Knowledge Development Box (Certification of Inventions) Act 2017

PART 1 Preliminary and General

1. Short title, collective citation and commencement

1. (1) This Act may be cited as the Knowledge Development Box (Certification of Inventions) Act 2017.

(2) The Patents Acts 1992 to 2014 and Part 6 may be cited together as the Patents Acts 1992 to 2017.

(3) This Act shall come into operation on such day or days as the Minister may by order or orders appoint either generally or with reference to any particular purpose or provision and different days may be so appointed for different purposes or different provisions.

2. Interpretation

2. (1) In this Act—

“Act of 1997” means the Taxes Consolidation Act 1997;

“Act of 2015” means the Finance Act 2015;

“applicant” means the relevant company making the application concerned;

“application” means an application under section 7(1);

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

“industry” includes agriculture;

“KDB” means knowledge development box;

“KDB certificate” means a knowledge development box certificate;

“knowledge development box certificate” has the meaning assigned to it by section 7(1);

“non-obvious”, in relation to an invention the subject of an application, means that the invention, having regard to the state of the art before the date contained in the application pursuant to section 7(2)(d), involves an inventive step that is not obvious to a person skilled in the art;

“novel”, in relation to an invention the subject of an application, means that the invention, having regard to the state of the art before the date contained in the application pursuant to section 7(2)(d), does not form part of the state of the art;

“Minister” means the Minister for Jobs, Enterprise and Innovation;

“prescribed” means prescribed by rules made by the Minister under section 21;

“relevant company” means a company—

(a) which is a relevant company within the meaning of the definition of “relevant company” in section 769G (inserted by section 32(1)(a) of the Act of 2015) of the Act of 1997, and

(b) to which section 769R (inserted by section 32(1)(b) of the Act of 2015) of the Act of 1997 applies by virtue of subsection (2) of such section 769R;

“review” means a review under section 14;

“specified”, in relation to a form of document, means specified under section 24;

“state of the art”, in relation to an invention the subject of an application, means 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 contained in the application pursuant to section 7(2)(d);

“useful”, in relation to an invention the subject of an application, means that the invention has a specific, credible and substantial utility in that it can be made or used in one or more than one industry.

(2) A reference in this Act to an invention includes a reference to a group of inventions where section 6 so permits.

3. Expenses

3. The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Public Expenditure and Reform, be paid out of monies provided by the Oireachtas.

PART 2 Requirements that must be met before KDB Certificate may be Issued in Respect of Invention

4. Invention must be novel, non-obvious and useful

4. (1) Subject to subsection (2), a KDB certificate may only be issued in respect of an invention which is novel, non-obvious and useful.

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

(a) a discovery, scientific theory or 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.

5. Cases in which KDB certificate shall not be issued

5. (1) A KDB certificate shall not be issued in respect of—

(a) an invention the commercial 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 micro-biological process or the products thereof, or

(c) subject to subsection (2), a method for treatment of a human or animal body by surgery or therapy and a diagnostic method practised on the human body or animal body.

(2) Subsection (1)(c) shall not apply to products, in particular substances or compositions, for use in any such method.

6. KDB certificate may only be issued for one invention except in specified cases

6. A KDB certificate may only be issued in respect of one invention except that a KDB certificate may be issued in respect of a group of inventions if the inventions are so linked as to form a single general inventive concept.

PART 3 Application for KDB Certificate, Determination of Application and Reviews

7. Application for KDB certificate

7. (1) Subject to subsections (2) and (3), a relevant company may make an application, in the specified form and accompanied by the prescribed fee (if any), to the Controller for the issue of a certificate (in this Act referred to as a “knowledge development box certificate”) for the purposes of section 769R (inserted by section 32(1)(b) of the Act of 2015) of the Act of 1997 and, in particular, for the purposes of the definition of “intellectual property for small companies” in subsection (1) of such section 769R.

