Patents Act , 1992

(2) Where the Controller is satisfied, upon consideration of any application referred to in subsection (1), that a prima facie case has been made out for the making of an order, he shall direct the applicant to serve copies of the application upon the proprietor of the relevant patent and any other persons appearing from the register to be interested in the patent in respect of which the application is made, and shall advertise the application in the Journal.

(3) The proprietor of the relevant patent or any other person desiring to oppose an application referred to in subsection (1) may, within such time as may be prescribed, give to the Controller notice of opposition.

(4) A notice of opposition given under this section shall contain a statement (to be verified in such manner as may be prescribed) setting out the grounds on which the relevant application is opposed.

(5) Where a notice of opposition is duly given under this section, the Controller shall notify the applicant and shall, subject to the provisions of section 74 with respect to arbitration, determine the question.

74 Appeals and references to arbitrator.

74.—(1) On any appeal from any order made by the Controller in pursuance of an application under section 70 or 72 the Attorney General shall be entitled to appear and be represented.

(2) Where an application is opposed and either—

(a) the parties consent; or

(b) the proceedings require a prolonged examination of documents or any scientific or local investigation which cannot, in the opinion of the Controller, conveniently be made before him,

the Controller may at any time order the whole proceedings, or any question or issue of fact arising therein, to be referred to an arbitrator agreed on by the parties, or, in default of agreement, appointed by the Controller.

(3) Where the whole proceedings are referred under this section, section 35 of the Arbitration Act, 1954 (which relates to the statement of cases by arbitrators for the decision of the Court), shall not apply to the arbitration; but unless the parties otherwise agree before the award of the arbitrator is made, an appeal to the Court shall lie from the award.

(4) Where a question or issue of fact is referred under this section, the arbitrator shall report his findings to the Controller.

75 Supplementary provisions as to licences.

75.—(1) Any order under this Act for the grant of a licence shall, without prejudice to any other method of enforcement, have effect as if it were a deed, executed by the proprietor of the patent and all other necessary parties, granting a licence in accordance with the order.

(2) An order may be made on an application under section 70 or 72 for an entry in the register to the effect that licences under the relevant patent are to be available as of right notwithstanding any contract which would have precluded the making of such an entry in respect of the patent on the application of the proprietor of the patent under section 68, and any such order shall for all purposes have the same effect as an entry made in pursuance of an application under section 68.

(3) No order shall be made in pursuance of any application under section 70 or 72 which would be at variance with the Treaty establishing the European Economic Community.

PART V Use of Inventions for the Service of the State

76 Assignment of invention, application, or patent to Minister of Government.

76.—(1) Any inventor, or any applicant for or proprietor of a patent, may (either for or without valuable consideration) make to a Minister of the Government, and such Minister may take on behalf of the State, an assignment of the whole of or any share or interest in the benefit of an invention, of a patent application therefor, or of any patent obtained or to be obtained therefor, and where a Minister of the Government takes any such assignment, such Minister may do, or, as may be appropriate, join in doing, on behalf of the State, all or any of the following things, that is to say—

(a) develop and perfect such invention,

(b) form or promote an incorporated company or an unincorporated association of persons to develop and perfect such invention,

(c) sell or lease any such patent application or patent or grant licences under any such application or patent on such terms as he shall, with the agreement of the Minister for Finance, think proper,

(d) form or promote an incorporated company or an unincorporated association of persons to work commercially any such invention,

(e) do all such things as may be necessary for the maintenance or preservation of any such application or patent or be otherwise incidental to the ownership thereof.

(2) Every Minister of the Government shall, before the 1st day of April in every year, lay before each House of the Oireachtas a report of every (if any) exercise by him during the year ending on the previous 31st day of December of the several powers conferred on him by paragraph (c) or (d) of subsection (1) and also, if and so far as he considers it to be in the public interest, of any or all of the powers conferred by paragraph (a), (b) or (e) of subsection (1).

(3) All expenses incurred by a Minister of the Government under this section shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas.

77 Right to use inventions for service of State.

77.—(1) A patent and a patent application shall have to all intents the like effect as against the State as it has against an individual; provided that any Minister of the Government may, by himself or by such of his officers, servants or agents as may be authorized in writing by him or by any other person acting on his behalf at any time after the making of an application for a patent, do for the service of the State any of the following acts in the State in relation to an invention which is the subject of the application or patent, without the consent of the applicant for or the proprietor of the patent, that is to say—

(a) where the invention is a product, make, use, import or stock the product or dispose of or sell or offer to dispose of or sell it to any person;

(b) where the invention is a process, use it or do in relation to any product obtained directly by means of the process anything mentioned in paragraph (a);

(c) supply or offer to supply to any person any of the means, relating to an essential element of that invention, for putting the invention into effect.

(2) Any thing done by virtue of subsection (1) in relation to an invention which is the subject of an application or a patent, is subsequently in this section and in section 78 referred to as “use of the invention” and the doing of any such thing shall not amount to an infringement of the application or patent concerned.

(3) Use of an invention under this section shall be subject to such terms as may, either before or after the use thereof, be agreed on, with the approval of the Minister for Finance, by any Minister of the Government and the applicant for or the proprietor of the patent relating to the invention, or, in default of agreement, as may be settled in the manner hereinafter provided, and the terms of any agreement or licence concluded between such applicant or proprietor and any person other than a Minister of the Government shall not operate to prevent or regulate the use of the invention for the service of the State.

(4) Where an invention which is the subject of any patent or application for a patent has, before the date of filing, or, where priority is claimed, the priority date of the application, been duly recorded in a document by, or been tried by or on behalf of any Minister of the Government (such invention not having been communicated directly or indirectly by the applicant for or the proprietor of the relevant patent), any Minister of the Government or such of his officers, servants or agents as may be authorized in writing by him, may use the invention so recorded or tried for the service of the State free of any royalty or other payment to the applicant for or the proprietor of the patent, notwithstanding the existence of the application or patent, and, if in the opinion of such Minister the disclosure to the applicant or the proprietor, as the case may be, of the document recording the invention or the evidence of the trial thereof would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of such applicant or proprietor or to any independent expert mutually agreed upon.

(5) Where any use of an invention is made by or with the authority of a Minister of the Government under this section, then, unless it appears to such Minister that it would be contrary to the public interest so to do, the Minister shall notify the applicant for or the proprietor of a patent (if any) relating to the invention as soon as practicable after the use is begun and furnish him with such information as to the extent of the use as he may from time to time reasonably require.

(6) In the case of any dispute as to or in connection with the use of an invention under this section or the terms therefor, or as to the existence or scope of any record or trial referred to in subsection (4), the matter shall be referred to the Court for decision, and the Court shall have the power to refer the whole matter or any question or issue of fact arising thereon to be heard by an arbitrator upon such conditions as it may direct; the Court or arbitrator in settling the dispute shall be entitled to take into consideration any benefit or compensation which the applicant for or proprietor of a patent (if any) relating to the invention or any other person interested in such application or in such patent may have received directly or indirectly from the State in respect of such application or patent.

(7) In any proceedings under this section the Minister of the Government who is a party to the proceedings may—

(a) put in issue the validity of the relevant patent without applying for its revocation;

(b) if the proprietor of a patent is a party to the proceedings, apply for revocation of the patent upon any ground upon which a patent may be revoked under section 58.

(8) The right to use an invention for the service of the State under the provisions of this section shall include a power to dispose of or sell, or offer to dispose of or sell, any products made in pursuance of such right which are no longer required for the service of the State.

(9) Any person who acquires products disposed of or sold in the exercise of powers conferred by this section and any person claiming through him shall have power to deal with the products in the same manner as if they had been made pursuant to a patent held on behalf of the State.

(10) In this section “service of the State” means a service financed out of moneys charged on or advanced out of the Central Fund or moneys provided by the Oireachtas or by a local authority for the purposes of the Local Government Act, 1941.

