Dáil Éireann debate -
Wednesday, 29 Jan 1964

Vol. 207 No. 1

Health (Homes for Incapacitated Persons) Bill, 1963. - Patents Bill, 1963—Second Stage.

Minister for Industry and Commerce (Mr. J. Lynch)

I move that the Bill be now read a Second Time.

The existing law relating to patents for inventions is contained in Part II and, partly, in Parts I and V of the Industrial and Commercial Property (Protection) Act, 1927, as amended by the Acts of 1929, 1947, 1949, 1957 and 1958. These Acts also dealt with trade marks, industrial designs, and copyright. New Acts relating to copyright and trade marks have recently been passed by the Oireachtas.

A review of the law on patents has now been carried out. In making the review the patents legislation in other countries has been taken into consideration, and also, the results of the Conference, held at Lisbon in 1958, for the revision of the International Convention for the Protection of Industrial Property. The Lisbon Revision of the International Convention cannot be ratified until the law is amended in several respects. Consideration has also been given to various international trends indicated at other conferences which have been held under the auspices of the Council of Europe. These conferences had as their aim the preparation of conventions regarding the filing in several countries of applications for patents for the same invention and also with the unification of the patent laws of different countries.

There have been many changes of international thought and law on patents since our Act was drawn up in 1927. I think it is necessary now to modernise our law so as to keep it in step with that of the main industrial countries. We must also be ready for important changes which may result from the current discussions between patent experts of many countries. We do not propose fundamental changes in the system of granting protection for inventions. What the Bill does is to make a number of detailed amendments to the existing law designed to be of advantage both to the inventors and to the general public.

A major purpose of all patent laws is to encourage invention, but it is recognised that the existence of unjustified or invalid patents is harmful to the public interest. Our law already provides for the examination of applications for patents to discover whether there is any reason, such as lack of novelty, why a patent ought not to be granted. It also provides for the revocation of a patent which is shown, after grant, to be invalid. A number of measures are proposed for strengthening these existing safeguards, which at present are less stringent than those provided by many national laws, and bringing them more into line with modern thought in the European community.

As regards novelty, the present law requires the Office to make a search through Irish patent specifications before accepting an application. The applicant is required to show by evidence that his invention has not previously been published in certain British specifications. The standard of the test for novelty can, at present, vary from case to case. Applications for alleged inventions which are not new may be accepted merely because the search for novelty is too narrow. It is not feasible for our Patents Office to undertake a complete search for novelty as is done, at very great expense, by some foreign offices. Instead of this, it is now proposed, in section 8 (6) and section 12, to give the Minister power to prescribe a wider and more uniform test for novelty. At the same time, an applicant will have the choice of alternative ways of providing evidence in relation to foreign specifications. For example, the applicant might be allowed to submit the result of a novelty search made by an international search organisation, or one made in any one of several foreign countries, in respect of the same invention.

Further measures to prevent invalid patents being granted or to enable them to be revoked are contained in sections 19, 20, 34 and 35, These sections give wider opportunities than at present exist for interested persons to oppose the grant of such patents or to secure their revocation, if granted.

The provisions in the existing law for protecting the public from the abuse by the patentee of his monopoly rights are repeated in section 39. Certain small changes are necessitated by the Lisbon Revision of the International Convention. The existing powers under which a Minister may use a patented invention when this is necessary in the service of the State are made more comprehensive in section 92.

There are certain small changes intended to help applicants for patents. Provisions in sections 6 and 22 make it easier to assign the rights in an invention at an early stage. New provisions in sections 8, 9 and 10 help an inventor who makes or improves an invention in a number of steps.

The Controller of Patents, Designs and Trade Marks has to make decisions affecting the rights of inventors and others. The Bill will give him additional duties of this kind. For example, sections 52 and 53 may require him to settle disputes as to the joint ownership of a patent or the respective rights of an employer and his employee in an invention. It is, of course, necessary that there should be appeal from decisions of the Controller. Hitherto, appeal has been mainly to the Attorney General. The Attorney General is also adviser, under the Act, to the Controller. It is considered undesirable to have advisory and appellate functions combined in this way. It is proposed, therefore, in section 75 that all such appeals should be heard by a judge of the High Court. Where an appeal involves a patent specification which has not become open to public inspection the hearing will be in private. The principals and their agents will have the right of audience. Under the new provisions the present advantages of secrecy, expedition and cheapness in such appeals will not be lost.

