PART V

GENERAL PROVISIONS RELATING TO PATENTS, DESIGNS AND TRADE MARKS.

124.— There shall not be entered in any register kept under this Act, or be receivable by the controller, any notice of any trust expressed, implied, or constructive.

125. —Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to the provisions of this Act and to such regulations as may be prescribed, and certified copies, sealed with the seal of the controller, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee.

126. —Reports of examiners and other officers made under this Act shall not in any case be published or be open to public inspection, and shall not be liable to production or inspection, and shall not be liable to production or inspection in any legal proceeding, unless the court or officer having power to order discovery in such legal proceeding certifies that such production or inspection is desirable in the interests of justice, and ought to be allowed:

Provided that, on application being made by any person in the prescribed form, the controller may disclose the result of a search made under section 19 (which relates to documents to accompany specifications) or section 20 (which relates to investigation of specifications published previous to application) or section 21 (which relates to investigation of specifications published subsequent to application) of this Act on any particular application for the grant of a patent.

127. —(1) Where a person becomes entitled by assignment, transmission, or other operation of law to a patent or to the copyright in a registered design or to a registered trade mark, he shall make application to the controller to register his title, and the controller shall on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of such patent, design, or trade mark, and shall cause an entry to be made in the prescribed manner on the appropriate register of the assignment, transmission, or other instrument affecting the title.

(2) Where any person becomes entitled as mortgagee, licensee, or otherwise to any interest in a patent or a design, or as mortgagee or otherwise to any interest in a trade mark, he shall make application to the controller to register his title, and the controller shall, on receipt of such application and on proof of title to his satisfaction, cause notice of the interest to be entered in the prescribed manner in the appropriate register with particulars of the instrument (if any) creating such interest.

(3) The person registered as the proprietor of a patent, design, or trade mark shall, subject to the provisions of this Act, and to any rights appearing from the register to be vested in any other person, have power absolutely to assign, or otherwise deal with the patent, design, or trade mark (including, in the case of a patent or a design, to grant licences in respect thereof), and to give effectual receipts for any consideration for any such assignment, licence, or dealing.

(4) Any equities in respect of a patent, design, or trade mark may be enforced in like manner as in respect of any other personal property.

(5) Except in cases of appeals under this section and applications and appeals complaining of the non-insertion in or omission from a register of an entry relating to a document or instrument, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of this section shall not be admitted in evidence in any court in proof of the title to a patent, or copyright in a design, or a trade mark, or to any interest therein, unless the court otherwise directs.

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

128. —The controller may on request made in the prescribed manner by the registered proprietor of a patent, design, or trade mark or by some person entitled by law to act in his name—

(a) correct any clerical error in or in connection with an application for a patent or in any patent or in any specification or in any register kept pursuant to any of the foregoing Parts of this Act;

(b) enter any change in the name or address of any person who is entered on a register kept pursuant to any of the foregoing Parts of this Act;

(c) cancel the registration of a design or trade mark either wholly or in respect of any goods or class of goods in or for which such design or trade mark is registered;

(d) enter a disclaimer or memorandum relating to a design or trade mark which does not in any way extend the rights given by the existing registration of such design or trade mark.

129. —(1) Subject to the provisions of this Act the court may, on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from any register kept pursuant to any of the foregoing Parts of this Act of any entry or by any entry made in any such register without sufficient cause, or by any entry wrongly remaining on any such register, or by an error or defect in any entry in any such register, make such order for making, expunging, or varying such entry as it may think fit.

(2) The court may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of any such register.

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

(4) In the case of fraud in the registration or transmission of a patent, or a registered design or trade mark, the controller may himself apply to the court under the provisions of this section.

(5) Any order of the court rectifying any such register shall direct that notice of the rectification be served on the controller in the prescribed manner, who shall upon the receipt of such notice rectify the register accordingly.

(6) Any application under this section (other than an application by the controller) may, at the option of the applicant, be made in the first instance to the controller, and in such case the controller shall have all the powers of the court under this section, but his decision shall be subject to appeal to the court.

(7) The court may in any proceeding under this section in relation to the register of trade marks, direct a trade mark registered in Part A of that register to be removed to Part B of that register.