78 Use of inventions pursuant to section 77; supplementary provisions.

78.—(1) During any period when an order under subsection (2) (a) is in force the power exercisable in relation to an invention by a Minister of the Government, or a person authorized by a Minister of the Government under section 77, shall include power to use the invention for any purpose which appears to such Minister to be necessary or expedient—

(a) for the maintenance of supplies and services essential to the life of the community;

(b) for securing a sufficiency of supplies and services essential to the well-being of the community;

(c) for promoting the productivity of commerce and industry, including agriculture;

(d) generally for ensuring that the whole resources of the community are available for use and are used, in a manner best calculated to serve the interests of the community;

(e) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any country or territory other than the State that is in grave distress; or

(f) for ensuring the public safety and the preservation of the State.

(2) (a) Where the Government are of opinion that, owing to the existence of exceptional circumstances, it is desirable in the interests of the community that a power conferred by subsection (1) shall be available, they may by order declare that the power shall be available.

(b) Where an order under paragraph (a) of this subsection is for the time being in force and the Government are of the opinion that the exceptional circumstances referred to in that paragraph no longer exist, they shall by order revoke the first-mentioned order.

PART VI Property in Patent Applications and Patents Contract Conditions

79 Nature of patent applications and patents.

79.—Subject to section 80, the rules of law applicable to the ownership and devolution of personal property shall apply in relation to patent applications and patents as they apply in relation to other choses in action.

80 Co-ownership of patent applications and patents.

80.—(1) Where a patent is applied for by, or is granted to, two or more persons, each of those persons shall, unless an agreement to the contrary is in force, be entitled to an equal undivided share in common in the patent application or patent, as the case may be.

(2) Subject to the provisions of this section where two or more persons are entered in the register as applicants for or proprietors of a patent, then, unless an agreement to the contrary is in force, each of those persons shall be entitled, by himself or his agents, to do in respect of the invention concerned for his own benefit without accounting to the others any act which would, apart from this subsection, amount to an infringement of the patent application or patent concerned.

(3) Subject to any agreement for the time being in force, a licence under a patent or a published patent application shall not be granted, and a share in a patent or in any such application shall not be assigned, except with the consent of all persons, other than the licensor or assignor, who are entered in the register as applicants for or proprietors of the patent.

(4) Subject to the provisions of this section, where two or more persons are entered in the register as applicants for or proprietors of a patent, any other person may supply one of those persons with means, relating to an essential element of the relevant invention, for putting the invention into effect, and the supply of those means by virtue of this section shall not amount to an infringement of the patent application or patent.

(5) Where a product is sold by one of two or more persons who are entered in the register as applicants for or proprietors of a patent in respect of the product, the purchaser and any person claiming through him shall be entitled to deal with it in the same manner as if the product had been sold by a sole applicant for or sole proprietor of a patent relating to the product.

(6) Nothing in subsection (1) or (2) shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

81 Determination of entitlement to patents, etc.

81.—(1) Any person may refer to the Court the question whether, by operation of law or otherwise, he is entitled (alone or jointly with any other person) to any patent granted or to be granted in the State for an invention, and the Court may make such order (including an order of apportionment) for giving effect to its decision as it considers expedient.

(2) The Court on a reference under this section, or in the exercise of any declaratory or other jurisdiction, shall not determine a question whether a patent was granted to a person not entitled to be granted the patent if the reference was made or the action was commenced after the end of the period of two years beginning on the date of the grant, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer or assignment of the patent to him, that he was not entitled to the patent.

(3) An order under this section shall not be made so as to affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

(4) When the Court finds on a reference under this section, or in the exercise of any declaratory or other jurisdiction, that a patent was granted to a person who was not entitled to be granted that patent (whether alone or with other persons) and on an application made under section 57 the Court or Controller makes an order by reason of the persons not being so entitled for the conditional or unconditional revocation of the patent, the Court or Controller may order that the person by whom the application was made or his successor in title may make a new patent application—

(a) in the case of unconditional revocation, for the whole of the matter comprised in the specification of that patent, and

(b) in the case of conditional revocation, for the matter which in the opinion of the Court or the Controller should be excluded from the specification by amendment under section 38,

and when such a new application is made, it shall be treated as having been filed on the date of filing of the application for the patent to which the reference or other proceedings relate and shall have the benefit of any right to priority.

(5) A new patent application shall not be allowed to be filed under subsection (4) in respect of subject-matter which extends beyond the content of the original patent application.

82 Effect of change of proprietorship.

82.—(1) Where there is a complete change of proprietorship of a patent as a result of an order of the Court transferring the patent to one or more persons none of whom immediately before the transfer had a proprietary interest in the patent (on the ground that the patent was granted to a person who was not entitled to be granted the patent), then, subject to subsection (2), licences and other rights which, as regards the relevant patent, were in force immediately before such transfer shall lapse upon the entry in the register of the name of the person or persons entitled to the patent.

(2) Where an order referred to in subsection (1) is made, the Controller shall notify the person or persons registered as proprietor or proprietors of the relevant patent and their licensees (if any) of whom he is aware, of the making of the order, and where the proprietor or proprietors or such a licensee acting in good faith has, before the commencement of the proceedings in which the order is made, used the invention within the State or made effective and serious preparations to do so, he may continue such use if, but only if, he requests, within the period prescribed, a non-exclusive licence under the patent from the new proprietor whose name is entered in the register.

(3) A licence granted under subsection (2) shall be for a reasonable period and upon reasonable terms and failing agreement between the parties concerned the terms of the licence shall be determined by the Controller.

83 Avoidance of certain conditions in contracts.

83.—(1) It shall not be lawful to include in any contract in relation to the sale or lease of, or licence to use or work, any product or process which is the subject of a patent application or patent a condition which, directly or indirectly, would—

(a) prevent or restrict a party to the contract from using any product or process, whether or not the subject of a patent application or patent, which in either case is supplied or owned by any person other than a party to the contract or his nominee;

(b) require any such party to acquire from any other such party, or his nominee, any product which is not the subject of a patent application or a patent;

and any such condition, if so included, shall be null and void; provided that this subsection shall not apply if—

(i) the party seeking to rely on the condition proves that at the time the contract was entered into the party which the condition purports to bind had the option of purchasing the relevant product or obtaining a lease or licence in relation thereto on reasonable terms, without the conditions described in paragraphs (a) and (b) of this subsection; and

(ii) the contract entitles the party to the contract which the condition purports to bind to relieve himself of his liability to observe the condition on giving to the other party three months notice in writing and on the payment of compensation for such relief, in the case of a purchase, of such sum, or in the case of a lease or licence, of such rent or royalty for the residue of the term of the contract, as may be fixed by an arbitrator appointed by the Minister.

(2) In any proceedings under this Act no person shall be estopped from applying for or obtaining relief by reason only of any admission made by him as to the reasonableness of the terms offered to him under paragraph (i) of the proviso to subsection (1).

(3) Any contract for or relating to a lease of or a licence to use or work any product or process which, at the time when the contract is made, is the subject of one or more patent applications or one or more patents may, at any time after the patent or all of the patents, as may be appropriate, by which the product or process was protected or the patent or patents, as may be appropriate, resulting from such application or applications, has or have ceased to be in force, be determined by either party to the contract on giving three months notice in writing to the other party to the contract notwithstanding anything to the contrary contained in that or in any other contract.

(4) The inclusion by the proprietor of or applicant for a patent in a contract of any condition which by virtue of this section is null and void shall be available as a defence to an action for infringement of the patent or application to which the contract relates brought while that contract is in force.

(5) Nothing in this section shall—

(a) affect any condition in a contract whereby a person is prohibited from selling any goods other than those of a particular person; or

(b) be construed as validating any contract which would, apart from this section, be invalid; or

(c) affect any right of determining a contract or conditions in a contract exercisable independently of this section; or

(d) affect any condition in a contract for the lease of or licence to use a product which is the subject of a patent application or patent, whereby a party to the contract reserves to himself or his nominees the right to supply such new parts of the product as may be required to put or keep it in repair.

