Seanad Éireann debate -
Wednesday, 10 Jun 1964

Vol. 57 No. 12

Patents Bill, 1963—Second and Subsequent Stages.

Question proposed: "That the Bill be now read a Second Time."

Minister for Industry and Commerce (Mr. J. Lynch)

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.

Mr. Fitzpatrick

As the Minister has stated, this Bill is introduced for the purpose of replacing the Industrial and Commercial Property (Protection) Act, 1927, and bringing the patent law up to date. I think it is correct to say that the various matters dealt with in the Industrial and Commercial Property (Protection) Act, 1927, have now been dealt with by more modern Acts, that is, trade marks, copyrights and now patents. Therefore, it might not be out of place at this juncture, and before saying farewell to the Industrial and Commercial Property (Protection) Act, 1927, to place on record our appreciation of the foresight and ability of the officers of the Department of Industry and Commerce, and the Minister who presided over it, in introducing, very shortly after the State was set up, and when we were not very commercially-minded, an Act of Parliament which has served the State for 37 years, and which only requires to be replaced because of the vast changes in industry and commerce down through the years.

In his explanatory memorandum the Minister states:

The law relating to patents for inventions is intended to encourage invention by giving to inventors exclusive rights of exploitation for a limited term of years, while at the same time providing adequate safeguards for the general public against unjustified and faulty patents and against abuse of monopoly rights.

I thoroughly agree with that statement. The law relating to patents is a highly technical, and highly specialised field. The fact that a person has legal qualifications in a general way does not presuppose that he is an expert in this branch of the law. In fact, many legal men live their professional lives without ever being called upon to advise on, or to implement the law on patents. There is a small group of specialists in this country known as patent agents who specialise in this branch of the law, and who do not engage themselves in any other branch of the law. In fact, they are not qualified lawyers.

It is reasonable, therefore, that when specialists in a field like that make suggestions they should be listened to and their suggestions given serious consideration. As I understand it, since the Bill was first published, this small band of specialists submitted to the Minister about 30 suggestions for the improvement of the Bill, in the interests of the public in general. The Minister and his advisers did not see fit to accept any of those suggestions. I think I am correct in saying that, although he may have accepted one very minor amendment or suggestion. I find it very difficult to believe that all the skill and wisdom are on one side, that is, in the Department. I believe that very often people dealing with these matters every day in a practical way, and coming up against practical difficulties that have to be solved, are in just as good a position, if not much better, to advise and make valuable suggestions as people who are looking at it purely from the official side.

I understand it has been agreed to take the Committee Stage today and, therefore, I do not intend to go into the Bill in great detail on this Stage. However, one of the matters to which serious objection is taken by those in a position to know is the definition of "published" in section 2. Heretofore "published" meant "published within the State." Now, for the purpose of section 34, which provides for revocation of patents, "published" is taken to mean "published anywhere in the world." That means that if it could be proved that the subject-matter of a patent, a novelty, or an invention, has been published in China, Japan or anywhere else, someone can come in and have the patent revoked. It is suggested that that is not in the interests of industry and commerce in Ireland, and that it might well act to the disadvantage of the country.

Another point that has been made is in regard to section 12. Hitherto it has been accepted that anything published in an application for a patent to the Patents Office more than 50 years ago was not taken into account, or not regarded as having been published at all. That 50 years limit is abolished in this Bill. Again, that is considered to be a move in the wrong direction. Section 27 provides for the extension of the term of patent. Normally a patent is protected for 16 years. That may seem to be a considerable time, but immediately an invention is thought of, or worked out, it is patented, and it often takes some years to get it put on the market, and to get the subject matter of the patent marketed. Therefore, 16 years is not a very long time.

Provision was made in the 1927 Act for granting extensions of patents in certain circumstances, but I understand that the terms of the section were so stringent that it has not been found possible to avail of it. In fact, during the 37 years that the 1927 Act has been in force, less than half a dozen applications to extend a patent have been made. I believe the reason for that is that in order to succeed in an application to the court to extend a patent, it is necessary to show what profits the patentee has received or earned from that patent. It is necessary to show what the profits are not alone in this country but all over the world and that, in the past, has not been found possible. My suggestion is that on an application under section 27 it should be sufficient to show what profit was earned from the patent in this country.

Section 34 is the section which deals with the revoking of patents, which enables the courts to revoke a patent if it can be shown it has been published in any part of the world. That is a very serious matter, one which needs a lot of looking into. Section 42 was referred to by the Minister in his opening speech. It provides, among other things:

Where a patent is in force in respect of—

(a) a substance capable of being used as food or medicine or in the production of food or medicine; or

(b) a process for producing such a substance as aforesaid; or

(c) any invention capable of being used as, or as part of a medical, surgical or other remedial device,

the Controller shall, on application made to him by any person interested, order the grant to the applicant of a licence under the patent on such terms as he thinks fit, unless it appears to him that there are good reasons for refusing the application.

As far as I know, this is a new section, a new approach to the granting of licences. I suggest to the Minister and the House that that is not calculated to encourage invention in this all-important field of medical research, because if a person discovers some medicine or drug which he wants to patent, and he has spent a lot of money on research, he may be faced with an order granting licences to all and sundry a very short time after he has his product on the market.

I do not think that is in the interest of medical research, certainly chemical research, and it could lead to a great deal of harm. I am not to be taken as favouring the proposition that a person who has as a result of research found a drug which is very useful to humanity should be allowed to monopolise that or charge a prohibitive price for it, putting it beyond the reach of the average person to purchase. I do say, however, that section 42 is not necessary to give that protection, because section 39 deals with the abuse of monopoly rights under patent. Section 39 is designed to meet a situation where a person who has made a discovery which is of use to suffering humanity tries to exploit the people who need to avail of his discovery. Under that section, any person interested may apply to the Controller for a licence under patent or for an endorsement of the patent on the ground that there has been an abuse of monopoly rights of patent.

I do not think the Minister can seriously say section 39 is not an adequate protection against the abuse of a monopoly granted by a patent. In this field of medicine and chemical research, it is all the more necessary to encourage people to carry out this research because the way things are looking in the world today, a drug is not very long on the market until a more effective drug is discovered, rendering the first one obsolete. If an inventor who has gone to a lot of research expense cannot be assured of a few years in which fairly to exploit— I emphasise the word "fairly"—his discovery, certainly there is no encouragement for anybody to go to the trouble and considerable expense of research.

There is just one other general question I should like to ask the Minister to deal with when he is replying. It is obvious that this Bill, probably in company with other legislation with which we have dealt, has been introduced in anticipation of our entry to the Common Market, in anticipation of a world trend in that direction. The Minister has told us several members of the Council of Europe have signed a Convention signifying their agreement that patent law should be brought into general line among them.

I ask the Minister how many of these countries have introduced or enacted measures such as this, giving expression to the views each of them expressed when signing this agreement? Has Britain introduced as yet any such measure and put it in the Statute Book? Unless most of the countries concerned have done so, we are placing ourselves at a disadvantage in rushing in. We as a small country should move slowly because if we throw wide open our patent laws and remove restrictions in favour of our own nationals, it will work to the disadvantage of this country and in favour of the larger industrial countries where there is much more knowledge, much more wealth and many more inventors. That is my contribution to the Bill in general. I shall have something to say later, section by section.

Business suspended at 6 p.m. and resumed at 7.30 p.m.

Mr. Ross

As Senator Fitzpatrick has said, this is a highly technical Bill in a highly technical field and there are very few lawyers who have very much to do with patents in the ordinary way. We are to a great extent dependent upon more technical people than ourselves. In this Bill the Minister has in one way to be congratulated in that from time to time we have criticised him or his predecessors, the Department or the Government as a whole, because our law in technical fields, such as company law, trade marks law, patents law and in commercial fields generally was very out of date. The Minister in his period of office has done a very great deal to bring that law up to date, but it seems to me that to some extent he may have gone a little too far in this particular Bill.