130. —(1) A patent and the registration of a design shall respectively have to all intents the like effect as against the State as they have against a citizen:

Provided that any Minister head of a Department of State may, by himself or by such of his agents, contractors, or others as may be authorised in writing by him at any time after the application, make, use, or exercise the invention, or use, or apply the design for the services of the State on such terms as may, either before or after the use thereof, be agreed on with the approval of the Minister for Finance between such Minister and the proprietor, or, in default of agreement, as may be settled in the manner hereinafter provided, and the terms of any agreement or licence concluded between the proprietor and any person other than a Minister shall be inoperative so far as concerns the making, use, or exercise of the invention or the use or application of the design for the service of the State:

Provided further that, where an invention which is the subject of any patent, or any registered design has, before the date of the patent or of the registration, been duly recorded in a document by, or been tried by or on behalf of any such Minister (such invention or design not having been communicated directly or indirectly by the applicant or the proprietor) any Minister or such of his agents, contractors, or others as may be authorised in writing by him, may make, use, and exercise the invention, or use or apply the design so recorded or tried for the service of the State free of any royalty or other payment to the proprietor, notwithstanding the existence of the patent or registration, and if in the opinion of such Minister the disclosure to the applicant or the proprietor, as the case may be, of the document recording the invention or design or the evidence of the trial thereof would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of the applicant or proprietor or to any independent expert mutually agreed upon.

(2) In case of any dispute as to the making, use, or exercise of an invention, or use or application of a design, under this section, or the terms therefor, or as to the existence or scope of any record or trial as aforesaid, the matter shall be referred to the court for decision, which shall have the power to refer the whole matter or any question or issue of fact arising thereon to be tried before an arbitrator upon such terms as it may direct. The court or arbitrator, as the case may be, may with the consent of the parties take into consideration the validity of the patent or registration, for the purposes only of the reference and the determination of the issues between the applicant and such Minister. The court or arbitrator in settling the terms as aforesaid shall be entitled to take into consideration any benefit or compensation which the proprietor or any other person interested in the patent or design may have received directly or indirectly from the State or from any Minister or any Government Department in respect of such patent or design.

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

(4) Nothing in this section shall affect the right of the State or of any person deriving title directly or indirectly from the State, to sell or use any articles forfeited under the laws relating to the customs or excise.

(5) In this section the word “applicant” means either an applicant for a patent or an applicant for the registration of a design, as the case may require, and the word “proprietor” means an inventor, or a patentee, or a registered proprietor of a design, as the case may require.

131. —(1) Where any person claiming to have an interest in a patent, registered design, or registered trade mark, by circulars, advertisements, or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged infringement of the patent, or of the copyright in the design or of the trade mark, any person aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as he has sustained thereby, if the alleged infringement to which the threats related was not in fact an infringement of the patent, copyright, or trade mark.

(2) This section shall not apply if an action for the infringement of the patent, copyright in the design, or trade mark (as the case may be) is commenced and prosecuted with due diligence.

132. —(1) In an action for infringement of a patent the Court may certify that the validity of any claim in the specification of the patent came in question, and if the Court so certifies then in any subsequent action for infringement of such claim the plaintiff in such subsequent action, on obtaining a final order or judgment in his favour, shall, unless the Court trying such subsequent action otherwise directs, have his full costs and expenses as between solicitor and client so far as that claim is concerned.

(2) In an action for infringement of the copyright in a registered design the Court may certify that the validity of the registration of such design came in question, and if the Court so certifies then in any subsequent action for infringement of such copyright the plaintiff in such subsequent action, on obtaining a final order or judgment in his favour, shall, unless the Court trying such subsequent action otherwise directs, have his full costs and expenses as between solicitor and client.

(3) In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of such trade mark, the Court may certify the same, and if it so certifies then in any subsequent legal proceeding in which such validity comes into question the proprietor of the said trade mark, on obtaining a final order or judgment in his favour, shall, unless the Court trying such subsequent legal proceeding otherwise directs, have his full costs and expenses as between solicitor and client.