PART VII Register of Patents; Evidence of Register, Documents, Etc.

84 Register of patents.

84.—(1) There shall continue to be kept at the Office a register to be known as the Register of Patents in which there shall be entered particulars of published patent applications, of patents in force, of assignments and transmissions of, and of licences under, patents and published applications, and notice of all matters which are required by or under this Act to be entered in the register and of such other matters affecting the validity or proprietorship of published applications and patents as the Controller thinks fit.

(2) Rules under this section may make provision for the register, or entries or reproductions of entries in it, to be open to inspection by the public at all convenient times and for copies of any entry in the register to be given to any person requiring them on payment of the prescribed fee.

(3) Rules under this section may make provision for the register, entries therein and reproductions thereof to be made and kept in any form whether by means of writing, printing, lithography, photography, electromagnetism or any electronic or other mode of retaining, storing or reproducing information.

(4) The register shall be prima facie evidence of any matters required or authorized by or under this Act to be entered therein.

(5) No notice of any trust, whether express, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice.

85 Assignment, etc. of patent applications and patents.

85.—(1) Where a person becomes entitled by assignment or transmission, operation of law or any other mode of transfer to an interest in a published patent application or a patent, or to a share in such an application or patent, or becomes entitled as mortgagee, licensee or otherwise to any other interest in such an application or patent he shall apply to the Controller in the prescribed manner for the registration of his title as applicant or co-applicant, proprietor or co-proprietor, or, as the case may be, of notice of his interest, in the register.

(2) An application for the registration in the register of the title of any person becoming entitled by assignment to a published patent application or a patent, or a share in such an application or patent, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in such an application or patent, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to the instrument by which the assignment is made.

(3) Where application is made under subsection (1) or (2) for the registration of the title of any person, the Controller shall, upon proof of title to his satisfaction—

(a) that the person is entitled to an interest in a published patent application or a patent, or a share in such an application or patent, register him in the register as applicant or co-applicant for the patent, or proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or event by which he derives title; or

(b) that the person is entitled to any other interest in the application or patent, enter in the register notice of his interest, with particulars of the instrument (if any) creating it.

(4) An entry in the register that a person has an interest in a published patent application, or in a patent by virtue of a mortgage, licence or other instrument, may be cancelled by the Controller if he is satisfied, upon an application's being made in the prescribed manner by the person registered as applicant for the patent or proprietor of the patent, that such interest has ceased, and in case the Controller is so satisfied he shall note in the register the cancellation of such entry.

(5) Subject to the provisions of this Act relating to co-ownership of patent applications and co-ownership of patents, and subject also to any rights vested in any other person of which notice is entered in the register, the person registered as applicant for a patent or proprietor of a patent shall have power to assign, grant licences under, or otherwise deal with the application or patent, and to give effectual receipts for any consideration for any such assignment, licence or dealings; provided that any equities in respect of the application or patent may be enforced in like manner as equities arising in respect of any other personal property.

(6) Rules under this Act may require the supply for the purposes of this section to the Controller for filing at the Office of copies of such deeds, licences and other documents as may be prescribed.

(7) Except for the purposes of an application to amend the register under section 86, a document in respect of which no entry has been made in the register under subsection (3) shall only be admitted in any court as evidence of the title of any person to a patent application or patent or share of or interest in a patent application or patent if the court so directs.

(8) If the Controller is satisfied, on a claim made in the prescribed manner at any time before a patent is granted, that, by virtue of any assignment or agreement made by the applicant or one of the applicants, or by a decision under section 81, the claimant would, if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, the Controller shall direct that the application shall proceed in the name of the claimant or in the names of the claimant and the applicant or each of the other such applicants, according as the case may require; provided that no such direction as aforesaid shall be given by virtue of any assignment or agreement made by one of two or more joint patent applicants except with the consent of the other joint applicant or each of the other such applicants.

86 Power of Court to amend register.

86.—(1) Subject to subsection (7), the Court may, on the application in the prescribed manner of any person aggrieved by the non-insertion in, or omission from, the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining in the register, or by an error or defect in any entry in the register, make such order for making, expunging, or varying such entry as it may think fit.

(2) The Court may in any proceedings under this section decide any question that it may be necessary or expedient to decide in connection with the amendment of the register.

(3) The prescribed notice of any application under this section shall be given to the Controller, who shall have the right to appear and be heard thereon, and shall appear if so directed by the Court.

(4) Unless otherwise directed by the Court, the Controller may, in lieu of appearing and being heard, submit to the Court a statement in writing, signed by him, giving particulars of the proceedings before him in relation to the matter in issue, or of the grounds of any decision given by him affecting the same, or of the practice of the Office in like cases, or of such matters relevant to the issues, and within his knowledge as Controller, as he shall think fit, and such statement shall be deemed to form part of the evidence in the proceedings.

(5) In the case of fraud in the registration or transmission of a patent application or a patent, the Controller may apply on his own motion to the Court under this section.

(6) Any order of the Court for the amendment of the register shall provide for service of notice of the amendment on the Controller in the prescribed manner and on receipt of any such notice the Controller shall amend the register in accordance with the terms of the order to which the notice relates.

(7) Any application under this section (other than an application by the Controller) may, at the option of the applicant, be made in the first instance to the Controller, and in such case the Controller shall have all the powers of the Court under this section to decide the matter.

87 Certificate of Controller and certified copies of documents to be evidence.

87.—(1) A certificate purporting to be under the hand of the Controller as to any entry, matter, or thing which he is authorized by this Act to do, or by any rules made thereunder, to make or do, shall be prima facie evidence of the entry having been made, and of the contents thereof, or, as may be appropriate, of the matter's or thing's having been done or left undone.

(2) Copies or extracts, purporting to be certified by the Controller or an officer of the Controller and sealed with the seal of the Controller, and purporting to be of or from applications for patents, patents, or other documents or books in the Office, or of or from registers kept there shall be admitted in any legal proceedings as prima facie evidence without further proof or production of the originals.

88 Information about and inspection of patent applications and patents.

88.—(1) After publication of a patent application under section 28 the Controller shall, on a request's being made in the prescribed manner and on payment of the prescribed fee, give the person making the request such information as may be prescribed and permit him to inspect such documents, relating to the application or to any patent granted in pursuance of the application, as may be specified in the request subject, however, to any prescribed restrictions.

(2) Subject to subsection (3), until a patent application is published under section 28, documents or information constituting or relating to the application shall not, without the consent of the applicant, be published or communicated to any person by the Controller.

(3) Subsection (2) shall not prevent the Controller from—

(a) sending the European Patent Office information which it is his duty to send that office under the European Patent Convention; or

(b) publishing or communicating any prescribed bibliographic information about an unpublished patent application; or

(c) giving information as to whether an unpublished patent application has been either withdrawn or is deemed to be withdrawn.

89 Request for search.

89.—The Controller may, on a request being made to him in the prescribed manner by any person, and on payment of the prescribed fee, cause a search to be made as regards any product, process or apparatus specified by the person making the request and amongst such categories of documents as are so specified, being categories of documents which for the time being stand prescribed for the purposes of this section and cause to be furnished the results of such search to the person.

PART VIII Proceedings Before the Controller or the Court

90 Exercise of discretionary power by Controller.

90.—Where any discretionary power is by or under this Act given to the Controller, he shall not exercise that power adversely to any applicant for or proprietor of a patent or to any party in any proceeding before him without giving that applicant, proprietor or party an opportunity of being heard as regards such exercise.

91 Costs and security for costs.

91.—(1) The Controller may, in any proceeding before him under this Act, order the payment to any party of such costs (if any) as he may consider reasonable, and direct how and by what parties they are to be paid, and any such order may be made a rule of court.

