PART II.—PATENTS.

11. —(1) An application for a patent may be made by any person who claims to be the true and first inventor of an invention, whether he is or is not an alien, and whether alone or jointly with any other person.

(2) The application must be made in the prescribed form, and must be left at, or sent by post to, the Office in the prescribed manner.

(3) The application must contain a declaration or (if so prescribed) a statutory declaration to the effect that the applicant is in possession of an invention of which, so far as the applicant knows or has been able to ascertain, he, or in the case of a joint application, one at least of the applicants, is the true and first inventor, and for which he desires to obtain a patent.

(4) Every application for a patent must be accompanied by either a provisional or a complete specification.

(5) In the case of a joint application, the declaration required by this section must be made by all the applicants.

12. —(1) Any person or the legal representative or assignce of any person who applied after the 6th day of December, 1921 and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann for a patent or protection in respect of an invention shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for a patent in respect of the same invention and shall be entitled to have such application under this Act dated and treated as having been made as of the date of the first-mentioned application for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date to be borne by any patent granted pursuant to the said application under this Act, and determining whether the invention had been previously published in Saorstát Eireann or in Great Britain.

(2) Any person or the legal representative or assignee of any person who has obtained between the 6th day of December, 1921 and the commencement of this Part of this Act protection for an invention in any British dominion (other than Great Britain and Northern Ireland) or foreign state to which the provisions of section 152 (which relates to international arrangements) of this Act are applied or declared to be applicable by order made under that section shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for a patent in respect of the same invention and shall be entitled to have the said application under this Act dated and treated as having been made as of the date of the application for protection of the invention in such British dominion or foreign state for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date to be borne by any patent granted pursuant to the said application under this Act, and determining whether the invention had been previously published in Saorstát Eireann or in Great Britain.

(3) Any person who applies for a patent under the provisions of this section may at any time before the grant of such patent (hereinafter called the first-mentioned patent) or within such time after such grant as may be allowed by the controller apply to the controller for the revocation of any patent (hereinafter called the second-mentioned patent) which by virtue of this Act is deemed to be a patent granted under this Act and bears date as of any date between the 6th day of December, 1921 and the commencement of this Part of this Act and is for the same invention as that in respect of which the first-mentioned patent is applied for on the ground that the date of the application for the second-mentioned patent was subsequent to the date of an application made by the applicant for the first-mentioned patent to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann or in any such British dominion or foreign state as is mentioned in the foregoing sub-section for a patent or protection of the same invention and the controller may on such application for revocation revoke the second-mentioned patent on the ground aforesaid, but on no other ground.

(4) An appeal shall lie to the law officer from every decision of the controller on an application for revocation under the foregoing sub-section.

(5) The term limited in a patent granted pursuant to an application made under the provisions of sub-section (1) of this section for the duration of such patent shall be sixteen years from the date of the commencement of this Part of this Act, and for the purposes of the application of the Second Schedule to this Act to such patent the date of such patent shall be deemed to be the date of such commencement.

(6) No fees shall be payable under this Act on any patent granted pursuant to an application made under the provisions of sub-section (2) of this section in respect of anything done or any period of time expired before the commencement of this Part of this Act.

13. —(1) A provisional specification must commence with the title of the invention and must describe the nature of the invention.

(2) A complete specification must commence with the title of the invention and must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed and must end with a distinct statement of the invention claimed.

(3) The controller may, whenever he considers it desirable so to do, require that suitable drawings shall be supplied with the specification (whether provisional or complete) or at any time before the acceptance thereof, and such drawings when supplied shall be deemed to form part of the specification.

(4) Whenever the invention in respect of which an application for a patent is made is a chemical invention, such typical samples and specimens as may be prescribed shall, if in any particular case the controller considers it desirable so to require, be furnished to the controller before the acceptance of the complete specification.

14. —(1) The controller shall refer every application for a patent to an examiner.

(2) If the examiner reports that the nature of the invention is not fairly described, or that the application, specification, or drawings have not been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the invention, the controller may refuse to accept the application or require that the application, specification, or drawings be amended before he proceeds with the application; and in the latter case the application shall, if the controller so directs bear date as from the time when the requirement is complied with.

(3) Where the controller refuses to accept an application or requires an amendment, the applicant may appeal from his decision to the law officer, who shall, if required, hear the applicant and the controller, and may make an order determining whether and subject to what conditions (if any) the application shall be accepted.

(4) The controller shall, when an application has been accepted, give notice thereof to the applicant.

15. —Where an application for a patent in respect of an invention has been accepted, the invention may during the period between the date of the application and the date of sealing such patent be used and published without prejudice to the patent to be granted for the invention; and such protection from the consequences of use and publication is in this Act referred to as provisional protection.

16. —(1) If the applicant does not leave a complete specification with his application, he may leave it at any subsequent time within nine months from the date of the application: Provided that where an application is made for an extension of the time for leaving a complete specification, the controller shall, on payment of the prescribed fee, grant an extension of time to the extent applied for but not exceeding one month.

(2) Unless a complete specification is so left the application shall be deemed to be abandoned.

17. —(1) Where a complete specification is left after a provisional specification, the controller shall refer both specifications to an examiner.

(2) If the examiner reports that the complete specification has not been prepared in the prescribed manner, the controller may refuse to accept the complete specification until it has been amended to his satisfaction.

(3) If the examiner reports that the invention particularly described in the complete specification is not substantially the same as that which is described in the provisional specification the controller may—

(a) refuse to accept the complete specification until it has been amended to his satisfaction; or

(b) (with the consent of the applicant) cancel the provisional specification and treat the application as having been made on the date at which the complete specification was left, and the application shall have effect as if made on that date:

Provided that where the complete specification includes an invention not included in the provisional specification, the controller may allow the original application to proceed so far as the invention included both in the provisional and in the complete specification is concerned, and allow an application for the additional invention included in the complete specification to be made and treated as an application for that invention made on the date at which the complete specification was left.

(4) An appeal shall lie from the decision of the controller under this section to the law officer, who shall, if required, hear the applicant and the controller, and may make an order determining whether and subject to what conditions (if any) the complete specification shall be accepted.

18. —(1) If a complete specification is not accepted within the period of fifteen months from the date of the application or, where that period is extended under this section, before the expiration of the last extension of such period the application shall at the expiration of such period or such extension thereof (as the case may be) become void.

(2) In any case in which an application for a British patent was pending when the complete specification was left, the controller may grant without the payment of any fee such extension or series of extensions of the said period of fifteen months as he shall think fit, but no such extension shall be granted unless the same is applied for before the expiration of the said period or the last previous extension thereof (as the case may be).

(3) In any case not coming within the foregoing sub-section the controller shall, on application therefor being made to him and the prescribed fee being paid before the expiration of the said period of fifteen months, grant such extension, not exceeding three months, of the said period of fifteen months as is so applied for.

(4) Whenever an appeal from a decision of the controller in relation to the complete specification is pending at the expiration of the said period of fifteen months or any extension thereof made under this section, the controller shall on application made to him therefor at any time grant without the payment of any fee an extension or further extension (as the case may be) of such period until the expiration of twenty-one days after the final decision of such appeal.

19. —(1) Every provisional specification must be accompanied by a statement as to whether the applicant has or has not applied for a British patent for the invention described in that specification and, if he has not so applied, a further statement as to whether he does or does not intend so to apply.