133. —The law officer may examine witnesses on oath and administer oaths for that purpose, and may make rules regulating references and appeals to the law officer and the practice and procedure before him under this Act; and in any proceeding before the law officer under this Act, the law officer may order costs to be paid by either party, and any such order may be made a rule of the court.

134. —Where any discretionary power is by or under this Act given to the controller, he shall not exercise that power adversely to the applicant for a patent, or for amendment of a specification, or for registration of a design or trade mark or the registered proprietor of a patent, design, or trade mark with out (if so required within the prescribed time by the applicant or registered proprietor) giving the applicant or registered proprietor an opportunity of being heard.

135. —(1) The controller and the Minister shall, in any proceedings before either of them under this Act, respectively, have power by order to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may be made a rule of the court.

(2) If any party giving notice of any opposition under this Act, or applying to the controller for the revocation of a patent, or giving notice of appeal from any decision of the controller under this Act, neither resides nor carries on business in Saorstát Eireann, the controller, or in case of appeal to the Minister, law officer, or the court, the Minister, law officer, or the court may require such party to give security for the costs of the proceedings or appeal, and in default of such security being given may proceed to treat the proceedings or appeal as abandoned.

136. —The controller may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act, apply to the law officer for directions in the matter.

137. —(1) Whenever under this Act any act has to be done by or to any person in connexion with a patent, design, or trade mark or any procedure relating to a patent or the obtaining thereof or to a design or trade mark or the registration thereof, such act may under and in accordance with rules made under this Act or in particular cases by special leave of the Minister be done by or to an agent of such person duly authorised in the prescribed manner.

(2) Rules under this Act may authorise the controller to refuse to recognise as agent in respect of any business under this Act any person whose name, having been entered in the register of patent agents under this Act, has been removed therefrom.

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

(4) The controller shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor has a place of business in Saorstát Eireann.

138. —(1) The controller may refuse to grant a patent for an invention, or to register a design or trade mark of which the use would, in his opinion, be contrary to law or morality.

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

139. —The controller shall, before the first day of September in every year, cause a report respecting the execution by or under him of this Act during the year ending on the previous 31st day of March to be laid before both Houses of the Oireachtas, and therein shall include for the year to which the report relates all general rules made in that year under or for the purposes of this Act and an account of all fees, salaries, and allowances, and other money received and paid under this Act.

140. —Whenever an appeal is made to the Minister under this Act, the Minister may if he thinks fit refer such appeal to the court in lieu of hearing and deciding it himself, but, unless the Minister so refers the appeal, it shall be heard and decided by the Minister and the decision of the Minister shall be final

141. —All things required or authorised under this Act to be done by, to, or before the Minister may be done by, to, or before a secretary or an assistant secretary of the Minister or any person authorised in that behalf by the Minister.

142. —(1) Subject to general rules made under this Act, in any proceeding under this Act before the controller or the Minister the evidence shall be given by statutory declaration in the absence of directions to the contrary; but in any case in which the controller thinks it right so to do, he may take evidence vivâ voce in lieu of or in addition to evidence by declaration or allow any declarant to be cross-examined on his declaration. Any such statutory declaration may in the case of appeal be used before the court in lieu of evidence by affidavit, but if so used shall have all the incidents and consequences of evidence by affidavit.

(2) In case any part of the evidence is taken vivâ voce, the controller shall, in respect of requiring the attendance of witnesses and taking evidence on oath, and discovery and production of documents, be in the same position in all respects as a judge of the High Court.

143. —In any legal proceeding in which the relief sought includes alteration or rectification of a register kept pursuant to this Act, the controller shall have the right to appear and be heard, and shall appear if so directed by the court. Unless otherwise directed by the court, the controller in lieu of appearing and being heard may submit to the court a statement in writing signed by him, giving particulars of the proceedings before him in relation to the matter in issue or of the grounds of any decision given by him affecting the same or of the practice of the office in like cases, or of such other matters relevant to the issues, and within his knowledge as such controller, as he shall think fit, and such statement shall be deemed to form part of the evidence in the proceeding.

