4) Where an application for a patent (not being a convention application) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time before the acceptance of the specification, direct that it shall be treated for the purposes of this Act as a provisional specification, and proceed with the application accordingly.
(5) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under the last foregoing subsection as a provisional specification, the Controller may, if the applicant so requests at any time before the acceptance of the complete specification, cancel the provisional specification and post-date the application to the date of filing of the complete specification.
(6) Where a complete specification is filed in pursuance of an application for a patent, the applicant shall furnish, within the time prescribed, such evidence as may be prescribed of—
(a) the result of any investigation made for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification has been published before the date of filing of the complete specification in a specification filed in any of such patent offices outside the State as may be prescribed, or
(b) the acceptance by any of such patent offices outside the State as may be prescribed of an application for a patent for the invention aforesaid.
9 Contents of specification.
9.—(1) Every specification, whether complete or provisional, shall describe the invention, and shall begin with a title indicating the subject to which the invention relates.
(2) Subject to any rules made by the Minister under this Act, drawings may, and shall if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional, and any drawings so supplied shall, unless the Controller otherwise directs, be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.
(3) Every complete specification—
(a) shall particularly describe the invention and the method by which it is to be performed,
(b) shall disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection, and
(c) shall end with a claim or claims defining the scope of the invention claimed.
(4) The claim or claims of a complete specification must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification.
(5) Rules made by the Minister under this Act may require that in such cases as may be prescribed by the rules, a declaration as to the inventorship of the invention, in such form as may be so prescribed, shall be furnished with the complete specification or within such period as may be so prescribed after the filing of that specification.
(6) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification, or filed with a convention application, may include claims in respect of developments of or additions to the invention which was described in the provisional specification or, as the case may be, the invention in respect of which the application for protection was made in a convention country, being developments or additions in respect ofwhich the applicant would be entitled under the provisions of section 6 of this Act to make a separate application for a patent.
(7) Where a complete specification claims a new substance, the claim shall be construed as not extending to that substance when found in nature.
10 Priority dates in relation to specifications.
10.—(1) (a) Every claim of a complete specification shall have effect from the date provided for by this section in relation to that claim and in this Act a reference to a priority date is, unless the context otherwise requires, a reference to such date.
(b) A patent shall not be invalidated by reason only of the publication or use of the invention, so far as claimed in any claim of the complete specification, on or after the priority date of that claim, or by the grant of another patent upon a specification claiming the same invention in a claim of the same or later priority date.
(2) Where the complete specification is filed in pursuance of a single application accompanied by a provisional specification or by a specification which is treated by virtue of a direction under subsection (4) of section 8 of this Act as a provisional specification, and the claim is fairly based on the matter disclosed in that specification, the priority date of that claim shall be the date of filing of the application.
(3) Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by such specifications as are mentioned in the last foregoing subsection, and the claim is fairly based on the matter disclosed in one of those specifications, the priority date of that claim shall be the date of filing of the application accompanied by that specification.
(4) Where the complete specification is filed in pursuance of a convention application and the claim is fairly based on the matter disclosed in the application for protection in a convention country or, where the convention application is founded upon more than one such application for protection, in one of those applications, the priority date of that claim shall be the date of the relevant application for protection.
(5) Where, under the foregoing provisions of this section, any claim of a complete specification would, but for this provision, have two or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.
(6) In any case to which subsections (2) to (5) of this section do not apply, the priority date of a claim shall be the date of filing of the complete specification.
(7) The priority date of any matter disclosed in the descriptive part of a specification shall be the date on which that matter was first disclosed in pursuance of the application for a patent of which the specification forms a part or (in the case of a convention application) was first disclosed in the relevant application for protection in a convention country.
11 Examination of application.
11.—(1) When the complete specification has been filed in respect of an application for a patent, the application and specification or specifications shall be referred by the Controller to an officer of the Controller (in this Act referred to as an examiner) for examination together with any information furnished under subsection (6) of section 7 of this Act and any evidence furnished under subsection (6) of section 8 of this Act.
(2) If the examiner reports that the application or any specification filed in pursuance thereof does not comply with the requirements of this Act or of any rules made by the Minister thereunder, or that there is lawful ground of objection to the grant of a patent in pursuance of the application, the Controller may either—
(a) refuse to proceed with the application, or
(b) require the application or any such specification as aforesaid to be amended before he proceeds with the application.
(3) At any time after an application has been filed under this Act and before acceptance of the complete specification, the Controller may, at the request of the applicant and upon payment of the prescribed fee, direct that the application shall be post-dated to such date as may be specified in the request:
Provided that,
(a) no application shall be post-dated under this subsection to a date later than six months from the date on which it was actually made or would, but for this subsection be deemed to have been made, and
(b) a convention application shall not be post-dated under this subsection to a date later than the last date on which, under the foregoing provisions of this Act, the application could have been made.
(4) Where an application or specification filed under this Act is amended before acceptance of the complete specification, the Controller may direct that the application or specification shall be post-dated to the date on which it is amended or, if it has been returned to the applicant, to the date on which it is refiled.
(5) Rules made by the Minister under this Act may make provision for securing that where, at any time after an application or specification has been filed under this Act and before acceptance of the complete specification, a fresh application or specification is filed in respect of any part of the subject matter of the first-mentioned application or specification, the Controller may direct that the fresh application or specification shall be ante-dated to a date not earlier than the date of filing of the first-mentioned application or specification.
(6) An appeal shall lie from any decision of the Controller under subsection (2) or subsection (4) of this section.
12 Search for anticipation by previous publication.
12.—(1) Subject to the provisions of the last foregoing section of this Act, an examiner to whom an application for a patent is referred under this Act shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published before the date of filing of the applicant's complete specification in any specification filed in pursuance of an application for a patent made in the State.
(2) The examiner shall, in addition, make such investigation as the Controller may direct for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been published in the State before the date of filing of the applicant's complete specification in any other document.
(3) The examiner shall, in addition, consider any information furnished in pursuance of subsection (6) of section 7 of this Act and any evidence furnished in pursuance of subsection (6) of section 8 of this Act.
