Patents Act , 1992

PART I Preliminary and General

1 Short title and commencement.

1.—(1) This Act may be cited as the Patents Act, 1992.

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

2 Interpretation.

2.—(1) In this Act, except where the context otherwise requires—

“the Act of 1964” means the Patents Act, 1964;

“applicant”, in relation to an application under this Act, means the person making the application and includes a person whose title has been registered under section 85 or in relation to whose title a direction has been given under that section and the personal representative of a deceased person by whom such an application is made;

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

“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 product or the carrying on of the process which is the subject of a patent in or by means of a definite and substantial establishment or organisation, and on a scale which is adequate and reasonable in all the circumstances; “company” means a company within the meaning of section 2 of the Companies Act, 1963, or any other body corporate whether incorporated inside or outside the State;

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

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

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

“date of filing” means—

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

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

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

“designate” means—

(i) in relation to an application for a patent, designate (in pursuance of the European Patent Convention or the Treaty, as the case may be) the state or states in which protection is sought for an invention,

(ii) in relation to a patent, designate (in pursuance of the European Patent Convention) the state or states in which the patent has effect;

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

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

“the European list” means the list of professional representatives maintained by the European Patent Office in pursuance of the European Patent Convention;

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

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

“European Patent Convention” means the Convention on the Grant of European Patents signed at Munich on the 5th day of October, 1973;

“European Patent Office” means the office of that name established by the European Patent Convention;

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

“functions” includes powers and duties;

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

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

“the Journal” means the Patents Office Journal;

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

“the Office” means the Patents Office;

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

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

“patent agent” except in section 94 has the meaning assigned to it by section 105;

“patent application” means an application under Part II or Part III for a 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;

“proprietor of the patent” means the person to whom the patent was granted or the person whose title is subsequently registered under section 85;

“published”—

(a) in relation to any document which is required to be published under this Act, means made available to the public and includes the making available for inspection of the document as of right, at the Office and such other place (if any) as may be for the time being specified for the purpose by the Minister, by the public, whether on payment of a fee or not, and

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

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

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

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

“Union of Paris for the Protection of Industrial Property” means the union established by the Paris Convention for the Protection of Industrial Property.

(2) In this Act, unless otherwise indicated—

(a) a reference to a Part, section or Schedule is to a Part, section or Schedule of this Act,

(b) a reference to a subsection is a reference to a subsection of the section in which the reference occurs.

3 Orders and rules.

3.—(1) Where a power to make orders or rules is conferred by this Act, such orders or rules may be made either as respects all, or as respects any one or more, of the matters to which the power relates, and different provisions may be made by any such orders or rules as respects matters which are of different classes or descriptions.

(2) Every order or rule made under this Act shall be laid before each House of the Oireachtas as soon as may be after it is made and if a resolution annulling the order or rule is passed by either such House within the next twenty-one days on which the House has sat after the order or rule is laid before it, the order or rule shall be annulled accordingly, but without prejudice to the validity of anything previously done thereunder.

(3) As soon as may be after any order or rule is made under this Act notice of the making thereof, and of the place where copies thereof may be obtained, shall be published in the Journal.

(4) The power to make an order includes power to amend or revoke the order, except in the case of an order under section 1 (2).

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 Repeals and transitional provisions.

5.—The Act of 1964 and the Patents (Amendment) Act, 1966, are hereby repealed, subject to the provisions of the First Schedule.

PART II Patents Generally

CHAPTER I The Patents Office and the Controller

6 The Patents Office and the Controller of Patents, Designs and Trade Marks.

6.—(1) The Patents Office and the Controller of Patents, Designs and Trade Marks shall continue in being for the purposes provided for by this Act or any other enactment.

(2) The Controller of Patents, Designs and Trade Marks shall continue as a corporation sole with perpetual succession and an official seal which shall be judicially noticed and may sue and be sued by that name.

(3) The Patents Office shall be under the control of the Controller who shall be independent in the discharge of the functions conferred on him by this Act or any other enactment.

(4) References in any enactment to the Industrial and Commercial Property Registration Office and to the Controller of Industrial and Commercial Property shall continue to be construed respectively as references to the Patents Office and the Controller.

7 Grant of patents.

7.—Patents shall be granted by the Controller subject to and in accordance with the provisions of this Act.

8 Extent of application of Part II.

8.—The subsequent provisions of this Part shall, in relation to short-term patents to which Part III applies, have effect subject to the provisions of that Part.

CHAPTER II Patentability

9 Patentable inventions.

9.—(1) An invention shall be patentable under this Part if it is susceptible of industrial application, is new and involves an inventive step.

(2) Any of the following in particular shall not be regarded as an invention within the meaning of subsection (1):

(a) a discovery, a scientific theory or a mathematical method,

(b) an aesthetic creation,

(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer,

(d) the presentation of information.

(3) The provisions of subsection (2) shall exclude patentability of subject-matter or activities referred to in that subsection only to the extent to which a patent application or patent relates to such subject-matter or activities as such.

(4) A method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body shall not be regarded as an invention susceptible of industrial application for the purposes of subsection (1). This provision shall not apply to a product, and in particular a substance or composition, for use in any such method.

(5) The Minister may by order modify any of the provisions of this section or of section 10 (other than paragraph (a)) or section 11 for the purpose of giving effect, in relation to the patentability of inventions, to the European Patent Convention as amended by any international treaty, convention or agreement to which the State is or proposes to become a party.

10 Exceptions to patentability.

10.—A patent shall not be granted in respect of—

(a) an invention the publication or exploitation of which would be contrary to public order or morality, provided that the exploitation shall not be deemed to be so contrary only because it is prohibited by law;

(b) a plant or animal variety or an essentially biological process for the production of plants or animals other than a microbiological process or the products thereof.

11 Novelty.

11.—(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public (whether in the State or elsewhere) by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application.

(3) Additionally, the content of a patent application as filed, of which the date of filing is prior to the date referred to in subsection (2)and which was published under this Act on or after that date, shall be considered as comprised in the state of the art.

(4) The provisions of subsections (1), (2) and (3) shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in subsection (4) of section 9 provided that its use for any method referred to in the said subsection (4) is not comprised in the state of the art.

12 Non-prejudicial disclosures.

12.—(1) For the application of section 11 a disclosure of the invention shall not be taken into consideration if it occurred not earlier than six months preceding the filing of the patent application and if it was due to, or in consequence of—

(a) a breach of confidence or agreement in relation to, or the unlawful obtaining of the matter constituting, the invention, or

(b) the fact that the applicant or his legal predecessor has displayed the invention at an international exhibition which is either official or officially recognised under the Convention on International Exhibitions signed at Paris on the 22nd day of November, 1928, or any subsequent treaty, convention or other agreement replacing that Convention:

Provided that the exhibitor states, when making the patent application, that the invention has been so displayed and files a supporting certificate within the period and under the conditions prescribed.