(2) Every complete specification must be accompanied by a statement as to whether the applicant has or has not applied for a British patent for the invention claimed in the specification and, if he has so applied, a further statement as to whether such application has been granted, is still pending, or has been refused.

(3) A complete specification which is accompanied by a statement that a British patent for the invention has not been applied for shall be accompanied also by a statutory declaration made by a person who is registered either in the register of patent agents kept under this Act or in the register of patent agents kept in London or in the register of clerks kept under this Act that he has made a search and investigation in the Office or in the Patent Office in London or in some other place for the time being authorised in that behalf by rules made under this Act for the purpose of ascertaining whether the invention claimed in the complete specification has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of the application and left in the Patent Office in London pursuant to an application for a patent in the late United Kingdom made during the period commencing fifty years before the application under this Act and ending on the date of the commencement of this Part of this Act and that he is satisfied as a result of such search and investigation that the said invention had not been wholly or in part claimed or described in any such specification so published and left as aforesaid.

(4) A complete specification which is accompanied by a statement that a British patent for the invention claimed in the specification had been applied for and granted shall be accompanied by a certified copy of the complete specification on which such British patent was granted together with the prescribed proof of the acceptance of the last-mentioned specification by the Comptroller-General of the Patent Office in London.

(5) Whenever a complete specification is accompanied by a statement that a British patent for the invention has been applied for and that such application is still pending, the applicant shall, if the complete specification left in the Patent Office in London pursuant to the application for the British patent be accepted by the Comptroller-General of the Patent Office in London, lodge a certified copy of the last-mentioned complete specification together with the prescribed proof of the acceptance of such specification by the said Comptroller-General within one month after such acceptance.

(6) Subject to the provisions of the next following sub-section (when applicable) the controller shall not accept a provisional specification or a complete specification unless and untill the provisions of the foregoing sub-sections of this section (so far as the same are applicable) have been complied with.

(7) Where—

(a) a complete specification contains a statement that a British patent for the invention has been applied for and that such application is still pending, and

(b) such application is refused,

the applicant shall give notice of such refusal to the controller and thereupon the controller shall refuse to accept the application unless and until the applicant proves—

(i) by the prescribed evidence that such refusal was made on grounds other than that the invention claimed in the complete specification has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of the application and left in the Patent Office in London pursuant to an application for a patent in the late United Kingdom made during the period commencing fifty years before the application and ending on the date of the commencement of this Part of this Act, and

(ii) by such statutory declaration as is mentioned in sub-section (3) of this section, that the invention has not been wholly or in part claimed in any such specification as is mentioned in the foregoing paragraph (i).

(8) A refusal by the controller under the foregoing sub-section to accept an application shall be subject to appeal to the law officer.

20. —(1) Where an application for a patent has been made and a complete specification has been left, the examiner shall, in addition to the other inquiries which he is directed to make by this Act, make a further investigation for the purpose of ascertaining whether the invention claimed in the specification has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of the application, and left pursuant to any application for a patent made in Saorstát Eireann under this Act.

(2) If on investigation it appears that the invention has been wholly or in part claimed or described in any such specification, the applicant shall be informed thereof, and the applicant may, within such time as may be prescribed, amend his specification, and the amended specification shall be investigated in like manner as the original specification.

(3) If the controller is satisfied that no objection exists to the specification on the ground that the invention claimed therein has been wholly or in part claimed or described in a previous specification as before mentioned, he shall, in the absence of any other lawful ground of objection, accept the specification.

(4) If the controller is not so satisfied, he shall, unless the objection is removed by amending the specification to the satisfaction of the controller, determine whether a reference to any, and, if so, what prior specifications ought to be made in the specification by way of notice to the public:

Provided that the controller, if satisfied that the invention claimed has been wholly and specifically claimed in any specification to which the investigation has extended, may, in lieu of requiring references to be made in the applicant specification as aforesaid, refuse to grant a patent.

(5) An appeal shall lie from the decision of the controller under this section to the law officer.

21. —(1) In addition to the investigation under the last preceding section, the examiner shall make an investigation for the purpose of ascertaining whether the invention claimed has been wholly or in part claimed in any specification published on or after the date of the application and deposited pursuant to a prior application.

(2) Where on such further investigation it appears that the invention claimed has been wholly or in part claimed in any such specification, the applicant shall, whether or not his specification has been accepted or a patent granted to him, be afforded such facilities as may be prescribed for amending his specification, and in the event of his failing to do so the controller shall, in accordance with such procedure as may be prescribed, determine what reference, if any, to other specifications ought to be made in his specification by way of notice to the public.

(3) For the purposes of this section an application shall be deemed to be prior to another application if the patent applied for when granted would be of prior date to the patent granted pursuant to that other application.

(4) An appeal shall lie from the decision of the controller under this section to the law officer.

(5) The investigations and reports required by this and the last preceding section shall not be held in any way to guarantee the validity of any patent, and no liability shall be incurred by the Minister or the controller or any officer of the Minister or the controller by reason of or in connection with any such investigation or report or any proceedings consequent thereon.

22. —On the acceptance of the complete specification the controller shall advertise the acceptance; and the application and specifications, with the drawings (if any), shall be open to public inspection.

23. —After the acceptance of a complete specification and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the complete specification: Provided that an applicant shall not be entitled to institute any proceedings for infringement until a patent for the invention has been granted to him.

24. —(1) Any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the Office of opposition to the grant of the patent on any of the following grounds:—

(a) that the applicant obtained the invention from the opponent, or from a person of whom he is the legal representative; or

(b) that the invention was published in any complete specification, or in any provisional specification followed by a complete specification, deposited in the Patent Office in London pursuant to an application made in that Office within a period commencing fifty years before the date of the application for the patent the grant of which is being opposed and ending on the date of the commencement of this Part of this Act; or

(c) that the invention was before the date of the application published in any complete specification, or in any provisional specification followed by a complete specification, deposited in the Office pursuant to an application made under this Act or has been made available to the public by publication before the date of the application in any document (other than any such specification as is mentioned in this clause or any British specification published before the commencement of this Part of this Act) published in Saorstát Eireann or published prior to the establishment of Saorstát Eireann in the late United Kingdom; or

(d) that the invention has been claimed in any complete specification for a patent in Saorstát Eireann which though not published at the date of the application for the patent the grant of which is opposed was deposited pursuant to an application for a patent which is or will be of prior date to such patent; or

(e) that the nature of the invention or the manner in which it is to be performed is not sufficiently or fairly described and ascertained in the complete specification; or

(f) that the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification; or

(g) that in the case of an application for a patent made under the provisions of sub-section (1) or sub-section (2) of section 12 (which relates to applications for patents in certain cases) of this Act, the invention claimed or described in the complete specification is not the same invention as the invention which was the subject of the application to the Minister for Economic Affairs of the late Provisional Government of Ireland or the Minister for Industry and Commerce of Saorstát Eireann or was the subject of the protection in the British dominion or foreign state (as the case may be); or

(h) that in the case of an application under the provisions of this Act relating to foreign and British dominion patents the specification describes or claims an invention other than that for which protection has been applied for in the foreign state or British dominion and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the application in the foreign state or British dominion and the leaving of the application in Saorstát Eireann;

but on no other ground.

(2) Where such notice is given the controller shall give notice of the opposition to the applicant, and shall, on the expiration of those two months, after hearing the applicant and the opponent, if desirous of being heard, decide the case.

