Seanad Éireann debate -
Wednesday, 24 Apr 1929

Vol. 12 No. 4

Ennis Urban District Council (Dissolution) Bill, 1929— - Industrial and Commercial Property (Protection) (Amendment) Bill, 1929—Third Stage.

Sections 1 to 6, inclusive, put and agreed to.

SECTION 7 (1).

Sub-section (1) of Section 62 of the Principal Act is hereby amended by the deletion from paragraph (b) thereof of the words "the firm and" and by the deletion from paragraph (c) thereof of the words "the company and," and the said section shall be construed and have effect accordingly.

Mr. Connolly

I move:

Section 7, sub-section (1). After the words "the company and" in line 10 to insert the words "and sub-section (5) of Section 62 of the Principal Act is hereby repealed."

If we refer to Clause 5 of the Principal Act so called we find that it says: "Nothing in this section shall be taken to prohibit solicitors from taking such part as they have heretofore taken in proceedings analogous to any proceedings under this Act." The feeling is that this clause entitles solicitors operating in the Saorstát to represent patent agents not resident in the Saorstát, and to make their applications for patents and trade marks, and thus eliminate the necessity for those firms requiring protection for their patents or trade marks being represented by local patent agents. I think the general purpose of the Act is to protect and safeguard our own agents here, but a legal decision given comparatively recently makes it clear that the legal interpretation of the Act is not such. We want, as far as possible, to develop in this country a profession of patent agents and for the protection of our rights I think it desirable that such a profession should be encouraged. Patent agents will have to have technical knowledge and experience so that they may prepare a case for submission to the Patent Office. This clause in my judgment would eliminate the necessity for having patent agents in this country at all. We know that a very considerable amount of this business in connection with the protection of patents will be on behalf of large concerns across the water, and that in many cases these firms will entrust large firms of patent agents, with activities in various countries, with the protection of their patents and patent rights. In most countries they have either an office or a partner resident, or a citizen, at all events, of the State, who will present their case and act for their clients in that particular country.

Now with the insertion of this clause such a thing would not be necessary here. It would be sufficient for a firm of patent agents in London, New York, Berlin or Paris simply to prepare a brief, send it on to any local attorney and let him act for them. The result would be that in this country we would not be developing anything in the nature of professional experience in that matter, which the Act is out to provide. On that argument I feel that the clause might be deleted, so as to ensure the protection of the patent agents already operating here, and to prevent exploitation by foreign agents who would not need even an office in this country under the clause. It seems to me perfectly obvious, and I think the argument is sound, that such power should not be given foreign patent agents to make the operation so simple for them as it is made under Clause 5. I commend the amendment to the consideration of the House and to the Minister. The elimination of this clause will not inflict any particular hardship on any non-national registering patents or trade marks here. It will simply mean that he will have to use a citizen of the Saorstát to present the case for the protection of a patent right.

Mr. Guinness

I do not understand what Senator Connolly is anxious to bring about, because at the present time there are patent agents actually residing in Dublin who are prepared to take up any business of that description that is offered to them. It may be that patent office agents in London or elsewhere send over business to solicitors here, but there are patent agents in Dublin who are prepared in their professional capacity to take up the business of registration or other matters connected with patents.

Mr. Brown

I think that probably Senator Connolly is unduly apprehensive as to what will happen under the Principal Act. I was chairman of the Committee which was really responsible for the Principal Act, and one of the questions that was raised by solicitors at the time was whether they would be prevented under the Principal Act from doing the work which they had done before in connection with patents. If the Senator reads the section, which was put in in order to protect them from being deprived of what they used to do under the old system here—we had no Patent Office here—I think he will find that there is no real fear of the patent agents being injured in any way. The sub-section which he proposes to delete reads:—"Nothing in this section shall be taken to prohibit solicitors from taking such part as they have heretofore taken in proceedings analogous to any proceedings under this Act." Now before the Principal Act was passed we had no Patent Office here. There was no patent procedure in this country, and all the solicitors in this country did was the preliminary work which enabled the patent agent in London to do the work there. That is all they can do under the Principal Act now. I was of opinion at the time that this sub-section was not necessary, that they could have gone on doing it, but they wanted to be quite sure that they were protected in doing what they had done before. I do not think the amendment is necessary for the protection of the patent agents.

