Dáil Éireann debate -
Thursday, 30 Apr 1964

Vol. 209 No. 6

Newspaper Report: Question of Privilege. - Patents Bill, 1963: Report and Final Stages.

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

I move amendment No. 1:

In pages 9 and 10, to delete subsection (1) of section 10 and to insert the following subsection:

"( ) (a) Every claim of a complete specification shall have effect from the date provided for by this section in relation to that claim and in this Act a reference to a priority date is, unless the context otherwise requires, a reference to such date.

(b) A patent shall not be invalidated by reason only of the publication or use of the invention, so far as claimed in any claim of the complete specification, on or after the priority date of that claim, or by the grant of another patent upon a specification claiming the same invention in a claim of the same or later priority date."

This is a drafting amendment for the purpose of clarification only.

Amendment agreed to.

Bill recommitted for the purpose of amendment No. 2.

Mr. J. Lynch

I move amendment No. 2:

In page 29, between lines 20 and 21, to insert the following paragraph:

"(f) that a condition which by virtue of section 54 of this Act is null and void has been inserted in a contract made after the commencement of this Act in relation to the sale or lease of, or licence to use or work, any article or process protected by the patent:".

Quite recently, there was a Supreme Court judgment which reversed a decision by the Controller as affirmed by a judge of the High Court. The decision of the Supreme Court was based, in the main, on technical grounds and did not go to the merits of the application that was made before the Controller on which he decided and which decision was affirmed by a judge of the High Court. The purpose of this amendment now is to cure a defect in the law as it stands. I may explain what the defect is by an example: A person in another country, as happened in this case, owns a patent and licenses the use in this country and imposes in the deed a condition that other forms of objects cannot be used by the licensee of that patent. Under existing law, that condition is null and void.

I may go further and mention the particular case. The patent was a method of sealing jam jars. The patent in this respect was assigned to users in this country, with a condition that no other forms of jam jar seal be used. That was regarded as an abuse of monopoly. A small firm making alternative jam jar sealing devices in this country objected to the condition in the licence as being an abuse of monopoly. Our law already provides that such condition is a nullity. Therefore, the Controller decided that the licensee should be entitled to use other forms of jam jar sealing devices. When it got as far as the Supreme Court, the Supreme Court decided that since such a condition was a nullity, nothing flowed from it; therefore, there was nothing before the Supreme Court to decide was an abuse of the monopoly.

We propose now, Sir, to insert in section 39 a new provision to the effect that if such a condition is imposed which, by virtue of section 54 is a nullity, that condition is an abuse of monopoly and may be treated accordingly. I hope I have made the position clear.

Mr. Cosgrave

This is somewhat complicated. I wonder can the Minister say if this amendment will have any effect on the decision given or does that decision still stand?

Mr. J. Lynch

It will have no effect on that decision as such, except, of course, it will give the small manufacturer here the right to have his patent or his device used against the big monopoly from another country. The amendment will come into effect, of course, after the commencement of this Act.

Mr. Cosgrave

Quite, but the effect of this amendment will be to reverse the Supreme Court decision, to all intents and purposes?

Mr. J. Lynch

It will not reverse the Supreme Court decision as such.

Mr. Cosgrave

No, but it will leave it open to the applicant to reverse it?

Mr. J. Lynch

The Supreme Court decision was taken on a legal technical point.

Amendment agreed to.

Bill, as amended, reported and agreed to.

Mr. J. Lynch

I move amendment No. 3:—

In page 43, to delete lines 51 to 54, and to insert the following subsection:

"( ) Any appeal from the Controller under this Act shall be to the Court and shall be heard by one judge of the Court and the President of the High Court shall from time to time make arrangements for securing that all appeals under this section shall, so far as practicable, be heard by the same judge."