(3) The decision of the controller shall be subject to appeal to the law officer, who shall, if required, hear the applicant and the opponent, if the opponent is, in his opinion, a person entitled to be heard in opposition to the grant of the patent, and shall decide the case; and the law officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the law officer with the consent of the Minister for Finance may determine.

25. —(1) If there is no opposition, or, in case of opposition, if the determination is in favour of the grant of a patent, a patent shall, on payment of the prescribed fee, be granted to the applicant, or in the case of a joint application to the applicants jointly, and the controller shall cause the patent to be sealed with his official seal:

Provided that where—

(a) an applicant has agreed in writing to assign a patent when granted to another party or a joint applicant and refuses to proceed with the application; or

(b) disputes arise between joint applicants as to proceeding with an application;

the controller on proof of such agreement to his satisfaction, or if satisfied that one or more of such joint applicants ought to be allowed to proceed alone, may allow such other party or joint applicant to proceed with the application, and may grant a patent to him, so however that all parties interested shall be entitled to be heard before the controller, and an appeal shall lie from the decision of the controller under this proviso to the law officer.

(2) A patent shall be sealed as soon as may be, and not after the expiration of eighteen months from the date of application: Provided that—

(a) where the controller has allowed an extension of the time within which a complete specification may be left or accepted, a further extension of four months after the said eighteen months shall be allowed for the sealing of the patent;

(b) where the sealing is delayed by an appeal to the law officer, or by opposition to the grant of the patent, the patent may be sealed at such time as the law officer or the controller as the case may be may direct;

(c) where the patent is granted to the legal representative of an applicant who has died before the expiration of the time which would otherwise be allowed for sealing the patent, the patent may be sealed at any time within twelve months after the date of his death;

(d) where an application for a British patent was pending when the complete specification was deposited, the controller may, without the payment of any fees, extend by such period or periods as he thinks fit the time allowed by this section for sealing the patent;

(e) where for any reason a patent cannot be sealed within the period allowed by this section, that period may, on payment of the prescribed fee and on compliance with the prescribed conditions, be extended to such an extent as may be prescribed.

26. —Where an application for a patent has been abandoned, or become void, the specifications and drawings (if any) accompanying or left in connection with such application, shall not, save as otherwise expressly provided by this Act, at any time be open to public inspection or be published by the controller.

27. —Except as otherwise expressly provided by this Act, a patent shall be dated and sealed as of the date of the application: Provided that no proceedings shall be taken in respect of an infringement committed before the acceptance of the complete specification.

28. —(1) Subject to the provisions of this Act every patent granted under this Act and sealed with the official seal of the controller shall operate and have effect and shall be expressed to operate and have effect—

(a) to confer on the person to whom the same is granted his executors, administrators and assigns (in this sub-section collectively referred to as the grantee) the full, sole, and exclusive right, power and authority by himself, his agents or licensees at all times so long as the patent remains in force to make, use, exercise, and vend in Saorstát Eireann the invention in respect of which the patent is granted;

(b) to confer on the grantee the sole right to have and enjoy the whole profit and advantage from time to time accruing by reason of the said invention during such period as the patent remains in force;

(c) to prohibit all persons whatsoever in Saorstát Eireann while the patent remains in force from making use of or putting in practice the said invention or any part thereof, or in anywise imitating the same, or in anywise representing or pretending themselves to be the inventors of the said invention or of the said invention with any addition thereto or subtraction therefrom without the consent, licence or agreement of the grantee in writing under his hand and seal;

(d) to make all persons who, while the patent remains in force, shall, in Saorstát Eireann, in anywise infringe any right, power, or authority expressed in the patent to be thereby conferred on the grantee or do any act, matter, or thing the doing of which is expressed in the patent to be thereby prohibited, answerable according to law to the grantee for such infringement or the doing of such act, matter, or thing.

(2) Every patent shall be in the prescribed form and shall be granted for one invention only, but the specification may contain more than one claim; and it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.

29. —(1) Every patent granted by the Patent Office in London before the commencement of this Part of this Act shall have and be deemed always to have had in Saorstát Eireann during the period between the 6th day of December, 1921, or the date of such patent (whichever is the later) and the commencement of this Part of this Act the same force and effect as such patent had during that period in Great Britain, but from and after the commencement of this Part of this Act every such patent shall (notwithstanding that it bears a date prior to the passing of this Act or to the commencement of this Part of this Act) be deemed to be a patent granted under this Act as of the date such patent actually bears and shall have immediately on the commencement of this Part of this Act the same force and effect in Saorstát Eireann as such patent had in Great Britain immediately before such commencement and shall thenceforth have and be subject to all privileges, liabilities and incidents conferred or imposed by this Act or otherwise by law on patents granted under this Act.

(2) No fees shall be payable under this Act on any such patent as is mentioned in the foregoing sub-section in respect of anything done or any period of time expired before the commencement of this Part of this Act, but the like fees shall be payable on every such patent in respect of everything done and every period of time expiring after the commencement of this Part of this Act as would have been payable if such patent had been a patent granted under this Act on the date actually borne by such patent notwithstanding that such date is prior to the passing of this Act or to the commencement of this Part of this Act.

(3) Every patent granted by the Patent Office in London after the commencement of this Part of this Act and bearing date as of a day prior to such commencement shall (notwithstanding that it bears a date prior to the passing of this Act or to the commencement of this Part of this Act) be deemed to be a patent granted under this Act as of the date such patent actually bears and accordingly every such patent shall have the like force and effect in Saorstát Eireann as it would have had if it had been granted under this Act as of the date it actually bears but with and subject to all privileges, liabilities, and incidents conferred or imposed by this Act on patents granted under this Act.

(4) No fees shall be payable under this Act on any such patent as is mentioned in the next foregoing sub-section in respect of anything done or any period of time expired before the actual grant of the patent, but the like fees shall be payable on every such patent in respect of everything done and every period of time expiring after the actual grant of the patent as would have been payable on such patent if such patent had been a patent granted under this Act on the date borne by such patent notwithstanding that such date is prior to the passing of this Act or to the commencement of this Part of this Act.

(5) In every case in which a complete specification has been accepted by the Comptroller-General of the Patent Office in London before the commencement of this Part of this Act (whether before or after the passing of this Act) and the patent pursuant thereto has not been sealed and the time for such sealing has not expired at the commencement of this Part of this Act, the applicant for such patent shall during the time between the date of such acceptance or the 6th day of December, 1921 (whichever date is the later) and the sealing of the patent or the expiration of the time for sealing have and be deemed always to have had the like privileges and rights in Saorstát Eireann as if a patent for the invention had been granted to him under this Act on the date of the application to the Patent Office in London for such patent notwithstanding that such last-mentioned date is prior to the passing of this Act or to the commencement of this Part of this Act, but the said applicant shall not be entitled to institute in Saorstát Eireann any proceedings for infringement until a patent which by virtue of this section is deemed to be a patent granted under this Act has been granted to him for the invention.

(6) No fees shall be receivable in the Office in respect of any such patent as is mentioned in this section unless or until certified copies of the entries in the British register relating to the patent have been furnished to the controller for registration and a copy of the complete specification on which the British patent was granted has been lodged with the controller, but the failure to lodge such copies shall not relieve from the liability to pay any fees or from the consequences of the non-payment thereof.