(4) If it appears to the Controller that the invention, so far as claimed in any claim of the complete specification, has been published as described in subsection (1) or subsection (2) of this section, or if he is not satisfied by the information and evidence referred to in subsection (3) of this section that the invention so claimed has not been published before the date of the complete specification in any specification filed in an office prescribed under paragraph (a) of subsection (6) of section 8 of this Act, he may refuse to accept the complete specification unless the applicant either—
(a) shows to the satisfaction of the Controller that the priority date of the claim of his complete specification is not later than the date on which any relevant document or prescribed specification, as the case may be, was published,
(b) furnishes further evidence to the satisfaction of the Controller in pursuance of subsection (6) of section 8 of this Act, or
(c) amends his complete specification to the satisfaction of the Controller.
(5) An appeal shall lie from any decision of the Controller under this section.
13 Further search for anticipation.
13.—(1) In addition to the investigation required by the last foregoing section, the examiner shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, is claimed in, or included in matter disclosed in the descriptive part of, any other specification published on or after the date of filing of the applicant's complete specification, being a specification filed—
(a) in pursuance of an application for a patent made in the State and dated before that date, or
(b) in pursuance of a convention application founded upon an application for protection made in a convention country before that date.
(2) If it appears to the Controller that the said invention is claimed in, or included in matter disclosed in the descriptive part of, any such other specification as aforesaid, he may, subject to the provisions of this section, direct that a reference to that other specification shall be inserted by way of notice to the public in the applicant's complete specification unless within such time as may be prescribed either—
(a) the applicant shows to the satisfaction of the Controller that the priority date of his claim is not later than the priority date of the claim or the matter disclosed in the descriptive part of the said other specification, or
(b) the complete specification is amended to the satisfaction of the Controller.
(3) If in consequence of the investigation under section 12 of this Act or otherwise it appears to the Controller—
(a) that the invention, so far as claimed in any claim of the applicant's complete specification, has been claimed in, or included in matter disclosed in the descriptive part of, any such specification as is mentioned in subsection (1) of that section, and
(b) that the other specification was published on or after the priority date of the applicant's claim,
then unless it has been shown to the satisfaction of the Controller under that section that the priority date of the applicant's claim is not later than the priority date of the relevant claim of, or the matter disclosed in the descriptive part of, that other specification, the provisions of subsection (2) of this section shall apply as they apply in relation to a specification published on or after the date of filing of the applicant's complete specification.
(4) An appeal shall lie from any direction of the Controller under this section.
14 Reference in case of potential infringement.
14.—(1) If, in consequence of the investigations required by the foregoing provisions of this Act or of proceedings under section 19 or section 35 of this Act, it appears to the Controller that an invention in respect of which application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant's complete specification by way of notice to the public unless within such time as may be prescribed either—
(a) the applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent, or
(b) the complete specification is amended to the satisfaction of the Controller.
(2) Where, after a reference to another patent has been inserted in a complete specification in pursuance of a direction under the foregoing subsection—
(a) that other patent is revoked or otherwise ceases to be in force,
(b) the specification of that other patent is amended by the deletion of the relevant claim, or
(c) it is found, in proceedings before the Court or the Controller, that the relevant claim of that other patent is invalid or is not infringed by any working of the applicant's invention,
the Controller may, on the application of the applicant, delete the reference to that other patent.
(3) An appeal shall lie from any decision or direction of the Controller under this section.
15 Refusal of application in certain cases.
15.—(1) If it appears to the Controller in the case of any application for a patent—
(a) that it claims as an invention anything obviously contrary to well-established natural laws,
(b) that the use of the invention in respect of which the application is made would be contrary to public order or morality, or
(c) that it claims as an invention a substance capable of being used as food or medicine which is a mixture of known ingredients possessing only the aggregate of the known properties of the ingredients, or that it claims as an invention a process producing such a substance by mere admixture,
he may refuse the application.
(2) If it appears to the Controller that any invention in respect of which an application for a patent is made might be used in any manner contrary to law, he may insert in the complete specification such disclaimer in respect of that use of the invention, or such other reference to the illegality thereof, as he thinks fit.
(3) An appeal shall lie from any decision of the Controller under this section.
16 Supplementary provisions as to searches, etc.
16.—(1) The powers of the Controller under section 13 or section 14 of this Act may be exercised either before or after the complete specification has been accepted or a patent granted to the applicant, and references in those sections to the applicant shall accordingly be construed as including references to the patentee.
(2) Where a complete specification is amended under the foregoing provisions of this Act before it has been accepted, the amended specification shall be examined and investigated in like manner as the original specification.
(3) The examination and investigations required by the foregoing provisions of this Act shall not be deemed to warrant the validity of any patent, and no liability shall be incurred by the Minister or Controller or any officer of the Minister or Controller by reason of or in connection with any such examination or investigation or any report or other proceedings consequent thereon.
17 Time for putting application in order for acceptance.
17.—(1) An application for a patent shall be void unless within such period, beginning with the date of filing of the complete specification, as may be prescribed, or within such longer period as may be allowed under the following provisions of this section or under rules made under this Act, the applicant has complied with all requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application, and where the application or any specification or, in the case of a convention application, any document filed as part of the application, has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with the said requirements unless and until he has refiled it.
(2) The period allowed by subsection (1) of this section shall be extended to such period, ending not later than three months after the date on which the period allowed under that subsection or that period as extended under subsection (3) of this section or under rules made under this Act would otherwise have expired, as may be specified in a notice given by the applicant to the Controller, if the notice is given and the prescribed fee paid before the expiration of the period so specified.
(3) If at the expiration of the period allowed under the foregoing provisions of this section an appeal is pending under any of the provisions of this Act in respect of the application (or, in the case of an application for a patent of addition, either in respect of that application or in respect of the application for the patent for the main invention) or the time within which such an appeal could be brought (apart from any future extension of time thereunder) has not expired, then—
(a) where such an appeal is pending, or is brought within the time aforesaid or before the expiration of any extension of that time granted (in the case of a first extension) on an application made within that time or (in the case of a subsequent extension) on an application made before the expiration of the last previous extension, the said period shall be extended until such date as the Court may determine,
(b) where no such appeal is pending or is so brought, the said period shall continue until the end of the time aforesaid, or if any extension of that time is granted as aforesaid, until the expiration of the extension or last extension so granted.
18 Acceptance and publication of complete specification.
18.—(1) Subject to the provisions of the last foregoing section, the complete specification filed in pursuance of an application for a patent may be accepted by the Controller at any time after the applicant has complied with the requirements mentioned in subsection (1) of that section, and if not so accepted within the period allowed under that section for compliance with those requirements, shall be accepted as soon as may be thereafter:
Provided that the applicant may give notice to the Controller requesting him to postpone acceptance until such date, not being later than fifteen months from the date of filing of the complete specification, as may be specified in the notice; and if such notice is given and, where the notice requests a postponement to a date later than twelve months from the date aforesaid, the prescribed fee is paid, the Controller may postpone acceptance accordingly.