Mr. Comyn

I second the amendment. Section 63 of the Principal Act provided for the establishment in this country of a profession of patent agents who should be citizens of this State and resident in it. The object, of course, was that the industries of this country should be protected and that new devices in manufacture or new methods of business and new ideas which originated here should be preserved for the use of this country and not be exploited by patent agents who had a dual allegiance. Section 63 states: "Any person who resides or has a place of business in Saorstát Eireann and is not an alien, and possesses the prescribed educational and professional qualifications and complies with the prescribed conditions, shall be eligible to be registered in the register of patent agents and shall, on application in the prescribed form and manner and payment of the prescribed fee, be so registered." Now the framers of that Act had the intention of establishing in this country a college, if I might use the expression, of patent agents, men thoroughly qualified who should be resident in Saorstát Eireann, men who should have certain educational qualifications, and men who should pay fees. That section, as I would have thought, was very carefully drawn, and I am sure my friend, Senator Brown, had something to say to it. It would appear to have been completely and fully adapted to the purposes intended, but in the course of the last two years it was found that it was not so adapted, and the Ministry has found it necessary now to strengthen that section by providing that patent agents shall both reside and have a place of business in Saorstát Eireann. What happened was this: The London patent agents got around the Act of Parliament. They had a pied-de-terre here—a room—and having a room they called it a residence; they operated in the Free State from London, with the result that the patent agents who were qualified in the Free State, who had paid their fees and who are resident, could get nothing to do. The object of Senator Connolly's amendment is to make the clause more effective.

There has been a recent decision, of which Senator Brown does not appear to be aware, the effect and the meaning of which is this: that a London agent can prepare the papers, do all the necessary work, apply to the patent all the necessary skill, and instead of sending it to a patent agent licensed and registered in the Free State, he can send it to any solicitor in the Free State, and that solicitor can send his clerk to the office and get the patent registered. Now that is the effect of the decision in Pott's case. We want to repeal that decision, and to give full protection to the patent agents who have been established in this country. I am sure we will have the support of Senator Guinness, because everything he has said is in favour of supporting the local patent agents.

Parliamentary Secretary to the Minister for Industry and Commerce (Mr. Dolan)

Undoubtedly what Senator Comyn has said is a fact, but it was never intended to prevent the registering of patents in the Free State sent in the manner he has described. I would remind the House that the Act was framed in order to set up a Patent Office here for the control of patents in the Saorstát. The use of patents and the general application of them have nothing to do with the registering of them by patent agents. The registering of a patent by a patent agent is a matter that is controlled by the Act, and supervision is exercised over it according to the Act by the Controller of the Patent Office. Whether a solicitor should be still allowed to do as he did heretofore is clearly defined in Section 62 of the original Act, and although we are prepared, having given this matter very full consideration, to encourage in every way the establishment of patent agents in the Saorstát, I think it would be unwise to prevent solicitors from performing functions which they heretofore undertook. It is only natural to assume that if an inventor wishes to register a patent in the Saorstát, and if there is a qualified patent agent in the Saorstát, a solicitor who will be employed by him in the ordinary way will employ a patent agent here rather than a patent agent in London, because he will be on the spot. Our idea is to encourage the establishment of patent agents here, but, at the same time, we do not think we have yet reached the stage when we could give a complete monopoly to the patent agents in the Saorstát, or even if we had reached a more advanced stage in the work of our Patent Office, would we consider it wise to do it. I think the House would be well advised not to accept the amendment, because it would cut across the general work of the office, and I do not think it would be as easy to administer as Senator Connolly or Senator Comyn seems to think.

Mr. Dowdall

I rather regret the absence of the Minister who had control of the Principal Act when it was going through the House because it seems to me, on reading Section 62 of the Principal Act, it is fairly clear that the object of the Act was to secure what Senator Comyn called a college of patent agents here, and it is set out with a certain amount of circumstantial detail—and I can see the reason, which is to secure control and jurisdiction, not only of patents, but of trade marks in this country. It goes a little further than that. Sub-section (2) goes on to say: "If and when the Minister so directs there shall be kept at the office a book called the register of clerks in which shall be entered the names of approved clerks of registered patent agents." The Act not only sets out to secure the establishment of patent agents but of registered clerks of these agents. As we know, examinations have been held, and a number of men passed, and I believe a considerable number was "spun" who did not comply with the conditions. I have been told that, notwithstanding that, patent agents resident in other countries have offices here and employ clerks, in some cases men who were not successful at the examination, completely ignoring men who were really patent agents under the terms of the Act. We all pay very considerable attention to what Senator Brown tells us in matters of this sort. I am not anxious to prevent solicitors doing anything they did before, because there was no Patent Office under the old régime. I do not want to limit them unnecessarily, but I think, as the Parliamentary Secretary has told us, that that clearly is not the intention in the section dealing with the matter.