(2) If any party by whom notice of any opposition is given to the Controller under this Act or by whom an application is made to the Controller for the revocation of a patent or for the grant of a licence under a patent, or by whom notice of appeal is given from any decision of the Controller under this Act, neither resides nor carries on business in the State or in such other states as may be prescribed, the Controller, or, in the case of an appeal, the Court, may require the party to give security for the costs of the proceedings and in default of a requirement under this subsection being complied with the Controller or the Court, as may be appropriate, may treat the opposition, application or appeal as abandoned.

92 Evidence before Controller.

92.—(1) In any proceeding under this or any other enactment before the Controller, evidence shall be given by statutory declaration in the absence of directions to the contrary; but in any case in which the Controller thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by such declaration.

(2) Any such statutory declaration in pursuance of subsection (1) may in the case of an appeal be used in lieu of evidence on affidavit, but if so used shall have all the incidents and consequences of evidence on affidavit.

(3) The Controller may for the purposes of any of the functions assigned to him by this Act do all or any of the following things—

(a) summon witnesses to attend before him;

(b) examine on oath or affirmation (which he is hereby authorized to administer) or permit the examination on oath or affirmation of the witnesses attending before him;

(c) require any such witness to produce to him any document relevant to the proceedings and which is within his power to produce;

(d) permit evidence to be given on affidavit or other sworn testimony instead of, or in addition to, evidence given by statutory declaration, or orally.

(4) A witness summons under this section shall be signed by the Controller.

(5) A witness before the Controller shall be entitled to the same immunities and privileges as if he were a witness before the Court.

(6) If any person—

(a) on being duly summoned as a witness before the Controller makes default in attending, or

(b) being in attendance as witness refuses to take an oath or affirmation duly required by the Controller to be taken, or to produce any document which is within his power to produce and which is duly required by the Controller to be produced by him, or to answer any question to which the Controller may properly require an answer,

he shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £1,000.

93 Right of audience before Controller.

93.—Any party to a proceeding before the Controller under this Act may be represented by counsel or a solicitor, or by a patent agent who is for the time being registered in the register within the meaning of Part X, or may appear before the Controller in person or be represented by any other person, whom he desires to represent him, being a person to whom section 106 (3) applies.

94 Privileged communications.

94.—(1) A communication to which this section applies shall be privileged from disclosure in any proceeding (including a proceeding before the Controller or competent authority under the European Patent Convention or the Treaty) to the same extent as a communication between client and solicitor is privileged in any proceeding before a court in the State.

(2) This section applies to a communication—

(a) between a person, or person acting on his behalf and a solicitor or patent agent, or person acting on his behalf, or

(b) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a solicitor or patent agent

in relation to any matter concerning the protection of an invention, patent, design or technical information or any matter involving passing off.

(3) In this section “patent agent” means a person registered as a patent agent in the register of patent agents, a company or partnership lawfully practising as a patent agent in the State or a person or partnership who satisfies the condition mentioned in subsection (1) or (3) of section 125.

95 Assessors.

95.—(1) In an action or proceedings for infringement or revocation of a patent, or other proceedings under this Act, the Court may, if it thinks fit, and shall, on the request of all parties to the proceedings, call in the aid of an assessor specially qualified in the opinion of the Court, and try the case wholly or partially with his assistance.

(2) The Supreme Court may, if it thinks fit, in any proceedings before it relating to a patent application or a patent call in the aid of an assessor as aforesaid.

(3) The remuneration, if any, to be paid to an assessor under this section shall be determined by the Court or the Supreme Court, as may be appropriate, and be paid as part of the expenses incurred by the Minister in the administration of this Act.

96 Appeals from decisions of Controller.

96.—(1) An appeal to the Court shall lie from any decision or order of the Controller other than a decision under section 22 (2) orsection 28 (5).

(2) Any appeal under this Act which concerns a patent application which has not been published shall be heard in private.

(3) In any appeal under this Act the Controller shall be entitled to appear or be represented and be heard in support of his decision and shall appear if so directed by the Court.

(4) In any appeal under this Act the Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.

(5) Rules of court for the conduct of appeals under this Act may include provisions for the appointment of scientific advisers to assist the Court, and for regulating the functions of such advisers; and the remuneration of any such scientific adviser shall be defrayed out of moneys provided by the Oireachtas.

(6) Save where otherwise provided in this Act, an appeal, except by leave of the Court, from an order or decision of the Controller shall not be entertained unless notice to the Court is given within the period of three months beginning on the date of the order or decision appealed against.

(7) An appeal to the Supreme Court from a decision of the Court under this section shall lie only on a question of law.

(8) In an appeal under this Act the Controller shall not be awarded or be ordered to pay costs.

PART IX The Controller: Supplementary Provisions

97 Appointment of Controller.

97.—(1) (a) The Government shall appoint as occasion arises a fit person to the office of Controller who shall hold office on such terms and conditions as the Government shall, at the time the appointment is made, determine.

(b) The person holding the office of Controller immediately before the commencement of this section shall continue to hold that office on the same terms and conditions, including conditions as to superannuation or other allowance or gratuity, as those on which he held the office theretofore.

(2) The Controller shall receive such remuneration as the Minister for Finance shall determine.

(3) The Controller shall be a civil servant in the Civil Service of the State.

(4) Whenever the Controller is temporarily unable to attend to his duties or his office is vacant, the Minister may appoint a person to perform the duties of the Controller during such inability or vacancy, and every person so appointed shall for as long as the appointment remains in force have all the powers of the Controller under this Act and as otherwise determined by law and shall receive such remuneration as the Minister shall, with the sanction of the Minister for Finance, direct.

(5) The Controller may authorize any of his officers to exercise any of his functions under this Act or any other enactment and any such function shall, when exercised for the purpose of such enactment, be deemed to have been exercised by the Controller.

(6) An authorization under subsection (5)—

(a) may be made subject to such directions as the Controller may specify,

(b) shall, while in force, not prevent the discharge by the Controller of the functions thereby delegated, and

(c) may at any time be modified or revoked by the Controller.

98 Appointment of officers of Controller.

98.—(1) The officers of the Controller shall be appointed by the Minister and there shall be such number of officers as the Minister, with the sanction of the Minister for Finance, may consider necessary and those persons shall hold office upon such terms and be remunerated at such rates and in such manner as the Minister for Finance may sanction.

(2) The salaries or remuneration of the Controller and his officers and such other expenses of carrying this Act into effect as may be sanctioned by the Minister for Finance shall be paid out of moneys provided by the Oireachtas.

(3) Persons who immediately before the commencement of this section were officers of the Controller shall continue to hold office under this Act on the same terms and conditions (subject to the provisions of this Act) as theretofore.

99 Fees.

99.—(1) There shall be charged by the Controller and paid in respect of matters relating to applications for and the grant and renewal of patents or other matters determined by law as coming within the functions of the Controller, such fees as may from time to time be prescribed by the Minister with the sanction of the Minister for Finance.

(2) All fees charged by the Controller under this section shall be collected and accounted for in such manner as shall be determined by the Minister with the consent of the Minister for Finance.

(3) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this section.

100 Official Journal and publication of information.

100.—(1) The Controller shall issue periodically a journal to be known as the Patents Office Journal (which is referred to in this Act as “the Journal”) in which he shall include all matters which he is directed by this Act or otherwise by law to publish in the Journal and also such matters and information as appear to him to be useful or important in relation to patents or applications for patents and other matters for which he is responsible under this Act or otherwise by law and references in any enactment to the Official Journal of Industrial and Commercial Property shall each be construed as including a reference to the Journal.

(2) The Controller may prepare for publication and publish such matters, records and information as appear to him to be useful or important in relation to inventions, designs, patents, trade marks, copyright and patent and trade mark applications whether the matters, records or information originate within the State or elsewhere.

