Patents 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.