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12 1964

PATENTS ACT, 1964

PART IX.

Miscellaneous.

Patent agents.

86. —(1) Subject to such exceptions as may be prescribed or as, in any particular case, the Controller may direct, whenever under this Act any act has to be done by or to any person in connection with a patent or any procedure relating to a patent or the obtaining thereof, the act may under and in accordance with rules made under this section be done by or to an agent (in this Act referred to as a patent agent) of such person duly authorised in the prescribed manner.

(2) There shall continue to be kept at the Office a register called the register of patent agents and a person acting for gain shall not, either alone or in partnership with any other person, practise, describe himself or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent in the register of patent agents or, as the case maybe, unless he and all his partners are so registered; and a company acting for gain shall not practise, describe itself or hold itself out or permit itself to be described or held out as aforesaid unless every director of the company and, if the company has a manager who is not a director, that manager, is registered as aforesaid:

Provided that if in any circumstances he thinks it right so to do the Minister may authorise any person whom he considers suitable to act as a patent agent in a particular case or at a particular time:

Provided further that it shall not be an offence under this section if the legal personal representative of a deceased patent agent carries on the business or practice of that deceased patent agent for a period not exceeding three years from the death of the patent agent, or for such further period (if any) as the Court allows, and is himself registered as a patent agent or employs a registered patent agent or a person authorised under this section to act as a patent agent to manage the business or practice on his behalf.

(3) Any person who—

(a) resides in the State,

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

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

(d) complies with the prescribed conditions,

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

(4) Any person who contravenes the provisions of this section shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding, in the case of a first offence, twenty pounds, and in the case of a second or subsequent offence, one hundred pounds.

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

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

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

(8) A person (in this subsection referred to as an agent) duly authorised by any person under subsection (1) of this section to act as his agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and that person, cease to act as agent for that person.

(9) There shall continue to be kept at the Office a register called the register of clerks and the Minister may make rules for the management of the 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.

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

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

(b) applies to be removed from the register,

may be removed by the Controller 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.

(11) (a) Where a person registered in the register of patent agents is found by the Controller, after due inquiry by the Controller (including the hearing by the Controller of representations, if any, by the person), to have been guilty of conduct disgraceful to that person in a professional respect, the Controller may, if he sees fit, decide that the name of that person should be erased from the register of patent agents.

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

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

(i) the Court, on the hearing of the application, may either—

(I) cancel the decision, or

(II) confirm the decision and direct the Controller to erase the name of such person from the register of patent agents,

(ii) if at any time the Controller satisfies the Court that such person has delayed unduly in proceeding with the application, the Court shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register,

(iii) the Court may, subject to section 76 of this Act, direct how the costs of the application are to be borne.

(d) Where a person to whom a decision of the Controller under this subsection relates does not, within the period of fourteen days beginning on the date of the decision, apply to the Court for cancellation of the decision, the Controller may apply ex parte to the Court for confirmation of the decision and, if the Controller so applies, the Court, on the hearing of the application, shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register of patent agents.

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

(f) On erasing the name of a person from the register of patent agents under this subsection, the Controller shall forthwith send by post to such person, at his address as stated in the register of patent agents, notice in writing of the erasure.

(g) A person whose name has been erased from the register of patent agents under this subsection may at any time be restored to the register by special direction of the Controller but not otherwise, and when a person is so restored to the register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by such person if he was then being registered for the first time) as the Controller thinks fit.

(12) The Minister may 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 (including conditions relating to nationality or citizenship) 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 for such services in connection with the obtaining of patents as may be specified in such rules.

(13) Rules under this section 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.

(14) Rules under this section 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.

Falsification of register, etc.

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

Unauthorised claim of patent rights.

88. —If any person falsely represents that any article sold by him is patented, he shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding twenty pounds; and for the purposes of this provision a person who sells an article having stamped, engraved or impressed thereon or otherwise applied thereto the word “patent” or “patented”, or any other word expressing or implying that the article is patented, shall be deemed to represent that the article is patented.

False suggestion of official connection with the Office.

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

Inventions relating to instruments or munitions of war.

90. —(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 Attorney General.

(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) Rules may be made under this section 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.

Assignment of invention or patent to a Minister of State.

91. —(1) Without prejudice to the provisions of the last foregoing section, any inventor or patentee may (either for or without valuable consideration) make to a Minister of State on behalf of the State, and such Minister may take on such behalf, an assignment of the whole of or any share or interest in the benefit of an invention and of any patent obtained or to be obtained for such invention, and where a Minister of State has taken any such assignment, such Minister may (as the case may be) do or join in doing on behalf of the State all or any of the following things, that is to say:—

(a) develop and perfect such invention,

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

(c) take an assignment of any patent or of a share or interest in any patent theretofore or thereafter obtained for such invention,

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

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

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

(2) Every Minister of State shall, before the 1st day of April in every year, lay before each House of the Oireachtas a report of every (if any) exercise by him in the next preceding year of the several powers conferred by paragraphs (d) and (e) of subsection (1) of this section and also, if and so far as he considers it expedient in the public interest, of the several powers conferred by paragraphs (a), (b), (c) and (f) of the said subsection.

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

Use of patented inventions for the service of the State.

92. —(1) A patent shall have to all intents the like effect as against the State as it has against a citizen:

Provided that any Minister 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 for a patent, make, use, exercise or vend the invention for the service 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 by such Minister and the applicant or 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 applicant or proprietor and any person other than a Minister of State shall be inoperative to prevent or regulate the making, use, exercise or vending of the invention for the service of the State:

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

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

(3) In case of any dispute as to or in connection with the making, use, exercise or vending of an invention, 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, and the Court 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 conditions as it may direct. The Court or arbitrator in settling the terms as aforesaid shall be entitled to take into consideration any benefit or compensation which the applicant or proprietor or any other person interested in the application or patent may have received directly or indirectly from the State or from any Minister or any Government Department in respect of such application or patent.

