Amendments Nos. 2 to 4, inclusive, amendment No. 22 and amendments thereto are related to amendment No. 1 and they will be discussed together.
Patents (Amendment) Bill 1999: Report and Final Stages.
I move amendment No. 1:
In page 5, line 9, after "ORGANISATION" to insert "DONE AT MARRAKESH ON 15 APRIL 1994".
These amendments relate to how various international agreements are referred to in the Bill. Amendments Nos. 1, 4 and 22 relate to the agreement establishing the World Trade Organisation and the insertion of a reference to the agreement being done at Marrakesh on 15 April 1994. I accept these amendments.
Amendment No. 2 relates to the references to the European patent convention in the Long Title of the Bill and proposes the insertion of a reference to the convention as "DONE AT MUNICH ON THE 5TH DAY OF OCTOBER, 1973". I propose an amendment to substitute "SIGNED" for "DONE" in order to achieve consistency with the manner in which the European patent convention is defined in the 1992 Act. I am advised by the Parliamentary Counsel that nothing will turn on this legally. I propose to accept the amendment as amended in this regard.
Amendment No. 3 relates to the reference to the patent law treaty in the Long Title of the Bill and proposes the insertion of a reference to the treaty as having been "DONE AT GENEVA ON 1 JUNE 2000". As the patent law treaty was "adopted" at Geneva on 1 June 2000 rather than "done", I have submitted an amendment to substitute "adopted" for "done".
I thank the Minister.
I thank the Minister for accepting Deputy Quinn's amendments, tidying-up amendments which arose from Committee Stage proceedings. The Bill is largely technical and the Opposition is glad to facilitate the Minister and the Department in putting through the amendments. The fact the Bill goes back to 1999 is a clear indication it was not urgent at that time but it has become more urgent since then. The Minister explained the urgency of the Bill on Committee Stage and a speedy passage of Report Stage will be facilitated by the Opposition.
I thank the Minister for indicating he will accept the amendments.
Amendment agreed to.
I move amendment No. 2:
In page 5, line 10, after "CONVENTION" to insert "DONE AT MUNICH ON THE 5TH DAY OF OCTOBER, 1973".
I move amendment No. 1 to amendment No. 2:
To delete "DONE" and substitute "SIGNED".
Amendment to amendment agreed to.
Amendment No. 2, as amended, agreed to.
I move amendment No. 3:
In page 5, line 11, after "TREATY" to insert "DONE AT GENEVA ON 1 JUNE 2000".
I move amendment No. 1 to amendment No. 3:
To delete "DONE" and substitute "ADOPTED".
Amendment to amendment agreed to.
Amendment No. 3, as amended, agreed to.
I move amendment No. 4:
In page 5, line 28, to delete "signed" and substitute "done".
Amendment agreed to.
I move amendment No. 5:
In page 10, line 17, to delete "Where the application is made" and substitute "Where the application for a patent was made".
The amendment is of a clarifying nature and relates to section 9 of the Bill as amended on Committee Stage. Section 9 amends the Patents Act 1992 by inserting a new section 35A, which deals with the reinstatement of applications. The purpose of this amendment is to correct an error in the tense of the verb "to be" in subsection (4) of the new section 35A. For reasons of additional clarity, the Parliamentary Counsel has suggested that a reference be included to the application being "for a patent".
Amendment agreed to.
Bill recommitted in respect of amendments Nos. 6 to 12, inclusive.
I move amendment No. 6:
In page 10, line 22, after "section 28" to insert the following:
"and it appears to the Controller that reasonable care was taken to comply with the requirement within the prescribed period or, as the case may be, the period specified by the Controller".
Section 9, as considered by the committee, amends the Patents Act 1992 by inserting a new section 35A, which provides for the possibility of reinstatement of applications where an applicant had failed to comply with a requirement within the time limit provided. Subsection (5) provides for the advertisement of a request for reinstatement and the possibility for third parties to oppose the request. As currently drafted, the controller would be required to advertise the request for reinstatement even if the applicant had not taken reasonable care to try to comply with the time limit and invite unnecessary opposition proceedings. The controller should be advised to advertise the request only where the applicant has made a prima facie case for reinstatement. Amendment No. 6 clarifies subsection (5) to provide that a controller shall advertise the making of the request for reinstatement only where it appears to him that the applicant had taken reasonable care to comply with the requirement.