(7) The holder of a patent which by virtue of this section is deemed to be a patent granted under this Act shall not be entitled to apply for or be granted under this Act any other patent for the invention for which such first-mentioned patent was granted.

30. —(1) A patent granted to the true and first inventor shall not be invalidated by an application in fraud of him, or by provisional protection obtained thereon, or by any use or publication of the invention subsequent to that fraudulent application during the period of provisional protection.

(2) Where a patent has been revoked by the court on the ground that it has been obtained in fraud of the true and first inventor, or where the grant has been refused or revoked on the ground that the applicant or patentee obtained the invention from another person, the controller may, on the application of the true inventor made in accordance with the provisions of this Act, grant to him a patent for the whole or any part of the invention in lieu of and bearing the same date as the patent so revoked, or as would have been borne by the patent if the grant thereof had not been refused:

Provided that no action shall be brought for any infringement of the patent so granted committed before the actual date when such patent was granted.

31. —(1) Where the same applicant has put in two or more provisional specifications for inventions which are cognate or modifications one of the other, and has obtained thereby concurrent provisional protection for the same, and the controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may accept one complete specification in respect of the whole of such applications and grant a single patent thereon.

(2) Such patent shall bear the date of the earliest of such applications, but in considering the validity of the same, and in determining other questions under this Act, the court or the controller, as the case may be, shall have regard to the respective dates of the provisional specifications relating to the several matters described therein.

32. —The term limited in every patent for the duration thereof shall, save as otherwise expressly provided by this Act, be sixteen years from its date.

33. —(1) A patent shall, notwithstanding anything therein or in this Act, cease if and whenever the patentee fails to pay a prescribed fee in relation thereto within the prescribed time or, where that time is extended under this section, within such extension of that time.

(2) The controller may on the application at any time of the patentee under a British patent which by virtue of this Act is deemed to have been granted under this Act and without the payment of any additional fee extend for any period not exceeding six months from the commencement of this Part of this Act the prescribed time for the payment of the first fee which becomes payable under this Act in respect of such British patent.

(3) In any case not coming within the foregoing sub-section the controller shall on the application at any time of the patentee and payment by him of such additional fee as shall be prescribed extend for such period not exceeding three months as is so applied for the prescribed time for the payment of any prescribed fee in relation to any patent.

(4) If any proceeding is taken in respect of an infringement of the patent committed after a failure to pay any fee within the prescribed time, and before any enlargement thereof, the court before which the proceeding is taken may, if it thinks fit, refuse to award any damages in respect of such infringement.

34. —(1) A patentee may, after advertising in manner provided by rules of the court his intention to do so, present a petition to the court praying that his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent:

Provided that the court may in its discretion extend such period within which such a petition may be presented.

(2) Any person may give notice to the court of objection to the extension.

(3) On the hearing of any petition under this section the patentee and any person who has given such notice of objection shall be made parties to the proceeding, and the controller shall be entitled to appear and be heard, and shall appear if so directed by the court.

(4) The court, in considering its decision, shall have regard to the nature and merits of the invention in relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case.

(5) If it appears to the court that the patentee has been inadequately remunerated by his patent, the court may by order extend the term of the patent for a further term not exceeding five years, or, in exceptional cases, ten years, or may order the grant of a new patent for such term as may be specified in the order and containing any restriction, conditions, and provisions the court may think fit.

35. —(1) When a patent for an invention has been applied for or granted under this Act or a patent is by virtue of this Act deemed to be a patent granted under this Act, and the applicant or the patentee, as the case may be, applies for a further patent in respect of any improvement in or modification of the invention, he may, if he thinks fit, in his application for the further patent, request that the term limited in that patent for the duration thereof be the same as that ofthe original patent or so much of that term as is unexpired.

(2) Where an application containing such a request is made, a patent (hereinafter referred to as a patent of addition) may be granted for such term as aforesaid.

(3) A patent of addition shall remain in force so long as the patent for the original invention remains in force, but no longer, and in respect of a patent of addition no fees shall be payable for renewal:

Provided that, if the patent for the original invention is revoked, then the patent of addition shall, if the court or controller so orders, become an independent patent, and the fees payable, and the dates when they become payable, shall be determined by its date, but its duration shall not exceed the unexpired term of the patent for the original invention.

(4) The grant of a patent of addition shall be conclusive evidence that the invention is a proper subject for a patent of addition, and the validity of the patent shall not be questioned on the ground that the invention ought to have been the subject of an independent patent.

36. —(1) Where any patent has become void owing to the failure of the patentee to pay any prescribed fee within the prescribed time, the patentee may apply to the controller in the prescribed manner for an order for the restoration of the patent.

(2) Every such application shall contain a statement of the circumstances which have led to the omission of the payment of the prescribed fee.

(3) If it appears from such statement that the omission was unintentional and that no undue delay has occurred in the making of the application, the controller shall advertise the application in the prescribed manner, and within such time as may be prescribed any person may give notice of opposition at the Office.

(4) Where such notice is given the controller shall notify the applicant thereof.

(5) After the expiration of the prescribed period the controller shall hear the case and issue an order either restoring the patent or dismissing the application: Provided that in every order under this section restoring a patent such provisions as may be prescribed shall be inserted for the protection of persons who may have availed themselves of the subject-matter of the patent after the patent had been announced as void in the Journal.

(6) An appeal shall lie from the decision of the controller under this section to the court.

37. —(1) An applicant or a patentee may at any time, by request in writing left at the Office, seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of, and the reasons for, the proposed amendment.

(2) The request and the nature of the proposed amendment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any person may give notice at the Office of opposition to the amendment.

(3) Where such a notice is given the controller shall give notice of the opposition to the person making the request, and shall hear and decide the case.

(4) Where no notice of opposition is given, or the person so giving notice of opposition does not appear, the controller shall determine whether and subject to what conditions, if any, the amendment ought to be allowed.

(5) The decision of the controller in either case shall be subject to an appeal to the law officer, who shall, if required, hear the person making the request to amend and, where notice of opposition has been given, the person giving that notice, if he is, in the opinion of the law officer, entitled to be heard in opposition to the request, and, where there is no opposition, the controller, and may make an order determining whether and subject to what conditions (if any) the amendment ought to be allowed.

(6) No amendment shall be allowed that would make the specification, as amended, describe an invention substantially larger than or substantially different from the invention described by the specification as it stood before amendment.

(7) Leave to amend shall be conclusive as to the right of the party to make the amendment allowed, except in case of fraud; and the amendment shall be advertised in the prescribed manner, and shall in all courts and for all purposes be deemed to form part of the specification:

Provided that a court shall be entitled in construing a specification as amended to refer to the specification as accepted and published.

(8) This section shall not apply when and so long as any action for infringement or proceeding before the court for the revocation of a patent is pending.

38. —In any action for infringement of a patent or proceedings before a court for the revocation of a patent, the court may by order allow the patentee to amend his specification by way of disclaimer, correction, or explanation in such manner, and subject to such terms as to costs, advertisements, or otherwise, as the court may think fit:

Provided that no amendment shall be so allowed that would make the specification, as amended, describe an invention substantially larger than, or substantially different from, the invention described by the specification as it stood before the amendment, and where an application for such an order is made to the court notice of the application shall be given to the controller, and the controller shall have the right to appear and be heard, and shall appear if so directed by the court.