(3) The Controller shall make provision for the sale of copies of all documents which he is, by law, directed to issue or publish and may make such provision as he deems expedient for the sale of copies of other documents, information or records which he is by law authorized to publish.

101 Certain reports to be privileged.

101.—Except as provided by this Act or as prescribed by the Minister, reports of the Controller and officers of the Controller made under this Act or under any other enactment for the administration of which the Controller is responsible shall not be published or be open to public inspection and shall not be liable to production or inspection in any legal proceedings unless the Court or any officer having power to order discovery in such proceedings certifies that such production or inspection is desirable in the interests of justice and ought to be allowed.

102 Controller may apply to Attorney General for advice.

102.—The Controller may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act or of any other enactment for the administration of which he is responsible, apply to the Attorney General for advice in the matter.

103 Annual report.

103.—The Controller shall prepare a report in respect of each year ending 31st December respecting the execution by or under him of this Act and of any other enactment for the administration of which he is responsible and he shall cause the report to be laid before each House of the Oireachtas within 6 months following the end of the year to which it relates. The report shall include, in respect of the year to which it relates, particulars of all rules made in that year under or for the purposes of the said Act or enactments and an account of all fees, salaries and allowances, and other money received and paid under the Act or enactments.

104 Hours of business and excluded days.

104.—(1) Rules made by the Minister under section 114 may specify the hour at which the Office shall be deemed to be closed on any day for the purpose of the transaction by the public of business under this Act or such other business as may by law be made a function of the Controller or of any class of such business, and may specify days as excluded days for any such purposes.

(2) Any business done under this Act on any day after the hour specified as aforesaid or on a day which is an excluded day, in relation to business of that class, shall be deemed to have been done on the next following day not being an excluded day; and where the time for doing anything under this Act expires on an excluded day, the time shall be extended to the next following day not being an excluded day.

PART X Patent Agents

105 Authorized agent may act.

105.—(1) Subject to rules under section 109 (2) or 114, whenever under this Act any act has to be done by or to any person in connection with a patent or any procedure relating to a patent or the obtaining thereof, the act may be done by or to an agent (in this Act referred to as a “patent agent”) of such person duly authorized in the prescribed manner.

(2) A person duly authorized by another person under subsection (1) to act as his patent agent may (subject to any provision to the contrary in any agreement between the patent agent and that person) on giving notice to the Controller and the other person, cease to act as patent agent for the other person.

106 Unauthorized claim to be patent agent.

106.—(1) The register which, immediately before the commencement of this section, was known as the register of patent agents shall continue to be known as such and to be maintained by the Controller (which register is in this Part referred to as “the register”).

(2) Subject to the subsequent provisions of this section—

(a) a person acting for gain shall not, either alone or in partnership with any other person, practise, describe himself or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is for the time being registered as a patent agent in the register, or, in case he is a member of a partnership holding itself out as patent agents, unless he and all his partners are so registered;

(b) a company acting for gain shall not practise, describe itself or hold itself out or permit itself to be described or held out as aforesaid unless every director of the company and, if the company has a manager who is not a director, that manager, is registered as aforesaid.

(3) The Minister may, at his discretion, permit any person not registered as aforesaid, upon application made by that person, to act on behalf of others for the purpose of obtaining patents subject to any conditions he considers appropriate.

(4) The legal personal representative of a deceased patent agent may carry on the business or practice of the deceased patent agent for a period not exceeding three years from the death of the patent agent, or for such further period (if any) as the Court allows, if he is authorized by the Court to manage the business or practice or employs another person who is so authorized to manage the business or practice on his behalf.

(5) Any person who contravenes any provision of this section shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £500 in the case of a first offence, and in the case of a second or subsequent offence, £1,000.

(6) Notwithstanding section 10 (4) of the Petty Sessions (Ireland) Act, 1851, proceedings for an offence under this section may be begun at any time within twelve months from the date of the offence.

(7) Nothing in this Act shall be construed as prohibiting solicitors from taking such part in proceedings under this Act as has heretofore been taken by solicitors in connection with a patent or any procedure relating to a patent or the obtaining thereof.

(8) A patent agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by persons not legally qualified), by reason only of the preparation by him of a deed assigning the right to make an application for a patent, or the property in a patent application or a patent, or any document (not being a deed) for use in proceedings under this Act before the Controller or the Court.

107 Entitlement to be registered as patent agent.

107.—(1) Any person who—

(a) resides in the State or in such other state as may be prescribed,

(b) has a place of business in the State,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be registered in the register and a partnership shall be so eligible if every partner thereof is registered in accordance with the provisions of this section and a person or partnership so eligible shall on application in the prescribed form and manner and on payment of the prescribed fee be so registered.

(2) Persons and partnerships whose names were entered in the register under the Act of 1964 immediately before the commencement of this Act shall be deemed to be registered in the register.

108 Removal from register or suspension of registration of patent agents.

108.—(1) Any person registered in the register who applies to the Controller to be removed from the register may be removed by the Controller.

(2) Where, in the opinion of the Controller, a person registered in the register ceases to be eligible to be registered or has been guilty of conduct disgraceful to that person in his capacity as a patent agent the Controller may decide that the name of that person should be erased from the register or that during a period of specified duration registration of his name in the register should not have effect, but no such decision shall be made without giving that person an opportunity of being heard.

(3) On making a decision under subsection (2), the Controller shall forthwith send by post to the person to whom the decision relates, at his address as stated in the register, a notice in writing stating the decision, the date thereof and the reason therefor.

(4) On giving notice to the Controller in the prescribed manner, a person to whom a decision under this section relates may, within the period of 21 days, beginning on the date of the decision, apply to the Court for cancellation of the decision and if he so applies—

(a) the Court, on hearing the application, may either—

(i) cancel the decision, or

(ii) declare that it was proper for the Controller to make a decision under this section in relation to such person and either (as the Court may consider proper) direct the Controller to erase his name from the register or direct that during a specified period (beginning not earlier than 7 days after the decision of the Court) registration of his name in the register shall not have effect.

(b) If at any time the Controller satisfies the Court that such person has delayed unduly in proceeding with the application, the Court shall, unless it sees good reason to the contrary, declare that it was proper for the Controller to make a decision under this section in relation to such person and either (as the Court may consider proper) direct the Controller to erase his name from the register or direct that during a specified period (beginning not earlier than 7 days after the decision of the Court) registration of his name in the register shall not have effect.

(5) The Controller shall not be awarded or be ordered to pay costs on an application under this section.

(6) Where a person to whom a decision of the Controller under this section relates does not, within the period of 21 days beginning on the date of the decision, apply to the Court for cancellation of the decision, the Controller may apply ex parte to the Court for confirmation of the decision and, if the Controller so applies, the Court on the hearing of the application shall, unless it sees good reason to the contrary, declare accordingly and either (as the Court may consider proper) direct the Controller to erase the name of such person from the register or direct that during a specified period (beginning not earlier than 7 days after the decision of the Court) registration of his name in the register shall not have effect.

(7) The decision of the Court on an application under this section shall be final, save that, by leave of the Court or the Supreme Court, an appeal, by the Controller or the person concerned, from the decision shall lie to the Supreme Court on a specified question of law.

(8) (a) On erasing the name of a person from the register the Controller shall forthwith send by pre-paid post to such person, at his address as stated in the register, notice in writing of the erasure.

(b) Where a direction is given under this section that during a specified period registration of the name of a person in the register shall not have effect, the Controller shall, before the commencement of that period, send by prepaid post to such person, at his address as stated in the register, notice in writing of such direction.

(9) The name of any person which has been erased from the register may at any time be restored to the register by direction of the Controller but not otherwise, and when a person's name is so restored to the register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by such person for registration if he was then being registered for the first time) as he thinks fit.