(2) The Minister may for the purpose of subsection (1) prescribe a period other than the six months specified in that subsection and circumstances other than those specified in paragraph (a) or (b) of that subsection where the Minister is satisfied that it is necessary to do so in order to give effect to any treaty or international convention to which the State is or becomes a party and the said subsection shall be construed accordingly.

(3) Where a statement appears in the Journal stating that an international exhibition specified in the statement is or was an international exhibition of the class referred to in subsection (1), then for the purposes of this section the statement shall be evidence that the international exhibition specified therein is or was an international exhibition of such class.

13 Inventive step.

13.—An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art, but if the state of the art also includes documents within the meaning of section 11 (3) those documents shall not be considered in deciding whether or not there has been an inventive step.

14 Industrial application.

14.—An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.

CHAPTER III Applications

15 Right to apply for patent.

15.—Any person may make an application for a patent either alone or jointly with another.

16 Right to patent.

16.—(1) The right to a patent shall belong to the inventor or his successor in title, but if the inventor is an employee the right to a patent shall be determined in accordance with the law of the state in which the employee is wholly or mainly employed or, if the identity of such state cannot be determined, in accordance with the law of the state in which the employer has his place of business to which the employee is attached.

(2) If two or more persons have made an invention independently of each other, the right to a patent for the invention shall belong to the person whose patent application has the earliest or earlier (as may be appropriate) date of filing, but this provision shall apply only if the earliest or earlier application has been duly published under this Act.

(3) For the purposes of proceedings before the Controller the applicant shall be deemed to be entitled to exercise the right to the patent.

17 Mention of inventor.

17.—(1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any specification of a patent granted for the invention and shall also have a right to be so mentioned, if practicable, in any published patent application for the invention.

(2) Unless he has already given the Controller the information hereinafter mentioned, an applicant shall within the prescribed period file with the Controller a statement—

(a) identifying the person or persons whom he believes to be the inventor or inventors, and

(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent,

and if he fails to do so, the application shall be deemed to be withdrawn.

(3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time request the Controller to make a finding to that effect; and if the Controller does so, he shall accordingly amend the register and any undistributed copies both of the published patent application and of the specification of the granted patent.

18 Making of application.

18.—(1) Every application for a patent under this Part shall be filed at the Office in the prescribed manner and be in the prescribed form.

(2) A patent application shall contain—

(a) a request for the grant of a patent;

(b) a specification containing a description of the invention to which the application relates, one or more claims and any drawing referred to in the description or the claim or claims; and

(c) an abstract.

(3) Every application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which such fee may be paid.

19 Disclosure of invention.

19.—(1) A patent application shall disclose the invention to which it relates in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

(2) Without prejudice to the generality of subsection (1), rules may prescribe the circumstances in which an application for a patent for an invention which requires for its performance the use of a micro-organism is to be treated for the purposes of this Act as complying with that subsection and may specify other provisions, in relation to such applications.

20 Claims.

20.—The claim or claims shall define the matter for which protection is sought, be clear and concise and be supported by the description.

21 Unity of invention.

21.—(1) A patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

(2) Without prejudice to the generality of subsection (1), rules may provide for treating two or more inventions as being so linked as to form a single general inventive concept for the purpose of this Act.

22 Abstract.

22.—(1) The abstract shall only serve for use as technical information; it may not be taken into account for any other purpose and in particular it may be used neither for the purpose of interpreting the scope of the protection sought nor for the purpose of applying section 11 (3).

(2) The Controller may determine whether the abstract adequately fulfils its purpose and if, in his opinion, it does not, he may reframe it so that it does.

23 Date of filing application.

23.—(1) The date of filing of a patent application shall be the earliest date on which the applicant paid the filing fee and filed documents which contain—

(a) an indication that a patent is sought;

(b) information identifying the applicant; and

(c) a description of the invention even though the description does not comply with the requirements of this Act or with any requirements that may be prescribed.

(2) If the Minister prescribes a later date for payment of the filing fee under section 18 (3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in that subsection are filed.

(3) If any drawing referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and—

(a) if the applicant makes any such request, the date of filing the drawing shall be so treated;

(b) if the request is not made, any reference to the drawing in the application shall be deemed to be deleted.

(4) If any drawing referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing within the prescribed period, and—

(a) if the drawing is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application;

(b) if the drawing is not so filed, any reference to the drawing in the application shall be deemed to be deleted.

(5) If in the case of an application which has a date of filing by virtue of the foregoing provisions of this section, or is deemed to have a date of filing accorded to it by virtue of section 24 or 81, one or more claims or the abstract has not been filed within the relevant prescribed period, the application shall be deemed to have been withdrawn at the end of that period.

24 Divisional application.

24.—A patent application (a “divisional application”) which—

(a) is in respect of subject-matter which does not extend beyond the content of an earlier application as filed, and

(b) complies with the relevant requirements (including procedure and time limits) specified in the rules,

shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority.

25 Priority right.

25.—(1) A person who has duly filed in or for the State, or in or for any other state party to the Paris Convention for the Protection of Industrial Property, an application for a patent or for the registration of a utility model or for a utility certificate or for an inventor's certificate, or his successors in title, shall enjoy, for the purpose of filing a subsequent patent application under this Act in respect of the same invention, a right of priority during such period as may be prescribed, subject to compliance with any prescribed conditions and the payment of any prescribed fee.

(2) Every filing that is equivalent to a regular national filing under the national law of the state where it was made (including the State), or under bilateral or multilateral agreements, shall be recognised as giving rise to a right of priority.

(3) In this section “a regular national filing” means any filing that establishes the date on which the application was filed, whatever may be the outcome of the application.

(4) (a) A subsequent application for the same subject-matter as a previous first application and filed in or in respect of the same state (including the State) shall be considered as the first application for the purposes of determining priority if, and only if, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without having been open to public inspection and without having left any rights outstanding, and has not served as a basis for claiming right of priority.

(b) Where, pursuant to this subsection, a subsequent application is considered as a first application, the first application may not thereafter serve as a basis for claiming a right of priority.

(5) If the first filing has been made in a state which is not a party to the Paris Convention for the Protection of Industrial Property subsections (1) to (4) shall apply if the Government makes an order to that effect under this subsection consequent upon bilateral or multilateral agreements under which the State grants on the basis of a first filing made in or for that state and subject to conditions equivalent to those laid down in the said convention, a right of priority having equivalent effect.

