We have had a full debate on this section.
Patents Bill, 1981: Committee Stage (Resumed).
Question again proposed: "That section 8 stand part of the Bill."
To my recollection the full debate we had was on section 7. However, I have only a small point to make. It is in regard to subsection (3). Is there a special reason for confining the scope of the addition which the subsection represents to applications inside the State but not including application from outside the State in the same span of time?
The Deputy said that the patent applications comprised in this subsection could only be Irish. That is true. The subsection concerns only our own applications. The examiner must search these concurrent applications as a topping up search in addition to other documents comprised in the section 27 (4) search, for evidence of novelty required by 27 (2) which ensures that a wide search of patent documents available in other countries will be undertaken. In relation to subsection (2), Deputy Taylor asked about an applicant who can prove that this invention is new having regard to what has been published in the State or elsewhere before the date of his application. The answer is that novelty must be universal. The examiner is required to carry out a search which in the controller's opinion is practical and necessary. Because the examiner cannot carry out a universal search in the Irish office, the applicant is required to furnish evidence of novelty for his invention in the form, for example, of evidence of grant by a patent office outside the State which has the capability of carrying out a wide search.
Are Eastern European countries parties to the patent procedures?
No. They take whatever they can get their hands on.
I am not clear about the reason for this. Subsection (3) contains an addition to the concept of state of the art as described in subsection (2): the state of the art is to comply with everything made available to the public whether inside or outside the State by means of a written or oral description by use or any other way before the date of filing of the patent application. On top of what is made available to the public in various alternative forms, the state of the art is also to be held to comprise the content of a patent application filed subsequent to the date of the filing of the present application but only inside the State. In other words, the patent application filed in that span of time in any other member state will not be taken as part of the state of the art. It may be that there is a reason for that. Perhaps it would be unreasonable to expect the office to go through the patent records of the European office plus nine other national offices. However, let us have the reason rather than let it slip through without consideration.
The position is that it is impossible for the Patent's Office to check concurrent applications abroad because they have no access to them. They are not published. In practice they check on the register of patents abroad in the appropriate countries and they check on the concurrent applications which have been made here. They cannot check the concurrent foreign applications.
I see the practical difficulties but we ought to realise that what we are doing may leave us in a situation where patent applications which are filed concurrently in different member states could proceed independently, each on the basis that the other is not part of the state of the art.
That is the position.
The Minister indicated that Eastern European countries do not participate in patent procedures but nonetheless the particular art involved has a state in those countries. How can one set about proving that what he has is new in so far as what may be the state of the art in those countries which do not adopt patent procedures?
The examiners are familiar with the up-to-date literature which emanates from all countries on their sphere of activity and that includes publications from Eastern Europe. I presume the reality is that nothing is published in Eastern Europe which might be of value to anyone in Western Europe or elsewhere, unless it is very well known already.
Question put and agreed to.
SECTION 9.
I move amendment No. 4:
In page 13, between lines 17 and 18, to insert the following new subsection:
"(2) Where a statement appears in the Journal stating that an international exhibition specified in the statement is or was an international exhibition of the class referred to in subsection (1) of this section, then for the purposes of this section the statement shall be evidence that the international exhibition specified therein is or was an international exhibition of such class."
The object of this amendment is to ensure that Irish inventors are protected against disclosure if they exhibit their inventions at international exhibitions. The amendment was suggested by the patent agents who were worried that the section as originally drafted did not provide for such protection because Ireland has not yet ratified the Convention on International Exhibitions. The proposed new subsection follows the line of the UK Patents Act, 1977, section 130.
Amendment agreed to.
Section, as amended, agreed to.
SECTION 10.
Question proposed: "That section 10 stand part of the Bill".
The wording used "having regard to the state of the art, it is not obvious to a person skilled in the art" seems unusual. It might be obvious to one person skilled in the art but not to another. Would it be adequate if a would-be patenter seeking a patent produced a person skilled in the art who says that it was not obvious to him? It could be that there would be other persons skilled in the art who might take an opposing view. Does the controller make the decision? The wording in the section seems to make it conclusive that once a person skilled in the art is produced to say that it is not obvious, that would be the end of the matter. It seems to me that it could be a controversial matter. Would the section not be better worded indicating that the controller would decide in the event of such a controversy?
It is a matter for decision by the controller as to whether the person is skilled in the art.
Deputy Taylor's point is that there could be two people skilled in the art and that it is obvious to one of them and not to the other.
Question put and agreed to.
SECTION 11.
Question proposed: "That section 11 stand part of the Bill".
Is it intended to mean that the material must be capable of industrial use? If a product is discovered that has some other use — for example, for sporting activities — is that precluded by this provision?
What is intended is that the manufacture of the invention would require some kind of industrial application; in other words, that it is not just a natural substance of some description.
Is that definition also culled from the European Patents Convention?
It corresponds with Article 57.
It is not part of our existing law. Is the definition of invention in the existing law divergent from the contents of section 11?
It is culled from Article 57, which states that an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry including agriculture. That is not a definition of invention but of susceptibility of industrial application.
Its materiality bears on its entitlement to be considered for a patent because, unless it is susceptible of industrial application it does not fall within section 6 (1). That subsection states that a patent may be granted only for an invention which is susceptible of industrial application. Does our judicial interpretation of statute law already contain a definition or understanding of the meaning of the words "invention susceptible of industrial application", which this one may supersede?
There is a definition of invention in the 1964 Act but it does not deal with the question of industrial application or susceptibility of industrial application.
Deputy Taylor mentioned the question of sports equipment.
Sports equipment would have to be made.
I realise that. But take, for example, something like a punch ball, a chest expander or some bit of gear like that, one could not reasonably say that one of those things anchored to the floor was susceptible of industrial application. It would not be susceptible of that, but I presume that such things are patented.
Sections 6 to 11 are a set of sections which set out the substantive law on patentability. Apart from minor drafting differences they follow exactly the corresponding Articles, 52 to 57, of the European Patent Convention, thus bringing Irish law into line with governing European patents and avoiding the possibility of domestic Irish patents on the one hand and European patents effective in Ireland on the other hand being subject to different standards of patentability. Section 6 follows closely Article 52 and so on down along the line with the other ones.
The Minister's reference to something being susceptible of industrial application as something that had to be manufactured, could not be, with respect, what the phrase "susceptible of industrial application" means, because any damn thing, whatever its purpose, has to be manufactured or brought into existence in some shape or from by human ingenuity and human hands. The Minister must have heard — I am sure it is part of his apparatus of received phrases — of patent medicine, of patent cough bottles of something like that. That is not something that I would accept as being susceptible of industrial application; it is really susceptible of medical application. I am not complaining about this. Perhaps it is as well that it should be so. I must also concede that I did not study this Bill when I had the chance with access to proper advice.
I do not blame the Deputy.
I do not think I ever really unbuttoned the file that housed it. I am just not so happy that we are passing section after section here. While I do not overlook the enormous effort put into the drafting of this Bill, I am not so sure that any of us really understands what we are doing. Possibly in the Seanad——
So far as sections 6 to 11 are concerned, I think we do. We are merely copying them out of the convention. I am informed that the difficulty about the convention is that it was written in French. It was drafted in the Napoleonic code style, then translated into English and, while the words are susceptible of translation, some of the concepts got lost along the way.
Perhaps there are a couple of practical scientists in the Seanad who could——
I should say that it took years to draft the convention and it has taken the Patents Office here years to produce this Bill.