The present law has provision for implementing the priority provisions of the International Convention for the Protection of Industrial Property, to which the State is a party. It is proposed, in section 93, to provide, in a more general form, powers to implement not only the existing Convention but also the future international arrangements for the mutual protection of inventions to which I have already referred.

Section 86 continues the existing provision whereby the practice of patent agency is restricted to persons, with prescribed qualifications, who are entered in the Register of Patent Agents. The Minister is empowered to authorise temporary exceptions if exceptional circumstances should make such a course necessary.

Sections 77 to 85, which continue the present provisions for the establishment of an Office and a Controller and his staff, are designed to cover all the activities centred in the Office and the Controller, namely, those in connection with patents, trade marks, industrial designs, and copyright.

I recommend the Bill for the approval of the Dáil.

Mr. Cosgrave

This is a technical Bill covering a somewhat complicated matter in so far as much of the work is done by very specialised persons in conjunction with the Controller who is under the direction of and responsible to the Minister. For these reasons, it is a measure which will probably require discussion in Committee rather than at this stage.

I have received some representations, as probably other Deputies also have, expressing some concern that the proposed amendments are being made at this stage, on the ground that while the Convention to which the Minister has referred and which was the subject of what is known as the Lisbon Revision has taken place, so far as is known up to the present, very few countries have ratified the Convention and while such a course might be desirable for this country as a prospective member of the European Economic Community, yet at this stage it may be wiser to proceed more slowly.

I understand that so far Britain, with whom we have close and commercial trading links, has not ratified the Convention. Perhaps other European countries are considering this matter and may subsequently ratify it, but I should like to hear from the Minister why it is believed that at this stage it is advisable to proceed with changes in the law particularly when, I understand, discussions are proceeding between member countries of the Council of Europe on the general question of bringing patent law into some uniform system and making certain changes which will have universal application.

One of the criticisms which have been expressed about the present proposals to amend the law is that it is not anticipated that this country would get any reciprocal benefits from them and that, in fact, they may well operate to simplify the procedure for competitors who wish to apply for patent rights or who have patents granted to them elsewhere and that these competitors will, in fact, have advantages which will not be readily available to traders, manufacturers and persons interested in patents here.

Concern has also been expressed that certain countries have ratified conventions, if not this convention, conventions similar to it, and while subscribing in theory to the terms of these conventions have evaded them in practice.

It is right to mention these objections because, while we would generally favour modernising our law and bringing it into conformity with whatever changes are seen to be desirable and appear to be practicable, nevertheless, in a matter of this sort unless we have some reciprocal advantages readily available it would appear that the balance of advantage might lie in postponing action rather than taking it at this stage.

As I understand it, there is, as I have said, a European Patent Law in draft form under official consideration and the view has been expressed that we might postpone action until that draft law has been either accepted by the member countries of the Council of Europe or, at any rate, until further progress has been made on the matter.

There are one or two aspects of this Bill which it may be as well to draw attention to at this stage. One is the question of the definition of "published". Concern has been expressed that under the proposed changes in the Bill, in page 6, lines 36 and 37, "published" means made available to the public by the written or spoken word or by public use, or in any other way.

The consideration has been expressed that oral publication abroad in, say, a country far distant from here with which we have probably very little commercial contacts might be availed of prejudicially so far as persons in this country are concerned and it is suggested that certain amendments should be made in the definition so as to avoid the fears which are possible if the definition of "published" as at present contained in the Bill is put into the final form.

There are also some amendments suggested in respect of the procedure whereby applications may be made to the Controller. However, these are matters which probably can be more appropriately and effectively discussed on the Committee Stage.