This Bill arises out of our own Act of 1927 and is based on it and to a great extent on the British Act of 1949 with a number of notable exceptions. The exceptions are fundamental. As the Minister said in his opening speech, this Bill is designed to bring our patents law into line with the convention on the unification of patent rights which has been signed by a number of European countries. Although it has been signed by a number of European countries, I do not think it has been ratified by any European country so far. Senator Fitzpatrick asked a very pertinent question, and I am sure the Minister will answer it, as to how many countries had ratified this Convention, and how many countries have actually introduced legislation to implement it. I believe we are the first to do this. In many ways that is very praiseworthy, but I wonder should we as a not very highly industrialised country throw open our patents law in the way in which this Bill anticipates.

We have the Control of Manufactures Acts and the Encouragement of External Investment Act which, to some extent, protect our industries from foreign domination and investment. We know that those Acts will go over the next 7 years. That is what the Second Programme for Economic Expansion says, and probably they may go before that. It is right that they should go and that we should prepare ourselves for freer trade activity and freer investment activity. This Bill before us is probably the right Bill in general principles, but the Bill may be a little bit before its time.

It would be different if we were a highly industrialised nation, but we are trying in every way possible to encourage foreign investors to come here and set up factories and, naturally, if they bring secret processes of one kind or another they will want to protect those processes.

With this in mind I should like to see this Bill introduced in two or three years' time, or perhaps at the same time as the Control of Manufactures Acts are repealed, because at present it seems to be a bit too big a step in the right direction, a bit too early.

Senator Fitzpatrick dealt with some of the general points arising on the Bill, particularly where it has developed away from the British Patents Act of 1949 and is more in keeping with the Convention. I share with him his fears about section 12 particularly when that section and, as I think, section 34 are linked to the question of publication. The Minister, I know, dealt with the definition of "published" in section 2. When the Bill states that a patent is published when it is made available to the public by written or spoken word or by public use or any other way and leaves out any reference to publication in the State it means, and deliberately means, published anywhere in the world. That, in effect, throws open the whole principle that we have had up to now of publication in the State being a protection for the manufacturer. This is one thing which the manufacturer, seeking a patent process, would normally look for.

I do not want at this stage to go further into section 34. That matter has been adequately dealt with by Senator Fitzpatrick. A rather different principle arises in sections 42 and 92 because these to some extent deal with manufacturers of patent medicines of one kind or another, food, medical and surgical devices and so on. The principle of a patent is to give protection for a minimum number of years to the owner of the patent. This principle is clearly set out in section 39, but in section 42 there is a specific exception. In this section where a patent is in force in respect of food or medicine or medical, surgical or remedial devices and where the Controller has power, on an application being made to him by any person, who is interested, to order the grant to the applicant under the patent on such terms as he thinks fit unless it appears to him that there are good reasons for refusing the application, it is quite possible, and I think it is quite arguable, that in certain patent medicines, foods and surgical devices of one kind or another there is a need for some different treatment from the treatment given to normal patentees.

On the other hand, it is only fair to remember that a great number of these patent medicines have been discovered as a result of very substantial research and very substantial investment in research. Penicillin is a typical example. It took nine years from the research to the actual marketing stage. A great deal of that time was taken up in extensive research work at enormous expense. The firms who patent this type of medicine have to undertake tremendous expense in their research laboratories. I imagine that in a great number of cases the research is in part done in this country but very often these companies are subsidiaries of other companies outside Ireland and much research is also probably carried out outside Ireland. There is a number of companies who carry out quite extensive research in Ireland and spend a good deal of money in relation to research on medical supplies of one kind or another already. I am quite certain there will be a number of others. Such companies view with considerable anxiety the possibility that, under section 42, they might lose the right to their patents to some other person.

This section is to some extent carried forward from section 55, subsection (2) of our 1927 Act and is also not dissimilar to another section in the British 1949 Act. In certain circumstances it may be wise and right that a patent may have to be taken from these companies and thrown open to some other person in the interests of public health generally, particularly if the product is being sold at what appears to be an excessive price. The significant difference between the new section 42 and the equivalent section in the British Act is that when the Controller has to settle the terms of the licence he gives under subsection (2), he has to endeavour to secure that food, medicines and medical, surgical and other remedial devices shall be available to the public at the lowest prices consistent with the patentees' deriving a reasonable advantage from their patent rights. The British equivalent in the 1949 Act specifically refers to giving the manufacturer due reward for the research leading to the invention.

This is a very important definition and, in my view, subsection (2) would be right and proper if there were some addition to it to allow for the giving of a due reward to the company who have the ownership of the patent, taking into consideration the research which they have carried out. It may be taken as an extreme example to have mentioned penicillin but there are plenty of other examples in which medicines of one kind or another have taken a number of years to develop before they were available on the market. Such medicines have been of the greatest benefit to mankind but the research companies have to charge something in respect of the money spent on research. This is not taken into account in this section. I think we should have some phrase there to take account of such research.

Section 92 is a somewhat similar section. It covers the use of patented inventions for the service of the State and says:

A patent shall have to all intents the like effect as against the State as it has against the citizen.

In other words, the State stands in the same position in relation to a patentee as any other person. It goes on to say: "provided that any Minister of State may, by himself or by such of his agents etc. use, exercise or vend the invention for the use of the State." On the one hand, the State is in the same position as the citizen and on the other hand it proceeds in a couple of pages of the Bill to take all those similarities away and puts any Minister of State in a highly privileged position. It gives any Minister of State the power, not only to make and use an invention for any purpose which the Minister thinks necessary or expedient, but it goes further again than the British Act in giving power to vend, that is an unhampered power to sell.

In the British Act I think the power of vending is power to vend only in a state of national emergency. We have gone a good deal further. We have given any Minister of State power to sell these patented goods at any time and for any purpose which seems necessary or expedient to the Minister. This seems to me to be going too far, particularly because the use of these goods and the power of these patentees to vend the invention in the service of the State means by definition under subsection (9) of section 92 "a service financed out of moneys charged on or advanced out of the Central Fund or moneys provided by the Oireachtas or by a local authority," which is very wide indeed. Particularly in the immediate future when we are anxious to encourage foreign manufacturers to set up industries here, the sections mentioned can mean a serious discouragement to those of them who want to have full protection for the secret processes which they want to produce.

There is one other part of the Bill to which I should like to refer. This is subsection (10) of section 86. This is the part which refers to the appointment of patent agents. It is interesting to note—I do not understand the reason for this but I am sure the Minister will explain in due course—that a patent agent is not put in quite the same position as a trade mark agent under the Trade Marks Act. I do not know why this should be. In subsection (3) of section 86 a person who may be appointed as a registered patent agent is set out as a person who "resides in the State,""has a place of business in the State" and "possesses the prescribed educational and professional qualifications," and "complies with the prescribed conditions."

In the Trade Marks Act, there is a requirement that the patent agent is not to be an alien, but there is no such provision in this section. As far as I know, patent agents and trade mark agents are, in this country, invariably the same people carrying on the same practice, and it seems that either the requirement "is not an alien" should be put into this section or, alternatively, some amendment should be made in the Trade Marks Act.

Another point which requires clarification, and would, I think, require an amendment, is the reference to "has a place of business in the State," as being a qualification. I understand the Controller of trade marks has taken the view in connection with a similar section, or similar wording, in the Trade Marks Act that this means any person who has his own place of business in the State rather than "any place of business." If that is the case here, it will make it difficult for any person to apply to act as a patent agent. The normal procedure for qualification is the same as the normal procedure in any profession. An employee of a patent agent takes the necessary examinations, gets his qualifications and then he goes on the register. In due course he probably goes into partnership or sets up on his own. How is he, under the present wording—if the ruling of the Controller of trade marks is to be followed —to have a place of business in the State without being qualified? I cannot see how this can be done.

It seems to me that for persons to qualify in future, it would be necessary for section 86, subsection (3) (b) to read "has a place of business or employment in the State". Otherwise, it is difficult for them to become qualified and have a place of business, before they are qualified.

As Senator Fitzpatrick said, the association of patent agents, which is a small body composed of experts in their own field, have a number of pertinent comments to put forward on this Bill. Some, if not all, of them have probably found their way to the Minister. I remember, when we debated the Trade Marks Bill, Senator Fitzpatrick and I asked the Minister if he would be good enough to see a deputation from this body, and he did. I think it was to everybody's benefit that he did so, between the Committee and Report Stages.