I accept all that; I do not have any strong——
They are very much in touch with developments in Europe.
I just feel we should know what we are at. If the effect of Part II of this Bill is to be that something cannot be patented — in other words, that protection of the intellectual property, or whatever it is called, residing in it is no longer going to be possible unless the thing is industrially applicable, unless it can be susceptible of industrial application. I think, off the top of my head, we are taking a large step. I do not want to press the Minister today but if I am wrong about it this is the time to put it right, or to put me right.
I thought that perhaps there might be decisions which define the phrase "susceptible of industrial application" but there are not because it is a new concept in our patent law and it is taken from the European Convention.
What about pharmaceutical patents, what about Aspro or something like that? Suppose somebody in this country invented and sought to patent some item for relief of the common cold or something like that, that has not got an industrial application.
It has, of course, the making of it.
Well, the making of anything will involve industry.
That is what this means. It does not mean its ultimate use is industrial in the sense that it is a component of an industrial process or something. It means simply that it has to be susceptible of having something done to it in order to create it in material terms.
I understand what the Minister is saying but there is not something here about agriculture?
Presumably that is to cover agricultural methods or something.
What the Minister is saying is that if it can be made, as the section here says, in any kind of industry, irrespective of its ultimate use it is "susceptible of industrial application"?
Yes, can be made in any kind of industry or used in any kind of industry.
That is a very strange expression.
The phrase "used in any kind of industry" reads well enough but the phrase "made in any kind of industry" leaves something to be desired. A better wording might be "made by any kind of industrial process" or something like that. Perhaps the Minister would consider the wording there.
One final point on it, which does not warrant too much labouring, is this. Can we be sure that the word "industry" will not be interpreted as conjuring up some grandiose procedure? Let us take the case of a backyard firm, a one-man, small operation assembling materials. Can we be certain that nobody will come along and say that that is not industry, that it requires a more elaborate operation?
Obviously, it is. A craft activity is industry for this purpose.
Question put and agreed to.
Section 12 agreed to.
SECTION 13.
I move amendment No. 5:
In page 13, subsection (1), line 37, to delete "attached." and substitute "attached; provided also where the inventor is an employee wholly or mainly employed in the State (but not by the State, or any State-sponsored body) and the right to the patent is to be determined under this subsection in accordance with the law of the State, the right to the patent shall lie between the employer and employee in such share as they may agree or in default of such agreement as the Controller or Court shall determine, notwithstanding anything to the contrary in any service agreement between the employer and employee;
Provided further that if the employee creates his invention not in the employer's premises nor during working hours and uses his own equipment, then the right to patent for such invention shall belong entirely to the employee." The purpose of the amendment is to make provision for an employee of a firm who discovers something to patent, to make provision that it should be open to the controller or the court to determine that he should have a share in the invention he had discovered in the proportion that the controller or court would determine. This seems a very reasonable proposal, that where, through one's labour or ingenuity, an employee discovers some novel process which could be a source of tremendous wealth to his employer, some proportion — the exact proportion would be a matter to be determined according to the particular circumstances in any individual case — should accrue to the employee. But certainly it is a reasonable proposal that an employee should have some share in the fruits of his discovery. Admittedly, of course, the employer would provide the apparatus and materials for the research and so on on which the employee would be engaged. Nonetheless, it is the special skill and ingenuity of the employee who produces the invention or discovery that enables the employer to patent that, something that could be a source of tremendous revenue to the employer. In that the employee should rightly and reasonably have some share.
The amendment provides that it would be left open to the employer and the employee to agree, if possible, on what the percentage that would accrue to the worker should be. Failing that, then the controller or the court would determine what should be the proportion attributable to the employee. The second part of the amendment deals with the case of an employee who creates an invention not in his employer's premises, nor during working hours, and uses his own equipment. It states that in such a case the right of the patent belongs to the employee entirely and the employer would have no claim on the invention if discovery was made in such circumstances.
Whatever about the merits of the Labour Party's amendment it occurs to me, in reading this subsection, that we seem to be in the course of giving a fairly large degree of carte blanche to the laws of other states in this regard. Suppose the inventor is an employee in Denmark, Greece or some other member state, then the right to the patent shall be determined in accordance with the law of that state but the law of that state might be in a sense which this country would recognise as unjust and discriminatory. It might be confiscatory and it might very easily come to pass that the courts would establish among the undefined personal rights of the citizen, a right to fair compensation for his intellectual property, including his own inventions and our statute law might be supplemented by something of that kind even without a direct legislative amendment.
I believe that to give this immunity to the laws of other states even though the law of any of those other states might be something which we could not stomach and which would not pass muster in one of our statutes may be unwise. A relatively unexplored field is the degree to which the State will respect the laws of other countries where their features are such as would be repugnant to our way of doing things under the Constitution. This seems to be an instance where this could arise.
The amendment moved by Deputy Taylor consists of two provisos. The first relates to the case of an employee-inventor employed in Ireland. The section as drafted provides that the ordinary law of contract will determine who has the right to the patent. I feel this is the just solution. The proviso seeks to change this, notwithstanding any agreements that are in existence between the parties concerned.
The second proviso relates to an employee creating an invention outside his working hours or place of employment. It is similarly felt that this should be regulated by ordinary contract law. It is difficult to forecast what results would flow from changes of the kind proposed. I should say that for some reason the amendment seeks to apply only to the relationship between an employee and a private employer and does not seek to bind the State or semi-State bodies. I do not see why it is seen as appropriate to take away something from a private employer but allow the State to retain full control and ownership. I suggest that the State has no greater rights than a private employer at the very least. There are some of us who feel that the State should have less rights in matters of this kind certainly.
In 1981 the Minister received representations from a union. Either my predecessor or I took the view that the employee-inventor is well protected in the Bill by reference to section 13 (1) and they also referred to section 76 under which the High Court will determine disputes on entitlement, including employer-employee disputes. Consequent on court decisions in favour of the employee-inventor he may apply for revocation of the patent under section 54 and can then effectively under section 76(4) have the full benefit of the patent or the relevant part of it transferred to him. In my view these arrangements give full protection to the employee-inventor. The Patents Office in Ireland do not recall any dispute in this field.
I agree with what the Minister said in regard to the exemption which Deputy Taylor and his colleagues are proposing to insert by this amendment. There is no reason why the State and still less a State-sponsored body, should not be subjected to the same regime, the general lines of which I naturally sympathise with, that Deputy Taylor wants to seek. I cannot see any reason why the Sugar Company, Bord na Móna or CIE should be any better placed than a private employer in the context we are discussing or, for that matter, a Department of State.
If the Minister sees difficulty with the exemption in the case of the State or semi-State bodies I have no objection to deleting that exemption. I believe the amendment is a reasonable one. It is not right that the ordinary open market law of contract should apply in this kind of situation. There is nothing unusual about the laws of the country taking a hand in the free and open law of contract. That is done frequently, particularly in the case where there is not a free and open market situation. Here a would-be employee, the state of unemployment being what it is, is not in a position to negotiate the minute details of the conditions in his contract of employment one would wish would be so if there was an equality of supply of jobs and applicants for them. That is not the case and the employee does not have that strength of bargaining power behind him. Consequently on occasion the law has to assist him. This is a very reasonable provision. Nobody is suggesting in it that the lion's share or anything like that would accrue to an employee who makes the discovery but because he was a key factor in the production of that novel item or that new thing it is right and just that he should have at least some stake in it having regard to the fact that it was his ingenuity which brought this about in the first place. The existing law of contract does not provide for that. It provides that in its entirely it belongs to the employer. I consider it reasonable to change that by inserting this amendment.