26 Claiming priority.

26.—(1) An applicant desiring to take advantage of the priority of a previous application shall file, in the prescribed manner and within the prescribed period, a declaration of priority. Rules made under this Act may require the filing of a copy of the previous application and, if the language of the latter is a foreign language, a translation in English.

(2) Multiple priorities may be claimed in respect of a patent application, notwithstanding the fact that they originated in different states, and, where appropriate, multiple priorities may be claimed for any one claim, and where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority.

(3) If one or more priorities are claimed in respeet of a patent application, the right of priority shall cover only those elements of the patent application which are included in the application or applications whose priority is claimed.

(4) If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted if the documents of the previous application as a whole specifically disclosed such elements.

27 Effect of priority right.

27.—(1) The right of priority shall have the following effect, namely, the date of priority shall be regarded as being the date of filing of the patent application for the purposes of subsections (2) and (3) of section 11 and section 16 (2).

(2) Where a patent application is filed and the priority of a previous application is claimed under section 26, then, notwithstanding anything contained in this Act, the patent application and any patent granted in pursuance of it shall not be invalidated by reason only of the fact that any subject-matter disclosed in the previous application was made available to the public at any time after the date of filing of the previous application.

28 Publication of application.

28.—(1) A patent application shall be published in the prescribed manner as soon as practicable after the expiry of the period of eighteen months beginning on the date of filing, or, if priority has been claimed, beginning on the date of priority; provided that at the request of the applicant the application may be published before the expiry of the period aforesaid.

(2) Subject to subsection (3), a patent application shall not be published if, before the termination of the technical preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn.

(3) A patent application which forms the basis for a divisional application under section 24 shall be published with its divisional application unless it has already been published under subsection (1).

(4) The Controller shall advertise the date of publication of a patent application in the Journal.

(5) The Controller may cause to be omitted from the published patent application—

(a) statements or other matter contrary to public order or morality;

(b) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person; provided that mere comparisons with the prior art shall not be considered disparaging per se.

CHAPTER IV Procedure up to Grant

29 Search report.

29.—(1) If a patent application under this Part has a date of filing, includes one or more claims and is not withdrawn or deemed to be withdrawn the Controller shall, on the request of the applicant made within the prescribed time, accompanied by the prescribed fee (“the search fee”) cause a search to be undertaken in relation to the invention and a report (a “search report”) of the results of the search to be prepared. The rules may specify by whom the search report shall be prepared and the scope thereof.

(2) If it appears, in the course of the search, that an application discloses more than one invention the search shall be conducted in relation only to the first invention specified in the claims. A search may however be conducted in relation to the additional invention, or inventions, if the applicant, within the time allowed by the Controller, submits a request to that effect accompanied by the search fee.

(3) The Controller shall send a copy of the search report to the applicant and, unless the application is withdrawn within a prescribed period, shall publish it.

(4) If the application is not withdrawn, the Controller shall allow the applicant an opportunity to amend the application in the light of the search report or reports. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary, the application may be refused by the Controller. In the case of an application to which subsection (2) applies, such application shall be amended so as to confine it to one invention only.

30 Use of foreign specification or search report.

30.—(1) In lieu of making the request provided for in section 29 (1), an applicant for a patent under this Part may, within the time prescribed for the purpose of section 29 (1), submit a statement to the Controller that an application for a patent for the same invention has been made in a prescribed foreign state or under the provisions of any prescribed convention or treaty and where such a statement is submitted the applicant shall submit, within the prescribed period, such evidence as may be prescribed of either—

(a) the results of the search carried out on the said application, or

(b) the grant of a patent in pursuance of the said application.

(2) The applicant shall, if so required by the Controller, also furnish to the Controller within the prescribed time such information as may be prescribed with regard to the filing of foreign applications for protection of the invention for which a patent is sought.

(3) The evidence submitted under subsection (1) shall be accompanied by the prescribed fee. Unless the application is subsequently withdrawn within a prescribed period the evidence shall be published by the Controller.

(4) Where the evidence submitted is that referred to in subsection (1) (a) the Controller shall, unless the application is withdrawn, allow the applicant an opportunity to amend the application in the light of that evidence. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary, the application may be refused by the Controller.

(5) Where the evidence submitted is that referred to in subsection (1) (b) the Controller shall, unless the application is withdrawn, allow the applicant an opportunity to amend the application in the light of that evidence. The applicant shall in particular submit such amendments as are required to the specification so that the subject-matter claimed therein does not extend beyond that of the evidence. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary the application may be refused by the Controller.

(6) Any amendment or statement submitted in pursuance of subsections (4) and (5) or section 29 (4) shall, where a duly authorized patent agent acts on behalf of the applicant, be submitted by such agent.

31 Refusal or grant of patent.

31.—(1) If it appears to the Controller that an application does not comply with a requirement of this Act or the rules made thereunder, (other than the requirements of sections 9 (1), 11, 13, 14, 19 and 20) the Controller shall so inform the applicant and if the applicant, within the time specified by the Controller, fails to satisfy the Controller that the said requirement is complied with or to amend the application so as to comply therewith the Controller may, subject to section 90, refuse the application.

(2) Nothing in subsection (1) shall preclude the Controller from refusing, or requiring amendment of, a patent application by reference to any requirement of a section mentioned in that subsection which may be specified in rules.

(3) A patent shall not be granted by the Controller until he has requested the applicant to pay the prescribed fee for the grant of a patent and the applicant has paid the said fee within the prescribed time. If the said fee is not so paid, the application shall be deemed to be withdrawn.

(4) The grant of a patent shall be notified to the applicant in the prescribed form.

(5) Where two or more patent applications for the same invention having the same date of filing or the same date of priority are filed by the same applicant or his successor in title, the Controller may on that ground refuse to grant a patent in respect of more than one of the applications.

32 Amendment of application.

32.—(1) At any time before a patent is granted under this Act an applicant may, in accordance with the prescribed conditions, amend the application of his own volition.

(2) Any amendment made under this section or under section 29, 30 or 31 shall be invalid to the extent that it extends the subject matter disclosed in the application as filed.

(3) The Controller may refuse an amendment under this section if, in his opinion, it ought properly to have been submitted under the provisions of section 29 or 30.

(4) Where an amendment of an application under this section or under section 29, 30 or 31 involves alterations to the specification or any drawing the applicant shall, if requested to do so, file a fresh specification or drawing, as the case may require, within the time specified by the Controller.

33 Withdrawal of application.

33.—(1) At any time before a patent is granted under this Act the applicant may withdraw in writing his application and any such 55 withdrawal may not be revoked.

