Dáil Éireann debate -
Thursday, 6 Mar 1997

Vol. 476 No. 1

Adjournment Debate. - Patents Office.

Mr. M. McDowell

I am grateful for this opportunity to refer to the chaos obtaining in the Patents Office. In 1996 this House passed into law the Trade Marks Bill, three years late, which would probably remain unenacted were it not that I had undertaken the bulk of the drafting in introducing a Private Members' Bill, taken over by the then Minister for Enterprise and Employment, Deputy Quinn, and used as the model for his Government Bill.

The Trade Marks Act, 1996, came into force on 1 July 1996 since when there has been complete chaos in the trade marks area. The Irish Patents Office, which administers both our trade mark and patent law, has examined no new applications under the 1996 Trade Marks Act. Worse still, the Patents Office has examined no service mark applications, even though some of them predated the enactment of that legislation, dating back to 1993. Between new applications under the 1996 Act and existing service mark applications, there are at present 10,000 applications in the pipeline, none of which has been examined or touched.

In these circumstances is it not reasonable to ask the Minister in question to accept responsibility for the chaos over which he is presiding? Somebody is responsible for this matter. Under section 6 of the Patents Act, 1992, the Controller of the Patents Office was made independent. I understand that the incumbent has been given a contract which enables him to hold on to that office for the remainder of his working life. I further understand that it would cost a lot of money to buy him out of that contract.

The fact that he is independent in his function does not take away from the Controller's obligation to carry out his statutory duties. My latest information — and I understand the position has worsened since I made a statement on the matter the other day — suggests that there has been complete non-co-operation, complete unwillingness to work the statute, complete dereliction of the duty to comply with basic statutory duties imposed by law on the Patents Office and the Controller in charge of it.

These are serious allegations to make but I stand over them. There has been complete non-co-operation and, as far as I can ascertain, the holder of that office has no intention of carrying out his statutory function unless the Minister insists that he should do so. I saw a press statement from the Patents Office indicating that it proposes to begin doing its work from Monday next. I regard that as an insult compounding the injury already done since that work should have been done all the time.

The Patents Office generates a profit income for this State of £3 million in patent fees and £2.5 million in trade mark fees alone. How one individual can decide that it is within his powers to simply throw away that State income and not carry out his functions defies belief as far as I am concerned. Apart from the scandalous abuse of public office involved, we are also dealing with a very serious inhibition to Ireland's capacity to attract foreign investment. I pay tribute to the work the Minister has undertaken to attract foreign investment, but if foreign investors knew that our Patents Office was being run in the manner it is, there would be a major problem in selling Ireland as a location for commercial activities using trade marks or service marks.

I want the Minister to give the House an undertaking that he will speak to the Controller of the Patents Office, clearly indicating to him that if that office does not discharge its functions he personally will discharge the Controller and make sure that somebody else does the work; that he will implement a crash programme to examine outstanding applications; that he will take immediate steps to examine service mark applications; that hearings between parties where there is a dispute, now four years in arrears, will be brought up to date immediately and that the office will carry out its quasi-judicial function to resolve those disputes. Furthermore, I want him to guarantee immediate action to ensure that assignments of trade marks, ownership changes, licence agreements and registered user agreements will be complied with immediately.

I want the Minister to make clear to this House now that he will insist on the Patents Office discharging its functions under the Trade Marks Act, 1996, and that he personally will ensure and guarantee to this House that its Controller will not be permitted to adopt a non-co-operative attitude. Newspaper reports suggest there are difficulties with a new computer. The Trade Marks Act, 1996, was going through the system for three years. If a computer was needed to operate it, it could have been bought, installed, serviced and brought up to scratch to come into operation on the same day as the Act.

Some 98 per cent of the staff do not want to be relocated to Kilkenny. Irrespective of the argument about decentralisation of the Patents Office to Kilkenny — I do not want to get involved in its merits one way or the other — it is no reason people should not do the duty cast on them by statute. Certainly it is no excuse for a senior official who is paid by the State to refuse to carry out his functions.

Minister for Enterprise and Employment (Mr. R. Bruton)

I share fully the concerns expressed by Deputy McDowell in his contribution and in his press release issued yesterday. The Government will do all in its power to ensure that Irish trade mark law acts in the interests of business. Irish business should not be put at a disadvantage by administrative delays of the sort referred to by Deputy McDowell. The Government would not be happy if Ireland's reputation as a competitive location for industry and commerce was undermined by such delays. My Department, through the intellectual property unit, has introduced a number of items of legislation in the intellectual property area in the past year to ensure Ireland does not fall adrift in this area.

The Trade Marks Act and rules of 1996 are by far the most significant items of legislation in that field. The intellectual property unit is continuing its work in this technical and difficult area to ensure our intellectual property legislation is on a par with best international practices and that we have an effective intellectual property system which can be used to attract and keep international businesses in Ireland.

On foot of the points raised in the Deputy's press release yesterday I instigated an initial investigation of the situation in the trade marks branch of the Patents Office. I have ascertained the following information: the Trade Marks Act and the trade marks regulations of 1996 came into force on 1 July 1996. These instruments introduced a modern trade mark regime which specifically extended the capacity for registration to service marks. The introduction of the new system called for significant changes in the trade mark registration procedure and specifically imposed an additional area of work on it in respect of the registration of service marks.

The new system called for significant changes to the examination and registration procedures operating in the office under the 1963 Act and necessitated a revision of these procedures. The new requirements under the 1996 Act meant that a number of new administrative systems had to be put in place in respect of all aspects of trade mark examination and registration. The legislation has meant that existing procedures were overtaken and new procedures had to be planned and finalised on a case by case basis.

This process, given the legalistic nature of the work undertaken by the office, was painstaking and has taken some time to complete. The delay in the finalisation of the system has led to delays in the processing of applications, which is unsatisfactory.

On the issue of registration certificates, specifically referred to by the Deputy in his speech and in his press release, work on this item was only finalised with the trade mark agents on 26 February 1997 and work on the examination guidelines to be used by the trade mark examiners is only now reaching completion.

In view of these delays it has not been possible for the trade mark examiners to start work on examining the approximate 7,000 applications which have been filed with the office since the the Act came into force. It is the intention of the office to start examination of the applications under the Act on 10 March 1997. This date was set long in advance of Deputy McDowell's queries.

Given that examiners working in the trade marks section of the Patents Office previously succeeded in reducing a similar if not larger backlog, arising from different difficult circumstances, I am sure they will clear the backlog quickly and reach a position where there will be rapid examination and registration of trade marks under the 1996 Act. We can count on their professional application and dedication in achieving this task.

I thank the Deputy for raising the matter. I share his concerns about any negative feature which administrative delays of this nature might produce in the world of business. For that reason I do not propose to let this matter lie here. I intend to conduct a more comprehensive review of the activities of the trade marks section of the Patents Office with the Controller of Patents, Trade Marks and Designs on his return from official business in Munich on Monday next. As part of that review I propose to involve an independent management specialist to ensure no organisational issues are impeding the work of the office.

I propose also to establish a users' council in the interests of facilitating better delivery of the industrial property services of the Patents Office. The council will be representative of such interests as the patent and trade mark agents profession, the industry, businesses and the university and scientific community. Such a council will be useful in highlighting necessary improvements and in suggesting actions which will form the basis of change in the office's activities and structures in the future.