There is no evidence that the existing law of contract provides that it belongs entirely to the employer. The existing law of contract enforces the contract between the parties. There is no external law imposed on the parties. If they want to come to an agreement that they share certain things 50-50 or 60-40 they share them 50-50, 60-40 or whatever it is.
The other point I would make is that this section is a reproduction, mutatis mutandis of Article 60 of the European Convention and that because there is a question of mutuality and reciprocal treatment as between ourselves and the other contracting parties we cannot depart significantly from the terms of Article 60. None of the other parties have departed significantly from these terms either.
Have the English used the same wording as we are using?
I am advised that their wording is much more complicated and involves several sections. We reproduced the article and stick closely to it.
Far be it from me to recommend our following the English but the Minister said a moment ago that what we have here is a word-for-word production, a mutatis mutandis of Article 60 of the convention but he now tells us that the English law is more complicated.
I am not certain that the net result is that the English have departed significantly from the article but they have used many more words than we are using to express the provisions of the article.
Usually it is the other way round. Deputy Taylor's suggestion that what has been freely agreed in a service contract between an employer and an employee is to be overridden in the interests of the employee is one in which I do not see any great virtue, provided it is a freely negotiated arrangement. If an employee in such a situation is unionised it would be a matter for his union to ensure that any arrangement entered into is not one that will be prejudicial to the employee. Consequently, I do not see much use in the first part of the Deputy's amendment but I see some point and some value in the second part of it. Perhaps between now and Report Stage the Minister would consider this part of the amendment. The section refers simply to an employee and does not differentiate between a situation in which an employee, for example, a laboratory technician working in an R & D facility, discovers or invents something in his firm's time or whether he is doing the research involved in his own time but very likely in consequence of the skill and experience he has acquired during his working life including the time spent in the R & D facility. There is a case for distinguishing between the time and the effort that the employee is being paid to put into the job — and in which case it might be reasonable to suppose that the fruits of his work would accrue substantially to the man paying him — and for the time and effort he is investing in his own time and with his own equipment. It would be a liberal move to allow specifically for that. That is why I hope the Minister will consider the suggestion between now and the Report Stage.
I do not follow the point that the Minister is making regarding our being caught here by the convention. Apparently the convention permits, on this issue, each of the signatory states to have their local law. That is stated clearly in the section. Therefore, that law could vary from state to state. The purport of the amendment would be that if the provision should turn out to be determined in accordance with the law of this State, then it should be the law that an employee in default of an agreement between himself and his employer would have a participating share in the invention concerned. The section makes provision for that and the amendment is simply categorising what is to be the law of this State. Some countries may already have this provision in their national laws. Therefore, it appears to be open to the signatory states to have their own private law on this issue, and that is what the amendment seeks to do. It is a reasonable amendment and I ask the Minister to accept it.
As suggested by Deputy Kelly, I will consider accepting the second proviso contained in the amendment but not the first. I should like to look into the question of what is the present position regarding an invention in the circumstances of an employee's own time and of his working hours. I am unable to procure any advice at the moment as to that matter but I will endeavour to obtain it and when I find out what the position is I shall consider the second proviso as proposed by the Deputy.
What we are speaking of may be the law already in which case the second proviso would be simply declaratory of the existing position.
So far as the first part of the amendment is concerned I would be anxious that this be adopted also. It involves a basic factor. If the contract provides for the subject in question that is fine but the contract may very well be silent in that respect in which case agreement may be reached between an employer and his employee but the nub of the matter is that the person through whose ingenuity the discovery was made should not be entirely denied participation in it. The proportion of the participation could be great or small depending on the circumstances in which the invention was discovered. The circumstances might be such that to have employed the employee in the first place required heavy capital investment by the employer, while in other cases the investment might be relatively small. In the case of large investment the employee's share would be small. But the net point is that the person whose ingenuity and work brought about the discovery should have some participation in it.
Question put: "That the words proposed to be deleted stand."
The Committee divided: Tá, 69; Níl, 45.
Tá
- Ahern, Bertie.
- Ahern, Michael.
- Allen, Lorcan.
- Andrews, David.
- Andrews, Niall.
- Aylward, Liam.
- Barrett, Michael.
- Brennan, Seamus.
- Briscoe, Ben.
- Browne, Sean.
- Burke, Raphael P.
- Byrne, Hugh.
- Byrne, Seán.
- Callanan, John.
- Colley, George.
- Collins, Gerard.
- Conaghan, Hugh.
- Connolly, Ger.
- Coughlan, Clement.
- Cowen, Bernard.
- Daly, Brendan.
- Doherty, Seán.
- Ellis, John.
- Faulkner, Pádraig.
- Filgate, Eddie.
- Fitzpatrick, Tom. (Dublin South-Central).
- Fitzsimons, Jim.
- Flynn, Pádraig.
- Foley, Denis.
- French, Seán.
- Gallagher, Denis.
- Gallagher, Pat Cope.
- Geoghegan-Quinn, Máire.
- Gibbons, Jim.
- Harney, Mary.
- Barrett, Sylvester.
- Bellew, Tom.
- Brady, Gerard.
- (Dublin South-East)
- Brady, Gerry. (Kildare)
- Brennan, Matty.
- Brennan, Ned.
- Haughey, Charles J.
- Hilliard, Colm.
- Hyland, Liam.
- Keegan, Seán.
- Kitt, Michael P.
- Loughnane, Bill.
- Lynch, Michael.
- Lyons, Denis.
- McCarthy, Seán.
- McCreevy, Charlie.
- McEllistrim, Tom.
- MacSharry, Ray.
- Meaney, Tom.
- Molloy, Robert.
- Morley, P.J.
- Murphy, Ciarán P.
- Noonan, Michael J. (Limerick West).
- O'Dea, William G.
- O'Donoghue, Martin.
- O'Hanlon, Rory.
- O'Leary, John.
- O'Malley, Desmond.
- Power, Paddy.
- Tunney, Jim.
- Walsh, Joe.
- Walsh, Seán.
- Woods, Michael.
- Wyse, Pearse.
Níl
- Allen, Bernard.
- Barry, Myra.
- Barry, Peter.
- Bermingham, Joe.
- Bruton, John.
- Bruton, Richard.
- Burke, Liam.
- Collins, Edward.
- Conlon, John F.
- Connaughton, Paul.
- Cooney, Patrick M.
- Corr, James.
- Cosgrave, Liam T.
- Crowley, Frank.
- D'Arcy, Michael.
- Desmond, Barry.
- Desmond, Eileen.
- Donnellan, John.
- Dukes, Alan.
- Farrelly, John V.
- FitzGerald, Garret.
- Flaherty, Mary.
- Flanagan, Oliver J.
- Griffin, Brendan.
- Higgins, Michael D.
- Hussey, Gemma.
- Keating, Michael.
- Kelly, John.
- Kenny, Enda.
- L'Estrange, Gerry.
- McGinley, Denis.
- McMahon, Larry.
- Markey, Bernard.
- Moynihan, Michael.
- Naughton, Liam.
- Nealon, Ted.
- O'Donnell, Tom.
- O'Keeffe, Jim.