(2) Without prejudice to the generality of section 24, the application shall contain the following information:

(a) evidence that the applicant is a relevant company (which may be a statutory declaration to that effect);

(b) the title of the invention in sufficient detail to indicate the matter to which the invention relates;

(c) a full, clear, concise and accurate description in writing of the invention and of the manner and process of making and using it, including any drawings, images or other evidentiary material which may assist in understanding the nature of the invention and such other information which might materially assist in the making of a decision on the application by the Controller whether to issue a KDB certificate in respect of the invention;

(d) for the purposes of determining if the invention is novel and non-obvious, the date on which the process, product or technology which is or comprises the invention began to be used, produced or marketed;

(e) the novel features or improvements contained in the invention which were not part of the state of the art in the field of technology concerned before the date referred to in paragraph (d);

(f) the features of the invention which were part of the state of the art in the field of technology concerned, and were known to the applicant, on or before the date referred to in paragraph (d);

(g) without prejudice to the generality of paragraph (c)—

(i) a description of the advantageous effects (if any) of the invention with reference to—

(I) the state of the art in the field of technology concerned, and

(II) the way in which the invention is made and used in industry,

and

(ii) if the invention is described as an improvement, a description of the invention pointing out the part or parts of the process, or the technical features, to which the improvement relates, focusing on the exact nature of the improvement and to such parts or technical features which cooperate with the improvement or as otherwise may be necessary for a complete understanding or description of the improvement.

(3) The application shall be accompanied by—

(a) an opinion from a patent agent which attests (including attests by way of reference to the information required by subsection (2)(e) and (f)) to the invention being novel, non-obvious and useful on the date contained in the application pursuant to subsection (2)(d), and

(b) evidence to support that opinion.

(4) In this section, “patent agent” has the meaning assigned to it by section 2(1) of the Patents Act 1992.

(5) The Office of the Revenue Commissioners shall, within 3 months of the enactment of this Act, publish a guidance document to provide information to businesses considering making an application for a KDB certificate.

8. Insufficient information, etc.

8. (1) If the Controller is satisfied that the application does not comply with all the requirements of section 7 that apply to the application, he or she shall give the applicant a notice in writing—

(a) stating that the Controller is satisfied that the application does not comply with all the requirements of section 7 that apply to the application,

(b) identifying (and, if the Controller considers it appropriate to do so, giving particulars of) such of those requirements in respect of which the Controller is satisfied that the application does not comply,

(c) stating that the applicant may, within 30 days of the date of issue of the notice, or such longer period as the Controller may permit in any particular case (either at the initiative of the Controller or upon a request in writing made by the applicant to the Controller), revise and resubmit the application to take account of such of those requirements which the Controller has identified in the notice as being requirements in respect of which the Controller is satisfied that the application does not comply, and

(d) stating that, if the applicant does not revise and resubmit the application in accordance with paragraph (c) before the expiration of the period concerned referred to in that paragraph, the applicant shall, by virtue of subsection (2), be deemed to have withdrawn the application.

(2) If the applicant the subject of a notice under subsection (1)—

(a) subject to subsections (3) and (4), does not revise and resubmit the application in accordance with paragraph (c) of subsection (1) before the expiration of the period concerned referred to in that paragraph, or

(b) does not withdraw the application pursuant to section 10 before that expiration,

the applicant shall, by virtue only of this subsection and with effect immediately upon that expiration, be deemed to have withdrawn the application.

(3) Subsection (4) applies if—

(a) the applicant revises and resubmits the application before the expiration of the period concerned referred to in paragraph (c) of subsection (1), and

(b) the application still does not, however, take account of all of the requirements of section 7 which the Controller has identified in the notice concerned under subsection (1).

(4) The Controller shall, as soon as is practicable after he or she receives the revised and resubmitted application, give the applicant a notice in writing identifying (and, if the Controller considers it appropriate to do so, giving particulars of) such of the requirements of section 7 in respect of which the Controller is satisfied that the application still does not comply.

(5) Subject to subsection (6), the Controller shall be entitled to defer the consideration, or further consideration, of the application the subject of a notice under subsection (1) until the application is revised and resubmitted in accordance with paragraph (c) of that subsection.

(6) The Controller shall cease the consideration, or further consideration, of the application the subject of a notice under subsection (1) if, by virtue of subsection (2), the applicant is deemed to have withdrawn the application.

(7) The Minister at the end of each year (beginning with the year ending 31 December 2018) shall prepare and lay before each House of the Oireachtas an anonymised report outlining why applications for KDB certificates were not successful.

9. Certain applications made in respect of 2 or more inventions

9. (1) Subsection (2) applies where—

(a) 2 or more inventions are the subject of the same application, and

(b) without prejudice to the generality of sections 4 and 5, the Controller is minded to refuse to issue a KDB certificate in respect of the inventions on the ground that the inventions do not meet the requirement of section 6.