(10) Where the registration of a person in the register has ceased to have effect under this section for a period of specified duration, the Controller may, if he so thinks fit, on application made to him by such person, by direction terminate the suspension.

109 Rules relating to patent agents.

109.—(1) The Minister may make rules for the management of the register and may by such rules prescribe any matter or thing referred to in section 107 or 108 as prescribed, and in particular may so prescribe the educational and professional qualifications and the conditions (including conditions relating to nationality or citizenship) for eligibility for registration in the register, and the maximum fees which may be charged by any person registered in the register for such services in connection with the obtaining of patents as may be specified in such rules.

(2) Rules under this section may authorize the Controller to refuse to recognise as agent in respect of any business under this Act any person who does not satisfy the requirements of section 106.

(3) Rules under this section may authorize the Controller to refuse to recognise as agent in respect of any business under this Act a company or firm of which any director or manager or any partner (as the case may be) is an individual whom the Controller could refuse to recognise as an agent.

PART XI Miscellaneous

110 Correction of errors.

110.—(1) (a) The Controller may, in accordance with the provisions of this section, correct any linguistic error, error of transcription, clerical error or mistake in any specification of a patent, any application for a patent, or any document filed in pursuance of such an application, or any error in the register.

(b) The power conferred on the Controller by paragraph (a) of this subsection is in addition to the powers conferred on him by section 86 (7).

(2) A correction may be made in pursuance of this section either upon a request made in the prescribed manner by any person interested and accompanied by the prescribed fee, or without such a request.

(3) Where the Controller proposes, or a request is made, to make a correction referred to in subsection (1), he shall before determining the matter give notice of the proposal or the request to the proprietor of or applicant for the patent, as the case may be, and to any person, other than the person by whom a request is made, who appears to him to be concerned.

111 Falsification of register, etc.

111.—If any person makes or causes to be made a false entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £1,000, or, at the discretion of the court, to imprisonment for any term not exceeding six months or to both such fine and such imprisonment.

112 Unauthorized claim of patent rights.

112.—(1) If any person falsely represents that any product sold by him is patented, he shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £1,000.

(2) For the purpose of this section a person who sells a product having stamped, engraved or impressed thereon, or otherwise applied thereto, the word “patent” or “patented”, or any word expressing or implying that the product is patented, shall be deemed to represent that the product is patented.

113 False suggestion of official connection with Office.

113.—If any person uses on his place of business, or on any document issued by him, or otherwise, any words suggesting that his place of business is officially connected with, or is, the Office, he shall be guilty of an offence and shall be liable on summary conviction thereof to a fine not exceeding £500.

114 Power of Minister to make rules.

114.—(1) The Minister may make such rules (except in relation to any matter appropriate to be provided for by rules of court) and do such things as he thinks expedient, subject to the provisions of this Act—

(a) for prescribing the form and contents of applications for patents and other documents which may be filed at the Office, and for requiring copies to be furnished of any such documents;

(b) for regulating the procedure to be followed in connection with any proceedings or other matter before the Controller and for authorizing the rectification of irregularities of procedure;

(c) for requiring fees to be paid in connection with any such proceedings or matter or in connection with the provision of any service by the Office and providing for the remission of fees in prescribed circumstances;

(d) for prescribing the circumstances under which a person is required to be represented by a patent agent who is for the time being registered in the register within the meaning of Part X and act through him in proceedings under this Act;

(e) for prescribing time limits for doing anything required to be done in connection with any such proceedings by or under this Act and providing for the alteration of any period of time specified in or under this Act;

(f) for prescribing how periods of time are to be calculated;

(g) for regulating the publication, sale and contents of anything which the Controller is by this Act required or authorized to publish;

(h) for regulating the presentation of copies of publications made under this Act to applicants for and proprietors of patents and to public authorities, bodies and institutions (whether in or outside the State);

(i) for regulating the maintenance and keeping of the Register of Patents and the register referred to in paragraph (d);

(j) for prescribing any matter or thing referred to in this Act as prescribed;

(k) for doing anything which is either by Article 9 of the First Schedule or otherwise by this Act authorized or required to be done or is in this Act referred to as being, or to be done, by rules under this Act;

(l) generally for regulating the business of the Office and anything which by this Act is placed under the direction or control of the Controller.

(2) Without prejudice to subsection (1), the Controller may adopt such procedures for giving effect to this Act as appear to him to be appropriate.

115 Service of notice, etc. by post.

115.—Any notice required or authorized to be given by or under this Act, and any application or other document so required or authorized to be made or filed, may be given, made or filed by post or by any other prescribed means.

116 Articles forfeited under law.

116.—Nothing in this Act shall affect the right of the State, or of any person deriving title directly or indirectly from the State, to sell or use any products forfeited under the Customs Acts or any enactment relating to the excise.

117 Extent of territorial protection.

117.—For the avoidance of doubt, it is hereby declared that this Act applies to the following waters, namely, the waters in the portion of the sea which comprises the territorial seas of the State, the waters in all the areas of the sea to which the internal or inland waters of the State are extended by section 5 of the Maritime Jurisdiction Act, 1959, and the waters in any area which is for the time being a designated area within the meaning of section 1 of the Continental Shelf Act, 1968.

118 Immunity of Minister, Controller and officers as regards official acts.

118.—Neither the Minister, the Controller nor any officer of the Minister or Controller shall—

(a) be taken to warrant the validity of any patent granted under this Act or any treaty or international convention to which the State is a party; or

(b) incur any liability by reason of or in connection with any search, examination or investigation carried out under the provisions of this Act or any such treaty or convention or any report, communication or proceeding consequent on any such search, examination or investigation.

PART XII Provisions Regarding International Conventions

119 Effect of European patent.

119.—(1) Subject to the provisions of this Act, a European patent designating the State shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated for the purposes of this Act as if it were a patent under this Act granted in pursuance of an application made under Part II and as if notice of the grant of the patent had, on the date of the publication, been published under section 34 in the Journal, and in addition to the foregoing the following shall apply:

(a) the proprietor of a European patent designating the State shall, accordingly, as respects the State have the same rights and remedies and be subject to the same conditions, as the proprietor of a patent granted under this Act;

(b) references in this Act to a patent shall be construed accordingly; and

(c) any statement made and any certificate filed for the purposes of the provision of the European Patent Convention corresponding to section 12 (1) (b) shall be treated respectively as a statement made and certificate filed for the purposes of section 12 (1) (b).

(2) Subsection (1) shall not affect the operation in relation to a European patent designating the State of any provisions of the European Patent Convention relating to the amendment or revocation of such a patent in proceedings before the European Patent Office.

(3) Where, after proceedings for the infringement of a European patent designating the State have been commenced before the Court but have not been finally disposed of, it is established in proceedings before the European Patent Office that the patent is only valid in part, section 50 shall, without prejudice to the jurisdiction of the Court concerning the validity of the European patent insofar as it designates the State, apply in relation to such patent in the same manner as it applies to proceedings in which the validity of a patent granted under this Act is put in issue and in which it is found that the patent so granted is only valid in part.

(4) Subject to subsection (6), where a European patent designating the State is amended or revoked in accordance with the European Patent Convention, the amendment shall be treated for the purposes of this Act as if it had been made, or where appropriate, the patent shall be treated for those purposes as having been revoked, under this Act.

(5) Where—

(a) under the European Patent Convention a European patent designating the State is revoked for failure to observe a time limit and is subsequently restored; and

(b) between the revocation and publication of the fact that it has been restored a person begins in good faith to do an act which would, apart from section 77, constitute an infringement of the patent or makes in good faith effective and serious preparations to do such an act;

he shall have the same protection as if an order had been made under section 37 (7).

(6) (a) Subsection (1) shall not apply to a European patent designating the State and whose specification was published in French or German, unless a translation in English of the specification is filed at the Office and the prescribed fee is paid before the end of the prescribed period.