- O'Leary, Michael.
- O'Sullivan, Toddy.
- Quinn, Ruairí.
- Spring, Dick.
- Taylor, Mervyn.
- Timmins, Godfrey.
- Yates, Ivan.
Tellers: Tá, Deputies B. Ahern and Briscoe; Níl, Deputies L'Estrange and Taylor.
Question declared carried.
Amendment declared lost.
Question proposed: "That section 13 stand part of the Bill".
I have obtained a copy of the British Act of 1977 and, as the Minister says, the corresponding English provisions are more extended and speak their message in many more words than the provisions before us in this Bill. I find that they incorporate, very nearly in the words I used myself, the purport of the second part of Deputy Taylor's amendment. This is of no importance in the sense that I never would recommend copying an English Act, nor am I doing so now, but it is of significance in relation to what the Minister told us was our bounded duty under the European Patents Convention, namely, to enact the article of that convention which section 13 of this Bill represents with as few modifications as possible. He said that our section 13 represents the European Article turned into Irish legislative language.
The English are under exactly the same obligation, but they have succeeded in distilling from their obligation a more elaborate series of sections which I have not had the opportunity of studying properly and on which I will not pronounce, except to say that there is the distinction which I was trying to get the Minister to acknowledge and which I thought was the principal strength of Deputy Taylor's amendment, namely, that there should be some explicit distinction between an invention achieved in an employer's time, perhaps by a man working in a research and development facility for the owner of that facility, and an invention developed by a man in his own time in quite different conditions. Deputy Taylor's amendment permitted that distinction to be made and I find that the English in 1977 expressed that very distinction in paragraphs (a) and (b) of section 39 of their Act.
Subsection (1) of section 39 of the British Act states:
Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if—
(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or
(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's undertaking.
Subsection (2) states:
Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.
I do not especially applaud that form of words, and it might have been possible to express it in fewer words, but it would be as well to have recognised in our Bill a distinction of roughly this kind. I do not mind what words are used. I entirely understand the pressure which exists in the Patents Office through the workload and over-working by a very small specialised and dedicated staff. I do not underestimate that and I am not trying to make work for them. The Labour Party put down an amendment, the second part of which aims at this distinciton. In spite of the fact that we and the British are governed by the same convention, they have succeeded in inserting such a distinction and we have failed to do so. Will the Minister look at this matter again and consider an amendment of his own for Report Stage?
I had already offered to do that, but Deputy Taylor declined to accept that offer and he proceeded to put his own amendment to a vote. I do not know what is my position now. For the benefit of those who may not have been here for a long time, perhaps I should explain that with a difficult technical Bill one does not amend it by a series of divisions. The best way to amend it is by considering some of these difficult matters before the next Stage and working out an appropriate amendment. I made it clear why, even on his own admission, Deputy Taylor's amendment could not work because it was outrageously biased in favour of the State in a quite unfair way and it differentiated against private employers in a arbitrary fashion. I had already made the offer, as requested by Deputy Kelly, to see if it was thought appropriate to draft an amendment based on the second proviso. I do not know if that understanding is still binding on me in the circumstances, but if anything might come of it I am prepared to look at it.
I hope the Minister will not punish us for having voted by refusing to consider something that ten minutes ago he thought was a good idea. I am sure Deputy Taylor has not so far forfeited his regard as to leave us with less good legislation than we might have otherwise.
The Chair would like to remind the House of Standing Order 100, which states:
Amendments may be moved on the Fourth Stage, but no amendments previously rejected in Committee of the whole Dáil shall be in order.
If the Minister were to bring in the first leg of the Labour Party amendment I would vote against it. I agree with the Minister's complaint about discrimination in favour of State-sponsored bodies and I do not see much point in the rest of it. With regard to the second leg of the amendment put down by the Labour Party, nobody expects the Minister to bring it in in exactly that format. Perhaps he has a better way and I do not think he should be prevented from producing his own amendment.
I should like some clarification on this matter. Am I to understand that if an amendment contains more than one element and if it is voted on, every element considered discretely and separate one from another is precluded from submission on Fourth Stage? That seems to me an extraordinary interpretation of Standing Order 100.
The Chair has indicated that any amendment that has been defeated cannot be moved again. The Chair indicated to Deputy Taylor before he looked for the vote that the Minister had indicated he was prepared to look at this section or the spirit of part or all of the amendment. The Chair is merely indicating to the House the situation under Standing Order 100, which states that when an amendment is defeated it cannot be moved again. Deputies may interpret that or arrange to circumvent that in any way they wish later on. However, the Chair felt obliged to remind the House of Standing Order 100.
There seems to be some atmosphere pervading matters, including the contribution from the Chair if I may say so, which would suggest that I should not have pressed my amendment. I put that amendment advisedly because I believed it was a right and proper amendment to have proposed. I stand over the sentiments behind it and I make no apologies to anyone for having done so. The fact that Deputy Kelly agrees with one part of the amendment and has reservations about another part is a matter for him. So far as I am concerned, the key part of the amendment was the first part, giving a right to an employee to participate in an invention he has discovered. It was on that basis, coupled with the second part, that I put the amendment and I make no apologies for having done so. I resent the tone and some of the comments that have been made here about it, as though I were in some way improper in doing so.
The Deputy may think the Chair has been other than helpful towards him but the Chair is doing no more than reminding him of the Standing Order. If a Deputy is anxious to have what is in his amendment considered on Report Stage, ordinarily he withdraws the amendment. The Chair pointed out this fact but did not do so as a reprimand to any Deputy.
Let us suppose the Minister took my view that the second half of the amendment was good and the first half was bad, that he was anxious to keep the second half but was forced to vote against the entire amendment as he would be stuck with the first half, surely that should not preclude him from casting the spirit behind the second half into an amendment of his own on Report Stage?
The Chair is not so indicating.
My quibble is not with the Chair but with the tone of the Minister's last contribution. If one were to interpret it exactly as it was offered, literally it would mean that if one puts forward an amendment with more than one element and encounters the displeasure of the Minister of the day one has lost the opportunity completely by not having the amendment altogether right. I find that an extraordinary suggestion. In this case there were two elements in the amendment and one element could have been accommodated in some formula. How can it make sense one moment and not make sense the next moment? If one interprets the Minister correctly, he is saying that one loses the opportunity of introducing one element by simply including anything else that encounters ministerial displeasure. It is a rather partisan interpretation of the process of amendment.
Is the House proceeding? Is the section agreed?
Question put and agreed to.
Section 14 to 21, inclusive, agreed to.
SECTION 22.
Question proposed: "That section 22 stand part of the Bill."
Will the Minister clarify what is meant by a "utility model" and a "utility certificate" in subsection (1)? What are the conditions for filing as referred to in that section? Are they the same in all member states or are there different conditions and requirements for other signatories to the convention?
A utility model, a utility certificate and an inventor's certificate are forms of protection of industrial property which are unknown in Irish law or in British law. I understand that they are also unknown in most of the western European countries but are included here to enable reciprocal arrangements to be made with eastern European countries where they are among the normal forms of protection of industrial property.
I understood the Minister to say eastern European countries were not involved.
So I was informed. They are not involved in the convention but I understand that there are reciprocal arrangements. The Deputy is right in saying that I said that. I was informed to that effect. I am now informed that they are not signatories to the convention but there are reciprocal arrangements between the contracting parties to this convention and some eastern European countries.