(2) On the acceptance of a complete specification the Controller shall give notice to the applicant, and shall advertise in the Journal the fact that the specification has been accepted and the date on which the application and the specification or specifications filed in pursuance thereof will be open to public inspection.
(3) Any reference in this Act to the date of the publication of a complete specification shall be construed as a reference to the date advertised as aforesaid.
(4) After the date of the publication of a complete specification and until the sealing of a patent in respect thereof, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the publication of the complete specification:
Provided that an applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.
19 Opposition to grant of patent.
19.—(1) At any time within three months from the date of the publication of a complete specification under this Act, any person interested may give notice to the Controller of opposition to the grant of the patent on any of the following grounds—
(a) that the applicant for the patent, or the person described in the application as the true and first inventor, obtained the invention or any part thereof from him, or from a person of whom he is the personal representative,
(b) that the invention, so far as claimed in any claim of the complete specification, has been published in the State, before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent made in the State,
(ii) in any other document,
(c) that the invention, so far as claimed in any claim of the complete specification, is claimed in, or included in matter disclosed in the descriptive part of, another specification published on or after the priority date of the applicant's claim and filed in pursuance of an application for a patent in the State, the priority date of the relevant claim or the matter disclosed in the descriptive part of the other specification being earlier than that of the applicant's claim,
(d) that the invention, so far as claimed in any claim of the complete specification, was used in the State before the priority date of that claim,
(e) that the invention, so far as claimed in any claim of the complete specification, is obvious and clearly does not involve any inventive step having regard to any matter published in the manner specified in paragraph (b) of this subsection, any matter claimed or disclosed in the manner specified in paragraph (c) of this subsection or what was used in the State before the priority date of the applicant's claim,
(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act,
(g) that the complete specification does not sufficiently and fairly describe the invention or the method by which it is to be performed,
(h) that, in the case of a convention application, the application was not made within the period prescribed under subsection (3) of section 6 of this Act from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title,
but on no other ground.
(2) Where any such notice is given, the Controller shall give notice of the opposition to the applicant, and shall give to the applicant and the opponent an opportunity to be heard before he decides on the case.
(3) For the purposes of paragraph (d) or paragraph (e) of subsection (1) of this section, no account shall be taken of any secret use.
(4) An appeal shall lie from any decision of the Controller under this section.
20 Refusal of patent without opposition.
20.—(1) If at any time after the acceptance of the complete specification filed in pursuance of an application for a patent and before the grant of a patent thereon it comes to the notice of the Controller, otherwise than in consequence of proceedings in opposition to the grant under the last foregoing section, that the invention, so far as claimed in any claim of the complete specification, has been published in the State before the priority date of the claim—
(a) in any specification filed in pursuance of an application for a patent in the State, or
(b) in any other document,
the Controller may refuse to grant the patent unless within such time as may be prescribed the complete specification is amended to his satisfaction.
(2) An appeal shall lie from any decision of the Controller under this section.
21 Mention of inventor as such in patent.
21.—(1) If the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section—
(a) that the person in respect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention, and
(b) that the application for the patent is a direct consequence of his being the inventor,
the Controller shall, subject to the provisions of this section, cause him to be mentioned as inventor in any patent granted in pursuance of the application, in the complete specification, and in the register of patents:
Provided that the mention of any person as inventor under this section shall not confer or derogate from any rights under the patent.
(2) For the purposes of this section the actual deviser of an invention or a part of an invention shall be deemed to be the inventor, notwithstanding that any other person is for any of the other purposes of this Act treated as the true and first inventor, and no person shall be deemed to be the inventor of an invention or a part of an invention by reason only that it was imported by him into the State.
(3) A request that any person shall be mentioned as aforesaid may be made in the prescribed manner by the applicant for the patent or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person.
(4) If any person (other than a person in respect of whom a request in relation to the application in question has been made under the last foregoing subsection) desires to be mentioned as aforesaid, he may make a claim in the prescribed manner in that behalf.
(5) A request or claim under the foregoing provisions of this section must be made not later than two months after the date of the publication of the complete specification, or within such further period (not exceeding one month) as the Controller may, on an application made to him in that behalf before the expiration of the said period of two months and subject to payment of the prescribed fee, allow.
(6) No request or claim under the foregoing provisions of this section shall be entertained if it appears to the Controller that the request or claim is based upon facts which, if proved in the case of an opposition under the provisions of paragraph (a) of subsection (1) of section 19 of this Act by the person in respect of or by whom the request or claim is made, would have entitled him to relief under that section.
(7) Subject to the provisions of the last foregoing subsection, where a claim is made under subsection (4) of this section, the Controller shall give notice of the claim to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested, and before deciding upon any request or claim made under subsection (3) or subsection (4) of this section, the Controller shall, if required, hear the person in respect of or by whom the request or claim is made, and in the case of a claim under the said subsection (4), any person to whom notice of the claim has been given as aforesaid.
(8) Where any person has been mentioned as inventor in pursuance of this section, any other person who alleges that he ought not to have been so mentioned may at any time apply to the Controller for a certificate to that effect, and the Controller may, after hearing, if required, any person whom he may consider to be interested, issue such a certificate, and if he does so, he shall rectify the specification and the register accordingly.
(9) An appeal shall lie from any decision of the Controller under this section.
22 Substitution of applicants, etc.
22.—(1) If the Controller is satisfied, on a claim made in the prescribed manner at any time before a patent has been granted, that by virtue of any assignment or agreement made by the applicant or one of the applicants for the patent, or by operation of law, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Controller may, subject to the provisions of this section, direct that the application shall proceed in the name of the claimant or in the names of the claimant and the applicant or the other joint applicant or applicants, according as the case may require.
(2) No such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of two or more joint applicants for a patent except with the consent of the other joint applicant or applicants.
(3) No such direction as aforesaid shall be given by virtue of any assignment or agreement for the assignment of the benefit of an invention unless either—
(a) the invention is identified therein by reference to the number of the application for the patent,
(b) there is produced to the Controller an acknowledgment by the person by whom the assignment or agreement was made that the assignment or agreement relates to the invention in respect of which that application is made, or
(c) the rights of the claimant in respect of the invention have been finally established by a decision of any court or by a determination of the Controller under the following provisions of this Act.