During the Committee Stage discussion, I proposed that an appeal from the Controller to the High Court should be taken by a nominated judge of the High Court who would, to all intents and purposes, act in much the same way as the Appeals Tribunal in Britain does for that purpose. Therefore, he would be to an extent an ordinary judge of the High Court but my proposal was that he would have special status in relation to these patent appeals. I have now been advised that there is doubt that my proposal would be constitutional and, therefore, I am asking the House to adopt this amendment which does not purport in any way to change the status of the High Court judge when he hears patent appeals. I am also asking that the President of the High Court will make arrangements for the hearing of these appeals by the same judge as far as will be practicable.

Mr. Corish

Is that constitutional?

Mr. J. Lynch

It is; it is a matter of administration. Patent law is a special branch of law and it is desirable that a particular judge should be nominated to deal with these matters as far as is possible. Any judge can hear the appeal but the purpose of the amendment now is that while the appeal may be taken by any judge there is a desire expressed in the subsection that it will be the same judge as far as practicable.

Mr. Cosgrave

This leaves the right to the President of the High Court to nominate the judge?

Mr. J. Lynch

That is right.

Amendment agreed to.

Mr. J. Lynch

I move amendment No. 4:—

In page 44, to delete lines 3 to 6.

This is the principal amendment. In section 75 of the Bill as passed through Committee, there is subsection (4) which, in effect, gives the right of audience before a judge of the High Court to a patent agent. The patent agent in that respect would be in a representative capacity. There is, and always has been, a principle in law that any person has the right of audience before any court in the land but if that person is to be represented in court the practice is that he be represented by counsel. When I originally sought to give the right to a patent agent, objection was taken to that course. The amendment ensures that a patent agent will still have the right of audience as a principal, but if he purports to represent another person, he will not have the right of audience. In this amendment I am reverting to the status quo.

Mr. Cosgrave

This meets my amendment?

Mr. J. Lynch

Yes.

Amendment agreed to.

Amendment No. 5 not moved.

Mr. J. Lynch

I move amendment No. 6:

In page 44, line 9, to substitute "Court" for "Judge".

Amendment agreed to.

Mr. J. Lynch

I move amendment No. 7:

In page 44, line 10, to substitute "Court" for "Judge".

Amendment agreed to.

Mr. J. Lynch

I move amendment No. 8:

In page 44, lines 13 and 14, to delete "may be made by the Judge and".

Amendment agreed to.

Mr. J. Lynch

I move amendment No. 9:

In page 44, line 15, to substitute "Court" for "Judge".

Amendment agreed to.

Mr. J. Lynch

I move amendment No. 10:

In page 44, line 19, to substitute "Court" for "Judge".

Amendment agreed to.

Mr. J. Lynch

I move amendment No. 11:

In page 44, line 21, to substitute "Court" for "Judge".

Amendment agreed to.

Mr. J. Lynch

I move amendment No. 12:

In page 44, line 27, to substitute "Court" for "Judge" and "it" for "him".

Amendment agreed to.

Amendment No. 13 not moved.

Mr. J. Lynch

I move amendment No. 14:

In page 48, section 86, subsection (7), line 6, to delete "a patent granted to a patent agent" and to substitute "from the patent agent a patent granted to him".

This amendment meets the point of amendment No. 13.

Amendment agreed to.

Bill, as amended, received for final consideration.

Question proposed: "That the Bill do now pass."

Mr. J. Lynch

When introducing the Bill, I informed the House that this was the last stage in bringing our law on commercial property up to date. I find now that there is another outstanding aspect of the existing law that will require to be brought up to date. Last year, the new Acts in relation to trade marks and copyright were passed. The Act in relation to trade marks came into operation on 1st April and I hope soon to be able to announce a date for the coming into operation of the new Copyright Act. Then we will have to deal with the question of industrial design. This aspect of the law is at present contained in Part III of the Industrial and Commercial Property (Protection) Act. My proposals for bringing this part of the law up to date will be put forward as soon as possible but I should be glad to receive representations from persons interested on the changes necessary to suit our modern conditions.

Mr. Cosgrave

Can the Minister say when he intends to bring the Patents Bill into operation?

Mr. J. Lynch

I understand there are a lot of regulations to be drafted and so it is not possible to say at this stage. It will be done as soon as practicable.

Question put and agreed to.