39. —Where an amendment of a specification by way of disclaimer, correction, or explanation, has been allowed under this Act, no damages shall be given in any action in respect of the use of the invention before the date of the decision allowing the amendment, unless the patentee establishes to the satisfaction of the court that his original description was framed in good faith and with reasonable skill and knowledge.

40. —(1) At any time after the sealing of a patent the controller shall, if the patentee so requests, cause the patent to be indorsed with the words “licences of right,” and a corresponding entry to be made in the register, and thereupon—

(a) any person shall at any time thereafter be entitled as of right to a licence under the patent upon such terms as, in default of agreement, may be settled by the controller on the application of either the patentee or the applicant:

Provided that any licence the terms of which are settled by agreement shall be deemed, unless otherwise expressly provided, to include the terms and conditions specified in paragraphs (c) and (d) of this sub-section as if they had been imposed by the controller thereunder in like manner as if the terms had been settled by the controller;

(b) in settling the terms of any such licence the controller shall be guided by the following considerations—

(i) he shall, on the one hand, endeavour to secure the widest possible user of the invention in Saorstát Eireann consistent with the patentee deriving a reasonable advantage from his patent rights,

(ii) he shall, on the other hand, endeavour to secure to the patentee the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in Saorstát Eireann,

(iii) he shall also endeavour to secure equality of advantage among the several licensees, and for this purpose may, on due cause being shown, reduce the royalties or other payments accruing to the patentee under any licence previously granted:

Provided that, in considering the question of equality of advantage, the controller shall take into account any work done or outlay incurred by any previous licensee with a view to testing the commercial value of the invention or to securing the working thereof on a commercial scale in Saorstát Eireann;

(c) any such licence the terms of which are settled by the controller may be so framed as to preclude the licensee from importing into Saorstát Eireann any goods the importation of which, if made by persons other than the patentee or those claiming under him, would be an infringement of the patent, and in such a case the patentee and all licensees under the patent shall be deemed to have mutually covenanted against such importation;

(d) every such licensee shall be entitled to call upon a patentee to take proceedings to prevent the infringement of the patent, and if the patentee refuses, or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were patentee, making the patentee a defendant. A patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings. Service on him may be effected by leaving the writ at his address for service given on the register;

(e) if in any action for infringement of a patent so indorsed the infringing defendant is ready and willing to take a licence upon terms to be settled by the controller, no injunction against him shall be awarded, and the amount recoverable against him by way of damages (if any) shall not exceed double the amount which would have been recoverable against him as licensee if the licence had been dated prior to the earliest infringement:

Provided that this paragraph shall not apply wherethe infringement consists of the importation of infringing goods;

(f) the renewal fees payable by the patentee of a patent so indorsed shall, as from the date of the indorsement, be one moiety only of the fees which would otherwise have been payable.

(2) The controller shall, before acting on any request to indorse a patent made by the patentee under this section, advertise such request in the Journal, and shall satisfy himself that the patentee is not precluded by contract from making such request, and for that purpose shall require from the patentee such evidence, by statutory declaration or otherwise, as he may deem necessary:

Provided that a patentee shall not be deemed to be so precluded by reason only of his having granted a licence under the patent where the licence does not limit his right to grant other licenees.

(3) Any person, alleging that a request under this section has been made contrary to some contract in which he is interested, may apply to the controller within the prescribed time and in the prescribed manner, and the controller, if satisfied of the truth of such allegation, shall refuse to indorse the patent pursuant to the request, or shall cause the indorsement, if already made, to be cancelled.

Any order under this sub-section shall be subject to appeal to the court.

(4) All indorsements of patents under this section shall be entered on the register of patents and shall be published in the Journal and in such other manner as the controller may deem desirable for the purpose of bringing the invention to the notice of manufacturers.

(5) If at any time it appears that in the case of a patent so indorsed there is no existing licence the controller may, if he thinks fit, on the application of the patentee and on payment by him of the unpaid moiety of all renewal fees which have become due since the indorsement, after due notice cancel the indorsement, and in that case the patentee's rights and liabilities shall be the same as if no such indorsement had been made.

41. —(1) Revocation of a patent may be obtained on petition to the court.

(2) Every ground on which a patent might formerly at common law have been repealed by scire facias shall be available by way of defence to an action of infringement and shall also be a ground of revocation under this section.

(3) A petition for revocation of a patent may be presented—

(a) by the law officer or any person authorised by him; or

(b) by any person alleging—

(i) that the patent was obtained in fraud of his rights, or of the rights of any person under or through whom he claims, or

(ii) that he, or any person under or through whom he claims, was the true inventor of any invention included in the patent, or

(iii) that he, or any person under or through whom he claims an interest in any trade, business, or manufacture, had publicly manufactured, used, or sold, within Saorstát Eireann, before the date of the patent, anything claimed by the patentee as his invention.

42. —(1) Any person who would have been entitled to oppose the grant of a patent, or is the successor in interest of a person who was so entitled, may, within one year from the grant of the patent, apply to the controller for an order revoking the patent on any one or more of the grounds on which the grant of the patent might have been opposed:

Provided that when an action for infringement or proceedings for the revocation of the patent are pending in any court, an application under this section shall not be made except with the leave of the court.

(2) The controller shall give notice of the application to the patentee, and after hearing the parties, if desirous of being heard, may make an order revoking the patent or requiring the specification relating thereto to be amended by disclaimer, correction, or explanation, or dismissing the application; but the controller shall not make an order revoking the patent unless the circumstances are such as would have justified him in refusing to grant the patent had the proceedings been proceedings in an opposition to the grant of a patent.

(3) A patentee may at any time by giving notice in the prescribed manner to the controller offer to surrender his patent, and the controller may, if after giving notice of the offer and hearing all parties who desire to be heard he thinks fit, accept the offer, and thereupon make an order for the revocation of the patent.

(4) Any decision of the controller under this section shall be subject to appeal to the court.

43. —(1) Any person interested may at any time apply to the controller alleging in the case of any patent that there has been an abuse of the monopoly rights thereunder and asking for relief under this section.

(2) The monopoly rights under a patent shall be deemed to have been abused in any of the following circumstances:—

(a) if at any time after the expiration of three years, in the case of a British patent which is by virtue of this Act deemed to have been granted under this Act, from the commencement of this Part of this Act, or in the case of any other patent, from the date of the application for the patent, the patented invention (being one capable of being worked in Saorstát Eireann) is not being worked within Saorstát Eireann on a commercial scale, and no satisfactory reason can be given for such non-working:

Provided that, if an application is presented to the controller on this ground, and the controller is of opinion that the time which has elapsed since the date of the patent has by reason of the nature of the invention or for any other cause been insufficient to enable the invention to be worked within Saorstát Eireann on a commercial scale, the controller may adjourn the application for such period as will in his opinion be sufficient for that purpose;

(b) if the working of the invention within Saorstát Eireann on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by the patentee or persons claiming under him, or by persons directly or indirectly purchasing from him, or by other persons against whom the patentee is not taking or has not taken any proceedings for infringement;

(c) if the demand for the patented article in Saorstát Eireann is not being met to an adequate extent and on reasonable terms, regard being had amongst other circumstances, to the potential demand that might be evoked if the patented article were sold at a lower price;

(d) if the price at which the patented article is sold is, having regard to all the circumstances, unreasonably high in comparison with that at which the article is sold in other countries;

(e) if, by reason of the refusal of the patentee to grant a licence or licences upon reasonable terms, the trade or industry of Saorstát Eireann or the trade of any person or class of persons trading in Saorstát Eireann, or the establishment of any new trade or industry in Saorstát Eireann is prejudiced, and it is in the public interest that a licence or licences should be granted;

(f) if any trade or industry in Saorstát Eireann or any person or class of persons engaged therein, is unfairly prejudiced by the conditions attached by the patentee, whether before or after the passing of this Act, to the purchase, hire, licence, or use of the patented article, or to the using or working of the patented process:

Provided that, for the purpose of determining whether there has been any abuse of the monopoly rights under a patent, it shall be taken that patents for new inventions are granted not only to encourage invention but to secure that new inventions shall so far as possible be worked on a commercial scale in Saorstát Eireann without undue delay.