This is a Bill of such complexity and such technicality that we feel justified in asking the Minister if he would again receive a deputation from this body. I have, however, learned during the tea interval that it was intended to take all Stages of this Bill tonight. With respect, Sir, I would have hoped that this was too serious and too complex a Bill to take all Stages tonight. Possibly we could take the Committee Stage tonight and if points of serious issue arise on the Committee Stage we might perhaps persuade the Minister and the House to see a deputation of these people between Committee and Report Stages. We could then go on to Report Stage at another sitting.

Professor Jessop

We have been assured by the Minister and by other speakers that this Bill is needed to bring our legislation on patents into line with that of other countries. I am fully prepared to accept that assurance. I am not really competent to deal with the measure which is very comprehensive indeed but there are two or three points to which I should like to refer. I think they will probably be referred to in more detail on the Committee Stage but I should like to mention them now. Two of these points have already been mentioned by Senator Ross. The first is, again, section 42. This section singles out food, medicines and medical, surgical and remedial devices for special treatment. Perhaps they are special, as he said, to a certain extent but I wonder if this section does not go a bit too far. The words used are:—

...the Controller shall, on application made to him by any person interested, order the grant to the applicant of a licence under the patent on such terms as he thinks fit, unless it appears to him that there are good reasons for refusing the application.

There is no indication of what the reasons may be. There is no mention of excess cost. I think this gives the Controller too much power. I am not saying or suggesting that it would be abused but I think, that a pharmaceutical industry wanting to establish a base in this country might look at this part of the Act with considerable suspicion. I think, and I believe that the Minister may agree with me, that the pharmaceutical industry is at this time of special interest to this country. It happens to be an industry which does not need a lot of raw materials which we do not possess and which we would have to import. It does not need heavy machinery. However, it does need brains on the chemistry and pharmacological sides of the industry and such expert knowledge is made available by our universities. It is, I think, a very good outlet for the experts we produce in our Universities. If we developed out pharmaceutical industry we could keep many of those people and the technicians needed to assist them employed in their own country instead of allowing them to emigrate. This is an industry that already flourishes in at least three small countries. Denmark, Holland and Switzerland have very successful pharmaceutical industries. A number of these industries now show an interest in this country. One very large concern, with headquarters in Copenhagen, has recently established a considerable factory here and there is evidence that this will continue. I wonder if these people will be put off by this section. I wonder if the Minister is not a bit worried about that. I should like to ask him, further, if this section goes farther than the corresponding sections of legislation in other countries.

I have similar fears about section 92 which gives any Minister power to take over an invention. It does neutralise the opening statement of the section which seems to put a Minister on the same plane as everybody else. Immediately afterwards, he is given powers which place him on quite a different plane. I am thinking, in particular, for instance, of the Minister for Health. Everybody is perturbed about the enormous amount of money spent on drugs in the National Health Service by practitioners and hospitals. I think we might find the Minister for Health tempted to try to cut these costs down by taking over the sale of the more expensive drugs and very often, unfortunately, these are the more effective drugs used in the treatment of patients. I am not a little worried about this section also. I think that the principle behind these two sections is surely satisfied by section 39. I think that the interests of the public vis-a-vis the manufacturer who is exploiting a monopoly are protected by section 39 which gives the Controller the power to intervene if such monopoly is being exploited or abused.

The last section to which I wish to refer is section 91 which makes it possible for an inventor to assign his patent to a Minister. This a presumably in order to facilitate the further development of the invention. There is always a difficult and a costly stage between the invention and the point at which it becomes available to the public. In the past this has stood in the way of many good inventions ever bearing any fruit. If an inventor assigns his patent to the Minister, it is within the Minister's power under this section to develop this invention. I wonder, however, if this will make it necessary for a number of Government departments all to set up machinery for the development of inventions. Some of these departments, such as the Minister's Department, would be very well able to do this through contacts with industry: others would have far fewer facilities in this regard. In England, this situation is met by having a central authority—The National Research Development Corporation, which has been set up by the Government and is Government financed and to which inventors may assign their patents. This authority takes whatever steps are required to develop the patent and that is true whether the patent is one of importance to industry, to health or to other public interests.

I wonder if we could not do something along the same lines in this country. Perhaps the Institute for Industrial Research and Standards, or some such body, would act as a common organisation with which the inventor could have preliminary discussions before deciding to assign his patent. It is always open to an inventor to assign his patent to an industry. He makes the best bargain he can. However, some public spirited people might want to assign it to a central authority in the interests of the country. In that case, it would be a good thing if they knew beforehand the authority with which they would have to deal. I suggest that a central authority which all Government departments would recognise would be better than inventors having to deal with a number of Government departments about perhaps different inventions. I am not comptetent to say whether or not this Bill is really needed at this stage. I respect Senator Ross's opinion about this but I daresay that if the Minister assures us that we must do something to bring our legislation into line with that of other countries, then something should be done. Certainly this Bill at this early stage is very comprehensive and I am worried about sections 42 and 92.

Mr. J. Lynch

A complaint which has been made—in so far as it is a complaint—by speakers on the Bill is that it is a good Bill, but that we are doing a bit more than was done in the past, and probably doing it too soon. Senator Fitzpatrick asked in particular if any other country has introduced legislation of this nature to conform with the Council of Europe Convention which was signed by us and by many other countries. We signed the Council of Europe Convention because we saw in it articles that appealed to us and to our economic and industrial development, and not because we wanted to be good boys in the eyes of the Council of Europe and have our names on the list of signatories.

I do not know what countries, or how many countries, have introduced legislation to ratify the Convention they have signed. We are now introducing legislation to enable us to do so, again, not because we want to be called good boys, but because we feel that the legislation before the House is desirable and necessary in our present state of development. I put it before the House because I think it is good legislation. If the Council of Europe Convention contained things with which we did not agree, we would not have signed it. In any event, I do not think there is any special merit in waiting for other countries to pass legislation, and then passing legislation passed in other countries.

In recent years we have engaged on a pattern of law reform, not because we wanted to be different, but because we wanted to have laws operative in this country suited to our conditions and suited to our people. There is nothing wrong with that. On the contrary, there is every merit in it. There is nothing in this legislation which is inconsistent with our existing practice or with the practice in industrial and commercial property abroad.

I may have more to say about those matters later on, but I want to take the points in sequence. The next complaint made by Senator Fitzpatrick was that the representations made by the patent agents were, in the main, ignored. He said that about 30 representations were made, but I think it would be more true to say that three times 30 specific representations or items were put forward for consideration. The great majority of their recommendations were accepted and written into the Bill now before the House. All their representations were seriously considered, and I can assure the Seanad that, where they were considered good, they were accepted. All that, of course, was done at a very early stage. No suggestion was made in the Dáil that there were any serious outstanding defects which the patent agents wanted redressed. No suggestion was made that they wanted to see me personally, nor, so far as I know, has there been any such suggestion since. So much for Senator Ross's request that the Bill be postponed in order to allow the patent agents to come before me. On that point, I was given to understand that there was agreement on both sides of the House that all Stages of the Bill would be taken this evening.

The next major point made was in connection with the definition of the word "published", in other words, the concept of absolute novelty. An invention is by its very nature a novelty. In olden times inventions may have evolved in one country or another, without the knowledge of the people in that one country or the other. In those times there were not the same means of communications that there are now. Since travel and communications are now swift, as we all know, it is reasonable to assume that publication in a scientific document in a country perhaps thousands of miles away will very quickly and very readily be available in this country, and if there is reference in it to a novel device or invention, I do not think anyone in this country should claim that device as his own.

The definition of "published" is in line with current international practice and it is in accord with the principle of universal novelty required by the Council of Europe Convention. Senator Fitzpatrick suggested that the conception of absolute novelty introduced in this Bill would prevent industries from being established here. There is no evidence whatever in my Department or, indeed, anywhere we could seek that the conception of limited novelty contained in the existing law has added in the slightest to the establishment or development of industry. Any industry that would be established on the basis of limited novelty would necessarily, in any event, be small and catering most likely for the Irish market only.