(4) Where one of two or more joint applicants for a patent dies at any time before the patent has been granted, the Controller may, upon a request in that behalf made by the survivor or survivors, and with the consent of the personal representative of the deceased, direct that the application shall proceed in the name of the survivor or survivors alone.
(5) If any dispute arises between joint applicants for a patent as to whether or the manner in which the application should be proceeded with, the Controller may, upon application made to him in the prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be heard, give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which it shall be proceeded with, or for both those purposes, according as the case may require.
(6) An appeal shall lie from any decision of the Controller under this section.
PART III. Grant, Restoration, Revocation and Surrender, etc., of Patent.
23 Grant and sealing of patent.
23.—(1) Subject to the provisions of this Act with respect to opposition, and to any other power of the Controller to refuse the grant, a patent sealed with the official seal of the Controller shall, if the prescribed request is made within the time allowed under this section, be granted to the applicant or applicants within that time or as soon as may be thereafter; and the date on which the patent is sealed shall be entered in the register of patents.
(2) Subject to the following provisions of this Act with respect to patents of addition, a request under this section for the sealing of a patent shall be made not later than the expiration of four months from the date of the publication of the complete specification:
Provided that—
(a) where at the expiration of the said four months any proceeding in relation to the application for the patent is pending in any court or before the Controller, the request may be made within the prescribed period after the final determination of that proceeding;
(b) where the applicant or one of the applicants has died before the expiration of the time within which under the provisions of this subsection the request could otherwise be made, the said request may be made at any time within twelve months after the date of the death or at such later time as the Controller may allow.
(3) The period within which under the last foregoing subsection a request for the sealing of a patent may be made may from time to time be extended by the Controller to such longer period as may be specified in an application made to him in that behalf, if the application is made and the prescribed fee paid within that longer period:
Provided that the first-mentioned period shall not be extended under this subsection by more than six months or such shorter period as may be prescribed.
(4) For the purposes of this section a proceeding shall be deemed to be pending so long as the time for any appeal therein (apart from any future extension of that time) has not expired, and a proceeding shall be deemed to be finally determined when the time for any appeal therein (apart from any such extension) has expired without the appeal being brought.
24 Amendment of patent granted to deceased applicant.
24.—Where at any time after a patent has been sealed in pursuance of an application under this Act, the Controller is satisfied that the person to whom the patent was granted had died, or (in the case of a body corporate) had ceased to exist, before the patent was sealed, he may amend the patent by substituting for the name of that person the name of the person to whom the patent ought to have been granted; and the patent shall have effect, and shall be deemed always to have had effect, accordingly.
25 Effect and form of patent.
25.—(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 subsection 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 the State 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 the State 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 the State 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.
26 Date and term of patent.
26.—(1) Every patent shall be dated with the date of filing of the complete specification :
Provided that no proceeding shall be taken in respect of an infringement committed before the date of the publication of the complete specification.
(2) The date of every patent shall be entered in the register of patents.
(3) Except as otherwise expressly provided by this Act, the term of every patent shall be sixteen years from the date of the patent.
(4) A patent shall cease to have effect, notwithstanding anything therein or in this Act, on the expiration of the period prescribed for the payment of any renewal fee if that fee is not paid within the prescribed period or within that period as extended under this section.
(5) The period prescribed for the payment of any renewal fee shall be extended to such period, not being more than six months longer than the prescribed period, as may be specified in a request made to the Controller if the request is made and the renewal fee and the prescribed additional fee paid before the expiration of the period so specified.
27 Extension of term of patent.
27.—(1) A patentee may, after advertising in manner provided by rules of court his intention to do so, present a petition to the Court or the Controller praying that his patent may be extended for a further term.
(2) A petition under this section shall be presented at least six months before the time limited for the expiration of the patent:
Provided that the period within which a petition under this section may be presented may, at the discretion of the Court or the Controller, be extended by the Court or the Controller, as the case may be.
(3) Any person may give notice to the Court or the Controller, as the case may be, of objection to the extension.
(4) On the hearing of any petition under this section the patentee and any person who has given notice of objection shall be made parties to the proceeding, and, if the petition is presented to the Court, the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court.
(5) The Court or the Controller, in making a 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.
(6) If it appears to the Court or the Controller that the patentee has been inadequately remunerated by his patent, the Court or the Controller, as the case may be, 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 or the Controller, as the case may be, may think fit.
(7) The Controller may, at any stage of the proceedings before him under this section, refer the petition to the Court and thereupon the petition shall be deemed to have been presented to the Court by the patentee of the invention to which it refers under subsection (1) of this section.
(8) An appeal shall lie from any decision of the Controller under this section.
28 Patents of addition.
28.—(1) Subject to the provisions of this section, where application is made for a patent in respect of any improvement in or modification of an invention (in this Act referred to as the main invention) and the applicant also applies or has applied for a patent for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant the patent for the improvement or modification as a patent of addition.
(2) Subject to the provisions of this section, where an invention, being an improvement in or modification of another invention, is the subject of an independent patent and the patentee in respect of that patent is also the patentee in respect of the patent for the main invention the Controller may, if the patentee so requests, by order revoke the patent for the improvement or modification and grant to the patentee a patent of addition in respect thereof, bearing the same date as the date of the patent so revoked.
(3) A patent shall not be granted as a patent of addition unless the date of filing of the complete specification was the same as or later than the date of filing of the complete specification in respect of the main invention.
(4) A patent of addition shall not be sealed before the sealing of the patent for the main invention; and if the period within which, but for this provision, a request for the sealing of a patent of addition could be made under section 23 of this Act expires before the period within which a request for the sealing of the patent for the main invention may be so made, the request for the sealing of the patent of addition may be made at any time within the last-mentioned period.
(5) A patent of addition shall be granted for a term equal to that of the patent for the main invention, or so much thereof as is unexpired, and shall remain in force during that term or until the previous cesser of the patent for the main invention and no longer:
Provided that—
(a) if the term of the patent for the main invention is extended under the last foregoing section of this Act, the term of the patent of addition may also be extended accordingly; and
(b) if the patent for the main invention is revoked under this Act, the Court or Controller, as the case may be, may order that the patent of addition shall become an independent patent for the remainder of the term of the patent for the main invention, and thereupon the patent shall continue in force as an independent patent accordingly.
(6) No renewal fees shall be payable in respect of a patent of addition; but, if any such patent becomes an independent patent by virtue of an order under the last foregoing subsection, the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.