(4) In any proceedings under this section to which a Minister of State is a party, such Minister may—

(a) if the patentee is a party to the proceedings, apply for revocation of the patent upon any ground upon which a patent may be revoked under section 34 of this Act;

(b) in any case, put in issue the validity of the patent without applying for its revocation.

(5) The right to use an invention 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.

(6) The purchaser of any articles sold in the exercise of powers conferred by this section, and any person claiming through him, shall have power to deal with them in the same manner as if they were made pursuant to a patent held on behalf of the State.

(7) During any period when an order under paragraph (a) of subsection (8) of this section is in force the power exercisable in relation to an invention by a Minister of State, or a person authorised by a Minister of State under subsection (1) of this section, shall include power to make, use, exercise and vend the invention for any purpose which appears to such Minister necessary or expedient—

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

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

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

(d) for fostering and directing exports and reducing imports, or imports of any classes, from all or any countries and for redressing the balance of trade;

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

(f) for assisting the relief of suffering and the restoration and distribution of essential supplies and services in any foreign countries that are in grave distress as the result of war; or

(g) for ensuring the public safety and the preservation of the State;

and any reference in this section to the services of the State shall be construed as including a reference to the purposes aforesaid.

(8) (a) Whenever the Government are of opinion that, in the interests of the community, owing to the existence of exceptional circumstances, it is desirable that the powers conferred by subsection (7) of this section should be available, they may by order declare that the powers aforesaid shall be available.

(b) Whenever an order under paragraph (a) of this subsection is in force and the Government are of opinion that the exceptional circumstances referred to in the said paragraph (a) no longer exist, they shall by order revoke the order under the said paragraph (a).

(9) In this section “service of the State” means a service financed out of moneys charged on or advanced out of the Central Fund or moneys provided by the Oireachtas or by a local authority.

Government orders as to convention countries.

93. —(1) The Government may, with a view to the fulfilment of any treaty, convention, arrangement or engagement with the Government of a foreign country concerning the protection of inventions, by order declare that any country specified in the order is a convention country for the purposes of this Act, and that country shall be a convention country for the purposes of this Act while the order remains in force with respect to that country:

Provided that a declaration may be made as aforesaid for the purposes either of all or of some only of the provisions of this Act, and a country in the case of which a declaration made for the purposes of some only of the provisions of this Act is in force shall be deemed to be a convention country for the purposes of those provisions only.

(2) Without prejudice to the provisions of section 96 of this Act the Minister may, for the purposes of convention applications, make rules—

(a) prescribing particular time limits for doing anything required by this Act to be done in connection with such applications;

(b) for regulating the procedures to be observed in connection with making and prosecuting such applications.

(3) The Government may, by order, revoke or amend an order under this section including an order under this subsection.

(4) In this section “foreign country” includes any territory for the foreign relations of which any state (being a state which is a party to any international agreement for the mutual protection of inventions to which the State is a party) considers itself responsible.

Supplementary provisions as to convention applications.

94. —(1) Where a person has applied for protection for an invention by an application which—

(a) in accordance with the terms of a treaty subsisting between any two or more convention countries, is equivalent to an application duly made in any one of those convention countries, or

(b) in accordance with the law of any convention country, is equivalent to an application duly made in that convention country,

he shall be deemed for the purposes of this Act to have applied in that convention country.

(2) For the purpose of this Act, matter shall be deemed to have been disclosed in an application for protection in a convention country if it was claimed or disclosed (otherwise than by way of disclaimer or acknowledgement of prior art) in that application or in documents submitted by the applicant for protection in support of and at the same time as that application; but no account shall be taken of any disclosure effected by any such document unless a copy of the document is filed at the Office with the convention application or within such period as may be prescribed after the filing of that application.

Special provisions as to vessels, aircraft and land vehicles.

95. —(1) Where a vessel or aircraft registered in a foreign state or a land vehicle owned by a person ordinarily resident in a foreign state comes into the State temporarily or accidentally only, the rights conferred by a patent for an invention shall not be deemed to be infringed by the use of the invention—

(a) in the body of the vessel or in the machinery, tackle, apparatus or other accessories thereof, so far as the invention is used on board the vessel and for its actual needs only; or

(b) in the construction or working of the aircraft or land vehicle or of the accessories thereof,

as the case may be.

(2) This section shall not extend to vessels, aircraft or land vehicles of any foreign state of which the laws do not confer corresponding rights with respect to the use of inventions in vessels, aircraft and land vehicles of the State while in that foreign state.

Power of Minister to make rules.

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

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

(b) for regulating the procedure to be followed in connection with any application or request to the Controller or in connection with any proceeding before the Controller and for authorising the rectification of irregularities of procedure;

(c) for regulating the publication and sale of patent specifications, of indexes to and abridgements of patent specifications, and of the Journal and other documents which the Controller is by this Act required or authorised to publish, and for regulating the contents of the said Journal and other documents;

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

(e) for regulating the keeping of the register of patents to be kept pursuant to this Act;

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

(g) 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;

(h) 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.

Power of Minister to delegate his duties under this Act.

97. —All things required or authorised under this Act to be done by, to, or before the Minister may be done by, to, or before the Secretary of the Department of Industry and Commerce or any person authorised in that behalf by the Minister.

Service of notices, etc., by post.

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

Saving for articles forfeited under laws relating to the customs or excise.

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