Amendment agreed to.
Amendments Nos. 7 to 12, inclusive, 16 to 20, inclusive, and 25 will be recommitted. The amendments are related and may be discussed together.
I move amendment No. 7:
In page 11, to delete lines 25 to 27 and substitute the following:
"the person shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the reinstatement of the application and the grant of the patent."
These amendments, while appearing complex and significant, do not involve any change in policy from the Bill as considered in committee. They arise from recent legal advice from the Attorney General's office that the provision in section 37(7)(b) of the Patents Act 1992, which gives power to the Minister to prescribe in rules the protection for third parties, who may have begun to use the invention the subject of a patent in the intervening period between its lapse and restoration, may be too wide. The advice is that the protection for such third parties should be set out in the Act itself rather than in rules under the Act.
The protection for the intervening rights of third parties is currently set out in Rule 38 of the Patent Rules 1992. This protection is very important. Without such protection, third parties would be open to infringement proceedings if they continued to use the invention following the restoration of the patent. The protection provided by Rule 38 allows a third party, acting in good faith, who began to do certain acts which would constitute infringement of the patent or application, had it been in force, or made serious preparations to do such acts, to continue to do such acts after restoration, provided such acts were commenced before the publication of notice that the proprietor or applicant was seeking to restore the patent or application.
The protection afforded does not allow a third party a right to grant a licence to any other person but does allow the person to authorise business partners to do the act. The right to do the act can also be assigned or transmitted on death, or dissolution in the case of a company, to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it. Where the product is disposed by the third party to another, that other person and any person claiming through that other person can deal with it as if it had been disposed of by the proprietor of the patent.
The protection for the intervening rights of third parties acting in good faith arises in a number of other sections of the Patents Act, namely, sections 119, 120 and 121, where there are provisions in section 119(5) and 120(5) to provide protection for such persons in cases where a European patent designating the State is revoked and subsequently restored, or the applicant for a European patent re-establishes his rights after his application had been refused or deemed withdrawn.
Section 121(4) provides protection for third parties acting in good faith who begin to do an act while relying on an inaccurate translation of a European patent. If the translation is subsequently corrected, that person can continue to act even if it constitutes infringement under the corrected translation. The formula of words used to provide the protection in each case is "as if an order had been made under section 37(7)".
Section 9, reinstatement of application, section 27, effect of restoring a withdrawn application, and section 30, restoration where a translation is not filed under section 119(6) of the principal Act of the Bill as considered in committee, also contain provisions for third-party protection following the reinstatement or restoration of applications or a patent in the circumstances set out in the respective sections. Again, the protection is conferred by a cross-reference to "as if an order had been made under section 37(7)".
Hence, it will be necessary to amend each of these sections to set out the protection currently contained in rule 38 of the patent rules. This is the purpose of amendments Nos. 7, 8, 12 and 16 to 20, inclusive. For reasons of transparency, the Parliamentary Counsel has set out the protection in full in each section affected apart from amendment No. 18, which relates to section 119, where a cross-reference to section 37 (8) (c) to (11) was possible.
Amendment No. 19 also makes a minor amendment to section 120(5) to clarify that the protection for third parties applies where the act of the third party would constitute an infringement of the rights conferred by publication of the application, since it is the publication of an application which confers provisional protection on an applicant to prevent others from using his invention.
Amendments Nos. 9 and 11 are textual amendments consequent on amendments Nos. 8 and 12. The effect of amendment No. 10 is to delete subsection (7)(b) of section 37 of the Act. The text was amended in section 10 of the Bill as considered on Committee Stage but not with regard to the power to prescribe protection. The protection for third parties where a patent has been restored is now set out in subsections (8)(c) to (11) of section 37 inserted by amendment No. 12. The text that is now set out as section 37(7) in amendment No. 10 comprises the existing text of section 37(7) of the 1992 Act without the text in subsection (7)(b).