Is the reference to a person who has duly filed within the State for a utility model not inconsistent seeing that the Minister has now indicated that it is not possible to file in this State for a utility model or a utility certificate or an inventor's certificate? What therefore is the meaning of that part of the section that refers to filing in this State? We are talking about filing for something which the law does not provide for.
It will be provided for when this is passed. We are bringing this convention into effect in the country. At the moment as far as I know — and I am dependent on the advice I am getting because I know no more about patents than anyone else here — I am instructed that there is no such thing as a utility model, a utility certificate or an inventor's certificate.
Is it provided for in this Bill?
We are talking about the Bill. They are there. They are defined in the Paris Convention for the Protection of Industrial Property. We have not got a copy of the Paris Convention here unfortunately.
I see what the Minister means about the desirability of applying these things by order rather than by legislation.
This is not an EEC convention.
But I mean a comparable one.
I find it difficult to understand how a Bill comes before the House referring to categories of things, categories of commercial property, such as a utility model, which do not form the practice of this State, for whose registration or the obtaining of rights which there is no provision. If this Bill does contain within it definitions of what those things are and procedures in connection with them I could understand it but I do not think it does. Where is the logic or point in talking in this Bill about matters that are referred to in the Paris Convention when this Bill here does not make provision for these items?
The European Patent Convention establishes a European patent organisation which this Bill is supposed to ratify from our end and introduce into our law. That organisation constitutes a special agreement within the meaning of Article 19 of the Convention for the Protection of Industrial Property signed at Paris on 20 March 1883. We have been members of the Paris Convention for a very long time, not since 1883 but presumably since the twenties, and these concepts are defined in the Paris Convention. In the definition section the Paris Convention for the Protection of Industrial Property means the convention of that name signed at Paris on 20 March 1883, as amended or supplemented by any protocol to that convention which is for the time being in force in the State.
Does this mean then that these concepts will have status in domestic law following the passing of this Bill?
They will.
Should the Bill then not adopt the definitions of these items as they are in the convention for the purpose of this Bill? I refer to the definition of utility model and so on.
We have already adopted the Paris Convention of 1883 and they are defined in that, so the same definition presumably applies because that Paris Convention or the relevant parts of it are already part of our law.
Is the Paris Convention part of our law?
It is, I am informed.
The other point I was raising was the question of the conditions of filing. Are they the same in all the member states or are there different conditions in different states?
They vary from state to state.
Question put and agreed to.
Sections 23 and 24 agreed to.
SECTION 25.
Question proposed: "That section 25 stand part of the Bill."
I want to draw the Minister's attention to another curious thing here in subsection (5) where it states that the controller may cause to be omitted from the published patent application statements or other matter contrary to public order or morality. I do not want to reopen what we were talking about before lunch but surely this is an absurdity. He is going to be considering a patent application with the intention presumably of granting it but he is not allowed to publish that part of the application — although it may be seriously intended and by no means polemical or evangelical, so to speak, in the bad sense — which he judges to be contrary to public order or morality. To have a provision like that would seem, at first flush, something the Dáil may well have enacted in 1942 but it would seem a bit curious for 1982. Perhaps the Minister would satisfy us between now and the next stage that we really need such a provision.
I do not know why this statement about public order and morality is in here and I do not know how one can have a patent application that was contrary to public order or morality, to be quite honest. There may be some validity in subsection (5) (b) to prevent disparaging statements about other products being made.
Yes.
Unless it is demonstrated that there is some need for this by reason of public order or morality I will drop it at the next Stage.
Question put and agreed to.
Section 26 agreed to.
SECTION 27.
Question proposed: "That section 27 stand part of the Bill".
Would the Minister look at a small point? Subsection (2) reads:
A request for substantive examination shall be made by the applicant in the prescribed manner and within the prescribed period and be accompanied by—
(a) the prescribed substantive examination fee,
I think there is another part of the Bill which empowers the Minister to fix scales of fees in such matters. I hope when he comes to do so — perhaps he might even consider putting in a requirement that he should do so — he would make it flexible. There could be a very large difference in the cost to the Patents Office, and ultimately to the State, in carrying out an examination of a trivial, modest invention on the one hand, and something of extreme sophistication on the other. A lumpish bureaucratic fist would be out of place in prescribing a fee tailored to, on the one hand, a sophisticated product, which would only yield to examination by very highly paid experts, and, on the other, a modest item which an ordinary engineer would be able to judge quickly. In other words, I am asking the Minister to consider whether he should be required by the law to prescribe a flexible scale of substantive examination fees proportionate to the trouble and expense involved for the Patents Office in carrying out the examination.
The fees will not be fixed under the Bill; they will be prescribed by an order to be made later. I understand there are problems about having different amounts of fees for the same activity. The Patents Office take the view that what they lose on the swings they make up on the roundabouts. This is no consolation to the small inventor and I will see if there is any way we can get around it.
The Patents Office are one of the small number of State activities which are not only self-financing but make a modest profit. They are so proud of that unusual status that they are anxious to maximise their profits. I would not fault them for that because it is a very healthy intention. Would the Minister consider putting in a fee which would cover even the most sophisticated process for inventions and empower the office to remit or waive some or all of this fee in an appropriate case? What I mean by an appropriate case is where the fee specified in the order would be grossly disproportionate to the amount of professional trouble involved in making the examination and disproportionate to the amount of financial benefit the applicant for patent could be expected to derive from the patent if and when granted.
That would be one way of doing it. I will ask the Patents Office to try to do that.
I agree with Deputy Kelly's comments on fees. Clearly fees should be commensurate with the time and work spent by the officials of the Patents Office on the examinations. One could visualise some examinations requiring lengthly and prolonged procedures and many people would be involved. The fees to be charged should be commensurate with that. The State, in granting this valuable piece of commercial property, should be at no loss to the general body of taxpayers in carrying out the investigation necessary to substantiate the patent.
I want to ask for clarification on two points. There are three elements involved in patentability: first, it must be an invention; second, the novelty element, it must be new; and, third, it must be susceptible of industrial application. Under section 27 (2) we find that evidence is required of only two of those steps; for some reason the third is omitted. I do not know why. It seeks evidence on the novelty aspect and the inventive step aspect, but for some reason it leaves out the necessity for evidence on the susceptibility of industrial application. I wonder if there is any reason for that?
The second point calls in as evidence that question of a grant by any patent office outside this State of a patent for the same invention. Should reference there not be made also to a patent as to the utility model, utility certificate or an inventor's certificate? If either of those certificates operated, would it not be a relevant factor in the examination as well as the fact that an actual patent might have been granted elsewhere?
The simple answer is that I do not know why two of these steps are listed and not the third. I understand the third point is to apply throughout the Bill and presumably it was thought unnecessary to repeat it.
It was repeated here for a specific purpose——
I may not be reading this properly but I think there is something garbled in subsection (2) (b) (ii). That subsection reads:
(2) a request for substantive examination shall be made by the applicant in the prescribed manner and within the prescribed period and be accompanied by—
....
(b) such evidence as may be prescribed of either—
...
(ii) the grant by any patent office outside the State as prescribed of a patent for the said invention,
I cannot make sense of that. Has a line of type or even a few words been left out?
It means the grant by any patent office outside the State as is prescribed in rules which would be made under this legislation of a patent for the said invention.
I see. It is "the grant comma".