I agree with the Minister that it is undesirable that the appeal, which has hitherto lain to the Attorney General, should be dealt with by the Attorney General who also acts in an advisory capacity to the Controller and I note that it is proposed under the Bill to change the appeal provisions so that the matter may be considered by a judge of the High Court. The only consideration which would affect interested parties there is how it would affect costs. I notice that the Minister said that all the present advantages of secrecy, expedition and cheapness will not be lost. I would be glad to have a definite assurance from him on that score because persons might be deterred in matters of this sort where the question of an appeal has to be considered by a High Court judge.

Finally, can the Minister say how many countries have ratified the Lisbon Revision or ratified the Convention and if there is any indication of what other countries propose in the near future to do so?

Mr. J. Lynch

The Lisbon Revision of the Paris Convention is something separate altogether from the recent Convention in Strasbourg on the unification of patent law. The original International Convention for the Protection of Industrial Property was signed in Paris as far back as 1883. It was revised several times, the last revision being in Lisbon in 1958. We acceded to the former revision which was done in London in 1934. The Lisbon Revision came into force in January 1962 and 22 countries, including France, Germany, Great Britain, Switzerland and the United States, now adhere to that revision. We are unable to ratify our adherence until our law is amended and this is the purpose of this Bill.

In addition, I should say that one of the reasons for bringing forward the Bill at this time, apart altogether from the desirability of ratifying adherence to international conventions, is that all our laws on industrial and commercial property were contained hitherto in one measure. Even though they were passed in different years, there was just the one piece of legislation governing them all and recently, as the House is aware, new Acts relating to copyright and trade marks have been enacted. Therefore, patents was the only commercial property, if you like, which was omitted.

To come to the other Convention, the Council of Europe Convention, it was opened for signature at the end of last November. It was signed almost immediately by Denmark, France, the Federal Republic of Germany, Italy, Sweden, Switzerland and Great Britain and some time later Belgium and the Netherlands signed it. Therefore, we may expect that these Governments will in the normal course seek approval from their respective Parliaments for whatever legislative changes are necessary to bring their national patent laws into conformity with that Convention. Ireland was represented on the Committee of Experts which prepared the Convention. This Bill is also intended to meet the requirements of that Convention.

The other Convention of exercises on unification to which the Deputy referred was, I think, the Common Market draft Convention relating to European patent law. This draft was prepared by a Committee of Representatives of the European Economic Community. It is only a draft Convention yet. It is being studied here at present. We informed the European Economic Community member countries that we would like to take part in the work of final drafting. We hope, too, to be able to subscribe to the Convention which will finally emerge. Some special legislation may be required when that time comes. However, having regard to the relatively slow nature of changes in Conventions dealing with patent law, I think it better that we should proceed with this Bill at present. I believe only very minor alterations in our law will be necessary to bring our current legislation into conformity with the requirements of that Common Market Convention.

I agree with the Deputy, apart from his general remarks about it, that this Bill might better be discussed in Committee. He referred in particular to the new definition of "published" in the definition section. It is common to all patent laws that a patent cannot be valid if its alleged invention is not new. There can be no patent in such a case. In most countries an invention is held to lack novelty if it has been made available to the public by description or use at any time in any part of the world. Ireland and Great Britain have been almost alone in clinging to the view that description or use does not destroy novelty unless it occurred within the State itself. This concept, which is a survival from times when travel was dangerous and communications slow and difficult, cannot be justified in this age of easy communications by way of radio, radio telephones and otherwise. Therefore, the Bill in its definition gives effect to this modern concept.

The Deputy asked how I could justify my suggestion that now that an appeal was to be taken from the Comptroller to the High Court rather than to the Attorney General, the costs would be kept down. Section 75 (3) gives the right of audience in the High Court to the principal people, in other words to the parties themselves. The fact that one can appear personally to prosecute his appeal before the High Court is, I think, the best indication that there is an attempt to keep down the cost of these appeals.

Mr. Cosgrave

The procedure will not involve a complicated system, and so on?

Mr. J. Lynch

It is not likely.

Question put and agreed to.

Committee Stage ordered for Wednesday 19th February, 1963.