With regard to amendment No. 16, which replaces section 27 of the Bill as considered on Committee Stage, it has proved necessary for the Parliamentary Counsel to include it in the redrafting process to facilitate the addition of new subsections (2) to (5), which provide the third party protection. The section which was considered on Committee Stage is now included as subsection (1) and is unchanged apart from the deletion of "the person shall have the same protection as if an order had been made under Section 37(7)" in paragraph (iii) and its replacement by a reference to “the person shall have the rights conferred by the new subsection (2)”.
With regard to amendment No. 25, it is necessary to insert changed commencement provisions consequential on changes relating to those sections affected by the new third-party protection provisions. It effectively includes rule 38.
Amendment agreed to.
I move amendment No. 8:
In page 11, between lines 27 and 28, to insert the following:
"(2) Paragraph (c) of subsection (1) does not extend to granting a licence to any person to do an act referred to in that paragraph.
(3) If the act referred to in paragraph (c) of subsection (1) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by the said paragraph (c) may -
(a) authorise that act to be done by any partner of that person for the time being in that business, and
(b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it.
(4) Where a product is disposed of by any person to another person in exercise of a right conferred by paragraph (c) of subsection (1) or by subsection (3), that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the applicant.”.
Amendment agreed to.
I move amendment No. 9:
In page 11, to delete line 28 and substitute the following:
"(5) In this section "termination", in relation to".
Amendment agreed to.
I move amendment No. 10:
In page 11, to delete lines 34 to 42 and substitute the following:
"(a) by substituting the following for subsection (7):
"(7) An order under this section for the restoration of a patent may be made subject to such conditions as the Controller thinks fit, including in particular a condition requiring the entry in the register of any matter in respect of which the provisions of this Act as to entries in the register is not complied with and if any condition to which an order under this section is subject is not complied with by the proprietor of the patent, the Controller may revoke the order and give such directions consequential on the revocation as he thinks fit.",".
Amendment agreed to.
I move amendment No. 11:
In page 12, line 13, to delete "infringing act."." and substitute "infringing act;".
Amendment agreed to.
I move amendment No. 12:
In page 12, between lines 13 and 14, to insert the following:
"(c) where, after the expiration of the period of extension specified for the purpose of section 36(3) and before the date of publication of the application for restoration of the patent in the Journal under subsection (4), a person—
(i) began in good faith to do an act which would constitute an infringement of the patent if it had not lapsed, or
(ii) made in good faith effective and serious preparations to do such an act, the person shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the restoration of the patent.
(9) Paragraph (c) of subsection (8) does not extend to granting a licence to any person to do an act referred to in that paragraph.
(10) If the act referred to in paragraph (c) of subsection (8) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by the said paragraph (c) may—
(a) authorise that act to be done by any partner of that person for the time being in that business, and
(b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it.
(11) Where a product is disposed of by any person to another person in exercise of a right conferred by paragraph (c) of subsection (8) or subsection (10), that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent.”.”.
Amendment agreed to.
Bill reported with amendments.
Amendment No. 13 arises out of Committee Stage proceedings and amendments Nos. 14 and 15 are related. Amendments Nos. 13 to 15, inclusive, may be discussed together by agreement.
I move amendment No. 13:
In page 14, to delete lines 9 to 13 and substitute the following:
"concerned, provided that such invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the first patent.".
Amendments Nos. 13 and 15 arise from Committee Stage amendments proposed by Deputy Hogan, which I undertook to consider further before Report Stage. Having examined them, I am moving these amendments, the effect of which is to accept Deputy Hogan's Committee Stage amendments.
With regard to amendment No. 14, having examined the matter further, it would appear that neither the current qualification of subsection (3) of "Subject as hereinafter provided, where" or the alternative proposed by Deputy Hogan on Committee Stage, "Subject to the provision of this section", is necessary. The subsection can simply begin with the word "Where", as subsections (3) and (4) of section 70 can stand alone.