(b) Subsection (4) shall not apply to an amendment made in French or German unless a translation in English of the specification as amended is filed at the Office and the prescribed fee is paid before the end of the prescribed period.

(7) Where such a translation is not filed in accordance with subsection (6), the patent shall be treated as always having been void.

(8) The Controller shall publish any translation filed at the Office under subsection (6).

120 Effect of filing application for European patent.

120.—(1) (a) An application for a European patent designating the State and having a date of filing under the European Patent Convention shall be treated for the purposes of the provisions of this Act specified in subsection (2) as an application for a patent under this Act having the said date as its date of filing under this Act.

(b) This Act shall apply to an application described in paragraph (a) of this subsection subject to the modifications specified in subsection (3).

(2) The provisions of this Act referred to in subsection (1) are sections 11 (3), 25, 26, 27, 44, 45, 46, 55, 56, 62, 76, 77, 78, 79, 80, 83, 84 and 85 together with section 17 (3) in so far, and only in so far, as it provides for the making of a request to and a finding by the Controller and section 22 in so far as it restricts the application of section 11 (3).

(3) The modifications referred to in subsection (1) are the following:

(a) any declaration of priority made in connection with the application under the European Patent Convention shall be treated for the purposes of this Act as a declaration of priority under section 26 (1);

(b) where a period of time relevant to priority is extended under the said convention, the reference in section 25 (1) shall in relation to the application be regarded as being a reference to a period equal to the period as so extended;

(c) where the date of filing an application is re-dated under that convention to a later date, that date shall be so treated as the date of filing the application;

(d) the application, if published in accordance with the said convention, shall, subject to subsection (6), be treated as having been so published under section 28;

(e) any designation of the inventor under the said convention or any statement under it indicating the origin of the right to a European patent shall be treated for the purposes of section 17 (3) as a statement filed under section 17 (2);

(f) registration of the application in the Register of European Patents shall be treated as registration in the register;

(g) the provisions of section 35 shall not apply to such an application.

(4) Subsections (1), (2) and (3) shall cease to apply to an application for a European patent designating the State when the application is refused or withdrawn or deemed to be withdrawn, or the designation of the State in the application is withdrawn or deemed to be withdrawn, but if the rights of the applicant are re-established under the European Patent Convention, subsections (1), (2) and (3) shall, as from the re-establishment of those rights, again apply to the application; provided, however, that the occurrence of an event of withdrawal or refusal referred to shall not affect the continued operation of section 11 (3) in relation to matter contained in an application for a European patent designating the State which by virtue of that provision has become part of the state of the art as regards other inventions.

(5) Where between the cesser, by virtue of subsection (4), of subsections (1), (2) and (3) as regards an application for a European patent and the re-establishment of the rights of the applicant, a person begins in good faith to do an act which would, apart from section 77, constitute an infringement of the application if subsections (1), (2) and (3) then applied, or makes in good faith effective and serious preparations to do such an act, he shall have the same protection as if an order had been made under section 37 (7).

(6) An application for a European patent designating the State published by the European Patent Office under the European Patent Convention in French or German shall be treated for the purposes of section 56 as published under section 28 when a translation in English of the claims of the application has been filed at and published by the Office and the prescribed fee has been paid, but an applicant may bring proceedings by virtue of section 56 in respect of an act mentioned in that section which is done before publication of that translation if, but only if, before the doing of that act he has sent by post or delivered to the person alleged to have done the act, a translation in English of the said claims.

(7) An application for a European patent may be filed at the Office. This provision shall not apply in respect of an application which is a European divisional application under the European Patent Convention.

121 Authentic text of European patents and patent applications.

121.—(1) Subject to subsection (2), the text of a European patent or application for such a patent in the language of the proceedings, that is to say the language in which proceedings relating to the patent or the application are to be conducted before the European Patent Office, shall be the authentic text for the purposes of any proceedings under this Act before the Controller or the Court.

(2) Where the language of the proceedings referred to in subsection (1) is French or German, a translation in English of the specification of the patent under section 119, or of the claims of the application under section 120, shall be treated as the authentic text for the purpose of any proceedings under this Act, other than proceedings for the revocation of the patent, if the patent or application, as translated, confers protection which is narrower than that conferred by it in French or German.

(3) If any such translation referred to in subsection (2) results in a European patent or application conferring a narrower protection than that conferred by the language of the proceedings referred to in subsection (1), the proprietor of or applicant for the patent may file a corrected translation with the Office and, if he pays the prescribed fee within the prescribed period, the Office shall publish it; provided that the proprietor of the patent or the applicant shall not be entitled to bring proceedings in respect of an act which infringed the patent or application as correctly translated, but not as originally translated, unless before the doing of the act the corrected translation has been published by the Office or the proprietor or applicant has sent the corrected translation by post or delivered it to the person alleged to have done that act.

(4) Where a correction of a translation is published under subsection (3) and before it is so published a person begins in good faith to do an act which would not constitute an infringement of the patent or application, as originally translated, but would (apart from section 77) constitute an infringement of it under the amended translation, or makes in good faith effective and serious preparations to do such an act, he shall have the same protection as if an order had been made under section 37 (7).

122 Conversion of European patent application.

122.—(1) Where under the European Patent Convention an application for a European patent designating the State is deemed to have been withdrawn because it has not, within the period required by the said convention, been received by the European Patent Office, the Controller may direct that, on compliance with the conditions mentioned in subsection (2), the application shall be treated as a patent application under Part II.

(2) The conditions referred to in subsection (1) are that—

(a) the applicant within the prescribed period shall pay the filing fee, and, if the application is in French or German, file a translation in English of the application and of any amendments previously made in accordance with the European Patent Convention; and

(b) (i) the applicant shall request the Controller within the prescribed period (where the application was filed with the Office) to give a direction under this section; or

(ii) the central industrial property office of a country which is party to the said convention, other than the State, with which the application was filed shall transmit within the prescribed period a request that the application be converted into an application under Part II, together with a copy of the said application as so filed.

(3) Where an application for a European patent falls to be treated as a patent application (within the meaning of this Act) by virtue of a direction under this section—

(a) the date which is the date of filing the application under the European Patent Convention shall be treated as its date of filing for the purposes of this Act, but if that date is redated under the European Patent Convention to a later date, then that later date shall be treated for those purposes as the date of filing the application;

(b) if the application satisfies a requirement imposed by virtue of a provision of the said convention it shall be treated as satisfying the requirements for a patent application under this Act;

(c) any document filed with the European Patent Office under any provision of the European Patent Convention corresponding to any of the following provisions of this Act, that is to say, sections 12 (1) (b), 17 (2), 18 (2) or 26 (1) or any rule made for the purposes of any of those provisions, shall be treated as filed with the Office under that provision or rule.

123 Determination by Court of questions as to right to European patent.

123.—(1) The Court shall determine a question to which this section applies in accordance with the following provisions of this section.

(2) This section applies to a question arising before the grant of a European patent as to whether or not a person has a right to be granted a European patent, or a share in any such patent, and in this section “employer-employee question” means any such question between an employer and an employee, or either or both of their successors in title, arising out of an application for a European patent for an invention made by the employee.

(3) Subject to subsection (5), the Court shall consider and determine a question to which this section applies, other than an employer-employee question, if, and only if, the following conditions are satisfied:

(a) there is neither an agreement in writing whereby, nor other written evidence establishing that, the parties have agreed to submit to the jurisdiction of a court or other competent authority which under the law of a relevant contracting state other than the State has jurisdiction to decide the question, and

(b) (i) the applicant ordinarily resides in or has his principal place of business in the State, or

(ii) the other party claims that the patent should be granted to him and he ordinarily resides in or has his principal place of business in the State, and the applicant does not have his residence or principal place of business in any of the relevant contracting states.