Yes. I wish they would use commas when drafting these Bills. The comma is becoming less and less frequent. It should read:
the grant, by any patent office outside the State as is prescribed, of a patent for the said invention,
It is still by no means a beautiful piece of English.
Subsection (4) states that in the course of a search the controller shall make such investigation as is, in the controller's opinion, reasonably practicable and necessary, whereas the criterion for the task of the examiner under subsection (5) is that he shall investigate the application to such an extent as he considers necessary. There seems to be a dichotomy between the criteria to be applied by the controller and the examiner. The examiner is not concerned with practicability.
The controller apparently is over the examiner and takes a global view of matters. The examiner does only what he is told to do. Therefore, the examiner does what is necessary but the controller looks at what is either practicable or necessary.
Question put and agreed to.
Section 28 agreed to.
SECTION 29.
I move amendment No. 6:
In page 19, subsection (3), line 47, to delete ", is" and "no longer" and substitute "is," and "no longer" respectively.
The object of this amendment is to correct incorrect punctuation which occurred in the printing of the Bill.
Amendment agreed to.
Section, as amended, agreed to.
Section 30 agreed to.
SECTION 31.
Question proposed: "That section 31 stand part of the Bill."
There is something which runs through the Bill and which has been mentioned before, but I am not sure that it has been satisfactorily dealt with. There are many places in the Bill where the controller or the Minister is given power to make determinations of one sort or another. The various sections in which this power is conferred do not specifically require that the Minister or the controller, as the case may be, give notice to anybody, even to the person affected or likely to be affected that the making of such a determination or decision is in contemplation. An attempt is made to cure that to some extent, or completely, no doubt, in a section towards the end of the Bill, section 85. This section prescribes that the Minister — I am speaking from memory now — when making a discretionary decision must observe the ordinary rules of justice and must give the applicant the opportunity of stating his case. This section states:
Where any discretionary power is by or under this Act given to the Controller, he shall not exercise that power adversely to any party in proceedings before him without giving that party an opportunity of being heard as regards such exercise.
I will have something more to say about that section when we come to it. It does not seem to cover, section 31 (1) which is as follows:
Where a patent application has been published pursuant to this Act but a patent has not been granted to the applicant, any other person may make observations in writing to the Controller on the question whether the invention is a patentable invention, stating reasons of the observations, and the Controller shall consider the observations in accordance with such rules (if any) for the purposes of this subsection as may be in force for the time being.
I would have thought that there should be an obligation resting on the controller to transmit the substance of these observations to the applicant, so that he can have an opportunity to counter them. I would have thought this would have been the right thing to do at that stage. I do not know if the provision under section 85 which confers this discretionary power on the controller really comes through here. I would have thought that when somebody had raised these observations the applicant should have had the opportunity, as soon as the observations arrived in the controller's office, of knowing that they were there and of taking an opportunity to meet them if they are hostile to his case. I will be asking the Minister and the Attorney General to look at the word "discretionary" in this connection. I am not so sure that we know what this word means in this context. The word "discretionary" sometimes means something not far removed from arbitrary, but the controller or the Minister is most certainly not entitled to be arbitrary in the exercise of his powers under the Act. There are discretionary powers which the Minister must exercise every day, as to whether to appoint X, Y or Z to a board, or to discontinue getting the paper supply for his office from one newsagent instead of another. He is not obliged to give reasons for or notice of such decisions to anybody. These are truly discretionary decisions. If this is the extent of the purview of section 85, it is not going far enough. There are a large number of decisions that are by no means discretionary. They must be taken having regard to to the procedures which the Act explicitly or implicitly commands. Speaking of section 31, no particular determination or decision is expected of the controller, but it is clear that his mind is in the process of being formed on the merits of the patent application once observations hostile to it come in on his invitation. At that stage the person likely to be affected by the controller forming an adverse point of view should be given notice of the substance of the observations.
I am informed that the practice is that if such observations come in, they are furnished to the applicant. Also, in regard to the rules which will be made under this Bill, provision will be made for such matters as the furnishing of copies. Much of the point of this extremely long winded procedure on patents is to have as much as possible carried out in public and therefore to give notice to interested parties.
There are some other sections which specifically state that notice be given. There is an irregularity in pattern which states that which perhaps ought not to be stated in some sections, but it is neglected to state it in others. This is something which it would be as well not to have. We should have an even usage in matters like this throughout the Bill and, indeed, throughout all legislation.
Ideally, we should. However, it would be unusual in a Bill of this length and complexity if everything were restated exactly similarly. If the Deputy adverts to the other sections, I will have a look at them to see the reason, when he discovers what they are.
If I am right in thinking that these sections are there, I will look them up. I am at present going on memory. The law of this country is that, even if such a thing is not stated in the Bill, a controller, or a Minister, or anybody else, who is adjudicating on, or taking any steps towards the adjudication of, something an unfavourable result in which will prejudice somebody else, must treat him fairly. Implicitly that requires him to give him notice of what objections are being raised to him, or what observations are being expressed about his application, and so forth. Even if none of this were in the Bill, it still would not relieve the controller, or the Minister, or anyone else exercising a function of this kind, from the ordinary, natural and constitutional duty of exercising fair play, which includes the idea of giving the party a second chance to be heard, which you cannot do unless you let him know what the nature of case being made against him is.
It is not that I am apprehensive of any unfair play. I know quite well that will not happen. The law books of this country are stuffed with examples — they are there by the hundreds going back to the foundation of the State — in which well-meaning officials, under pressure of time, or misreading something without proper advice, have made decisions, and have overlooked the necessity for giving people notice of what they were up to, and have overlooked some requirement of justice which they would not have overlooked had it been set out expressly in the Act in the section which they were trying to operate quite fairly. In their hurry they cut a corner and did an injustice without meaning to, or did not let justice be seen to be done, and ended up in the High Court to the dismay and expense of the State. That is best avoided by making it explicit wherever you confer a function of this kind that it has to be exercised by way of giving notice to the person affected.
One wonders whether the examiner should not have a role in looking at observations submitted. Apparently the observations go directly to the controller. As Deputy Kelly pointed out, that can colour the mind of the controller in coming to his decision, perhaps over-strongly having regard to the fact that the observations were not tested in the same way as the actual submission of the patent application would have been tested by having been subjected to a substantive examination by the examiner. Apparently the examiner has no role in dealing with the observations. Perhaps it would be appropriate that the examiner should have a role in looking at these observations and commenting on them before they were passed to the controller.
In reply to the last point, the examiner is an officer of the controller, I am informed, and the controller can consult the examiner, and I presume does. On the point Deputy Kelly made, in fact the controller sends copies of the observations to the applicant. I do not know why that point is not brought out here in the Bill. Apparently it is covered in the Rules. If there seems to be any major need for it, I have no objection to including it in the Bill on the next Stage. Whether or not it is in the Bill, if the controller is in error in not providing copies of the observations to an applicant, or presumably the applicant's reply, all the actions of the controller are subject to review by the High Court.
Question put and agreed to.
Section 32 agreed to.
SECTION 33.
I move amendment No. 7:
In page 20, subsection (1), lines 46 and 47, to delete "the period of twenty years" and substitute "such period between five and fifteen years, as the Controller shall determine to be reasonable to enable the inventor to secure a fair return,".
This amendment deals with the term for which the patent is granted. The Bill provides one fixed, specified term of 20 years. More flexibility would be appropriate here on the term which should be granted. The amendment would provide that, instead of a fixed term of 20 years in all cases, irrespective of the type of patent it was, irrespective of the work or research expense which had gone into it, it would be at the discretion of the controller to determine on a term between five years and 15 years.