(3) On being satisfied that a case of abuse of the monopoly rights under a patent has been established, the controller may exercise any of the following powers as he may deem expedient in the circumstances:—

(a) he may order the patent to be indorsed with the words “licences of right” and thereupon the same rules shall apply as are provided in this Act in respect of patents so indorsed, and an exercise by the controller of this power shall entitle every existing licensee to apply to the controller for an order entitling him to surrender his licence in exchange for a licence to be settled by the controller in like manner as if the patent had been so indorsed at the request of the patentee, and the controller may make such order; and an order that a patent be so indorsed may be made notwithstanding that there may be an agreement subsisting which would have precluded the indorsement of the patent at the request of the patentee;

(b) he may order the grant to the applicant of a licence on such terms as the controller may think expedient, including a term precluding the licensee from importing into Saorstát Eireann any goods the importation of which, if made by persons other than the patentee or persons claiming under him, would be an infringement of the patent, and in such case the patentee and all licensees for the time being shall be deemed to have mutually covenanted against such importation. A licensee under this paragraph shall be entitled to call upon the patentee to take proceedings to prevent infringement of the patent, and if the patentee refuses, or neglects to do so within two months after being so called upon, the licensee may institute proceedings for infringement in his own name as though he were the patentee, making the patentee a defendant. A patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings. Service on him may be effected by leaving the writ at his address for service given on the register. In settling the terms of a licence under this paragraph the controller shall be guided as far as may be by the same considerations as are specified in this Act for his guidance in settling licences under patents indorsed “licences of right”;

(c) if the controller is satisfied that the invention is not being worked on a commercial scale within Saorstát Eireann, and is such that it cannot be so worked without the expenditure of capital for the raising of which it will be necessary to rely on the patent mono-poly, he may, unless the patentee or those claiming under him will undertake to find such capital, order the grant to the applicant, or any other person, or to the applicant and any other person or persons jointly, if able and willing to provide such capital, of an exclusive licence on such terms as the controller may think just, but subject as hereinafter provided;

(d) if the controller is satisfied that the objects of this section cannot be attained by the exercise of any of the foregoing powers, he may order the patent to be revoked, either forthwith or after such reasonable interval as may be specified in the order, unless in the meantime such conditions as may be prescribed in the order with a view to attaining the objects of this section are fulfilled, and the controller may, on reasonable cause shown in any case, by subsequent order extend the interval so specified:

Provided that the controller shall make no order for revocation which is at variance with any treaty, convention, arrangement, or engagement with any foreign country or British dominion made by or binding on Saorstát Eireann;

(e) if the controller is of opinion that the objects of this section will be best attained by making no order under the above provisions of this section, he may make an order refusing the application and dispose of any question as to costs thereon as he thinks just.

(4) In settling the terms of any such exclusive licence as is provided in paragraph (c) of the last preceding sub-section, due regard shall be had to the risks undertaken by the licensee in providing the capital and working the invention, but, subject thereto, the licence shall be so framed as—

(a) to secure to the patentee the maximum royalty compatible with the licensee working the invention within Saorstát Eireann on a commercial scale and at a reasonable profit;

(b) to guarantee to the patentee a minimum yearly sum by way of royalty, if and so far as it is reasonable so to do, having regard to the capital requisite for the proper working of the invention and all the circumstances of the case;

and, in addition to any other powers expressed in the licence or order, the licence and the order granting the licence shall be made revocable at the discretion of the controller if the licensee fails to expend the amount specified in the licence as being the amount which he is able and willing to provide for the purpose of working the invention on a commercial scale within Saorstát Eireann, or if he fails so to work the invention within the time specified in the order.

(5) In deciding to whom such an exclusive licence is to be granted the controller shall, unless good reason is shown to the contrary, prefer an existing licensee to a person having no registered interest in the patent.

(6) The order granting an exclusive licence under this section shall operate to take away from the patentee any right which he may have as patentee to work or use the invention and to revoke all existing licences, unless otherwise provided in the order, but on granting an exclusive licence the controller may, if he thinks it fair and equitable, make it a condition that the licensee shall give proper compensation to be fixed by the controller for any money or labour expended by the patentee or any existing licensee in developing or exploiting the invention.

(7) Every application presented to the controller under this section must set out fully the nature of the applicant's interest and the facts upon which the applicant bases his case and the relief which he seeks. The application must be accompanied by statutory declarations verifying the applicant's interest and the facts set out in the application.

(8) The controller shall consider the matters alleged in the application and declarations, and, if satisfied that the applicant has a bonâ fide interest and that a primâ facie case for relief has been made out, he shall direct the applicant to serve copies of the application and declarations upon the patentee and upon any other persons appearing from the register to be interested in the patent, and shall advertise the application in the Journal.

(9) If the patentee or any person is desirous of opposing the granting of any relief under this section, he shall, within such time as may be prescribed or within such extended time as the controller may on application further allow, deliver to the controller a counter statement verified by a statutory declaration fully setting out the grounds on which the application is to be opposed.

(10) The controller shall consider the counter statement and declarations in support thereof and may thereupon dismiss the application if satisfied that the allegations in the application have been adequately answered, unless any of the parties demands a hearing or unless the controller himself appoints a hearing. In any case the controller may require the attendance before him of any of the declarants to be cross-examined or further examined upon matters relevant to the issues raised in the application and counter statement, and he may, subject to due precautions against disclosure of information to rivals in trade, require the production before him of books and documents relating to the matter in issue.

(11) All orders of the controller under this section shall be subject to appeal to the court, and on any such appeal the law officer or such other counsel as he may appoint shall be entitled to appear and be heard.

(12) In any case where the controller does not dismiss an application as hereinbefore provided, and—

(a) if the parties interested consent; or

(b) if the proceedings require any 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 thereunder to be referred to an arbitrator agreed on by the parties, or in default of agreement appointed by the controller, and, where the whole proceedings are so referred, the award of such arbitrator shall, if all the parties consent, be final, but otherwise shall be subject to the same appeal as the decision of the controller under this section, and, where a question or issue of fact is so referred, the arbitrator shall report his findings to the controller.

(13) For the purposes of this section, the expression “patented article” includes articles made by a patented process.

44. —Any order for the grant of a licence under this Act shall, without prejudice to any other method of enforcement, operate as if it were embodied in a deed granting a licence executed by the patentee and all other necessary parties.

45. —(1) There shall be kept at the Office a book called the register of patents, wherein shall be entered the names and addresses of grantees of patents granted under this Act, notifications of assignments and of transmissions of such patents, of licences under such patents, and of amendments, extensions, and revocations of such patents, and such other matters affecting the validity or proprietorship of such patents as may be prescribed.