Senator Fitzpatrick criticised section 27 which deals with extension of term. The Bill was amended on Committee Stage in the Dáil in order to meet one of the points made by the patent agents. It is possible now—and it was not up to this—to bring before the Controller an application for an extension of the term of the patent. I do not know what criticism there is of that provision. I do not know whether Senator Fitzpatrick is aware that the case made in this respect by the patent agents was accepted.

Mr. Fitzpatrick

I am aware it was amended to the extent of making it possible to put a case to the Controller but the objection is that under section 27 it is necessary to show, in order to bring oneself within the section, what profits have accrued from the patent not only in this country but throughout the entire world, and that is an impossible task.

Mr. J. Lynch

The purpose of the section in the main is that in the case of a patent the life of which could be, say, 50 years——

Mr. Fitzpatrick

Sixteen years.

Mr. J. Lynch

If the patentee could indicate that by reason of the slow nature of its development and its practical application, he did not have, in the term of the patent, sufficient time to recoup himself adequately for the expenditure and the work which the invention and the development of the prototype entailed, then he should be permitted to get an extension. Surely that implies that the applicant for the extension must establish in some way that the profits which should accrue to him have not so accrued.

Mr. Fitzpatrick

I shall go into the matter in more detail on the Committee Stage.

Mr. J. Lynch

On section 42, Senator Fitzpatrick said it was new and Senator Ross rightly pointed out it in effect repeated section 55 of the 1927 Act. Section 42 is the section which enables an applicant to come to the Controller and ask for a licence to use a patent in the case of food and drugs. The Senator will agree that patents applying to food and drugs are of a very special nature as their purpose is to serve mankind generally in a special way.

I accept that these patents, these formulae, are capable of causing very heavy expenditure on the part of the company or person developing them and that there should be a reasonable prospect for that company or person to recoup that expenditure and make a reasonable profit. Section 42 is not only not new, to use a double negative, but there is an extension in it over section 55 of the 1927 Act in favour of drug manufacturers. This relaxation makes it possible to grant patents for chemical substances as well as processes. Hitherto, processes only were patentable. However, there is a further point which was made to me since the Bill passed through the Dáil by pharmaceutical firms, some of them native, some of them from overseas to establish industries in this country. I hope during Committee Stage to introduce an amendment further relaxing the section in favour of drug manufacturers. That should answer the point made by Senator Ross, as well, but I may add that there is no essential difference between section 42 as we now have it and the corresponding section in British law.

Mr. Ross

Is there not a difference in subsection (2)——

Mr. J. Lynch

I did not interrupt any of the Senators many of whom said they will deal in more detail with these matters on Committee Stage, and I suggest the Senator might refrain from this system of cross-examination. I was about to say that would apply— the amendment I propose to introduce at Committee Stage—to a point made by Senator Jessop as well. Senator Ross made a number of other points, among which was the suggestion that we were throwing open our patent law, making it difficult for manufacturers to patent secret processes.

I do not think that is so. This Bill will make it difficult to patent processes which are not secret but this will in no way discourage industrialists who wish to come here to set up industries in the pharmaceutical industries. Senator Ross also made points in connection with the distinction as to qualification between patent agents and trademark agents. In the case of the trademark agent, if he has a residence here and a place of business, he may, nevertheless, be an alien. It may ultimately require amendment, not of the Patents Bill but of the trademark legislation.

They were the main points made. One matter I neglected to deal with was a suggestion Senator Jessop made in reference to section 91 that a special agency might be set up in one of the Departments or in the Institute of Industrial Research and Standards to assist inventors in their inventions. There has not been any necessity up to now to set up such an agency. As the House is aware, the Institute of Industrial Research and Standards has powers to assist inventors in the way the Senator desires. These points can be dealt with more fully during Committee Stage.

Question put and agreed to.

An Cathaoirleach

Next Stage?

Éamon Ó Ciosáin

I understand there is agreement to take the remaining Stages today.

Professor Hayes

With regard to the suggestion about taking all Stages, I agree to that course but naturally, I cannot speak for Senator Ross. This seems to be a contentious Bill in the sense that Senators do not agree about certain ways of doing certain things. The suggestion has now been made that we should go through the Bill. If, during Committee Stage, something arises on which there is great disagreement we might not necessarily finish it this evening. I am prepared to finish it, but I am not able to speak for all other Senators.

Mr. J. Lynch

That is in conflict with the understanding I had when I came into the House.

Mr. Fitzpatrick

My understanding is that any arrangement to take all Stages of a Bill in a given day does not mean one is precluded from going into the Bill fairly thoroughly, that it does not muzzle us or preclude us from discussing the Bill thoroughly.

Éamon Ó Ciosáin

That is understood. I was given to understand by the Leader of the House that there was definite agreement on both sides.

Professor Hayes

Senator Fitzpatrick is right. If you go through a Bill of a technical nature like this, you are not obliged to forgo discussion on it.

Agreed to take remaining Stages today.

Bill considered in Committee.

An Cathaoirleach

The proposed amendment to section 42 is being circulated.

SECTION 1.

Question proposed: "That section 1 stand part of the Bill."

Mr. Fitzpatrick

Could the Minister give us any indication as to when he proposes to bring the Bill into operation, because if he does not propose to bring it into operation until Britain or some other country or countries have introduced similar Bills, then we will be more at ease and can get through the Bill more quickly.

Mr. J. Lynch

There are a number of regulations that will have to be made to conform with some of the sections of the Bill. As soon as they have been made I propose to bring the Bill into operation irrespective of what stage legislation has been reached in other countries.

Mr. Fitzpatrick

I can make the point I wanted to make now. In reply to the Second Stage debate the Minister said that there was really no virtue in introducing a Bill here if Bills had been introduced or passed in other countries solely for the purpose of bringing the law here into conformity with the law in other countries. As I understand it the real purpose in bringing this Bill before the House was to bring the law into line with the Council of Europe Convention. I asked the Minister on the Second Stage debate whether any other countries had brought in legislation to implement the Convention, and as a result of what he has said I am taking it that in fact we are the first. It does not appear to be in our interests if we throw wide our patents law here. If our definition of "published" means published throughout the world and if the definition in Great Britain of "published" means published within Great Britain surely that is to our detriment. I suggest, therefore, that the bringing of this Bill into operation should be delayed until such time as other countries have implemented or ratified the Convention.

Mr. Sheldon

What would happen if everyone waited for everyone else? I can see no weight in the argument at all. It would strike me very much as if we were signing a Convention and then sitting back and doing nothing. The fact that we have moved more quickly than others is possibly in our favour. Perhaps they are sitting back waiting for us to do something.

Mr. J. Lynch

There is more to it than that, while I agree entirely with what Senator Sheldon has said. The review of our law on industrial and commercial property started long before these conventions were signed, and the fact that we were able to conform with some of the articles of these conventions is to some extent coincidental with the fact that we wanted to conform to them. We have already passed our trade mark legislation. They may or may not be in advance of the stage reached in other countries. Apart from conforming to international conventions the purpose of this legislation is to suit our own conditions primarily.

On the question of throwing our patents law wide open, on the contrary we are giving ourselves more protection in that if we take an example of a firm in Britain who having fastened on to some device or invention patented in some other country but not here could come in here and then try to exploit the device or invention in this country that would be to our detriment not only nationally but internationally. I do not think there is any question of throwing our law wide open. On the contrary, we are bringing our law up to realistic modern requirements.

Question put and agreed to.

SECTION 2.

Question proposed: "That section 2 stand part of the Bill."

Mr. Fitzpatrick

This is where this point arises of the definition of "published". The section says that it means "made available to the public by the written or spoken word or by public use, or in any other way". My understanding is that at the present time published means published within the State and that a person can apply for a patent for something that has been published so to speak in America, in China, in Japan or in Europe. If the definition of published is allowed to remain as it is it means that a patent which is granted here can be revoked under section 34 merely because the thing is spoken of or has been spoken of in America. I think that is unreasonable, and those who have considered this matter carefully think it is unreasonable and do not think it is in the interests of this country. The definition of published in Great Britain at the present time means published within Great Britain. I have made my point on this on the Second Stage and I do not want to prolong the discussion on it, but I would seriously suggest to the Minister that we are travelling too fast with this legislation. If there is all that benefit to be gained from it it is extraordinary that some of the highly industrialised countries have not moved in the matter. I cannot help thinking that the Council of Europe Convention was prompted by the belief that some of those countries which approved of it then would be entering the Common Market much sooner than would now appear.