Quite clearly the work and expense involved in getting patents and doing the research work which would lead to a patent would vary enormously from case to case. Some cases could involve the expenditure of vast amounts of money, prolonged period of research with a huge research establishment, in which it would be reasonable to secure the protection of a patent for that developer for a prolonged period. On the other hand, there could be a strike-lucky situation in which, with very little effort and very little expenditure of money, a firm could make a discovery, and it would be reasonable that the term should be less than the maximum which would be allowable under the discretionary figures.
Let us be clear about this. There is a regressive element in the whole patent concept. I am not saying there is not a need for it. I appreciate the need for it. Nonetheless, it is a regressive element; it is a restrictive element; it is a monopolistic element. It can have deleterious effects in many ways. It could cut back on employment. It could result in prices of the commodity to members of the public being higher than they would otherwise be by reason of the existence of a patent. Therefore, it is prudent that a balance should be struck between the profit element made available and secured to the owner of the patent, and the rights of members of the public to purchase commodities at the lowest possible price.
The blanket provision of a 20-year term makes no distinction between those different categories. There is a reference in the Bill in a different section to a limited class of commodities which touches on this aspect of the matter, that is, in section 65 (2). In that subsection terms of licences involving medicines, food, and things like that are mentioned. There is a reference to the fact that they should be available to the public at the lowest prices consistent with the proprietors of patents deriving a reasonable advantage from their patents. A reasonable advantage would depend on the expenditure or trouble involved for the patent holder. That varies from case to case.
In any case a term of 20 years is too long. A maximum appropriate term would be 15 years and, in certain cases, it could be considerably lower if the expenditure involved on the item did not warrant keeping up prices artificially to the consumers to an inordinate extent. One might find that, after a relatively small research programme, the consumers were paying a very high price for a prolonged period of 20 years. It may be that 20 years is specified in the Paris Convention. I do not know if that is so. I anticipate that the Minister will say it is.
Everything in the Paris Convention may not necessarily be to our advantage. It may well be that many of the items in that Convention are more to the commercial advantage of the more industrialised countries where they put more into research than we do. I wish we put more money into research. We should not necessarily be too hung up on the basis that what is good for the highly industrialised countries of Europe is necessarily equally good for us. There is a potentially vast difference in possible situations between different categories of patents and what would have led to them. For that reason there should be a degree of flexibility permitted here in the term granted. The section as it stands is a fixed term irrespective of what was involved or what work or expense went into that patent.
I have no strong feelings about the appropriate number of years, but whatever number is appropriate I think it should be the same for all inventions. Deputy Taylor's point in mentioning section 65 is interesting, and I agree that seems to reflect a willingness to cut down in the public interest the profit which a patent or otherwise might expect. That is an instance in which the Oireachtas itself has singled out a particular area as being one which for social reasons needs adjustment in favour of the public interest against a private interest. I would not quarrel with that. It was for that reason that the Government I supported removed VAT from those very items in 1973 — food and medicine. It would be quite a different matter to leave it to another authority, the controller, to make up his own mind on criteria which are not supplied for him which patent should have a currency of five years and which 15. I do not think discrimination of that kind can lawfully be entrusted to anyone in this country except the Oireachtas itself. I think it would fall foul of the same principle which underlay the adverse decision of the High Court on the Livestock Marts Bill ten years ago.
I agree with what Deputy Kelly has said. I do not think this amendment would be practicable. The European Convention contains the sentence: "The term of the European patent shall be 20 years as from the date of the filing of the application". I am informed that in every European country which is a signatory to this convention the term is 20 years. Modern thinking in regard to patents suggests that 20 years is the appropriate period. An invention costs money to develop and market and modern life makes these processes more and more expensive. It is widely thought in Europe that 20 years is the appropriate period. In any event it would be impossible for the controller to decide what period should apply if it were not a fixed one. He would be at a loss to know what criteria to apply in making the decision. It would have to be spelled out for him.
The amendment spells it out for him.
That would mean that he would have to go into the applicant's accounts in great detail and try to find out his rate of profitability. Since 90 per cent or more of the patents here are foreign owned how would the controller find out this information from some company far away who I think would have no intention of disclosing their figures?
How is he going to do it with section 65?
We shall come to section 65 in a little while.
It would be the same criteria.
I think it would stifle invention in this country certainly if the period here were to be significantly shorter than the period now applying in the whole of Europe. Under the amendment the period could be as short as one quarter of the standard European term and clearly that is very much too low.
I cannot accept the point that there should be any difficulty for the controller in assessing what period would be appropriate. The basis on which he would do it is specified in the amendment. He does it on the basis of determining what is reasonable to enable the inventor to secure a fair return. That is very similar to what is in the Bill in a different context in section 65 (2) which says that in settling the terms of licences the controller is to endeavour to secure that food, medicines and medical, surgical and other remedial devices are available to the public at the lowest prices consistent with the proprietors of the patents deriving a reasonable advantage from their patents.
He is given that precise power in the Bill to determine what terms would be reasonable to enable the patentor to obtain a reasonable advantage. The section deals with the sanctioning of licences and the controller has to settle the terms of the licence under the section. Where he is settling the terms of licences dealing with food and medicines he must do it in such a way that the prices are kept as low as possible consistent with the patentors deriving a reasonable advantage from their patents. He is involved there in the matter of what the research cost and what was involved in obtaining the patent and so on. I fail to see the Minister's or Deputy Kelly's point on that issue. If it is in order for the controller to do it in that context, it seems to me it would be in order for him to do in this context. We should be at pains here to ensure that prices are kept to a minimum. That is really what is involved. That is the directive of 65 (2), and it is admirable that it should be so, particularly admirable that it should apply to food and medicine.
The striving to keep prices as low as possible does not have to be confined to food and medicines. There are other essential commodities in everyday use and it would be entirely wrong that they should be kept artifically high as a result of a patentor obtaining an unreasonable advantage from his patent. That is all I am suggesting in the words of section 65 (2) applicable to food and medicines. Of course we must encourage research so that inventions will be made and nobody — certainly not I — would wish to deny an inventor a reasonable return. All I say is that it would be inappropriate that he should get an unreasonable return on a particular invention of a particular product that might have widespread consumer use which was produced at very low cost in research by a fortunate accident. Of course the person must get a reasonable return, but you could have a situation where he would get it for 20 years when it had cost him very little, and the profit he would make from the consumers would be completely out of proportion to what was involved in it. This fixity here seems unnatural and takes no account of the fact that patents and the research involved could fall into completely different categories. Some might be discovered at a cost of £500 while others might have cost hundreds of thousands of pounds. Yet both are given the same duration of 20 years. The food and medicines provision recognises that differential and the general provision should do the same.
This section deals with a totally different matter from section 65. The two cannot be compared. Section 65 deals with licences, not with patents. The licence is only a minor thing that has always been controlled by the controller. The patent is a fundamental document conveying all the rights but the licence is temporary, allowing manufacture. It has been the practice in the past where someone applies for a right to exercise a patent that it is a short-term thing and, naturally, it is done on terms that will be reasonably advantageous to the patent owner. The licensee has no rights at all and it is perfectly easy for the controller to impose terms on him. He has not invented it or done anything to facilitate it. The Deputy is making an error in comparing the two sections because they are about two fundamentally different things.