(4) Subject to subsection (5), the Court shall consider and determine an employer-employee question if, and only if, the following conditions are satisfied:

(a) (i) the employee is wholly or mainly employed in the State, or

(ii) the employee is neither wholly nor mainly employed in a particular state or territory, or

(iii) the place at which the employee is mainly employed cannot be determined but the employer has in the State a place of business to which the employee is attached (whether or not he is also attached elsewhere);

and

(b) there is not written evidence that the parties have agreed to submit to the jurisdiction of a court or other competent authority which under the law of a relevant contracting state other than the State has jurisdiction to decide the question, or, where there is such evidence of such an agreement, the proper law of the contract of employment does not recognise the validity of the agreement.

(5) The Court may consider and determine any question to which this section applies if there is written evidence that the parties have agreed to submit to the jurisdiction of the Court and, in the case of an employer-employee question, the proper law of the contract of employment recognises the validity of the agreement.

(6) If, after proceedings to determine a question to which this section applies have been brought before a court or other competent authority which under the law of a relevant contracting state other than the State has jurisdiction to decide the question, proceedings are begun before the Court, the Court shall stay the proceedings before it until the following conditions are satisfied:

(a) such authority either—

(i) declines jurisdiction, or

(ii) makes a determination which the Court refuses to recognise under section 124, and

(b) where an appeal lies from the decision of such authority, either an appeal has been taken and has been determined or withdrawn or, in case such an appeal is not taken, the time for appealing has expired.

(7) References in this section to the determination of a question include references to—

(a) the making of a declaration with respect to the question; and

(b) the making of such order as the Court deems appropriate in relation to the question.

(8) In this section and section 124 “relevant contracting state” means a state which is a party to the European Patent Convention and has not exercised its right under the said convention to exclude the application of the protocol to the said convention therein referred to and known as the Protocol on Recognition.

(9) This section and section 124 apply to a question arising before the grant of a European patent whether the relevant European patent application designates the State or not.

124 Effect of patent decisions of competent authorities of other states.

124.—(1) Subject to subsection (2), a determination of a question to which section 123 applies by a court or other competent authority which under the law of a relevant contracting state other than the State has jurisdiction to decide the question shall, if no appeal lies from the determination or if the time for appealing has expired without an appeal having been taken, be recognised in the State as if it had been made by the Court.

(2) The Court may refuse to recognise any determination referred to in subsection (1) that the applicant for a European patent had no right to be granted the patent, or any share of it, if either—

(a) the applicant did not contest the proceedings to which the determination relates because he was not notified of them either at all or in the proper manner or was not notified of them in time for him to contest such proceedings; or

(b) the determination conflicts with the determination of a court or other competent authority which under the law of any other relevant contracting state has jurisdiction to decide the question in proceedings instituted earlier between the same parties as those to the proceedings under this Act and relating to the same question.

125 Patent agents and other representatives.

125.—(1) A person acting for gain shall not, either alone or in partnership with any other person, practise, describe himself or hold himself out as being, or as carrying on the business of agent or other representative of other persons for the purpose of applying for or obtaining European patents or for the purpose of conducting proceedings in connection with such patents before the European Patent Office, unless he satisfies the condition that his name and that of each of his partners appears on the European list.

(2) Subsection (1) shall not be construed as prohibiting a barrister or solicitor from appearing or taking part in proceedings before the European Patent Office which correspond to proceedings in which by virtue of section 93 or 106 he is entitled to appear or take part.

(3) A company acting for gain shall not practise, describe itself or hold itself out or permit itself to be described or held out as agent or other representative of other persons for any purpose mentioned in subsection (1) unless permitted to do so under the European Patent Convention.

(4) Any person who contravenes subsection (1) or (3) shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £500 in the case of a first offence, and in the case of a second or subsequent offence, £1,000.

(5) A person who does any act mentioned in subsection (1) but satisfies the condition mentioned in that subsection shall not be treated as contravening section 106 so long as he does not without qualification describe himself as a patent agent and does not hold himself out, or permit himself to be held out, as carrying on any business other than the one mentioned in that subsection.

(6) The Controller may refuse to recognise as agent or other representative for the purposes of applying for European patents any person who does not satisfy the conditions mentioned in subsection (1) and does not fall within the exception in subsection (2).

126 European patent attorneys.

126.—(1) For the avoidance of doubt, it is hereby declared that any person whose name appears on the European list shall not be guilty of an offence under section 56 of the Solicitors Act, 1954, by reason only of his describing himself as a European patent attorney.

(2) A person whose name appears on the European list shall not be guilty of an offence under the Solicitors Acts, 1954 to 1960, by reason only of the preparation by him of any document (other than a deed) for use in proceedings before the Controller under this Act in relation to a European patent or an application for such a patent.

127 International applications for patents.

127.—(1) An international application for a patent designating the State shall be deemed to be an application for a European patent designating the State.

(2) The Office may, without prejudice to Article 151 of the European Patent Convention, act as a receiving office within the meaning of Article 2 (xv) of the Treaty for persons making international applications, provided such applications are in English.

(3) Applications filed at the Office, as receiving office, shall be accompanied by the prescribed transmittal fee.

(4) The Minister may by rules make provisions with respect to international applications consequent upon the Office acting as a receiving office for applicants making such applications.

(5) Any application referred to in subsection (1) which is published under the Treaty shall be treated for the purposes of section 11 (3) as published when, and only when, a copy of the application has been supplied to the European Patent Office in English, French or German and the relevant fee has been paid under the European Patent Convention.

(6) Any application referred to in subsection (1) which is published under the Treaty in a language other than English, French or German shall be treated for the purposes of section 56 as published when, and only when, it is re-published in English, French or German by the European Patent Office under the European Patent Convention.

128 Orders to give effect to international agreements relating to patents.

128.—(1) The Minister may by order make such provision as appears to him to be necessary or expedient to enable effect to be given to, or to any particular provision of, any amendment of the European Patent Convention or the Treaty or to any international treaty, convention or agreement (or protocol thereto) relating to patents to which the State is or proposes to become a party.

(2) The Minister may by order revoke or amend an order under this section.

129 Evidence of conventions and instruments under conventions.

129.—(1) Judicial notice and notice by the Controller shall be taken of the following, that is to say—

(a) the European Patent Convention, the Treaty and any other convention or any protocol or other agreement to which an order under section 128 applies,

(b) any bulletin, journal or gazette published or issued under the European Patent Convention and the Treaty and the register of European patents kept under the European Patent Convention, and

(c) any decision of, or expression of opinion pursuant to the European Patent Convention by, a competent authority on any question arising under or in connection with that convention.

(2) Any document mentioned in subsection (1) (b) which purports to state the contents or provisions, or part of the contents or provisions, of any instrument made or any act done by any institution of the European Patent Convention or the Treaty shall be admissible under this Act as prima facie evidence of such contents, provisions or part.

(3) Prima facie evidence of any instrument made under the European Patent Convention or the Treaty by any institution referred to in subsection (2), including any judgment or order so made by a competent authority of the European Patent Convention, or of any record or other document in the custody of any such institution, or any part of, entry in or extract from, such a record or other document, may be given in any legal proceedings by the production of a copy certified as a true copy by an officer of that institution; and any document purporting to be such a copy shall be received in evidence without proof of the official position or handwriting of the person signing the certificate or of his authority to do so.

(4) Evidence of any instrument or order referred to in subsection (3) may also be given in any proceedings whether under this Act or otherwise—

(a) by the production of a copy purporting to be officially printed on behalf of the institution by whom it was issued or made,

(b) where the instrument is in the custody of a government department, by the production of a copy certified as being a true copy by an officer of the department duly authorized in that behalf,

and any document purporting to be a copy mentioned in paragraph (b) shall be received in evidence without proof of the official position or handwriting of the person signing the certificate, or of his authority to do so, or of the document's being in the custody of the department.

130 Obtaining evidence for proceedings under European Patent Convention.