Mr. J. Lynch

Some countries that signed the Council of Europe Convention signed it because their law already generally complied with the articles of the Convention or they proposed to bring the law into alignment with the Convention. The fact is that most of the highly industrialised countries already have these provisions in their law. It would be ridiculous to continue this outmoded definition of published in this country whereby, to take what I will admit is an extreme example, if a firm patented something in, say, Newry and because it was not patented here, published in the 26 Counties, somebody in Dundalk could apply and could not be denied a patent under existing law. That is ridiculous in modern circumstances.

Mr. Fitzpatrick

Would not the converse also be the case if we passed this?

Mr. J. Lynch

What does the Senator mean?

Mr. Fitzpatrick

If a thing is patented here in Dundalk and not patented in the Six Counties somebody in the Six Counties can apply under the existing English law.

Mr. J. Lynch

We are not legislating here for the Six Counties. That is their own problem; but I might say, too, that whether it is written, published or the spoken word that passes from one country to another the test of invalidity because of absolute novelty will ultimately be a matter for the courts. Perhaps the case of the fellow in Dundalk is one extreme, but there are other extremes too of publication whereby although made known abroad it could not be regarded as sufficient publication as to render an application for a patent in this country unacceptable.

Question put and agreed to.

SECTION 3.

Question proposed: "That section 3 stand part of the Bill."

Mr. Fitzpatrick

This is the rather important section which provides for the making of regulations. I know that each regulation made must be laid before each House of the Oireachtas and if it is annulled within usually 21 days that is the end of it. The part of this section to which I want to draw the Minister's attention is subsection (3) which says that every order or rule made under this Act shall be advertised twice in the Journal. That is the Journal that is published among a very limited circle, I am sure, by the Patents Office. From my reading of subsection (3) I think that the rule or order will probably only be published after it has, in fact, become law. At least there is no obligation on the Controller or the Minister to publish notice of his intention to make a rule or regulation. I suppose I may be told that it must be laid before the Dáil and the Seanad and that in that way notice will be given. As I said on the Second Stage, this is a very technical branch of the law and there are very few people capable of understanding it or taking any interest in it.

I think it should be a condition precedent to making a rule or regulation that the intention to do so should be published in the Journal in order to give those who have the technical knowledge to do so an opportunity of considering the rule or regulation before it is made. If it is only going to be brought to the notice of those concerned after it has been made, and after it has been brought before the Dáil and Seanad, and it becomes final, there will be no opportunity of making representations about it.

Mr. J. Lynch

The first answer to Senator Fitzpatrick's point is that this is the law already. The definition has not been found to be unworkable in practice. The second point is that it is the practice of the Controller to have discussions with the interested people before he drafts these orders for presentation to the Minister. In fact, quite a number of discussions have taken place with the Patent Agents Association about the rules and regulations to be made under this Bill. So, there will be no reason for not adopting a practice made for a number of years.

Mr. Fitzpatrick

Would the Minister not agree that my proposal would make sure that everyone interested would have due notice of the intention to make a regulation? That would be more desirable.

Mr. J. Lynch

I cannot see what point there would be in doing this. The practice is that discussions take place prior to the drafting and the Controller tries to meet the legitimate wishes of the people immediately concerned. Anyway, the safeguard is there of having an order published in the Journal which, of course, is a specialised journal, and is available to the people interested in the branches of industrial and commercial property. In the final analysis, if the Controller wanted to recommend these regulations, without consulation with these people, he could do so. If he notified them in the first instance it would not be of any great advantage to them. I think the present practice is preferable and has, as I said, worked well over a long number of years.

Mr. Fitzpatrick

I disagree with the Minister.

Question put and agreed to.

Sections 4 to 11, inclusive, agreed to.

SECTION 12.

Question proposed: "That section 12 stand part of the Bill."

Mr. Fitzpatrick

This is the section which says that a search shall be made to ascertain whether any similar intention has been mentioned in an application previously. I think it is understood at the moment where a similar invention, or reference to a similar invention, has been made more than 50 years ago it is ignored under the Bill as it stands. Even if this matter has been disclosed within the court over more than 50 years ago it is still taken into account. Subsections (1) and (2) appear to refer to publication within the State while subsection (4) of this section is ambiguous, but it appears to refer to publication anywhere. I wonder is it meant to refer to publication anywhere or is it meant to refer to publication within the State?

Mr. J. Lynch

It is meant to refer to publication anywhere.

Mr. Ross

In subsection (1), line 25, does that mean "in the State?"

Mr. J. Lynch

That is in the State.

Mr. Ross

It is not quite clear. I know it is for a patent in the State but it is misleading. Should "in the State" not be inserted?

Mr. J. Lynch

I am advised it is not necessary to say that.

Question put and agreed to.

Sections 13 to 16, inclusive, agreed to.

SECTION 17.

Question proposed: "That section 17 stand part of the Bill."

Mr. Fitzpatrick

I must admit this section is not too clear to me. It is a section which provides that unless certain steps which it is necessary to take before the patent is registered are taken within the prescribed time, which is three months, the application becomes void. I think that is the meaning of it but subsection (2) gives the Controller power to extend the time, provided the application for the extension is made before the time expires. I think a general discretion should be given to the Controller, or even to the court, to extend the time even after it is expired in cases of exceptional hardship or difficulty. Such a discretion is vested in most of the courts in this country under the various rules of court and this seems a very harsh, and a very hard section.

Mr. J. Lynch

The existing law lays down a period of three months in respect of which the Controller has discretion. I might say, in passing, that the existing law has never given rise to any hardship. There is no experience whatever of any applicant for a patent being in any way embarrassed by the terms of the existing law. The law which is now being made will be an easing of the situation which, from past experience, does not require any easement. In other words, it can be fixed by regulation and, if hardship arises in particular cases, the regulations can be altered. I do not think, having regard to previous experience, that is likely to arise.

Question put and agreed to.

Sections 18 to 26, inclusive, agreed to.

SECTION 27.

Question proposed: "That section 27 stand part of the Bill."

Mr. Fitzpatrick

This is the section I stated I would mention again, when the Minister queried me in his reply. The part of this section, to which objection is taken, is subsection (5) which states:

The Court or the Controller, in making decision, shall have regard to the nature and merits of the event in relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case.

The point I am making is that it may be quite impossible to prove what profits have been made over a number of years and it is necessary, under this section, to show what profits have been made, not just alone from the commercial use of a patent in this country. The Minister did say to me that this is a matter which has been raised by the Association of Patent Agents. I do not want to get into any deep controversy with the Minister but I must say, in view of information at my disposal, and of a document in my possession, I am amazed to hear that practically all the representations made by the patent agents were acceded to.

Mr. J. Lynch

I said very many.

Mr. Fitzpatrick

My information is that of all the points raised only one solitary one was acceded to and that is the point referred to in section 27 of giving the Controller power in certain circumstances. My information is that in the opinion of the patent agents this Bill is much more objectionable having come from the Dáil than when it was introduced in the Dáil. I should like to make that point in order to clarify the position. My information is that of all the submissions made before the Bill was introduced only one solitary minor recommendation has been adopted. That is the provision for the extension of term of patent in section 27. Every other recommendation has been completely rejected. After its passage the Bill itself will be more objectionable than heretofore.

Mr. Nash

Surely the objection is that a man must be reasonably rewarded for the result of his research. If this patent is used abroad it is used under licence, and a patentee is paid so much per article, or a fee, which, in fact, is returned for income tax purposes in this country. Therefore, it would be a simple matter for him to return not only his profits in this country but his profits abroad. The total amount of his profits must be a figure of total profits taken, not the profits in this country. There are certain items which would be relatively small in this country and the real profits would come from abroad.