(7) An appeal shall lie from any decision of the Controller under this section.
29 Restoration of lapsed patents.
29.—(1) Where a patent has ceased to have effect by reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 26 of this Act, and the Controller is satisfied, upon application made within three years from the date on which the patent ceased to have effect, that the failure was unintentional and that no undue delay has occurred in the making or prosecution of the application, he shall by order restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent.
(2) An application under this section may be made by the person who was the patentee or by his personal representative; and where the patent was held by two or more persons jointly, the application may, with the leave of the Controller, be made by one or more of them without joining the others.
(3) An application under this section shall contain a statement (to be verified in such manner as may be prescribed) fully setting out the circumstances which led to the failure to pay the renewal fee; and the Controller may require from the applicant such further evidence as he may think necessary.
(4) If after hearing the applicant (if the applicant so requires or the Controller thinks fit) the Controller is satisfied that a prima facie case has been made out for an order under this section, he shall advertise the application in the Journal; and within the prescribed period any person may give notice to the Controller of opposition thereto on either or both of the following grounds, that is to say:—
(a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application.
(5) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(6) If no notice of opposition is given within the period aforesaid or if, in the case of opposition, the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, make the order in accordance with the application.
(7) An order under this section for the restoration of a patent—
(a) may be made subject to such conditions as the Controller thinks fit, including in particular a condition requiring the registration in the register of patents of any matter in respect of which the provisions of this Act as to entries in that register have not been complied with; and
(b) shall be subject to such provision as may be prescribed for the protection of persons who may have begun to avail themselves of the patented invention between the date when the patent ceased to have effect and the date of the application under this section;
and if any condition of an order under this section is not complied with by the patentee, the Controller may, after giving to the patentee an opportunity to be heard, revoke the order and give such directions consequential on the revocation as he thinks fit.
(8) An appeal shall lie from any decision of the Controller under this section.
30 Restoration of lapsed applications for patents.
30.—(1) Where a patent has not been sealed by reason only that the prescribed request was not made within the time allowed for that purpose by or under section 23 of this Act, then if the Controller is satisfied, upon application made within six months after the expiration of that time by the applicant for the patent, that the failure to make the request was unintentional, he may order the patent to be sealed notwithstanding that the prescribed request was not made as aforesaid.
(2) An application under this section shall contain a statement (to be verified in such manner as may be prescribed) fully setting out the circumstances which led to the failure to make the prescribed request; and the Controller may require from the applicant such further evidence as he may think necessary.
(3) If after hearing the applicant (if the applicant so requires or the Controller thinks fit) the Controller is satisfied that a prima facie case has been made out for an order under this section, he shall advertise the application in the Journal; and within the prescribed period any person may give notice to the Controller of opposition thereto on the ground that the failure to make the prescribed request was not unintentional.
(4) If notice of opposition is given within the period aforesaid, the Controller shall notify the applicant and shall give to him and to the opponent an opportunity to be heard before he decides the case.
(5) If no notice of opposition is given within the period aforesaid, or if in the case of opposition the decision of the Controller is in favour of the applicant, the Controller shall, upon payment of the fee prescribed in respect of the making of the request for sealing and of such additional fee as may be prescribed, make the order in accordance with the application.
(6) An order under this section for the sealing of a patent shall be subject to such provision as may be prescribed for the protection of persons who may have begun to avail themselves of the invention between the date when the time allowed by or under section 23 of this Act for making the prescribed request expired and the date of the application under this section.
(7) An appeal shall lie from any decision of the Controller under this section.
31 Amendment of specification with leave of Controller.
31.—(1) Subject to the provisions of section 33 of this Act, the Controller may, upon application made under this section by a patentee, or by an applicant for a patent at any time after the acceptance of the complete specification, allow the complete specification to be amended subject to such conditions, if any, as the Controller thinks fit:
Provided that the Controller shall not allow a specification to be amended under this section upon an application made while any action before the Court for infringement of the patent or any proceeding before the Court for the revocation of the patent is pending.
(2) Every application for leave to amend a specification under this section shall state the nature of the proposed amendment and shall give full particulars of the reasons for which the application is made.
(3) Any application for leave to amend a specification under this section, and the nature of the proposed amendment, shall be advertised in the prescribed manner:
Provided that where application is made before the publication of the complete specification, the Controller may, if he thinks fit, dispense with advertisement under this subsection or direct that advertisement shall be postponed until the complete specification is published.
(4) Within the prescribed period after the advertisement of an application under this section, any person may give notice to the Controller of opposition thereto; and where such a notice is given within the period aforesaid, the Controller shall notify the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case.
(5) An appeal shall lie from any decision of the Controller under this section.
(6) This section shall not apply in relation to any amendment of a specification effected in proceedings in opposition to the grant of a patent or in pursuance of any provision of this Act authorising the Controller to direct a reference to another specification or patent to be inserted, or to refuse to grant a patent, or to revoke a patent, unless the specification is amended to his satisfaction.
32 Amendment of specification with leave of the Court.
32.—(1) In any action for infringement of a patent or any proceeding before the Court for the revocation of a patent the Court may, subject to the provisions of the next following section, by order allow the patentee to amend his complete specification in such manner, and subject to such terms as to costs, advertisements or otherwise, as the Court may think fit; and if in any such proceedings for revocation the Court decides that the patent is invalid, the Court may allow the specification to be amended under this section instead of revoking the patent.
(2) Where an application for an order under this section is made to the Court, the applicant shall give notice of the application to the Controller, and the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court.
33 Supplementary provisions as to amendment of specification.
33.—(1) After the acceptance of a complete specification, no amendment thereof shall be effected except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
(2) Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approved by the Controller or the Court under this Act, the right of the patentee or applicant to make the amendment shall not be called in question except on the ground of fraud; and the amendment shall in all courts and for all purposes be deemed to form part of the specification:
Provided that in construing the specification as amended reference may be made to the specification as originally published.
(3) Where, after the date of the publication of a complete specification, any amendment of the specification is allowed or approved as aforesaid, the fact that the specification has been amended shall be advertised in the Journal.