(2) Where a patent application is withdrawn under this section, or is deemed under this Act to have been withdrawn, or is refused under any provision of this Act, the following provisions shall apply:

(a) if the application has been published under section 28, the provisions of section 11 (3) shall continue to apply as regards the application;

(b) the applicant shall continue to enjoy the right of priority under section 25 which he enjoyed immediately before such withdrawal or refusal;

(c) no other right may be claimed under this Act in relation to the application.

34 Notification of grant; publication of specification.

34.—(1) The Controller shall as soon as practicable after a patent has been granted publish a notice of the grant in the Journal.

(2) At the same time as the publication of the notice of a grant, the Controller shall publish a specification of the patent containing the description and claims, and drawings (if any), and also such matters and information as appear to him to be useful or important.

35 Continuation in force of applications.

35.—(1) A pending application shall lapse at the end of the period prescribed for the payment of any renewal fee if the fee is not paid within that period or within that period as extended under this section.

(2) The period prescribed for payment of any renewal fee shall be extended by such period, not being a period of more than six months, as may be specified in a request made in that behalf by the applicant to the Controller if the request is made and the prescribed additional fee paid before the expiration of the period of extension so specified.

(3) The provisions of section 37 shall apply to an application to which this section relates as if the references in that section to a patent and the proprietor of a patent were references to a patent application and the applicant for a patent, respectively.

CHAPTER V Provisions as to Patents after Grant

36 Term of patent.

36.—(1) A patent shall take effect on the date on which notice of its grant is published in the Journal and, subject to subsection (2), shall continue in force until the end of the period of twenty years beginning with the date of filing of the patent application.

(2) A patent shall lapse at the end of the period prescribed for payment of any renewal fee if the fee is not paid within that period or within that period as extended under this section.

(3) The period prescribed for payment of any renewal fee shall be extended by such period, not being a period of more than six months, as may be specified in a request made in that behalf by or on behalf of the proprietor of the patent to the Controller if the request is made and the prescribed additional fee paid before the expiration of the period of extension so specified.

(4) The Minister may by order alter the period for which a patent shall remain in force for the purpose of giving effect to a provision of any international treaty, convention or agreement relating to the term of protection of a patent to which the State is or proposes to become a party.

37 Restoration of lapsed patents.

37.—(1) Where a patent has lapsed by reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 36 (3), an application may be made to the Controller, within two years from the date on which the patent lapsed, for the restoration of the patent.

(2) An application under this section may be made by the person who was the proprietor of the patent 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 the Controller is satisfied that the failure to pay the renewal fee was prima facie unintentional, that reasonable care had been taken to ensure payment of the fee within the prescribed period and that there has not been undue delay in the making of the application, he shall advertise the application in the Journal, and within the prescribed period any person may give notice to the Controller of opposition thereto.

(5) If notice of opposition is duly given under this section, the Controller shall notify the applicant and shall determine the question.

(6) If the Controller decides to allow an application under this section for restoration, he shall upon payment of any unpaid renewal fee and of such additional fee as may be prescribed, make a restoration 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 entry in the register of any matter in respect of which the provisions of this Act as to entries in the register is not complied with; and

(b) shall be subject to such provisions as are prescribed for the protection of persons who, during the period beginning on the date on which the patent lapsed and ending on the date of the order under this section, may have begun to avail themselves of the invention which is the subject of the patent,

and if any condition to which an order under this section is subject is not complied with by the proprietor of the patent, the Controller may revoke the order and give such directions consequential on the revocation as he thinks fit.

38 Amendment after grant.

38.—(1) Subject to the following provisions of this section, the Controller may, on an application made in the prescribed manner by the proprietor of a patent, allow the specification of the patent to be amended, subject to such terms as to advertising the proposed amendment and such other conditions, if any, as he thinks fit; provided that no such amendment shall be allowed where there are pending before the Court or the Controller proceedings in which the validity of the patent has been or may be put in issue.

(2) In any proceedings before the Court or the Controller in which the validity of a patent is put in issue, the Court or, as may be appropriate, the Controller may, subject to the following provisions of this section, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the Court or the Controller thinks fit.

(3) An amendment of a specification under this section shall be invalid to the extent that it extends the subject matter disclosed in the application as filed or the protection conferred by the patent.

(4) An amendment of a specification under this section shall have effect and be deemed always to have had effect from the date of the grant of the patent.

(5) Where an application for leave to amend a specification has been advertised in accordance with subsection (1) or (2), any person may give within the prescribed period notice to the Court or the Controller, as may be appropriate, of his opposition to an amendment proposed by the proprietor of the patent, and if he does so shall notify the proprietor and the Court or the Controller shall consider the opposition in deciding whether the amendment, or any other amendment, should be allowed.

(6) Where an application for an order under this section is made to the Court, the applicant shall notify the Controller who shall be entitled to appear and be heard on the hearing of the application and shall so appear if so directed by the Court.

39 Surrender of patent.

39.—(1) A proprietor of a patent may at any time by written notice given to the Controller offer to surrender his patent.

(2) Where an offer is made under this section, the Controller shall advertise the offer in the prescribed manner and any person interested may, within the prescribed period commencing on the date of the publication of the advertisement, give notice to the Controller of opposition to the proposed surrender.

(3) Where notice of opposition is duly given under this section the Controller shall notify the proprietor of the patent and determine the question.

(4) Subject to subsection (3), if the Controller is satisfied that a patent may properly be surrendered, he may accept the offer.

(5) As from the date when notice of acceptance is published in the Journal the patent shall cease to have effect but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date for the service of the State.

CHAPTER VI The Effects of a Patent and a Patent Application

40 Prevention of direct use of invention.

40.—A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in the State all or any of the things following:

(a) making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for those purposes;

(b) using a process which is the subject-matter of the patent, or, when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, offering the process for use in the State;

(c) offering, putting on the market, using or importing, or stocking for those purposes, the product obtained directly by a process which is the subject-matter of the patent.

41 Prevention of indirect use of invention.

41.—(1) A patent while it is in force shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply in the State a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect.

(2) Subsection (1) shall not apply when the means referred to therein are staple commercial products, except when the third party induces the person supplied to commit acts which the proprietor of a patent is enabled to prevent by virtue of section 40.

(3) Persons performing acts referred to in paragraph (a), (b), or (c) of section 42 shall not be considered to be parties entitled to exploit an invention pursuant to subsection (1).