I thank the Minister of State for including those amendments.
Amendment agreed to.
I move amendment No. 14:
In page 14, line 14, to delete "Subject as hereinafter provided, where" and substitute "Where".
Amendment agreed to.
I move amendment No. 15:
In page 14, to delete lines 26 to 28 and substitute the following:
"licence to be granted upon such terms as the Controller thinks fit, provided that:".
Amendment agreed to.
Bill recommitted in respect of amendments Nos. 16 to 21, inclusive.
I move amendment No. 16:
In page 17, to delete lines 32 to 46 and in page 18, to delete lines 1 to 29 and substitute the following:
27.—The Principal Act is amended by inserting the following section after section 110:
110A.—(1) Where—
(a) the Controller is requested to correct an error or mistake in a withdrawal of an application for a patent, and
(b) an application for a patent has been restored in accordance with that request, the following provisions apply:
(i) anything done under or in relation to the application during the period between the application being withdrawn and its restoration shall be treated as valid;
(ii) where the Controller has published notice of the request referred to in section 110(2A), anything done during the period referred to in subparagraph (i) which would have constituted an infringement of the rights conferred by publication of the application if the application had not been withdrawn shall be treated as an infringement of those rights if it was a continuation or repetition of an earlier act infringing those rights;
(iii) where the Controller has published notice of the request referred to in section 110(2A) and, after the withdrawal of the application and before publication of the notice, a person—
(I) began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application if the withdrawal had not taken place, or
(II) made, in good faith, effective and serious preparations to do such an act, the person shall have the rights conferred by subsection (2).
(2) The person referred to in subsection (1)(iii) shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the restoration of the application and the grant of the patent.
(3) Subsection (2) does not extend to granting a licence to any person to do an act referred to in subsection (1)(iii).
(4) If the act referred to in subsection (1)(iii) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by subsection (2) may—
(a) authorise that act to be done by any partner of that person for the time being in that business, and
(b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it.
(5) Where a product is disposed of by any person to another person in exercise of a right conferred by subsection (2) or (4) that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the applicant.".".
Amendment agreed to.
I move amendment No. 17:
In page 19, to delete lines 7 to 16 and substitute the following:
"(c) in subsection (5)—
(i) by substituting the following for paragraph (a):
"(a) under the European Patent Convention a European patent designating the State—
(i) is revoked for failure to observe a time limit and is subsequently restored, or
(ii) is revoked by the Board of Appeal and is subsequently restored by the Enlarged Board of Appeal, and",
and
(ii) by substituting "the person shall have the rights conferred by subsections (8)(c) and (10) of section 37 and subsections (9) and (11) of that section shall apply accordingly.” for “he shall have the same protection as if an order had been made under section 37(7).”,”.
Amendment agreed to.
I move amendment No. 18:
In page 20, to delete lines 23 and 24 and substitute the following:
"subsections (8A) to (8D) shall apply.
(8A) The person referred to in subsection (8) shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the restoration of the effect of section 119(1).
(8B) Subsection (8A) does not extend to granting a licence to any person to do an act referred to in subsection (8).
(8C) If the act referred to in subsection (8) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by subsection (8A) may—
(a) authorise that act to be done by any partner of that person for the time being in that business, and
(b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it.
(8D) Where a product is disposed of by any person to another person in exercise of a right conferred by subsection (8A) or (8C) that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the proprietor of the patent.".".
Amendment agreed to.
I move amendment No. 19:
In page 21, between lines 17 and 18, to insert the following:
"(c) by substituting the following for subsection (5):
"(5) Where between the cesser, by virtue of subsection (4), of subsections (1), (2) and (3) as regards an application for a European patent and the re-establishment of the rights of the applicant, a person begins in good faith to do an act which would, apart from section 77, constitute an infringement of the rights conferred by publication of the application if subsections (1), (2) and (3) then applied, or makes in good faith effective and serious preparations to do such an act, subsections (5A) to (5D) shall apply.