Mr. J. Lynch

In extension of what Senator Nash has said, the establishment or ascertainment of these profits is a matter that ultimately may be decided by the court, so that nobody, such as the Controller, will be put in an arbitrary position in this respect.

I return to the point made by Senator Fitzpatrick. I think he has not been fully or properly briefed in this respect. In particular, he hit on the truth of the situation himself in his last remark and that is, before this Bill was drafted the patent agents saw the Controller, put a number of points to him and, so far as they were acceptable, they were embodied in the Bill. When the Bill was ultimately introduced and circulated they came and made other points. The fact that the Bill was printed in the form in which it was was an indication that some of the points made by the patent agents were not acceptable. That is all it proves, and naturally they, having made points before the Bill was printed, came along and made the same points afterwards. It is not fair to suggest that of all their recommendations made only one point was listened to. I do not think it is quite fair for Senator Fitzpatrick to represent the matter in this way.

Mr. Fitzpatrick

My information is that, having seen the Bill in its finished form, the patent agents submitted about 30 suggestions and not one of these was accepted, except one which was a very minor one.

Mr. J. Lynch

They were mostly resubmissions.

Mr. Ross

In fairness to the Minister, it is probably true that a number of recommendations were made verbally. Later on they were made in writing. The difficulty in which Senator Fitzpatrick and I find ourselves is that we got a copy of the memorandum which the registered patent agents sent to the Controller. There are over 18 pages in it and this is probably the document to which Senator Fitzpatrick was referring.

I may take it that at this stage, as indicated by the Minister earlier, no application was made by the patent agents to see him. I think, in fairness to them, they felt that they were following the right procedure in seeing the Controller. They thought the position would be the same as it was in the case of the Trade Marks Bill and that after the Bill passed through the Dáil and got to the Seanad they might again have an opportunity of seeing the Minister because he had been gracious enough to see them on the other Bill, with great benefit to all parties.

Question put and agreed to.

Sections 28 to 33, inclusive, agreed to.

SECTION 34.

Question proposed: "That section 34 stand part of the Bill."

Mr. Fitzpatrick

On section 34 I want to repeat the point I have already made. This is the point which allows a patent to be revoked if it can be proved that the invention, so far as claimed in any claim of the complete specification, is not new having regard to what was published before the priority date of the claim. I made that point several times and I do not wish to delay the House now. I think it is a good point but I think it is throwing the patents law wide open at this stage. The Minister will probably not agree with me.

Mr. Ross

I should like to support Senator Fitzpatrick on this. It seems to be a case in which the patent law is thrown open rather wide. It is not a question of registering a patent, but the revocation of a patent and, in effect, section 34 allows a patent to be revoked on the basis of knowledge which is not available to people here and is only available outside the country. This really is a case in which I should have thought that the words "publication" or "where published" should be followed by "in the State". This is a different point from the one raised earlier on "publication".

Mr. J. Lynch

I do not understand what the Senators mean by throwing our patents law wide open in this respect. Is it not better in the interests of the public, and in particular in the interests of the public in our own country, that they should get the benefit of a patent that has been published somewhere, rather than that someone should establish a monopoly in this country in the use of this patent? I do not follow what they mean by "throwing it wide open". As I said, the question of publication is one that must be established. Publication can vary between perhaps the spoken words in a language unknown here and the written words in a fairly widely circulated brochure in another country. It would be a matter for the court to decide what publication is between these two extremes. I think the court can be given that authority but with a reasonable degree of assurance on our part that it is exercised fairly.

Mr. Fitzpatrick

I want to read out subsection (2) of section 34 in anticipation of section 92. Subsection (2) provides:

(2) Without prejudice to the provisions of subsection (1) of this section, a patent may be revoked by the Court on the petition of any Minister of State if the Court is satisfied that the patentee has without reasonable cause failed to comply with the request of the Minister to make, use, exercise or vend the patented invention for the service of the State upon reasonable terms.

I agree entirely with the subsection. I think it is a good subsection. It appears ample and adequate protection to the State, without section 92 with which we shall deal later.

Question put and agreed to.

Sections 35 to 41, inclusive, agreed to.

SECTION 42.

Government amendment No. 1:

In subsection (1), line 26, before "there" to insert ", having regard to the desirability of encouraging inventors and the growth and development of industry and to such other matters as he considers relevant,".

Mr. J. Lynch

During the course of the Second Reading some Senators complained about section 42 as being possibly restrictive of the establishment of industries in this country by highly sophisticated pharmaceutical manufacturers. It is a repetition of section 55 of the 1927 Act with an extension in easement of drug manufacturers. Under the section as it stands, the Controller is given power to license the use of a patent by the person who applies to him. In the ordinary course, the patent owner would be entitled to compensation by way of royalties and otherwise. The purpose of this amendment is to ensure that if a manufacturer of drugs establishes an industry here and if, having established such an industry, he obtains some formula for use by the public and a person seeks a licence from the Controller for that formula or device then the Controller must have regard to the effect on the development of industry in the giving of that licence.

This amendment meets an objection made to me by the pharmaceutical firms, native and non-native, about the effect of section 42 as it stood. The Industrial Development Authority were also interested in it. A number of these pharmaceutical firms have seen the Controller and I understand they will be satisfied with the terms of the amendment I now propose. The Industrial Development Authority are satisfied, too, with this amendment. The section will in no way deter industrial development in the country.

Mr. Fitzpatrick

Speaking for myself, this amendment is certainly a big improvement on the section as it stands. Representations were made to me about it by some of the interests mentioned by the Minister. I did not know until today that this amendment would be introduced. I am glad to hear the Minister say that it meets the objection which the Industrial Development Authority had to the section as it stands. It is interesting to know that they had objection to it. I am sure that if it meets their objection it is probably all right.

I also accept without reservation the Minister's statement that he understands from the Controller that the other laboratories concerned are satisfied that the amendment meets the objectionable provision of this section. It is a vindication for taking Bills seriously in this House. If we had only one Chamber and this had left the Dáil and was now signed by the President we know it would be to the detriment of the encouragement of industry in this country. Not alone have some manufacturers been concerned about it but the very State-sponsored Industrial Development Authority, whose function it is to encourage industry here, had fears about it and rightly so. Therefore, I would say that we should continue to take Bills seriously in this House.

Mr. J. Lynch

Lest there should be any misunderstanding, let me say this. Senator Fitzpatrick observed that he saw this amendment for the first time today. I want to assure him that the pharmaceutical firms did not see it either.

Mr. Fitzpatrick

I am not complaining.

Mr. J. Lynch

I just want to make the point.

Amendment agreed to.

Question proposed: "That section 42, as amended, stand part of the Bill."

Mr. Ross

I want to refer to my interjection when the Minister was replying on the Second Stage. I apologise for my rudeness——

Mr. J. Lynch

I just wanted to keep my train of thought intact.

Mr. Ross

Still, I apologise. I understood, when the Minister was replying on the Second Reading, that this amendment would answer my point on section 42. However, I do not think it does so. My point arose on section 42 (2) in relation to the settling of the terms of licences. The subsection says that the Controller shall endeavour to secure that food, medicines, and medical, surgical and other remedial devices shall be available to the public at the lowest prices consistent with the patentees deriving a reasonable advantage from their patent rights. As I pointed out on the Second Reading, the British Act of 1949, I think, makes specific reference to the fact that the Controller must allow to the inventor due reward for the research leading to the invention.

It may be that in drafting the Bill the Minister had in mind that "Reasonable advantage from their patent rights" would cover this point, but research is so important a part of the development of patent medicines, and so expensive a part of their development, that some reference should be made in the subsection to research costs being taken into account in arriving at the terms of a licence. This is an extremely important point.

Mr. J. Lynch

I take it that the gist of the Senator's query is whether expenditure on research is included in the reasonable compensation for the patentee. The English clause is exactly the same, and I can assure the Senator that the intention is to cover the expenses of research in the words "reasonable advantage from their patent rights".