34 Revocation of patent by Court.
34.—(1) Subject to the provisions of this Act, a patent may, on the petition of the Attorney General or any person authorised by him, or of any person interested, be revoked by the Court on any of the following grounds, that is to say—
(a) that the invention, so far as claimed in any claim of the complete specification, was claimed in, or included in matter disclosed in the descriptive part of, another specification published on or after the priority date of the claim and filed in pursuance of an application for a patent in the State, the priority date of the relevant claim or of the matter disclosed in the descriptive part of the other specification being earlier than that of the claim;
(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor;
(c) that the patent was obtained in contravention of the rights of the petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
(e) that the invention, so far as claimed in any claim of the complete specification, is not new having regard to what was published before the priority date of the claim;
(f) that the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve any inventive step having regard to any matter claimed or disclosed in the manner specified in paragraph (a) of this subsection or to any matter published in the manner specified in paragraph (e) of this subsection;
(g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, or does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the primary or intended use or exercise of the invention is contrary to public order or morality.
(2) Without prejudice to the provisions of subsection (1) of this section, a patent may be revoked by the Court on the petition of any Minister of State if the Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Minister to make, use, exercise or vend the patented invention for the service of the State upon reasonable terms.
(3) Every ground on which a patent may be revoked shall be available as a ground of defence in any proceeding for the infringement of the patent.
35 Revocation of patent by Controller.
35.—(1) At any time within twelve months after the sealing of a patent, any person interested who did not oppose the grant of the patent may apply to the Controller for an order revoking the patent on any one or more of the grounds upon which the grant of the patent could have been opposed:
Provided that when an action for infringement, or proceedings for the revocation, of a patent are pending in any court, an application to the Controller under this section shall not be made except with the leave of the court.
(2) Where an application is made under this section, the Controller shall notify the patentee and shall give to the applicant and the patentee an opportunity to be heard before deciding the case.
(3) If on an application under this section the Controller is satisfied that any of the grounds aforesaid are established, he may by order direct that the patent shall be revoked either unconditionally or unless within such time as may be specified in the order the complete specification is amended to his satisfaction:
Provided that the Controller shall not make an order for the unconditional revocation of a patent under this section unless the circumstances are such as would have justified him in refusing to grant the patent in proceedings under section 19 of this Act.
(4) An appeal shall lie from any decision of the Controller under this section.
36 Surrender of patent.
36.—(1) A patentee may at any time by notice given to the Controller offer to surrender his patent.
(2) Where such an offer is made the Controller shall advertise the offer in the prescribed manner; and within the prescribed period after such advertisement any person interested may give notice to the Controller of opposition to the surrender.
(3) Where any such notice of opposition is duly given the Controller shall notify the patentee.
(4) If the Controller is satisfied, after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and by order revoke the patent.
(5) An appeal shall lie from any decision of the Controller under this section.
PART IV. Voluntary and Compulsory Endorsement, Anticipation, and Provisions as to Rights in Inventions.
37 Endorsement of patent “licences of right”.
37.—(1) At any time after the sealing of a patent the patentee may apply to the Controller for the patent to be endorsed with the words “licences of right”; and where such an application is made, the Controller shall notify the application to any person entered on the register as entitled to an interest in the patent, and if satisfied, after giving any such person an opportunity to be heard, that the patentee is not precluded by contract from granting licences under the patent, cause the patent to be endorsed accordingly.
(2) Where a patent is endorsed under this section—
(a) any person shall, at any time thereafter, be entitled as of right to a licence under the patent upon such terms as may, in default of agreement, be settled by the Controller on the application of the patentee or the person requiring the licence;
(b) the Controller may, on the application of the holder of any licence granted under the patent before the endorsement, order the licence to be exchanged for a licence to be granted by virtue of the endorsement upon terms to be settled as aforesaid;
(c) if in proceedings for infringement of the patent (otherwise than by the importation of goods) the defendant undertakes to take a licence upon terms to be settled by the Controller as aforesaid, no injunction shall be granted against him, and the amount (if any) recoverable against him by way of damages shall not exceed double the amount which would have been payable by him as licensee if such a licence had been granted before the earliest infringement;
(d) the renewal fees payable in respect of the patent after the date of the endorsement shall be one half of the renewal fees which would be payable if the patent were not so endorsed.
(3) In settling the terms of any such licence the Controller—
(a) shall endeavour to secure the widest possible user of the invention in the State consistent with the patentee's deriving a reasonable advantage from his patent rights,
(b) shall endeavour to secure to the patentee the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in the State,
(c) shall 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,
(d) may so frame the terms as to preclude the licensee from importing into the State 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.
(4) The licensee under any licence granted by virtue of the endorsement of a patent under this section shall (unless, in the case of a licence the terms of which are settled by agreement, the licence otherwise expressly provides) be entitled to call upon the patentee to take proceedings to prevent any 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 if he were patentee, making the patentee a defendant:
Provided that a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
(5) An application for the endorsement of a patent under this section shall contain a statement (to be verified in such manner as may be prescribed) that the patentee is not precluded by contract from granting licences under the patent; and the Controller may require from the applicant such further evidence as he may think necessary.
(6) An application made under this section for the endorsement of a patent of addition shall be treated as an application for the endorsement of the patent for the main invention also, and an application made under this section for the endorsement of a patent in respect of which a patent of addition is in force shall be treated as an application for the endorsement of the patent of addition also; and where a patent of addition is granted in respect of a patent already endorsed under this section, the patent of addition shall also be so endorsed.
(7) All endorsements of patents under this section shall be entered in the register of patents and shall be published in the Journal and in such other manner as the Controller thinks desirable for bringing the endorsement to the notice of manufacturers.
(8) An appeal shall lie from any decision of the Controller under this section.
38 Cancellation of endorsement.
38.—(1) At any time after a patent has been endorsed under the last foregoing section, the patentee may apply to the Controller for cancellation of the endorsement; and where such an application is made and the balance paid of all renewal fees which would have been payable if the patent had not been endorsed, the Controller may, if satisfied that there is no existing licence under the patent or that all licensees under the patent consent to the application, cancel the endorsement accordingly.
(2) Within the prescribed period after a patent has been endorsed as aforesaid, any person who claims that the patentee is, and was at the time of the endorsement, precluded by a contract in which the claimant is interested from granting licences under the patent may apply to the Controller for cancellation of the endorsement.
(3) Where the Controller is satisfied, on application made under the last foregoing subsection, that the patentee is and was precluded as aforesaid, he shall cancel the endorsement; and thereupon the patentee shall be liable to pay, within such period as may be prescribed, a sum equal to the balance of all renewal fees which would have been payable if the patent had not been endorsed, and if that sum is not paid within that period the patent shall cease to have effect at the expiration of that period.
(4) Where the endorsement of a patent is cancelled under this section, the rights and liabilities of the patentee shall thereafter be the same as if the endorsement had not been made.