(5A) The person referred to in subsection (5) shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding subsections (1) to (3) applying again and notwithstanding the grant of the patent.
(5B) Subsection (5A) does not extend to granting a licence to any person to do an act referred to in subsection (5).
(5C) If the act referred to in subsection (5) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by subsection (5A) may—
(a) authorise that act to be done by any partner of that person for the time being in that business, and
(b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it.
(5D) Where a product is disposed of by any person to another person in exercise of a right conferred by subsection (5A) or (5C) that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the applicant.".".
Amendment agreed to.
I move amendment No. 20:
In page 21, between lines 29 and 30, to insert the following:
32.—Section 121 of the Principal Act is amended—
(a) in subsection (4), by substituting “subsections (5) to (8) shall apply.” for “he shall have the same protection as if an order had been made under section 37(7).”,
(b) by inserting the following subsections after subsection (4):
"(5) The person referred to in subsection (4) shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the publication of the corrected translation and notwithstanding the grant of the patent.
(6) Subsection (5) does not extend to granting a licence to any person to do an act referred to in subsection (4).
(7) If the act referred to in subsection (4) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by subsection (5) may—
(a) authorise that act to be done by any partner of that person for the time being in that business, and
(b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it.
(8) Where a product is disposed of by any person to another person in exercise of a right conferred by subsection (5) or (7) that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the registered proprietor of the patent or the applicant, as the case may be.".".
Amendment agreed to.
I move amendment No. 21:
In page 21, between lines 29 and 30, to insert the following:
33.—Section 122 of the Principal Act is amended in subsection (1) by substituting "Where an application designating the State is deemed withdrawn under the provisions of the European Patent Convention because it has not been forwarded to the European Patent Office in due time," for "Where under the European Patent Convention an application for a European Patent designating the State is deemed to have been withdrawn because it has, not within the period required by the said Convention, been received by the European Patent Office,".".
Amendment agreed to.
Bill reported with amendments.
I move amendment No. 22:
In page 23, line 35, to delete "signed" and substitute "done".
Amendment agreed to.
I move amendment No. 23:
In page 24, line 43, to delete "effect" and substitute "affect".
The purpose of this amendment is to correct a typographical error. The context of the provision relates to bona fide use of a trademark before the entry into force of the WTO agreement. It provides that such use does not "affect", as opposed to "effect" those rights.
Amendment agreed to.
I move amendment No. 24:
In page 25, between lines 32 and 33, to insert the following:
"(2) The Patents Act 1992 and this Act may be cited together as the Patents Acts 1992 and 2006.".
This amendment has been considered in conjunction with the Parliamentary Counsel, which was reluctant to create a collective citation as it would be necessary to ensure that all other intervening amendments would be included. There is concern that there may be an oversight if any amendment made in the past 14 years was to be omitted.
The fact that the Bill, as published, contained a collective citation is not an argument for having one in the Bill. The citation proposed does not give a full picture of any amendments made to the Patents Act in the interim. It merely signposts that the Patents Act was last amended in 2006. Also, as the Bill amends other intellectual property legislation, if a citation were made a similar provision would be needed in respect of those Acts.
The Parliamentary Counsel is satisfied with the section as it stands. I do not propose to accept the amendment.
Amendment, by leave, withdrawn.
Bill recommitted in respect of amendment No. 25.
I move amendment No. 25:
In page 25, to delete lines 38 to 40 and substitute the following:
"(3) This section and sections i, 2(a), (f) and (g), 7, 10, 12, 15, 16, 18 to 25, 29(c) (ii), 31(c), 32, 34 to 38 and 40 to 48 shall come into operation on the passing of this Act.”.
Amendment agreed to.
Bill reported with amendment.
Bill, as amended, received for final consideration.
I move: "That the Bill do now pass."
I thank Deputy Hogan and Deputy Quinn for their co-operation. Some changes have been made following the queries and views they raised on Committee Stage. I also wish to thank my staff for the excellent work they have done to ensure the passage of this Bill.
Question put and agreed to.