(2) The register of patents shall be prima facie evidence of all matters by this Act directed or authorised to be inserted therein.

(3) Copies of deeds, licences, and any other documents affecting the proprietorship in any patent or in any licence thereunder, must be supplied to the controller in the prescribed manner for filing in the Office.

(4) Certified copies of all entries in the British register relating to British patents which by virtue of this Act are deemed to be patents granted under this Act shall be furnished to the controller and shall be entered in the register of patents under this Act, but it shall not be obligatory to make such entries in the register until the first occasion on which certified copies of such entries in the British register are required by or under this Act to be furnished to the controller.

46. —(1) Any inventor or patentee may (either for or without valuable consideration) assign to a Minister on behalf of the State all the benefit of an invention and of any patent obtained or to be obtained for the invention.

(2) In this section the word “Minister” means a Minister head of a Department of State established under the Ministers and Secretaries Act, 1924 (No. 16 of 1924).

47. —(1) The inventor of any improvement in instruments or munitions of war may (either for or without valuable consideration) assign to the Minister for Defence on behalf of the State all the benefit of the invention and of any patent obtained or to be obtained for the invention.

(2) The assignment shall effectually vest the benefit of the invention and patent in the Minister for Defence on behalf of the State, and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwithstanding any want of valuable consideration), and may be enforced accordingly by the Minister for Defence.

(3) Where any such assignment as aforesaid has been made, the Minister for Defence may at any time before the publication of the complete specification certify to the controller that, in the interest of the public service, the particulars of the invention and of the manner in which it is to be performed should be kept secret.

(4) If the Minister for Defence so certifies the application and specifications, with the drawings (if any) and any amendment of the complete specification, and any copies of such documents and drawings shall, instead of being left in the ordinary manner at the Office, be delivered to the controller in a packet sealed by authority of the Minister for Defence.

(5) The packet aforesaid shall, until the expiration of the term during which a patent for the invention may be in force, be kept sealed by the controller and shall not be opened save under the authority of an order of the Minister for Defence or of the law officer.

(6) The sealed packet aforesaid shall be delivered at any time during the continuance of the patent to any person authorised by the Minister for Defence to receive it, and shall, if returned to the controller, be again kept sealed by him.

(7) On the expiration of the term of the patent, the sealed packet shall be delivered to the Minister for Defence.

(8) Where the Minister for Defence certifies as aforesaid after an application for a patent has been left at the Office, but before the publication of the complete specification, the application and specifications, with the drawings (if any), shall be forthwith placed in a packet sealed by authority of the controller, and the packet shall be subject to the foregoing provisions respecting a packet sealed by authority of the Minister for Defence.

(9) No proceeding by petition or otherwise shall lie for revocation of a patent granted for an invention in relation to which such a certificate as aforesaid has been given by the Minister for Defence.

(10) No copy of any specification or other document or drawings by this section required to be placed in a sealed packet, shall in any manner whatever be published or opened to the inspection of the public, but, save as in this section is otherwise directed, the provisions of this Act shall apply in respect of any such invention and patent as aforesaid.

(11) The Minister for Defence may at any time waive the benefit of this section with respect to any particular invention, and thereupon the specifications, documents, and drawings relating to that invention shall thenceforth be kept and dealt with in the ordinary way.

(12) The communication of any invention for any improvement in instruments or munitions of war to the Minister for Defence or to any person or persons authorised by the Minister for Defence to investigate the same or the merits thereof, shall not, nor shall anything done for the purposes of the investigation, be deemed use or publication of such invention so as to prejudice the grant or validity of any patent for the same.

(13) Rules may be made under this Act by the Minister, after consultation with the Minister for Defence, for the purpose of ensuring secrecy with respect to patents to which this section applies, and those rules may modify any of the provisions of this Act in their application to such patents as aforesaid so far as may appear necessary for the purpose aforesaid.

48. —(1) In an action or proceeding for infringement or revocation of a patent, 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, and try the case wholly or partially with his assistance, in which event the action shall be tried without a jury unless the court otherwise directs.

(2) The Supreme Court may, if it thinks fit, in any proceeding before them 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 the case may be, and be paid as part of the expenses of the execution of this Act.

49. —A defendant in an action for infringement of a patent, if entitled to present a petition to the court for the revocation of the patent, may, without presenting such a petition, apply in accordance with the rules of the court by way of counterclaim in the action for the revocation of the patent.

50. —(1) Notwithstanding anything to the contrary appearing in section 39 (which relates to restriction on damages where specification amended) of this Act, if the court in any action for infringement of a patent finds that any one or more of the claims in the specification in respect of which infringement is alleged are valid, it shall, subject to its discretion as to costs and as to the date from which damages should be reckoned and subject to such terms as to amendment as it may deem desirable, grant relief in respect of any such claims which are infringed without regard to the invalidity of any other claim in the specification.

(2) In exercising the discretion mentioned in the foregoing sub-section, the court may take into consideration the conduct of the parties in inserting the invalid claims in the specification or permitting such claims to remain therein.

51. —A patentee shall not be entitled to recover any damages in respect of any infringement of a patent from any defendant who proves that at the date of the infringement he was not aware, nor had reasonable means of making himself aware, of the existence of the patent, and the marking of an article with the word “patent,” “patented,” or any word or words expressing or implying that a patent has been obtained for the article, stamped, engraved, impressed on, or otherwise applied to the article, shall not be deemed to constitute notice of the existence of the patent unless the word or words are accompanied by the year and number of the patent:

Provided that nothing in this section shall affect any proceedings for an injunction.

52. —In an action for infringement of a patent, the plaintiff shall be entitled to relief by way of injunction and damages but not to an account of profits, but subject as aforesaid the court may on the application of either party make such order for an injunction or inspection, and impose such terms and give such directions respecting the same and the proceedings thereon as the court may see fit.

53. —Where a patent is granted to two or more persons jointly, they shall, unless otherwise specified in the patent, be treated for the purpose of the devolution of the legal interests therein as joint tenants, but, subject to any contract to the contrary, each of such persons shall be entitled to use the invention for his own profit without accounting to the others, but shall not be entitled to grant a licence without their consent, and, if any such person dies, his beneficial interest in the patent shall devolve on his personal representatives as part of his personal estate.

54. —(1) It shall not be lawful in any contract in relation to the sale or lease of, or licence to use or work, any article or process protected by a patent to insert a condition the effect of which will be—

(a) to prohibit or restrict the purchaser, lessee, or licensee from using any article or class of articles, whether patented or not, or any patented process, supplied or owned by any person other than the seller, lessor, or licensor or his nominees; or

(b) to require the purchaser, lessee, or licensee to acquire from the seller, lessor, licensor, or his nominees, any article or class of articles not protected by the patent;

and any such condition shall be null and void, as being in restraint of trade and contrary to public policy:

Provided that this subsection shall not apply if—

(i) the seller, lessor, or licensor proves that at the time the contract was entered into the purchaser, lessee, or licensee had the option of purchasing the article or obtaining a lease or licence on reasonable terms, without such conditions as aforesaid; and

(ii) the contract entitles the purchaser, lessee, or licensee to relieve himself of his liability to observe any such condition on giving the other party three months notice in writing and on payment in 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 action, application, or proceedings under this Act no person shall be estopped from applying for or obtaining relief by reason of any admission made by him as to the reasonableness of the terms offered to him under paragraph (i) of the provision to sub-section (1) of this section.