(5) The Controller shall advertise in the prescribed manner any application made to him under this section; and within the prescribed period after such advertisement—
(a) in the case of an application under subsection (1) of this section, any person interested; and
(b) in the case of an application under subsection (2) of this section, the patentee,
may give notice to the Controller of opposition to the cancellation.
(6) Where any such notice of opposition is given, the Controller shall notify the applicant, and shall give to the applicant and the opponent an opportunity to be heard before deciding the case.
(7) An application made under this section for the cancellation of the endorsement of a patent of addition shall be treated as an application for the cancellation of the endorsement of the patent for the main invention also, and an application made under this section for the cancellation of the endorsement of a patent in respect of which a patent of addition is in force shall be treated as an application for the cancellation of the endorsement of the patent of addition also.
(8) An appeal shall lie from any decision of the Controller under this section.
39 Compulsory endorsement or licence.
39.—(1) At any time after the expiration of four years from the date of application for a patent or three years from the date of sealing the patent, whichever is the later, any person interested may apply to the Controller for a licence under the patent or for the endorsement of the patent with the words “licences of right” on the ground that there has been an abuse of the monopoly rights under the patent.
(2) The grounds, deemed to constitute an abuse of monopoly rights, upon which application may be made for an order under this section are as follows, that is to say:
(a) that the patented invention, being capable of being commercially worked in the State, is not being commercially worked therein or is not being so worked to the fullest extent that is reasonably practicable;
(b) that a demand for the patented article in the State is not being met on reasonable terms, or is being met to a substantial extent by importation;
(c) that the commercial working of the invention in the State is being prevented or hindered by the importation of the patented article;
(d) that by reason of the refusal of the patentee to grant a licence or licences on reasonable terms—
(i) a market for the export of the patented article manufactured in the State is not being supplied; or
(ii) the working or efficient working in the State of any other patented invention which makes a substantial contribution to the art is prevented or hindered; or
(iii) the establishment or development of commercial or industrial activities in the State is unfairly prejudiced;
(e) that by reason of conditions imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire or use of the patented article or process, the manufacture, use or sale of materials not protected by the patent, or the establishment or development of commercial or industrial activities in the State is unfairly prejudiced;
(f) that a condition which by virtue of section 54 of this Act is null and void has been inserted in a contract made after the commencement of this Act in relation to the sale or lease of, or licence to use or work, any article or process protected by the patent:
Provided that, for the purpose of determining whether there has been any abuse of the monopoly rights under a patent, it shall be taken that patents for new inventions are granted not only to encourage invention but to secure that new inventions shall so far as possible be commercially worked in the State without undue delay.
(3) Subject as hereinafter provided, the Controller may, if satisfied that any of the grounds aforesaid are established, make an order in accordance with the application; and where the order is for the grant of a licence, it may require the licence to be granted upon such terms as the Controller thinks fit:
Provided that—
(a) where the application is made on the ground that the patented invention is not being commercially worked in the State or is not being worked to the fullest extent that is reasonably practicable and it appears to the Controller that the time which has elapsed since the sealing of the patent has for any reason been insufficient to enable it to be so worked, he may by order adjourn the application for such period as will in his opinion give sufficient time for the invention to be so worked;
(b) an order shall not be made under this section for the endorsement of a patent on the ground that a market for the export of the patented article is not being supplied, and any licence granted under this section on that ground shall contain such provisions as appear to the Controller to be expedient for restricting the countries in which the patented article may be sold or used by the licensee;
(c) no order shall be made under this section in respect of a patent on the ground that the working or efficient working in the State of another patented invention is prevented or hindered unless the Controller is satisfied that the patentee in respect of that other invention is able and willing to grant to the patentee and his licensees a licence in respect of that other invention on reasonable terms;
(d) any licence granted shall be non-exclusive and non-transferable;
(e) the terms of any licence granted may be so framed as to preclude the licensee from importing into the State any goods the importation of which, if effected by persons other than the patentee or those claiming under him, would be an infringement of the patent, and in such case the patentee and all licensees under the patent shall be deemed to have mutually covenanted against such importation.
(4) The Controller shall, in determining whether to make an order in pursuance of any such application, take account of the following matters, that is to say:—
(a) the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention;
(b) the ability of any person to whom a licence would be granted under the order to work the invention to the public advantage; and
(c) the risks to be undertaken by that person in providing capital and working the invention if the application is granted;
but shall not be required to take account of matters subsequent to the making of the application.
(5) An application under this section may be made by any person notwithstanding that he is already the holder of a licence under the patent; and no person shall be estopped from alleging any of the matters specified in subsection (2) of this section by reason of any admission made by him, whether in such a licence or otherwise, or by reason of his having accepted such a licence.
(6) In this section “patented article” includes any article made by a patented process.
40 Provisions as to licences.
40.—(1) Where the Controller is satisfied, on application made under the last foregoing section of this Act, that the manufacture, use or sale of materials not protected by the patent is unfairly prejudiced by reason of conditions imposed by the patentee upon the grant of licences under the patent, or upon the purchase, hire or use of the patented article or process, he may, subject to the provisions of that section, order the grant of licences under the patent to such customers of the applicant as he thinks fit as well as to the applicant.
(2) Where an application under the last foregoing section is made by a person being the holder of a licence under the patent, the Controller may, if he makes an order for the grant of a licence to the applicant, order the existing licence to be cancelled, or may, if he thinks fit, instead of making an order for the grant of a licence to the applicant, order the existing licence to be amended.
(3) Where on an application under the last foregoing section the Controller orders the grant of a licence, he may direct that the licence shall operate—
(a) to deprive the patentee of any right which he may have as patentee to make, use, exercise or vend the invention or to grant licences under the patent;
(b) to revoke all existing licences in respect of the invention.
(4) Subsection (4) of section 37 of this Act shall apply to a licence granted in pursuance of an order under the last foregoing section of this Act as it applies to a licence granted by virtue of the said section 37.
41 Endorsement, etc. on application of a Minister of State.
41.—(1) At any time after the expiration of four years after the date of application for a patent or of three years from the date of the sealing of a patent, whichever is the later, any Minister of State may apply to the Controller upon any one or more of the grounds specified in section 39 of this Act for the endorsement of the patent with the words “licences of right” or for the grant to any person specified in the application of a licence under the patent; and the Controller may, if satisfied that any of those grounds are established, make an order in accordance with the application.