42 Limitation of effect of patent.

42.—The rights conferred by a patent shall not extend to—

(a) acts done privately for non-commercial purposes;

(b) acts done for experimental purposes relating to the subject-matter of the relevant patented invention;

(c) the extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription issued by a registered medical practitioner or acts concerning the medicine so prepared;

(d) the use on board vessels registered in any of the countries of the Union of Paris for the Protection of Industrial Property, other than the State, of the invention which is the subject of the patent, in the body of the vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the territorial waters of the State, provided that the invention is used in such waters exclusively for the needs of the vessel;

(e) the use of the invention which is the subject of the patent in the construction or operation of aircraft or land vehicles of countries of the Union of Paris for the Protection of Industrial Property, other than the State, or of such aircraft or land vehicle accessories when such aircraft or land vehicles temporarily or accidentally enter the State;

(f) the acts specified in Article 27 of the Convention on International Civil Aviation, where those acts concern the aircraft of countries, other than the State, benefiting from the provisions of that Article.

43 Limitation of rights.

43.—The rights conferred by a patent shall not extend to any act which, pursuant to any obligations imposed by the law of the Treaties establishing the European Communities, cannot be prevented by the proprietor of the patent.

44 Rights conferred by patent application after publication.

44.—(1) A patent application shall, on and from the date of its publication under section 28, provisionally confer upon the applicant such protection as is conferred by virtue of sections 40 to 43.

(2) A patent application shall be deemed never to have had the effects set out in subsection (1) if it is withdrawn, is deemed to be withdrawn or is finally refused.

45 Extent of protection.

45.—(1) The extent of the protection conferred by a patent or a patent application shall be determined by the terms of the claims; nevertheless, the description and drawings shall be used to interpret the claims.

(2) For the period up to the grant of a patent, the extent of the protection conferred by the patent application shall be determined by the latest filed claims contained in the publication under section 28; however, the terms of the claims of the patent as granted or as amended in accordance with section 38 shall determine the extent of protection conferred by section 44; provided that the foregoing provisions of this subsection shall not be construed as granting to an applicant protection greater than that sought by him at the date of publication under section 28.

(3) In the interpretation of this section, the Court shall have regard to the directions contained in the Protocol on the Interpretation of Article 69 of the European Patent Convention and set out in the Second Schedule to this Act.

46 Burden of proof.

46.—(1) If the subject-matter of a patent or patent application is a process for obtaining a new product, the same product when produced by a person other than the proprietor or applicant, as the case may be, shall, in the absence of sufficient evidence to raise an issue as to whether the product was obtained by that or another process, be deemed to have been obtained by the process which is such subject-matter.

(2) In considering whether a party has discharged the burden imposed upon him by this section, the Court shall have regard to the interest of the defendant in the protection of his manufacturing and business secrets, and for that purpose the Court may, if it thinks fit, hear or receive evidence on behalf of the defendant in the absence of any other party to the proceedings.

(3) (a) Any party to infringement proceedings may, in the absence of every other party to the proceedings, apply to the Court for an order under this subsection.

(b) If in considering an application for an order under this subsection the Court is satisfied that—

(i) the applicant is in possession of a manufacturing or commercial secret, and

(ii) the secret (evidence of which shall be given in the absence of any party to the proceedings other than the applicant) is such as would enable the applicant to discharge the burden imposed by this section, and

(iii) in the circumstances of the case to require the disclosure (otherwise than on the application) of the secret would be unreasonable, the Court shall allow the application.

(c) Where the Court makes an order under this subsection, the burden imposed under this section shall, in relation to the relevant infringement proceedings, be regarded as having been discharged by the applicant.

CHAPTER VII Infringement

47 Action for infringement of patent.

47.—(1) Civil proceedings for infringement of a patent may be brought in the Court by the proprietor of the patent in respect of any act of infringement which he alleges he is entitled under sections 40 to 43 and section 45 to prevent and (without prejudice to any other jurisdiction of the Court) in those proceedings a claim may be made—

(a) for an injunction restraining the defendant from any apprehended act of such infringement;

(b) for an order requiring the defendant to deliver up or destroy any product covered by the patent in relation to which the patent is alleged to have been infringed or any article in which the product is inextricably comprised;

(c) for damages in respect of the alleged infringement;

(d) for an account of the profits derived by the defendant from the alleged infringement;

(e) for a declaration that the patent is valid and has been infringed by the defendant.

(2) The Court shall not, in respect of the same infringement, both award the proprietor of a patent damages and order that he shall be given an account of the profits.

48 Proceedings for infringement by co-owner.

48.—(1) In the application of sections 40 to 43 to a patent of which there are two or more joint proprietors each of the references therein to the proprietor shall be construed—

(a) in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of section 80 or any agreement referred to in that section, is or are entitled to do that act without its amounting to an infringement; and

(b) in relation to any consent, as a reference to that proprietor or those proprietors who, by virtue of section 80 or any such agreement, is or are the proper person or persons to give the requisite consent.

(2) One of two or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but shall not do so unless all the others are made parties to the proceedings as defendants, but any of the others who, pursuant to the requirements of this subsection, is made a defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.

49 Restrictions on recovery of damages for infringement.

49.—(1) In proceedings for the infringement of a patent damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that that patent existed, and a person shall not be deemed to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word “patent” or “patented” or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the relevant patent accompanied the word or words in question.

(2) In proceedings for infringement of a patent the Court may, if it thinks fit, refuse to award any damages or make any order in respect of any infringement committed during an extension period specified in a request under subsection (3) of section 36 but before the payment of the renewal fee and any additional fee prescribed for the purpose of that subsection.

(3) Where an amendment of a specification of a patent has been allowed under this Act, no damages shall be awarded in any proceedings for an infringement of the patent committed before the date of the decision allowing the amendment, unless the Court is satisfied that the specification of the patent, as originally published, was framed in good faith and with reasonable skill and knowledge.

50 Relief for infringement of partially valid patent.

50.—(1) If in proceedings for infringement of a patent the validity of the patent is put in issue and it is found that the patent is only valid in part, the Court may grant relief in respect of that part of the patent which is found to be valid and infringed; provided that the Court shall not grant relief by way of damages or costs except in the circumstances mentioned in subsection (2).

(2) Where in proceedings for the infringement of a patent the plaintiff proves that the specification of the patent was framed in good faith and with reasonable skill and knowledge, the Court may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the Court as to costs and as to the date from which damages should be reckoned.

(3) As a condition of relief under subsection (1) or subsection (2) the Court may direct that the specification shall be amended to its satisfaction upon an application made for that purpose under section 38, and such an application may be made whether or not all other issues in the proceedings have been determined.

51 Proceedings for infringement by exclusive licensee.

51.—(1) Subject to the provisions of this section, the holder of an exclusive licence under a patent shall have the like right as the proprietor of the patent to take proceedings in respect of any infringement of the patent committed after the date of the licence, and in awarding damages or granting any other relief in any such proceedings the Court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as a result of the infringement or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.