144. —In all proceedings before the court under this Act the costs of the controller shall be in the discretion of the court, but the controller shall not be ordered to pay the costs of any other party.

145. —A certificate purporting to be under the hand of the controller as to any entry, matter, or thing which he is authorised by this Act, or any general rules made thereunder, to make or do, shall be primâ facie evidence of the entry having been made, and of the contents thereof, or of the matter or thing having been done or left undone.

146. —Printed or written copies or extracts, purporting to be certified by the controller or an officer of the controller and sealed with the seal of the controller, of or from patents, specifications, designs, trade marks, and other documents in the Office, and of or from registers and other books kept there, shall be admitted in evidence in all courts and in all legal proceedings without further proof or production of the originals.

147. —Any application, notice, or other document authorised or required to be left, made, or given at the Office or to the controller, or to any other person under this Act, may be sent by post.

148. —Where the last day fixed by this Act for doing anything under this Act falls on any day specified in general rules made under this Act as an excluded day, the rules may provide for the thing being done on the next subsequent day which is not an excluded day.

149. —(1) If any person is, by reason of infancy, lunacy, or other disability, incapable of making any declaration or doing anything required or permitted by or under this Act, the guardian or committee (if any) of the person subject to the disability, or, if there be none, any person appointed by any court possessing jurisdiction in respect of his property, may make such declaration or a declaration as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of the person subject to the disability.

(2) An appointment may be made by the court for the purposes of this section upon the petition of any person acting on behalf of the person subject to the disability or of any other person interested in the making of the declaration or the doing of the thing.

150. —(1) If any person makes or causes to be made a false entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanour.

(2) If any person falsely represents that any article sold by him is a patented article, or falsely describes any design applied to any article sold by him as registered, or falsely represents a trade mark as registered, he shall be guilty of an offence under this sub-section and shall be liable on summary conviction thereof to a fine not exceeding five pounds.

(3) If any person sells an article having stamped, engraved, or impressed thereon or otherwise applied thereto the word “patent,” “patented,” “registered,” or any other word expressing or implying that the article is patented or that the design applied thereto or the trade mark thereon is registered, he shall be deemed for the purposes of this section to represent that the article is a patented article or that the design applied thereto is a registered design or that the trade mark thereon is a registered trade mark.

(4) Any person who, after the copyright in a design has expired, puts or causes to be put on any article to which the design has been applied the word “registered,” or any word or words implying that there is a subsisting copyright in the design, shall be guilty of an offence under this sub-section and shall be liable on summary conviction thereof to a fine not exceeding five pounds.

(5) If any person uses on his place of business, or on any document issued by him, or otherwise, any words suggesting that his place of business is officially connected with, or is, the Office, he shall be guilty of an offence under this sub-section and shall be liable on summary conviction thereof to a fine not exceeding twenty pounds.

151. —Any person who without lawful authority uses in connection with any business, trade, calling, or profession any badge, device, emblem, or flag reserved by law for the use of or commonly used by the State or any officer of the State or any Government Department (or any badge, device, emblem, or flag so closely resembling the same as to be calculated to deceive) in such manner as to be calculated to lead to the belief that he is duly authorised to use such badge, device, emblem, or flag, 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 continuing offence, a further fine not exceeding five pounds for every day on which the offence continues.

152. —(1) If any arrangement binding on Saorstát Eireann (whether by reason of its having been made by the Governor-General on the advice of the Executive Council or for any other reason) has been or shall be made with the government of any foreign state for mutual protection of inventions, or designs, or trade marks, then any person who has applied for protection for any invention, design, or trade mark in that state, or the legal representative or assignee of such person shall be entitled to a patent for his invention or to registration of his design or trade mark under this Act in priority to other applicants; and the patent or registration shall have the same date as the date of the application in the foreign state, provided whichever of the following conditions is applicable be duly complied with, that is to say:—

(a) in the case of a patent, the application for protection in Saorstát Eireann shall be made within twelve months after the date of the application for protection in the foreign state or, where such last-mentioned application was pending at the commencement of Part II . of this Act, within twelve months after the date of such commencement, and

(b) in the case of a design, the application for protection in Saorstát Eireann shall be made within four months after the date of the application for protection in the foreign state or, where such last-mentioned application was pending at the commencement of Part III . of this Act, within four months after the date of such commencement, and

(c) in the case of a trade mark, the application for protection in Saorstát Eireann shall be made within four months after the date of the application for protection in the foreign state or, where such last-mentioned application was pending at the commencement of Part IV . of this Act, within four months after the date of such commencement.