Mr. Ross

I am glad I am not following the English precedent. I would like to agree that "reasonable advantage" would cover research but, frankly, I should like to see a specific reference to research in the subsection if the Minister would consider an amendment.

Mr. J. Lynch

I understand it is not necessary. After all, it is the Controller who will be administering this, and he knows exactly what it covers.

Question put and agreed to.

Sections 43 to 70, inclusive, put and agreed to.

SECTION 71.

Question proposed: "That section 71 stand part of the Bill."

Mr. Fitzpatrick

There seems to be some difference of opinion as to whether this section affords adequate protection to the applicant or the registered proprietor of a patent. I think it does but I object to the words in brackets. The section reads:

Where any discretionary power is by or under this Act given to the Controller, he shall not exercise that power adversely to the applicant for a patent or for amendment of a specification or the registered proprietor of a patent without (if so required within the prescribed time by the applicant or registered proprietor) giving the applicant or registered proprietor an opportunity of being heard.

If that means what it says, the Controller must give notice to the applicant or the registered proprietor of a patent if he so requires. The words in brackets are new. The Minister may tell me they are not new but if they are not new they do not appear in the British Act. This is pretty meaningless. It would be a better and a neater section without those words. I do not know what they mean. Do they mean that a person must say in his application: "I wish to be notified of steps which you are taking which are adverse to my interest?" If he merely makes the application and says nothing about being notified, the Controller may notify him or he may not. I should like to hear the Minister's explanation, and I may have another word to say, or I may be satisfied.

Mr. J. Lynch

I understand that the section means what it says. While it may not be exactly on all fours with the wording of the British law, it has the same import and certainly is on exactly the same lines as our existing law. The section gives an applicant for a patent, or a patentee, the right to be heard before the Controller makes any adverse exercise of the discretionary powers given to him by the Act. This has worked well. Since the words are reasonably clear to me, and apparently have been interpreted without any adverse effect on an applicant for a patent or a patentee. I do not think there is any good reason why we should change them.

Mr. Fitzpatrick

Would the Minister be good enough to explain exactly what the procedure is?

Mr. J. Lynch

The procedure varies from case to case, and I am informed that the Controller always gives the person who may be affected by an exercise of his discretion an opportunity of being heard before he exercises that discretion.

Mr. Fitzpatrick

The section really does not mean what it says, because if the words in brackets mean anything they mean that a person need not be notified unless he asks to be notified. If the words do not mean that, I should like to be told what they do mean. The counterpart in the British Act reads:

Without prejudice to any provisions of this Act requiring the comptroller to hear any party to proceedings thereunder, or to give to any such party an opportunity to be heard, the comptroller shall give to any applicant for a patent, or for amendment of a specification, an opportunity to be heard before exercising adversely to the applicant any discretion vested in the comptroller by or under this Act.

Anybody who can read or write English knows what that means. It is as simple as ABC. Perhaps the section in the Bill means the same thing but it is a bit muddy. We have followed the British Act in certain respects and I think that very clear section of theirs would be much preferable to ours. I would ask the Minister again to explain what the words in brackets mean.

Mr. J. Lynch

There is no doubt that, in practice, the person is always notified that the Controller is about to exercise his discretion and that the person affected is told of his rights and that he will be heard if he so requests. The section as it appears is, as I have said, the section that has been in force for upwards of 35 years. If it has worked well in practice, I do not see why we should change it now.

Mr. Fitzpatrick

Sometimes it is hard to keep one's patience when one is told by this or that Minister: "That may look objectionable but it will not work that way because there will be a reasonable approach by the Controller or there will be a reasonable approach by somebody else". Why give him the machinery, if that is so? I shall not crossexamine the Minister and I do not wish to appear offensive to him, but it is quite obvious to me that he agrees the words in brackets mean that a person must demand notice, and that, if he does not demand notice, he may not get notice. In the section in the British Act dealing with the same topic, it is as clear as ABC. A child going to school would know his rights and would not be prejudiced.

The Minister for Justice often gives similar replies. He says: "That is possible under the section but in practice it will never happen". It could happen in the future. You could get an unreasonable Controller who might stand on his rights, who might become difficult, who might say: "If this man has not asked me to notify him, I shall not do so". When dealing with legislation, it is up to us to make it as clear, as simple and as unambiguous as possible. I hold section 71 in my right hand and give you its equivalent in British law in my left hand and I ask any fairminded person in the House to say which is the clearer, which is preferable, which is the more ambiguous.

Mr. J. Lynch

I am grateful to Senator Fitzpatrick for not losing his temper. I am reasonably even-tempered myself, but if tempers are to be lost, we can all have a go. I can only repeat that this has worked in practice. I may add that if the Controller acts unreasonably, there is an appeal to the courts so that no concession or right is lost, that is, if there is a cantankerous Controller who might interpret the law unreasonably.

Mr. Fitzpatrick

I shall be dealing with that matter on another section. By all means, you can go to the High Court or the Supreme Court, but you cannot get costs against the Controller. You go there at your own expense.

Question put and agreed to.

Sections 72 to 75, inclusive, agreed to.

SECTION 76

Question proposed: "That section 76 stand part of the Bill."

Mr. Fitzpatrick

This is the section which provides that you can get the best of the Controller in the High Court, but at your own expense. The section says:

In all proceedings before the Court under this or any other enactment the Controller shall neither be awarded nor ordered to pay costs.

I know that cuts both ways. If you go to the High Court and you lose, you could be ordered to pay the Controller's costs, but if you meet a difficult Controller, as the Minister told me on the last section I queried, you can march him up to the High Court and get him, but entirely at your own expense, notwithstanding the fact that the court may think the Controller was absolutely unreasonable. It may be this is taken from some other Act, that it is not new, but surely we are here to improve on things as we go along, and if we find things in a previous Act that we do not agree with, now is the time to put them right. People will not go lightly to the courts and will not bring the Controller to the High Court, unless they are advised on fairly good legal authority that they will succeed. I do not know whether there is an appeal to the Supreme Court from this or not. I believe there is.

A person might go to the Supreme Court, might win there, and probably will if he is advised by somebody specialised in this field. If he goes there, he cannot be awarded costs. There should be something written into this section giving the court, even in exceptional circumstances, discretion in regard to costs. I think such a provision as that would protect the public against an unreasonable Controller and would, in turn, protect the Controller against an unreasonable member of the public. I am prepared to go so far. I feel pretty strongly about this section.

Mr. J. Lynch

Senator Fitzpatrick has said we should improve things as we go along. That is what we are doing here. Under the existing Act, the costs of the Controller were at the discretion of the court but it contained the counter-provision that the Controller could not be ordered to pay the costs of any other party. Now we are saying the Controller cannot get costs.

Mr. Fitzpatrick

This is bad, but that was worse, I admit. The Minister should have come in here with a provision leaving the matter of costs entirely to the discretion of the courts as in other cases.

Question put and agreed to.

Sections 77 to 85, inclusive, agreed to.

SECTION 86.

Question proposed: "That section 86 stand part of the Bill."

Mr. Ross

I raised a point on this section on Second Reading. I do not know how a person who wants to be a patent agent can have a place of business in the State before he is a patent agent. It seems to me that is what subsection (3) requires. That is why I should like to have inserted here words such as "has a place of business or employment in the State". I am informed that where the phrase "has a place of business in the State" appears in the Trade Marks Act it is interpreted by the Controller of Trade Marks as meaning that the person owns a place of business. If that interpretation is to be followed you could not possibly get any new person appointed as a patent agent. Would the Minister accept the words "his place of business or employment"?

Mr. Fitzpatrick

I entirely support Senator Ross on this suggested amendment. I understand that the interpretation of section 3 (b) as it appears in the Trade Marks Act is that the person must have a place of business of his own in the State. I agree that this is an unreasonable interpretation but it could be put beyond doubt by saying "his place of business or employment in the State".

Mr. J. Lynch

I understand that this provision which is in the existing law has not given rise to any difficulty of the nature suggested by the Senators and that a person who is about to set up as a patent agent and having the necessary qualifications is given his licence or whatever is given to him to enable him to practise.