Mr. Milroy

I presume the object of Senator Connolly in seeking to delete the sub-section is to secure that solicitors shall be prohibited from performing certain duties. I gathered from Senator Brown that he had considerable doubt whether that particular sub-section in the Principal Act was necessary. If Senator Brown's view is correct then this sub-section is superfluous for the purpose in view, and the object that Senator Connolly seeks to achieve by means of his amendment would not be secured. The position, as suggested by Senator Brown, seems to be this: that apart from this sub-section solicitors have power to act. It seems to me that this amendment will get us nowhere if the contention put forward by Senator Brown is correct.

Mr. Douglas

It seems to me that there is a good deal to be said for leaving this matter over until the Report Stage. The case made by Senator Connolly is that business should not be taken from Irish agents by agents residing elsewhere. That, I take it, is the object of the amendment, and as far as I can see everyone in the House is in agreement with it. The question then arises: will the action of solicitors, in doing all the work which they did before, enable outside agents to take the business from home agents, or will it not? Senator Brown is clearly of opinion that it will not. The Senator also doubts very much whether the sub-section in the Bill, which Senator Connolly's amendment proposes to delete, will make any difference. The matter seems to me to be one that requires to be carefully considered. We are all agreed, I think, on what it is proposed to achieve. We may not be able at the moment to find the exact words to do what is desired, but surely some way can be found by which solicitors in Ireland can do their work without virtually acting as agents on behalf of agents elsewhere. I feel sure that if this matter were left over a way could be found to deal with it in the manner that I think we are all agreed it should be dealt with.

Mr. Johnson

Would the Parliamentary Secretary explain what was the kind of work done by solicitors before the Patent Office was set up here?

Mr. Brown

They did the necessary preliminary work before the papers were sent on to the patent agents in London. That was all they did, because there was no Patent Office here. That is all that is affected by the sub-section.

Mr. Dolan

A point has been made with reference to the control and working of patents in the Saorstát. The question as to who registers the patents, whether it is a patent agent or not, has nothing whatever to say to that. That is a function that is definitely exercised by the Controller of the Patents Office, acting under the Minister. He acts under the definite powers laid down in the appropriate sections in the Principal Act. I want the House clearly to understand that the question which Senators are discussing is, who shall act, and whether it is right to allow any other person than a patent agent, who has been admitted to our register, to act for an inventor. The idea of a register, and of allowing qualified persons to describe themselves as patent agents, is clearly defined in various sections of the Bill. That is for the purpose of protecting the inventor and the public.

Under the Act, as it now is, the public can be assured, when the Controller admits a person to the register and allows that person to describe himself as a patent agent, that that person is duly qualified and has all the necessary qualifications entitling him to hold himself forth to the public as a patent agent. The question as to whether the registering of patents in the Saorstát should be confined to patent agents on our register raises a very big question. It raises the question of the preparation of plans and specifications. In the case of some patents, which might be registered here, perhaps the local agent might not at present be able to deal with these matters, because these plans and specifications have to be prepared very carefully and is the work of experts. Therefore, the amendment, if carried, might have more far-reaching consequences than the mover of it anticipates—that is, if it were laid down as a rule that no person could act as an agent for an inventor in the Saorstát except the patent agents on our register.

Mr. Bagwell

It seems to me that in this discussion there is some danger of the interests of the inventor being lost sight of out of solicitude for the interests of patent agents and other experts registered in this country. In my opinion the interests of these people should take a second place to the interests of the inventor. I would be against anything that would preclude the inventor from getting the best skill that it is possible for him to get, because that is really the beginning of the inventor's interest. The other interests exist only for him.

Mr. Connolly

I am willing to withdraw the amendment, so that it can be considered on Report Stage. The Parliamentary Secretary made one remark to which I would like to refer. The claim he makes as regards having patents presented by patent agents in this country seems to ignore the fact that solicitors are going to be able to do this.

Amendment, by leave, withdrawn, and ordered to be considered again on Report.

Sections 8, 9, 10, 11, 12 and 13 agreed to.

Title agreed to.

The Seanad went out of Committee.

Bill reported without amendment.

Ordered: That the Report Stage be taken on 1st May.