I do not think they are that different, because one is the term of the patent and the other is a licence but it is a licence to operate the patent.
Yes, from the patent.
Not at all, it is the controller, as the Minister will see if he looks at the section.
Yes, but the property in the patent remains in the patent owner.
But it is the controller who is settling the terms and there is nothing there to indicate that it is a short term. It could be a long term. There is a fair measure of similarity between the two situations. The point I am making is that the controller is given the task and the power under section 65 (2) to go into the question of what is a reasonable return for the proprietors of the patent. The point of the amendment is that that should be a factor in determining the monopoly right of the patentor to use his patent and that that should be curtailed in appropriate cases.
I am informed that the provisions here are broadly the same as those under the 1964 Act in the distinction between patents and licences, that in practice the controller does not have to exercise his functions of fixing the terms of a licence because it is normally agreed between the proprietor of the patent and the applicant who wants to manufacture under it.
Amendment, by leave, withdrawn.
Sections 33 to 35, inclusive, agreed to.
SECTION 36.
Question proposed: "That section 36 stand part of the Bill."
What does the Minister's Department have in mind in subsection (2)? This deals with the surrender of patent. Subsections (1) and (2) say that:
(1) A proprietor of a patent may at any time by notice given to the Controller offer to surrender his patent.
(2) Where an offer is made under this section, the Controller shall advertise the offer in the prescribed manner and any person interested may, within the prescribed period commencing on the date of the publication of the advertisement, give notice to the Controller of opposition to the proposed surrender.
Why should anybody wish to oppose the surrender of a patent?
Section 36 preserves the facility of the 1964 Act, section 36, for a patentee to surrender his patent which he may wish to do rather than defend it in an action for revocation. Subsections (2) and (3) provide for third party opposition to surrender which was requested under subsection (1) and, in practice, I understand that the third party opposition would normally come from a licensee who would wish the patent to continue.
Question put and agreed to.
Section 37 agreed to.
SECTION 38.
I move amendment No. 8:
In page 23, subsection (1), line 18, to insert "to a reasonable person" before ",that"
The object of this amendment, which was suggested by the patent agents, is to make the section consistent with section 37(b) which refers to a "reasonable person", lines 5 and 6. The expression "reasonable person" is used in the United Kingdom Act, 1977, both in sections 60(1)(b) and 62.
Amendment agreed to.
Question proposed: "That section 38, as amended, stand part of the Bill."
The power given there to a patentor is very wide, possibly too wide. It seems to have the effect that people who are far removed from a possible infringement situation are being brought into the net to an extent that seems inappropriate. One could have a situation where parts that would go into equipment would be caught. Is it reasonable that a person manufacturing parts should have the responsibility, in the event that the person he is selling those parts to would be likely to use them in a situation that would lead to a breach of patent? It is very widely worded——
Which subsection is the Deputy referring to?
38(1). It refers to where third parties would supply goods to a person who might use them for the purpose of committing a breach of patent. He could supply quite innocent materials. Admittedly, it provides that he has to know whether they are intended for putting those goods to use for the purpose of committing a breach of patent. Is that not putting a bit much on a third party who had been manufacturing and selling innocent goods? The responsibility for a breach of patent should rest primarily with the person who is committing the breach and to cast the net to a person further removed, who would be supplying goods which could be used or even if he suspects might be used for committing the breach of patent, is casting the protection to a patentor very wide. Is it really necessary to give him that degree of protection?
I do not think it is as wide as the Deputy fears. Subsection (1) defines the indirect use which is to be prohibited. In principle, it is an offence to supply or offer to supply goods which are needed to carry out a patented invention except to the patentee or his licensee. However, to avoid interfering with normal business transactions, three limiations are stated. The goods must relate to an essential element of the invention itself, that is the parts which, when assembled constitute the invention and not just well known tools which are needed for the assembly. The supplier must know or be reasonably expected to know that the goods are suitable and intended for putting the invention into effect and the third limitation is in subsection (2) which makes clear that the offer or sale in the ordinary course of business of staple commercial products, even if essential to the invention will not be an infringement unless such offer or sale is by way of an inducement to the persons supplied to infringe, for example by furnishing directions for use in the patented manner.
We could have a case where a man might be in the business of making motors to certain specifications, not a standard commercial product but a specially custom made motor. He knows or suspects that this motor will be used in connection with a breach of patent by the person who buys it. Is it reasonable that he should be concerned about the use to which a possible wrongdoer will put it?
He would have to know it would be used for a purpose in breach of the patent.
Is that not a bit much? If a person takes the motor and commits a breach of patent he can be dealt with. Is it really necessary to go beyond the person who is committing the breach of patent and go to a person who will supply goods to him in the normal course of his business? That is a degree of protection which is not available in the normal course of the law where breaches of contract would be involved. I know of no other branch where such a wide degree of protection is given. It is too wide.
This prohibition of indirect use is new in Irish law. It reflects modern practice and follows article 30 of the Community Patent Convention which we have not ratified. That is different from the European Patent Convention. We will have to ratify the Community Convention when this Bill is through. It is only appropriate that we should put this provision into the law. It is not regarded as too wide an indirect use. We had inadequate protection of the patent up to now. This is bringing us into line with what other countries have done.
In subsection (2) does the Minister not consider that "standard" might be a better word than "staple"?
The Community convention of 15 December 1975 at Luxembourg uses the word "staple".
That could have been the result of some translation.
I do not know what language it was in.
They are talking about staple commercial products. I never heard the word "staple" used in that context. I understand what a standard commercial product would be.
Staple means basic.
It means something that does not deteriorate. It has not got a good meaning in that context. "Standard" would be a better word.
I am prepared to change it to standard. We will look at it between now and Report Stage.
Question put and agreed to.
SECTION 39.
Question proposed: "That section 39 stand part of the Bill."
What is the purpose of paragraph (c)? It states the rights conferred by a patent shall not extend to:
the extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;
Is the Minister arbitrarily and for social reasons, with which I do not quarrel, trying to keep down the cost of medicine by excluding it from what would otherwise be the benefit of a patent or is there something else behind it? When the Minister is replying to that would he let me know whether "preparation" means dispensing of a drug which comes in a made-up form like a conventional tranquiliser tablet or is it intended to apply to compounding where the chemist is engaged in a pestle and mortar operation?
As I understand it paragraph (c) refers to a compounding operation in a pharmacy where, for example, a doctor gave a prescription, the makeup of which was the equivalent of a patented drug, but for some reason did not wish the patient to buy the patented drug under its trade name but wanted the chemist to make up the prescription. If the chemist did so he would not be in breach of the patentee's rights. The 1964 Act did not cover that but then patentees did not seek to enforce their rights.
Perhaps the Minister would inquire at his leisure if there is anything behind it. The number of drugs which do not come in a form made up by a manufacturing pharmaceutical firm would be very small. Perhaps there is some kind of calamine lotion for bee stings and so on which an old-fashioned chemist would pound up for himself, but my limited experience would lead me to think that when a modern chemist goes behind the screen what one hears is the glug glug of something being poured from one bottle into another or the rattling of pills into a weighing tray. The area in which this exemption looks like operating is tiny. Any drug which is simple enough to be compounded behind the screen by an ordinary chemist was probably invented by a man who is long since dead, possibly before the turn of the century.
Question put and agreed to.
Progress reported; Committee to sit again.