(2) In any proceedings taken by the holder of an exclusive licence by virtue of this section the proprietor of the relevant patent shall, unless he is joined as plaintiff in the proceedings, be added as defendant; provided that a proprietor added as a defendant in pursuance of this subsection shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

52 Certificate of contested validity of patent.

52.—(1) If in any proceedings before the Court the validity of a patent to any extent is contested and the patent is found by the Court to be wholly or partially valid, the Court may certify the finding and the fact that the validity of the patent was contested.

(2) Where any certificate has been granted under subsection (1), then if, in any subsequent proceedings before the Court for infringement of the patent or before the Court or the Controller for revocation of the patent, a final order or judgment is made or given in favour of the party relying on the validity of the patent, that party shall, unless the Court otherwise directs, be entitled to his costs as between solicitor and own client.

53 Remedy for groundless threats of infringement proceedings.

53.—(1) Where any person (whether entitled to or interested in a patent or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a patent, any person aggrieved thereby may bring proceedings in the Court against him for any such relief as is mentioned in subsection (2).

(2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of a patent, the plaintiff shall be entitled to the following relief, that is to say—

(a) a declaration to the effect that the threats complained of were unjustifiable;

(b) an injunction against the continuance of the threats; and

(c) such damages, if any, as have been sustained by him by reason of the threats.

(3) Proceedings may not be brought under this section as regards a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.

(4) For the purposes of this section a notification of the existence of a patent or a patent application does not of itself constitute a threat of proceedings.

54 Power of Court to make declaration as to non-infringement.

54.—(1) A declaration that the use by any person of any process, or the making or use or sale by any person of any product, does not and would not constitute an act of infringement of a patent may be made by the Court in proceedings between the person and the proprietor of the patent or the holder of an exclusive licence under the patent, notwithstanding the fact that no assertion to the contrary has been made by the proprietor or licensee, if it is shown that—

(a) the plaintiff has applied in writing to the proprietor or licensee for a written acknowledgement the effect of which, if given, would be similar to that of the declaration claimed, and has furnished him with full particulars in writing of the process or product in question; and

(b) the proprietor or licensee has refused or neglected to give such an acknowledgement.

(2) The costs of all parties in proceedings for a declaration made by virtue of this section shall, unless for special reasons the Court thinks fit to order otherwise, be paid by the plaintiff.

(3) The validity of a patent in whole or in part shall not be called in question in proceedings for a declaration made by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid.

55 Right to continue use begun before date of filing or priority.

55.—(1) Where a patent is granted for an invention, a person who in the State before the date of filing of the patent application or, if priority was claimed, before the date of priority, does in good faith an act which would constitute an infringement of the patent if it were then in force, or makes in good faith effective and serious preparations to do such an act, shall have the rights specified in subsection (2).

(2) The rights referred to in subsection (1) are the following:

(a) the right to continue to do or, as the case may be, to do the act referred to in subsection (1),

(b) if such act was done or preparations had been made to do it in the course of a business—

(i) in the case of an individual—

(I) the right to assign the right to do it or to transmit such right on death, or

(II) the right to authorize the doing of the act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it;

(ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body's dissolution;

and the doing of that act by virtue of this subsection shall not amount to an infringement of the patent concerned.

(3) The rights specified in subsection (2) shall not include the right to grant a licence to any person to do an act referred to in subsection (1)

(4) Where a product which is the subject of a patent is disposed of by any person to another in exercise of a right conferred by subsection (2), that other and any person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole proprietor of the patent.

56 Action for infringement of published application.

56.—(1) After a patent has been granted the proprietor may bring civil proceedings in the Court for infringement of the patent application by any act committed in the period, beginning on the day after the date of publication of the application pursuant to section 28 and ending on the day before the date of publication of the notice of the grant of the patent, which he alleges he is entitled by virtue of sections 44 and 45 to prevent and in such proceedings a claim for damages may be made in respect of an alleged infringement.

(2) The provisions of sections 48 to 53 and section 55 relating to infringement of a patent shall apply, in so far as they are appropriate, to proceedings under this section.

(3) In considering the amount of any damages to be awarded in proceedings under this section, the Court shall consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 28, that a patent would be granted conferring on the proprietor of the patent protection from an act of the same description as that found to have infringed those rights, and if the Court finds that it would not have been reasonable so to expect, it shall reduce the damages to such an amount as it thinks fit.

CHAPTER VIII Revocation

57 Application for revocation of patent.

57.—(1) Subject to the following provisions of this section and section 58, any person may apply to the Court or the Controller for revocation of a patent.

(2) An application for the revocation of a patent on the ground mentioned in section 58 (e) may be made only by a person found by the Court pursuant to section 81 (2) to be entitled to be granted that patent or to be granted a patent for part of the matter covered by the patent, or, in case more than one person is found to be so entitled, by all those persons.

(3) An application under this section may be filed even if the patent has lapsed.

(4) The application for revocation of a patent shall be made in the prescribed manner and it shall not be deemed to have been filed until the fee prescribed in relation to such applications has been paid.

(5) Where proceedings with respect to a patent are pending in the Court under any provision of this Act, no application may be made to the Controller under this section in relation to the patent without the leave of the Court.

(6) Where the Controller has not disposed of an application made to him under this section, the applicant may not apply to the Court under this section in respect of the patent concerned unless either—

(a) the proprietor of the patent agrees that the applicant may so apply, or

(b) the Controller certifies in writing that it appears to him that the question whether the patent should be revoked is one which would more properly be determined by the Court.

58 Grounds for revocation.

58.—An application for revocation of a patent may be made only on the grounds that—

(a) the subject-matter of the patent is not patentable under this Act;

(b) the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed, or, if the patent was granted on an application which by virtue of section 24 or 81 is deemed to have been filed on the date of filing of an earlier application, it extends beyond that disclosed in the earlier application as filed;

(d) the protection conferred by the patent has been extended by an amendment of the application or the specification of the patent;

(e) the proprietor of the patent is not entitled thereto under section 16 (1).

59 Examination of application for revocation.

59.—(1) If the application for revocation of a patent is admissible, the Court or the Controller, as may be appropriate, shall consider whether the grounds for revocation mentioned in section 58 prejudice the maintenance of the patent.

(2) If on an application for revocation of a patent the Court or the Controller considers that the grounds for revocation mentioned in section 58 prejudice the maintenance of the patent, the Court or the Controller, as may be appropriate, may by order unconditionally revoke the patent.

(3) If on an application for revocation of a patent the Court or the Controller considers that the grounds for revocation mentioned in section 58 affect the patent only in part, the Court or the Controller, as may be appropriate, may make an order for the revocation of the patent unless within a time specified by the Court or the Controller the relevant specification is amended, under section 38, to the satisfaction of the Court or the Controller.