(3) Any contract relating to the lease of or licence to use or work any patented article or patented process may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything in the same or in any other contract to the contrary, be determined by either party on giving three months notice in writing to the other party.

(4) The insertion by the patentee 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 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 condition in a contract exerciseable independently of this section; or

(d) affect any condition in a contract for the lease of or licence to use a patented article, whereby the lessor or licensor reserves to himself or his nominees the right to supply such new parts of the patented article as may be required to put or keep it in repair.

55. —(1) In the case of inventions relating to substances prepared or produced by chemical processes or intended for food or medicine, the specification shall not include claims for the substance itself, except when prepared or produced by the methods or processes of manufacture described and claimed or by their obvious chemical equivalents: Provided that, in an action for infringement of a patent where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution shall in the absence of proof to the contrary be deemed to have been produced by the patented process.

(2) In the case of any patent for an invention intended for or capable of being used for the preparation or production of food or medicine, the controller shall, unless he sees good reason to the contrary, grant to any person applying for the same, a licence limited to the use of the invention for the purposes of the preparation or production of food or medicine but not otherwise; and, in settling the terms of such licence and fixing the amount of royalty or other consideration payable, the controller shall have regard to the desirability of making the food or medicine available to the public at the lowest possible price consistent with giving to the inventor due reward for the research leading to the invention.

Any decision of the controller under this sub-section shall be subject to appeal to the court.

56. —(1) An invention covered by a patent granted or registered in Saorstát Eireann shall not be deemed to have been anticipated by reason of its publication in—

(a) a specification left in the Patent Office in London pursuant to an application made in that Office not less than fifty years before the date of the application for the patent, or

(b) a provisional specification left in the Patent Office in London before the commencement of this Part of this Act and not followed by a complete specification, or

(c) a provisional specification left in the Office and not followed by a complete specification.

(2) A patent shall not be held to be invalid by reason only of the invention in respect of which the patent was granted, or any part thereof, having been published prior to the date of the patent, if the patentee proves to the satisfaction of the court that the matter published was derived or obtained from him, and that the publication was made without his knowledge or consent, and, if he learnt of the publication before the date of his application for the patent, that he applied for and obtained protection for his invention with all reasonable diligence after learning of the publication:

Provided that the protection afforded by this sub-section shall not extend to a patentee who has commercially worked his invention in Saorstát Eireann otherwise than for the purpose of reasonable trial of the invention prior to the application for the patent.

57. —A patent shall not be held to be invalid on the ground that the complete specification describes a further or different invention to that contained in the provisional specification if the invention therein described, so far as it is not contained in the provisional specification, was novel at the date when the complete specification was put in, and the applicant was the first and true inventor thereof.

58. —(1) If the person claiming to be inventor of an invention dies without making an application for a patent for the invention, application may be made by, and a patent for the invention granted to, his legal representative.

(2) Every such application must contain a declaration by the legal representative that he believes the deceased person to have been the true and first inventor of the invention.

59. —If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the controller, the controller may at any time seal a duplicate thereof.

60. —(1) The exhibition of an invention at an industrial or international exhibition, certified as such by the Minister, or the publication of any description of the invention during the period of the holding of the exhibition, or the use of the invention for the purpose of the exhibition in the place where the exhibition is held, or the use of the invention during the period of the holding of the exhibition by any person elsewhere, without the privity or consent of the inventor, or the reading of a paper by an inventor before a learned society or the publication of the paper in the society's transactions, shall not prejudice the right of the inventor to apply for and obtain a patent in respect of the invention or the validity of any patent granted on the application: Provided that—

(a) the exhibitor, before exhibiting the invention, or the person reading such paper or permitting such publication, gives the controller the prescribed notice of his intention to do so; and

(b) the application for a patent is made before or within six months from the date of the opening of the exhibition, or the reading or publication of such paper.

(2) The Executive Council may by Order apply this section to any exhibition mentioned in the Order in like manner as if it were an industrial or international exhibition certified as such by the Minister and any such Order may provide that the exhibitor shall be relieved from the condition of giving notice to the controller of his intention to exhibit, and shall be so relieved either absolutely or upon such terms and conditions as may be stated in the Order.

61. —(1) A patent shall not prevent the use of an invention for the purposes of the navigation of a foreign vessel within the area of jurisdiction of the Government of Saorstát Eireann, or the use of an invention in a foreign vessel within that area, provided it is not used therein for or in connection with the manufacture or preparation of anything intended to be sold in or exported from Saorstát Eireann.

(2) This section shall not extend to vessels of any foreign state of which the laws do not confer corresponding rights with respect to the use of inventions in vessels of Saorstát Eireann while in the ports of that state, or in the waters within the jurisdiction of its courts.

(3) For the purposes of this section the expression “foreign vessel” includes a ship registered in a British dominion and the expression “foreign state” includes a British dominion.

62. —(1) There shall be kept at the Office a book called the register of patent agents, and no person shall practice, describe himself, or hold himself out, or permit himself to be described or held out, as a patent agent, unless—

(a) in the case of an individual, he is registered as a patent agent in the register of patent agents;

(b) in the case of a firm, the firm and every partner of the firm is so registered;

(c) in the case of a company, the company and every director and the manager (if any) of the company is so registered.

(2) If and when the Minister so directs there shall be kept at the Office a book called the register of clerks in which shall be entered the names of approved clerks of registered patent agents.

(3) If at any time after the expiration of three months from the commencement of this Act, any person contravenes the provisions of this section, he shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding twenty pounds, and in the case of a company every director, manager, secretary, or other officer of the company who is knowingly a party to the contravention shall be guilty of a like offence and liable to a like fine.

(4) For the purposes of this section, the expression “patent agent” means a person, firm, or company carrying on for gain in Saorstát Eireann the business of applying for or obtaining patents in Saorstát Eireann or elsewhere.

(5) Nothing in this section shall be taken to prohibit solicitors from taking such part as they have heretofore taken in proceedings analogous to any proceedings under this Act.

(6) No alien shall be registered as a patent agent.

63. —(1) Any person who—

(a) resides or has a place of business in Saorstát Eireann, and

(b) is not an alien, and

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

(d) complies with the prescribed conditions,

shall be eligible to be registered in the register of patent agents and shall on application in the prescribed form and manner and payment of the prescribed fee be so registered.

(2) Any person registered in the register of patent agents who

(a) ceases to be eligible to be so registered, or

(b) is proved to the satisfaction of the Minister to have been convicted of such an offence or to have been guilty of such misconduct as renders him unfit in the opinion of the Minister to be a patent agent, or

(c) applies to be removed from the register,

may be removed by the Minister from the register of patent agents, but no person shall be so removed (except on his own application) without being given an opportunity of being heard.

(3) The Minister may by order make rules for the management of the register of patent agents and may by such rules prescribe any matter or thing referred to in this section as prescribed, and in particular may so prescribe the educational and professional qualifications and the conditions for eligibility for registration in that register, and the maximum fees which may be charged by any person registered in the register of patent agents or by any solicitor for such services in connection with the application for or the obtaining of patents as may be specified in such rules.

(4) If a register of clerks is established under this Act the Minister may by order make rules for the management of such register and may by such rules prescribe the qualifications and conditions for eligibility for and the fees to be paid on registration in such register.

(5) In this section the word “prescribed” means prescribed by rules made under this section.