The Bill is needed to modernise the law governing the grant of patents for invention. Our existing law is substantially unchanged from that enacted by the Industrial and Commercial Property (Protection) Act, 1927, which itself derives from the British Patents Act of 1907. During the fifty-seven years since 1907 many countries have made important changes in their patent laws, mainly intended to avoid the grant of unjustified patents and to increase the value and validity of those which are granted. During recent years international discussions have been working towards still further changes.
Since 1950 Ireland has shared in efforts by patent experts of many countries to formulate patent laws which could be adopted uniformly by all countries. Last year the members of the Council of Europe reached agreement on a Convention on the Unification of Certain Points of Substantive Law on Patents. Ireland was in agreement with the solutions adopted in the Convention, and, on 11th March, 1964, added its signature to those of Belgium, Denmark, France, the Federal Republic of Germany, Italy, the Netherlands, Sweden, Switzerland and the United Kingdom which had already signed it. In 1962, experts of the members of the European Economic Community published a draft Convention setting out the law under which European patents common to a number of countries might be granted. This law is consistent with that of the Council of Europe Convention, and shows clearly the direction of modern thought in Europe. Further, certain minor matters agreed to by our representative at the Lisbon Conference for the Revision of the International Convention of Paris for the Protection of Industrial Property, held at Lisbon in 1958, necessitate some small changes in our law.
The Bill makes some changes of principle in our law, particularly as to the criteria to be adopted in determining whether an alleged invention is novel and a patent granted on it valid. These changes are designed to bring our law into line with the European Conventions to which I have referred. But I do not propose them merely for the sake of uniformity with foreign views. I am satisfied that they reflect modern conditions of communications and industrial activities, and get rid of some old concepts which have been outmoded by the advance of science. I think the changes are in the best interests not only of inventors, but also of the general public who may suffer from improper monopolies.
Perhaps the most significant change is the adoption of what is often called the concept of absolute novelty. Under our law, which, like that of the British, conceives of a relative degree of novelty, an invention is considered to be new and patentable if it has not been published or worked within the State itself. In some cases, even, only publication in the State after a certain date is destructive of novelty. Most industrial countries, however, now consider that if an invention has been made available to the public anywhere, at any time, it ceases to be novel and should not afterwards be patentable. This is the test of absolute novelty adopted in the Conventions of the Council of Europe and the European Economic Community. The Bill adopts it by means of the definition of "published" in section 2 and the grounds in section 34 under which an invalid patent may be revoked. It will be appreciated that in each case it will be a matter for proof and evidence that a particular disclosure was of such a character as to make the invention available to the public. Because this test may involve difficult questions of proof, the Bill applies it only in section 34, under which it is the duty of the court to decide on validity. This change in the law met some criticism in the Dáil on the ground that it would prevent some things from being patented in Ireland. I think, however, that this result is desirable. With modern communications, an invention published in the United States, for example, will very quickly become known to interested persons in Ireland. It is wrong that any one of those persons should be allowed to monopolise an invention which he did not make and which otherwise would be available to all.
Another important change of principle concerns the treatment of what are often called, for convenience, copending applications. These are applications in respect of similar inventions one of which is made so shortly after the other that the one of later date is filed before the earlier one has been published. At present the law allows the later inventor to get a patent for any subject-matter which the earlier one has described but has failed, by inadvertence or otherwise, to claim. There is no logic about this position, depending, as it does, upon such chance factors as the speed at which applications can be processed in the Patents Office. Recent High Court and Appeal Court decisions in London are thought to have made the existing law, in section 21 of the 1927 Act, nugatory, and we have had representations that its operation can be unfair to the earlier inventor who, as the first in the field, has the better rights. Accordingly, the corresponding section 13 in the Bill has been amended to take account of matter described as well as that claimed. There are corresponding provisions in sections 19 and 34. This solution of the matter is consistent with the two European Conventions to which I have referred.
As it is not feasible for the Patents Office to make a substantial search for novelty, the law requires an applicant for a patent to provide some evidence that his invention has not previously been published in a British patent specification. The Bill in section 8 (6) empowers the Minister to prescribe by Rule different forms of evidence as to novelty. This will enable a stricter test of novelty to be applied when an application is examined, and at the same time the applicant can be given some freedom of choice as to the form of evidence most convenient to him. Another change designed to prevent the grant of defective patents is in section 19, under which third parties may intervene to oppose the grant of a patent. The Controller is given new power, in subsection (1) (e), to refuse a patent if he is satisfied by evidence that an alleged invention is too obvious to merit a patent. Until now, this ground of objection has been available to the court only in proceedings for the revocation of a patent.
The Bill continues, in section 39, the existing powers for protecting the public from the abuse of his monopoly rights by a patentee. There are small amendments necessitated by the Lisbon Revision of the International Convention and intended to prevent unfair treatment of the patentee. The existing provisions under which a Minister may use a patented invention compulsorily when this is necessary for the well-being of the State have been strengthened in section 92, particularly in view of a recent decision in the English Court concerning drugs used in the Health Service.
The Bill gives to the Controller new powers to deal with several matters which hitherto have been reserved to the court. The most important concern petitions for the extension of the normal term of a patent, section 27, disputes between joint owners of a patent, section 52, and disputes between an employer and his employee as to rights in an invention made by the latter. The aim is to provide a cheaper and easier jurisdiction on certain questions which usually involve technical rather than legal problems. There will in all cases be right of appeal to the court. Hitherto, some of the many issues, which the Controller is called upon to decide from time to time, have been appealable to the Attorney General and some to the court. Section 75 of the Bill provides that in future appeal shall lie always to the court. It will be noted that under the Bill the Attorney General has advisory functions in relation to the Controller.
Section 86 continues the existing provisions for restricting the practice of patent agency to registered agents with prescribed qualifications. A new feature is power for the Minister to authorise temporary exceptions in exceptional circumstances. This is because of the very limited number of qualified men now available. Section 93, which deals with powers for reciprocity in patent matters under international agreements, has been drafted so as to provide for additional Conventions which may be made in the future as well as the International Convention for the Protection of Industrial Property, within which Ireland has always worked.
In addition to these main points of principle, the Bill includes many minor changes of law intended to help applicants, or patentees, or the administration. Most have been in the English law since 1949 without, it is believed, giving anything but satisfaction. Sections 77 to 85, which continue the present provisions for the establishment of an Office and a Controller and his staff, are designed to cover all the activities centred in the Office and the Controller, those in connection with trade marks, designs and copyright as well as those concerning patents.