60 Controller's power to revoke patents on his own initiative.

60.—(1) If it appears to the Controller that an invention for which a patent has been granted formed part of the state of the art by virtue only of section 11 (3), he may on his own initiative by order revoke the patent, but he shall not do so without giving the proprietor of the patent an opportunity of making any observations and of amending the specification of the patent in accordance with section 38 so as to exclude any matter which formed part of the state of the art as aforesaid.

(2) If it appears to the Controller that—

(a) a patent under this Part and a European patent designating the State have been granted for the same invention, and

(b) the applications for both patents have the same date as their date of filing or, where priority was claimed, their date of priority, and

(c) the applications for both patents were filed by the same applicant or his successor in title,

the Controller shall give the proprietor of the patent under this Part an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the Controller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, he shall revoke the patent.

(3) The Controller shall not take action under subsection (2) before—

(a) the end of the period for filing an opposition to the European patent designating the State under the European Patent Convention, or

(b) if later, the date on which any opposition proceedings under the Convention are finally disposed of;

and he shall not then take any action if the decision is not to maintain the European patent or if it is amended so that there are not two patents in respect of the same invention.

61 Circumstances in which validity of patent may be put in issue.

61.—(1) Subject to the following provisions of this section, the validity of a patent may be put in issue only on a ground which is one of the grounds specified in section 58, and, in addition to the foregoing, such validity shall be raised only—

(a) by way of defence in proceedings for infringement under section 47 or 56, or

(b) in proceedings under section 53 or 57, or

(c) pursuant to section 77.

(2) No determination shall be made in any proceedings mentioned in subsection (1) on the validity of a patent which any person puts in issue on the ground specified in section 58 (e) unless—

(a) it has been determined, either in entitlement proceedings commenced by that person or in the proceedings in which the validity of the patent is in issue, that the patent should have been granted to him and not some other person; and

(b) except where it has been so determined in entitlement proceedings,

(i) the proceedings in which the validity of the patent is in issue are commenced before the end of the period of two years beginning on the date of the grant of the patent, or

(ii) it is shown that any person registered as a proprietor of the patent knew at the time of the grant or of the transfer of the patent to him that he was not entitled to the patent.

(3) In subsection (2) “entitlement proceedings”, in relation to a patent, means proceedings, whether by way of a reference under section 81 or otherwise, to determine the question whether a patent was granted to a person not entitled to it.

(4) It is hereby declared that, for the purposes of this Act, the validity of a patent is not put in issue by reason only of the fact that the Controller considers its validity in order to decide whether or not to revoke it under section 60.

62 Controller to be given notice of Court proceedings.

62.—The Controller shall be given notice in writing by the plaintiff or proprietor, as the case may be, of any proceedings for infringement under section 47 or 56 or of any proceedings before the Court where, under section 61, the validity of a patent is put in issue and of the decision of the Court in respect of any such proceedings.

PART III Short-Term Patents

63 Application for short-term patent.

63.—(1) An application under this Part may be made for a patent the term of which shall be ten years in lieu of the term provided for by or under section 36 in respect of a patent granted under Part II.

(2) A patent granted on such an application is referred to in this Part as a short-term patent.

(3) Part II shall apply to a short-term patent and an application for a short-term patent as it applies to a patent and an application for a patent under that Part subject to the necessary modifications and to the provisions of this Part.

(4) An invention shall be patentable under this Part if it is new and susceptible of industrial application provided it is not clearly lacking an inventive step.

(5) An application for a short-term patent shall be filed at the Office in the prescribed manner and be in the prescribed form.

(6) Rules made under Part II in relation to patent applications shall apply to an application for a short-term patent as they apply to an application under that Part except so far as otherwise prescribed, and different rules may be made in relation to short-term patents and applications for short-term patents.

(7) An application for a short-term patent shall—

(a) contain a request for the grant of a short-term patent;

(b) contain a specification which—

(i) describes the invention and the best method of performing it known to the applicant,

(ii) incorporates one or more claims, but not exceeding five, defining the matter for which protection is sought, which claims shall be clear and supported by the description, and

(iii) is accompanied by any drawing referred to in the description, claim or claims and an abstract to which section 22 shall apply.

(8) The application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which the fee may be paid.

64 Patent under Part II and a short-term patent not to co-exist for same invention.

64.—Where an application for a patent under Part II and an application for a short-term patent have been filed by the same applicant in respect of the same invention, then—

(a) the short-term patent, if granted first, shall be deemed void upon the grant of a patent under Part II,

(b) the short-term patent application shall, if pending on the date of grant of a patent under Part II, be deemed abandoned as of that date.

65 Provisions relating to short-term patents and applications therefor.

65.—(1) Sections 29, 30 and 35 shall not apply in respect of an application for a short-term patent. Sections 44 and 56 shall have effect in relation to such an application subject to section 66.

(2) Sections 40 to 43 shall have effect in relation to short-term patents subject to section 66.

(3) If a short-term patent is granted before the expiry of the period referred to in section 28 (1), the application shall be published at the same time as the publication provided for in section 34 (1).

66 Actions for infringement.

66.—(1) Civil proceedings for infringement under section 47 or 56 shall not be instituted against any person by the proprietor of a short-term patent until he has—

(a) made a request to the Controller, accompanied by the prescribed fee, to cause a search to be undertaken in relation to the invention and a report (a “search report”) of the results of the search to be prepared, and

(b) received from the Controller a copy of the search report and furnished a copy to that person.

(2) The Controller shall publish the search report referred to in subsection (1).

(3) In lieu of making the request referred to in subsection (1) (a) the applicant may, if an application for a patent for the same invention has also been filed in a prescribed foreign state or under the provisions of any prescribed convention or treaty, submit to the Controller the evidence referred to in section 30 (1); and proceedings may not be instituted until after the Controller has published any evidence so submitted to him and the proprietor has sent a copy thereof to the person concerned.

(4) The proceedings referred to in subsection (1) may be brought in the Circuit Court irrespective of the amount of a claim.

(5) References to the Court in sections 47, 49, 50, 51, 52, 54, 56 and 62 in relation to an action for infringement of a short-term patent shall be construed as including references to the Circuit Court.

(6) The Minister may, by rules, permit any person other than the proprietor to make a request to the Contoller to cause a search report to be prepared in relation to an invention which is the subject of a short-term patent. The rules may specify that such a request shall be subject to the payment of any prescribed fee. A search report prepared under this subsection shall be published by the Controller.

67 Special ground for revocation of short-term patent.

67.—Section 58 shall, so far as relevant, apply to an application for the revocation of a short-term patent: provided, however, that it shall also be a ground for revocation of a short-term patent that the claims of the specification of the patent are not supported by the description.