(2) The Controller may give the applicant a notice in writing stating that—

(a) the Controller is minded to refuse to issue a KDB certificate in respect of the inventions the subject of the application on the ground that the inventions do not meet the requirement of section 6,

(b) the applicant may, within 30 days of the date of issue of the notice, give the Controller a notice in writing (in this section referred to as the “identifying notice”) identifying which one of those inventions (in this subsection referred to as the “identified invention”) the applicant wishes the Controller to further consider the application on the basis that the identified invention shall be treated as the only invention the subject of the application,

(c) if the applicant does give the Controller the identifying notice before the expiration of the period referred to in paragraph (b), the applicant may, if it wishes to do so, make a new application in respect of any of the inventions which is not the identified invention, and

(d) if the applicant does not give the Controller the identifying notice before the expiration of the period referred to in paragraph (b), the Controller will further consider the application on the basis on which the application was originally made.

(3) The Controller shall be entitled to defer the further consideration of the application the subject of a notice under subsection (2) until—

(a) the Controller is given the identifying notice before the expiration of the period referred to in paragraph (b) of that subsection, or

(b) that period expires without the Controller being given the identifying notice,

whichever first occurs.

10. Withdrawal of application

10. Without prejudice to the operation of section 8(2), the applicant may withdraw the application at any time (including following the receipt of a notice under section 8(1)) before the issue of a KDB certificate in respect of the invention the subject of the application.

11. New application may be made following withdrawn application

11. Nothing in this Act shall be construed to prevent the applicant—

(a) whose application has been deemed to be withdrawn under section 8(2), or

(b) who has withdrawn the application under section 10,

from making a new application in respect of the invention that is the subject of the withdrawn application.

12. Decision to issue KDB certificate

12. (1) Where the Controller is satisfied that the invention the subject of the application meets all the requirements of Part 2, he or she shall issue a KDB certificate in the specified form to the applicant.

(2) Without prejudice to the generality of section 24, a KDB certificate shall state—

(a) the name of the applicant,

(b) the address, principal office, or principal place of business, in the State, of the applicant,

(c) the title of the invention in sufficient detail to indicate the matter to which the invention relates, and

(d) the date contained in the application pursuant to section 7(2)(d).

13. Decision to refuse to issue KDB certificate

13. Where the Controller is not satisfied that the invention the subject of the application meets all the requirements of Part 2, he or she shall give the applicant a notice in writing—

(a) stating that the Controller refuses to issue a KDB certificate in respect of the invention because he or she is not satisfied that the invention meets all the requirements of Part 2,

(b) setting out the grounds on which the Controller is not so satisfied (including referring the applicant to the relevant provisions of this Act), and

(c) stating that the applicant may, if the applicant so wishes, make a request under section 14 to the Controller to cause a review of the decision to be carried out.

14. Review of decision to refuse to issue KDB certificate

14. (1) The applicant who has been given a notice under section 13 may, within 30 days of the date of issue of the notice or such longer period as the Controller may permit in any particular case (either at the initiative of the Controller or upon a request in writing made by the applicant to the Controller), make a request in writing (in this section referred to as the “review request”), in the specified form (if any) and accompanied by the prescribed fee (if any), to the Controller to cause a review of the relevant decision to be carried out.

(2) Without prejudice to the generality of section 24, the review request shall, by reference to the grounds referred to in section 13(b) set out in the notice concerned under section 13, state the reasons why the applicant wishes the relevant decision to be reviewed.

(3) Subject to subsection (4), the Controller shall, upon receipt of the review request, appoint an officer of the Controller (in this section referred to as the “reviewer”) to review the relevant decision.

(4) The reviewer—

(a) shall not be the officer of the Controller who made the relevant decision, and

(b) shall be of a grade senior to the grade of the officer of the Controller who made the relevant decision.

(5) The reviewer shall, as soon as is practicable after being appointed, review the relevant decision, taking into account only the reasons stated in the review request and, as he or she thinks fit—

(a) confirm the relevant decision and give the applicant a notice in writing of such confirmation and the reasons for such confirmation, or

(b) cancel the relevant decision and issue a KDB certificate to the applicant in respect of the invention the subject of that decision.

(6) In this section, “relevant decision” means the decision, as set out in the notice concerned under section 13, to refuse to issue a KDB certificate in respect of the invention the subject of the application concerned.

15. New application may be made following refusal to issue KDB certificate