(2) Nothing in this section shall entitle the patentee under a patent or the proprietor of a design or trade mark to recover damages for infringements happening prior to the date on which the complete specification for the patent is accepted or the registration of the design or trade mark is completed (as the case may be).

(3) The patent granted for the invention or the registration of the design or trade mark shall not be invalidated—

(a) in the case of a patent, by reason only of the publication of a description of, or the use of, the invention; or

(b) in the case of a design, by reason only of the exhibition or use of, or the publication of a description or representation of, the design; or

(c) in the case of a trade mark, by reason only of the use of the trade mark,

in Saorstát Eireann during the period specified in this section as that within which the application may be made.

(4) The application for the grant of a patent, or the registration of a design, or the registration of a trade mark under this section, must be made in the same manner as an ordinary application under this Act:

Provided that—

(a) in the case of patents the application shall be accompanied by a complete specification, which, if it is not accepted within the twelve months from the application for protection in the foreign state or the commencement of Part II . of this Act (as the case may require) shall with the drawings (if any) be open to public inspection at the expiration of that period; and

(b) in the case of trade marks, any trade mark the registration of which has been duly applied for in the country of origin may be registered under this Act.

(5) The provisions of this section shall apply only in the case of those foreign states with respect to which the Governor-General by order made on the advice of the Executive Council declares them to be applicable, and so long only in the case of each state as the order continues in force with respect to that state.

(6) Where it is made to appear to the Governor-General that the legislature of any British dominion, protectorate or territory has made satisfactory provision for the protection of inventions, designs, or trade marks, patented or registered in Saorstát Eireann, it shall be lawful for the Governor-General by order made on the advice of the Executive Council to apply the provisions of this section to that dominion, protectorate or territory with such variations or additions, if any, as may be stated in the order

153. —(1) The Minister may make such general rules and do such things as he thinks expedient, subject to the provisions of this Act—

(a) for regulating the practice of registration under this Act;

(b) for classifying goods for the purposes of designs and for the purposes of trade marks;

(c) for making or requiring duplicates of specifications designs, trade marks, drawings, and other documents;

(d) for securing and regulating the publishing and selling of copies, at such prices and in such manner as he thinks fit, of specifications, designs, trade marks, drawings, and other documents;

(e) for regulating (with the approval of the Minister for Finance) the publication, issue, and sale of the Journal and all supplements thereto, reports, and other documents which the controller is by this Act required or authorised to publish or issue, and for regulating the matters to be published in the Journal and such supplements, reports, and other documents respectively;

(f) for securing and regulating the making, printing, publishing, and selling of indexes to, and abridgments of, specifications, designs, trade marks, and other documents in the Office, and providing for the inspection of such indexes and abridgments and other documents;

(g) for regulating (with the approval of the Minister for Finance) the presentation of copies of publications made under this Act to patentees and to public authorities, bodies, and institutions at home and abroad;

(h) for regulating the keeping of the several registers to be kept pursuant to this Act;

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

(j) for doing anything which is by this Act authorised or required to be done, or is in this Act referred to as being or to be done, by general rules made under this Act;

(k) generally for regulating the business of the Office, and all things by this Act placed under the direction or control of the controller, or of the Minister.

(2) General rules made under this section shall whilst in force be of the same effect as if they were contained in this Act.

(3) All rules made in pursuance of this section shall be advertised twice in the Journal, and shall be laid before both Houses of the Oireachtas as soon as practicable after they are made, and if either House of the Oireachtas within the next forty days after any rules have been so laid before that House, resolves that the rules or any of them ought to be annulled, the rules or those to which the resolution applies shall after the date of such resolution be of no effect, without prejudice to the validity of anything done in the meantime under the rules or to the making of any new rules.