PART IV Voluntary and Compulsory Licences

68 Application for entry in register that licences of right are available.

68.—(1) At any time after the grant of a patent the proprietor of the patent may apply to the Controller for an entry to be made in the register to the effect that licences under the patent are to be available as of right, and where such an application is made, the Controller shall give notice of the application to any person entered on the register as being entitled to an interest in the patent, and if the Controller is satisfied that the proprietor of the patent is not precluded by contract from granting licences under the patent he shall make such entry.

(2) Where an entry is made under this section in the register the following provisions shall apply:

(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 proprietor 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 entry was made, order the licence to be exchanged for a licence of right 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 entry shall be one half of the renewal fees which would be payable if the entry had not been made.

(3) The licensee under any licence of right granted by virtue of 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 require the proprietor of the patent to take proceedings to prevent any infringement of the patent; and if the proprietor refuses or neglects to comply with a requirement under this subsection within two months after being so required, the licensee may institute proceedings for the infringement in his own name as if he were the proprietor, and in case such proceedings are initiated, the proprietor of the patent shall be made a defendant; provided that a proprietor who is so made a defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.

(4) An application for an entry under this section shall contain a statement (to be verified in such manner as may be prescribed) that the proprietor of the patent to which the application relates is not precluded by contract from granting licences under the patent, and the Controller may require from the proprietor such further evidence in this regard as he may think necessary.

(5) All entries in the register under this section shall be published in the Journal and in such other manner (if any) as the Controller thinks desirable for bringing the entry to the notice of the public.

69 Cancellation of entry.

69.—(1) At any time after an entry has been made under section 68, the proprietor of a patent may apply to the Controller for cancellation of the entry, and where such an application is made and the balance paid of all renewal fees which would have been payable if the entry had not been made, the Controller may, if satisfied that there is no existing licence under the patent, or that all licensees under the patent have consented to such cancellation, cancel the entry.

(2) If, within the prescribed period after an entry has been made under section 68, any person claims that the proprietor of the patent concerned is, and was at the time when the entry was made, by a contract in which the claimant is interested precluded from granting licences under the patent, he may apply to the Controller for cancellation of the entry.

(3) Where the Controller is satisfied, on application made under subsection (2), that the proprietor of a patent is and was precluded in the manner mentioned in subsection (2), he shall cancel the entry referred to in that subsection, and thereupon the proprietor 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 entry had not been made, and if the sum is not paid within the said period the patent shall cease to have effect on the expiration of the said period.

(4) Where an entry is cancelled under this section, the rights and liabilities of the proprietor of the patent to which the entry relates shall thereafter be the same as if the entry 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 publication of such advertisement notice of opposition to the cancellation sought may be given to the Controller by—

(a) in the case of an application under subsection (1), any person, and

(b) in the case of an application under subsection (2), the proprietor of the patent to which the application relates.

(6) Where a notice of opposition is given under subsection (5), the Controller shall notify the applicant before determining the application.

70 Compulsory licences.

70.—(1) At any time after the expiration of the period of three years, or such other period as may be prescribed, beginning on the date of the publication of notice of grant of a patent any person may apply to the Controller for a licence under the patent, or for an entry in the register to the effect that licences under the patent are to be available as of right, on one or more of the grounds specified in subsection (2).

(2) The grounds referred to in subsection (1) are the following:

(a) that the invention which is the subject of the patent, 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 in the State for a product which is protected by the patent is not being met, or is not being met on reasonable terms, or is being met to a substantial extent by importation;

(c) that the commercial working in the State of the invention which is the subject of the patent is being prevented or hindered by the importation of a product which is protected by the patent;

(d) that by reason of the refusal of the proprietor to grant a licence or licences on reasonable terms—

(i) a market for the export of a product which is protected by the patent and is manufactured in the State is not being supplied; or

(ii) the working or efficient working in the State of any other invention which is the subject of a patent and 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 proprietor upon the grant of licences under the patent, or upon the purchase, hire or use of the product or process which is the subject of the patent, 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 83 is null and void has been included in a contract in relation to the sale or lease of, or licence to use or work, any product or process protected by the patent.

(3) Subject as hereinafter provided, the Controller may, on an application being made under this section, if satisfied that any of the grounds specified in subsection (2) 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 grounds that the invention which is the subject of the relevant patent 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 grant 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 an entry in the register on the ground that a market for the export of the product which is protected by the relevant patent 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 product 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 invention which is the subject of a patent is prevented or hindered unless the Controller is satisfied that the proprietor of the patent of which the other invention is the subject is able and willing to grant to the proprietor of the patent and his licensees a licence in respect of that other invention on reasonable terms;

(d) any licence granted under this section shall be both non-exclusive and non-transferable;

(e) the terms of any licence so granted may be so framed as to preclude the licensee from importing into the State any goods the importation of which the proprietor of the patent has the right to prevent, and in case the said terms are so framed the proprietor of the patent and all licensees under the patent shall be deemed to have mutually covenanted against such importation;

(f) in settling the terms of any licence granted under this section in respect of a patent which relates to food or medicine the Controller shall endeavour to secure that food and medicine shall be available to the public at the lowest prices consistent with the proprietors of patents deriving reasonable remuneration having regard to the nature of the inventions.

(4) The Controller shall, in determining whether to make an order in pursuance of an application under this section, take account of the following matters, that is to say—

(a) the nature of the relevant invention, the time which has elapsed since the grant of the patent and the measures already taken by the proprietor 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 he 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 the fact that he is already the holder of a licence under the patent, and no person shall be estopped from alleging any of the matters mentioned in subsection (2) 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) Section 68 (3) shall apply to a licence granted in pursuance of an order under this section as it applies to a licence granted by virtue of section 68.

71 Provisions as to compulsory licences.

71.—(1) Where the Controller is satisfied, on application made under section 70, that the manufacture, use or sale of materials not protected by the relevant patent is unfairly prejudiced by reason of conditions imposed by the proprietor of the patent upon the grant of licences under the patent, or upon the purchase, hire or use of the product or process which is the subject of the patent, 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 section 70 is made by a person being the holder of a licence under the relevant patent, the Controller may, if he makes an order under section 70 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 such an order, order the existing licence to be amended.

72 Licences, etc. on application of Minister of Government.

72.—(1) At any time after the expiration of the period of three years beginning on the date of the publication of notice of grant of a patent, or such other period as may be prescribed under section 70 (1), any Minister of the Government may apply to the Controller upon any one or more of the grounds specified in section 70 for an entry in the register to the effect that licences under the patent are to be available as 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) Sections 70 (3) and 71 shall, so far as applicable, apply in relation to an application and an order made under this section as they apply in relation to an application and an order under section 70.

73 Procedure on applications under sections 70 and 72.

73.—(1) Every application under section 70 or 72 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.