I move: "That the Bill be now read a Second Time."
The present law relating to patents is the Patents Act, 1964, which brought up to date at that time the first Act relating to patents enacted after the foundation of the State, namely, the Industrial and Commercial Property (Protection) Act of 1927. The Bill now before the House is designed to bring our patent law up to date to meet modern conditions and to harmonise it with that of other countries, in particular with that of EEC countries. Since 1964 there has been considerable international negotiation, in which we have co-operated, aimed at harmonisation of law between different countries, at facilitating protection of invention in different countries, and in particular at avoiding wasteful duplication of effort by inventors in securing such protection. The second main object of the Bill, and this is really another facet of the first object, is to enable us to ratify two international patent agreements, the European Patent Convention and the Patent Co-Operation Treaty.
The more important of these agreements is the European Patent Convention. The history of this instrument goes back to an EEC initiative of the early sixties, which, because of political reasons, did not make great progress until it was revived in the wider European context at the end of the decade and which culminated in the Convention on the Grant of European Patents, otherwise known as the European Patent Convention, which was signed on behalf of 14 European countries, including Ireland, in Munich in 1973.
The duplication and waste to which I refer arose out of the fact that an inventor has to file a separate application for a patent for his invention in each of the countries where he wishes to get protection, and to go through a complicated but essentially similar grant procedure in each of these countries. The cost and delays involved in processing these individual applications are very large. By contrast, under the European Patent Convention, anyone seeking patent protection for an invention in a number of states which are members of the system will file one application designating the states in which he desires protection. The application will be examined pursuant to the code of patent law as set out in the convention by the European Patents Office set up under the convention.
This code, which forms a new common body of law, may be regarded as the embodiment of concepts in the field of patent law and practice which are generally accepted in the European Economic Community, in Europe generally and elsewhere in the world. When the European patent is granted, the effect of the convention is that it results in a number of national patents in each of the countries designated by the applicant, and in each of these countries, the patent is, in principle, subject to the law of the individual state in respect of which it is granted, that is to the law applicable to the national patent. This carries the corollary that the procedure for the grant of patents by our Patents Office has to be aligned with that for the grant of patents through the European Patents Office, so that the status of the patent is the same in both cases whether it goes through the European route or the national route.
The second important international convention being dealt with under this Bill is the Patent Co-Operation Treaty, which has also been signed on behalf of Ireland. This is a world-wide, and not merely a European, treaty, and it is also designed to simplify the processing of applications for a patent for the same invention in a number of countries. The procedure involves one application in one language, and one set of fees instead of a number of separate national applications. The single application is processed at the start in a central search and/or examination authority, and is then sent to the separate designated national patent offices for further treatment leading up to the actual grant of the patent. The European Patent Convention is designed to tie in closely with the requirements of the Patent Co-Operation Treaty.
The enactment of this Bill will bring our law into line with the two international agreements to which I have referred and will enable us to ratify them. The enactment will enable us to benefit from the cutting of duplication and waste inherent in the international patent system and will simplify and rationalise applications for protection for inventions.
When this Bill is enacted and comes into operation, it will be possible for Ireland to join with our colleagues in other countries in ratifying the two international agreements referred to. The present number of countries which have ratified the two agreements is 11 for the European Patent Convention and 30 for the Patent Co-Operation Treaty.
While the Bill represents a major revision of our law, many elements of our present law remain and the general layout of the Bill is closely similar to that of our present Act. I might help Deputies if I indicated briefly some of the highlights of the Bill and some of the changes which we propose to introduce into the law as it stands at present.
Part II, that is sections 6-11, lists the requirements which govern the question as to whether an invention is patentable. These requirements are the same as those set out in the European Patent Convention and an important part in these requirements is that the invention must involve an inventive step. This is defined by saying in section 10 that the invention is not obvious to a person skilled in the art, that is, in the processes and "tricks of the trade" of the particular field of the inventions. This is a very important change in our present law. It brings our law into line with the more stringent standard of most of our major trading partners, and it should strengthen the Irish patent, and should increase considerably the presumption of validity of that patent, thereby enhancing the value of our patents system.
The definition of novelty in this part of the Bill is also taken from the European Patent Convention and is broadly in line with our existing law. The present arrangements for "dividing" an application are in essence continued in section 21, but the possibility of getting a "patent of addition" which was a possibility under the 1964 Act, will no longer exist.
The Paris Convention for the Protection of Industrial Property, to which we are parties, makes provision for "priority", which is the system under which the date of filing of a first application in a contracting state, will be respected as the "priority date" in other contracting states provided the applications are filed in these other countries within 12 months of the date of filing of the first application. These provisions have always been part of our law and they are continued in the present Bill.
A further important change proposed in the law is that the new Bill will not provide for continuing the long-standing present system whereby applicants could file "provisional" and "complete" specifications. These specifications are being dispensed with and in future every specification must be the subject of a separate application and may proceed in its own right to grant or may serve as a basis for priority in respect of a later application, that is in the European Patents Office or in other countries.
Part V of the Bill provides for examination of an application to be carried out in two parts, namely, preliminary examination and substantive examination. Both of these examinations are on request and on compliance with certain conditions.
Another important change which it is proposed to make is that the patent term will be 20 years, and not 16 years as at present. Twenty years is the period provided in the European Patent Convention and apart from this the general consensus is that, because of the longer time which is necessary for the development of inventions in these modern times, the extension of the monopoly term is well justified.
The arrangements for appeal to the High Court from the controller's decisions remain essentially as at present.
Another section of the Bill to which I should perhaps refer is section 38, which extends the protection given by a patent to protection against indirect use. This provision will enable a patentee to stop third parties from deriving benefits from the invention without directly using it.
A further extension of our present law is provided by section 41 which gives certain protection to an application after it is published, thereby making the protection conferred by the patent, if granted, retroactive to the date when the application is published. This revision follows the general principles of the European Patent Convention.
Section 40 expresses a principle of equity, namely, the principle of "exhaustion of rights", which is new to Irish law, although it is a principle well known in foreign patent law. The section restricts the patentee's rights to the extent that the first sale in commerce of a patented product exhausts the patent monopoly and after such first sale he cannot restrict acts concerning that particular product. The section provides for such exhaustion of rights not alone after the product has been put on the market in the State but also after it has been put on the market in any other member state of the EEC and this accords with general principles of EEC law.
Section 42(3) in effect reflects another provision in the European Patent Convention which defines the extent of protection accorded by a patent. The section ensures that the criteria for the interpretation of claims of domestic and European patents will be the same and will be in harmony with the interpretation of claims in other contracting states.
The transition from the present law to the new law is catered for by the Second Schedule. In principle this replacement will not effect things done in the past. The schedule provides detailed provisions to cover the question of applications and patents in existence at the commencement of the new law.
I should perhaps add, for the information of Deputies, that, following the ratification of the European Patent Convention, which this Bill is designed to enable us to do, the next step will be to ratify another very important convention — the Convention of the European Patent for the Common Market, or the Community Patent Convention as it is called. It is our intention to proceed at a later date with ratification of this convention.
I recommend the principle of this Bill for approval by the House.