(2) Subsections (3) and (6) of section 39 of this Act and section 40 of this Act shall, so far as applicable, apply in relation to an application and an order under the last foregoing subsection as they apply in relation to an application and an order under the said section 39.
42 Inventions relating to food or medicine.
42.—(1) Without prejudice to the foregoing provisions of this Act, where a patent is in force in respect of—
(a) a substance capable of being used as food or medicine or in the production of food or medicine; or
(b) a process for producing such a substance as aforesaid; or
(c) any invention capable of being used as, or as part of a medical, surgical or other remedial device,
the Controller shall, on application made to him by any person interested, order the grant to the applicant of a licence under the patent on such terms as he thinks fit, unless it appears to him that, having regard to the desirability of encouraging inventors and the growth and development of industry and to such other matters as he considers relevant, there are good reasons for refusing the application.
(2) In settling the terms of licences under this section the Controller shall endeavour to secure that food, medicines and medical, surgical and other remedial devices shall be available to the public at the lowest prices consistent with the patentees' deriving a reasonable advantage from their patent rights.
(3) A licence granted under this section shall entitle the licensee to make, use, exercise and vend the invention as a food or medicine, or for the purposes of the production of food or medicine or as, or as part of, a medical, surgical or other remedial device, but for no other purposes.
43 Revocation of patent after grant of licence.
43.—(1) Where an order for the grant of a licence under a patent has been made in pursuance of an application under section 39 of this Act, any person interested may, at any time after the expiration of two years from the date of that order, apply to the Controller for the revocation of the patent upon any of the grounds specified in subsection (2) of the said section 39; and if upon any such application the Controller is satisfied—
(a) that any of the said grounds are established; and
(b) that the purposes for which an order may be made in pursuance of an application under the said section 39 could not be achieved by the making of any such order as is authorised to be made in pursuance of such an application,
he may order the patent to be revoked.
(2) An order for the revocation of a patent under this section may be made so as to take effect either unconditionally, or in the event of failure to comply, within such reasonable period as may be specified in the order, with such conditions as may be imposed by the order with a view to achieving the purposes aforesaid; and the Controller may, on reasonable cause shown in any case, by subsequent order extend any period so specified.
44 Procedure on applications under sections 39 to 43.
44.—(1) Every application under sections 39 to 43 of this Act shall specify the nature of the order sought by the applicant and shall contain a statement (to be verified in such manner as may be prescribed) setting out the nature of the applicant's interest (if any) and the facts upon which the application is based.
(2) Where the Controller is satisfied, upon consideration of any such application, that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the patentee and any other persons appearing from the register of patents to be interested in the patent in respect of which the application is made, and shall advertise the application in the Journal.
(3) The patentee or any other person desiring to oppose the application may, within such time as may be prescribed or within such further time as the Controller may on application (made either before or after the expiration of the prescribed time) allow, give to the Controller notice of opposition.
(4) Any such notice of opposition shall contain a statement (to be verified in such manner as may be prescribed) setting out the grounds on which the application is opposed.
(5) Where any such notice of opposition is duly given, the Controller shall notify the applicant, and shall, subject to the provisions of the next following section with respect to arbitration, give to the applicant and the opponent an opportunity to be heard before deciding the case.
45 Appeal and references to arbitrator.
45.—(1) An appeal shall lie from any order made by the Controller in pursuance of an application under sections 39 to 43 of this Act.
(2) On any appeal under this section, the Attorney General or such other counsel as he may appoint shall be entitled to appear and be heard.
(3) Where any such application is opposed in accordance with the last foregoing section, and either—
(a) the parties consent; or
(b) the proceedings require a prolonged examination of documents or any scientific or local investigation which cannot in the opinion of the Controller conveniently be made before him,
the Controller may at any time order the whole proceedings, or any question or issue of fact arising therein, to be referred to an arbitrator agreed on by the parties, or, in default of agreement, appointed by the Controller.
(4) Where the whole proceedings are referred as aforesaid, section 35 of the Arbitration Act, 1954, (which relates to the statement of cases by arbitrators for the decision of the High Court) shall not apply to the arbitration; but unless the parties otherwise agree before the award of the arbitrator is made, an appeal shall lie from the award.
(5) Where a question or issue of fact is referred as aforesaid, the arbitrator shall report his findings to the Controller,
46 Supplementary provisions as to licences.
46.—(1) Any order under this Act for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the patentee and all other necessary parties, granting a licence in accordance with the order.
(2) An order may be made on an application under sections 39 to 41 of this Act for the endorsement of a patent with the words “licences of right” notwithstanding any contract which would have precluded the endorsement of the patent on the application of the patentee under section 37 of this Act; and any such order shall for all purposes have the same effect as an endorsement made in pursuance of an application under the said section 37.
(3) No order shall be made in pursuance of any application under sections 39 to 43 of this Act which would be at variance with any treaty, convention, arrangement or engagement applying to the State and any convention country.
47 Previous publication.
47.—(1) Subject as hereinafter provided, an invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published before the priority date of the relevant claim of the specification, if the patentee or applicant for the patent proves—
(a) that the matter published was obtained from him or (where he is not himself the true and first inventor) from any person from whom he derives title, and was published without his consent or the consent of any such person; and
(b) that the application for a patent or (in the case of a convention application) the application for protection in a convention country was made not more than six months after the date of such publication:
Provided that this subsection shall not apply if the invention was before the priority date of the claim commercially worked in the State, otherwise than for the purpose of reasonable trial, either by the patentee or applicant for the patent or any person from whom he derives title or by any other person with the consent of the patentee or applicant for the patent or any person from whom he derives title.
(2) Where a complete specification is filed in pursuance of an application for a patent made by a person being the true and first inventor or deriving title from him, an invention claimed in that specification shall not be deemed to have been anticipated by reason only of any other application for a patent in respect of the same invention, made in contravention of the rights of that person, or by reason only that after the date of filing of that other application the invention was used or published, without the consent of that person, by the applicant in respect of that other application, or by any other person in consequence of any disclosure of the invention by that applicant if the first-mentioned application was made not more than six months after any such use or publication.
(3) Notwithstanding anything in this Act, the Controller shall not refuse to accept a complete specification or to grant a patent, and a patent shall not be revoked or invalidated, by reason only of any circumstances which, by virtue of this section, do not constitute an anticipation of the invention claimed in the specification.
48 Previous communication display or working.
48.—(1) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only of the communication of the invention to a Minister of State or to any person authorised by such a Minister to investigate the invention or its merits.
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