Mr. Fitzpatrick

I am advised that the interpretation is that the person must be in business and have a place of business of his own in the State. It is not enough if he has a place of business in his employer's office. That, I think, is unreasonable.

Mr. J. Lynch

I can only repeat that the section is already in our law and has given rise to no difficulty in these matters.

Mr. Ross

It may not have given rise to any difficulty on the question of patents but we are told very clearly that it has given rise to difficulty in trade marks, and if it has in trade marks surely the same wording is likely to cause the same difficulty when it comes to patents? The reason that it has not given difficulty in patents is that it has not arisen, but when it arises then it will be too late if the Bill remains as drafted.

Mr. J. Lynch

I believe the interpretation of "place of business" is not necessarily a place of business of his own. If he has the requisite qualifications the interpretation could be applied to practice in his employer's place of business and he is given his licence without difficulty.

Mr. Fitzpatrick

I would agree with the Minister that the two things seem the same but I understand that the powers that be take a different view and that the Controller takes a different view. The Minister should not have any control over the Controller, but if the Minister could put in those two words even now surely it cannot take away from the section and it will put it beyond doubt and leave everybody happy.

Mr. J. Lynch

There are some reasons I believe why the words of the section should not be interfered with, and I am advised that it is better to leave them as they are because if a person is ambitious of becoming a patent agent then he has to take certain steps to conform with the requirements of the section and when he has taken those steps to ensure that he is genuine in his intention of becoming a patent agent, he is confirmed when he complies with the law.

Question put and agreed to.

Sections 87 to 90, inclusive, agreed to.

SECTION 91.

Question proposed: "That section 91 stand part of the Bill".

Professor Jessop

Could I ask the Minister is the Institute for Industrial Research and Standards competent to accept an assignment of a patent in circumstances such as under this section, and if it is could it somehow be incorporated in the section as well as those various Ministers who may accept an assignment from an inventor?

Mr. J. Lynch

If a patent is assigned to a Minister I understand that he can employ any of his agencies, and I do not think there is any doubt about the Institute for Industrial Research and Standards accepting such an assignment on behalf of the Minister, as the Senator knows. As I mentioned in reply to the Second Reading, the Institute has certain powers to assist inventors or people who hope to become patent holders and I believe it will be possible for the Institute to accept such an assignment in the name of the Minister.

Professor Jessop

Does the Minister not feel that the Institute should be entered in this section as a body recognised for this particular purpose? I am thinking of the position of an inventor. If I were an inventor and wanted to assign my invention to a body for the purpose of developing it in the interests of the State, I would like to be able to go to that person, to this or that authority, to discuss the conditions of development of this invention and reach a certain stage of agreement before the actual assignment.

Mr. J. Lynch

The Minister for Industry and Commerce is not the only Minister involved in this.

Professor Jessop

I am not thinking of the particular Minister here.

Mr. J. Lynch

I know. The point I want to make in reply to the Senator's argument is that there are other Ministries. The Minister for Agriculture, for example, has specialised organisations under his control. Take the Agricultural Institute. They have certain facilities whereby they can undertake developments for the benefit of agriculture. The Institute for Industrial Research and Standards have certain facilities too and, what is more, they have the power to spend money on the development of inventions. Therefore, I think there would be no point in singling out the Institute for Industrial Research and Standards in this section because there are so many other agencies that a number of Ministers could employ for this purpose. I do not think there is any necessity for specifically mentioning the Institute. I am satisfied that it can do all that is necessary in connection with the development of a patent.

Professor Jessop

Can the Agricultural Institute spend money on development?

Mr. J. Lynch

I believe it can. There are powers relating to industry specifically provided in the new Act dealing with the Institute for Research and Standards.

Professor Jessop

I think it is a pity to have more than one doing this.

Mr. O'Reilly

What about the Medical Research Council?

Professor Jessop

The Medical Research Council has no money to spend on the development of any inventions our research Fellows may make.

Mr. J. Lynch

I have to handle the Institute for Industrial Research personally and I know that it has all the power necessary.

Question put and agreed to.

SECTION 92.

Question proposed: "That section 92 stand part of the Bill."

Professor Jessop

Could the Minister insert in this section, possibly after subsection 5, an amendment similar to the one he has already so well incorporated in section 42? Subsection 5 would then read: "The right to use an invention for the service of the State under the provisions of this section shall include the power to sell any articles made in pursuance of such right which are no longer required for the service of the State and shall only be exercised having regard to the desirability of encouraging inventions and inventors in the growth and development of industry", etc.?

Mr. J. Lynch

That, I think, would be undesirable in that it would tie the Minister's hands. I may say that this right has never been exercised within the State but it is important that it should be there and at the Minister's discretion to use it. The Minister is there as a representative of the people in a particular Department and I think there are sufficient restrictions on his activities. He is exposed to all kinds of questions so that he can render an account of everything he does and the names of the people within his power. It would be wrong to tie the Minister as the Senator has suggested.

Question put and agreed to.

Sections 93 to 99, inclusive, agreed to.

First and Second Schedules agreed to.

Title agreed to.

Bill reported, with amendment.

Bill received for final consideration.

Question proposed: "That the Bill do now pass."

Mr. Ross

At this stage I should like to say that I was not aware of any arrangement on this side of the House and I do not feel I was in any way bound by it. This Bill is a Bill of great importance, as I said on Second Stage. In this House we could have made some amendments to it. We have debated it for about four hours today in one way or another and we have not added anything to it. We may have clarified our minds on a number of points but this House did nothing except agree to the Minister's amendment.

This is a Bill to which this House could have added something, if we had taken the Bill in rather slower stages. I must express my disappointment that the Bill has been rushed through the House in this way. I am not in any way trying to blame the Minister because the Minister, as I appreciate, came in on the understanding that no points would be raised or amendments made. At the same time it is a Bill of such importance that we should not have rushed it through in this way. I feel the House is not being properly used in the way it should be in rushing through a Bill of this sort. This is a Bill which should have been considered on Second Stage and possibly in Committee with a pause between the two Stages. We could have clarified our minds on a number of points and then brought forward a number of amendments on Report Stage.

Mr. Crowley

At this stage, I want to support what Senator Ross has said. I would strongly urge, in seeking to make better use of this House, that the most effective way to do so is to have Bills of this type initiated here. The House has not been sitting for a number of weeks and we are now faced in the next couple of weeks with quite an impressive list of legislation which will have to be put through before the summer recess. I strongly urge on the Government, through the Minister, that far better use could be made of the House if Bills of this type were initiated here, with great advantage to everybody.

Mr. Fitzpatrick

I can understand the Minister may have been disappointed at the length of the debate on the Bill this evening. There was an understanding between Senator Hayes and the Leader of the House that all Stages would be given this evening. As I said earlier that arrangement did not mean there would not be a discussion on the Bill and I am perfectly satisfied that neither the Minister nor the Leader of the House would expect the Seanad to pass a Bill like this without a discussion.

I think while we had, in one way, a short debate it was a useful one. I think the debate we had this evening goes to show that some people in the Seanad are prepared to go through highly technical Bills like this and discuss them even though in their private lives they might never be asked to have anything to do with matters of this sort. I thoroughly agree with Senator Crowley that the proper way of dealing with a matter like this is to introduce the Bill in this House and spend several days over it, taking it gently. There seems to be a feeling abroad that, when a Bill comes to the Seanad, it should fly right through it and should be regarded as a matter of urgency. That is bad for the Seanad and it is bad for the Oireachtas. I honestly believe it is bad for the Bills and bad for legislation generally. We all should resign ourselves to taking Bills seriously here and dealing with them fully.

Mr. Cole

I should like to support what Senator Ross said this evening. There are not many people in this House who are capable of discussing a Bill of this sort but Senator Ross and others have shown they are quite competent to speak on it. We should not have to rush Bills through the House. This has happened before. I am not concerned now because I had not anything to say on the Bill. I am not putting all the blame on one side of the House. The Bill was rushed through by agreement. The same thing happened in other years when people who could speak with authority and probably sincerely improve the Bills have been unable to do so because the Bills were put through at this time of the year in rather a hurried fashion. I agree with Senator Ross. He was trying to improve the Bill and he was not afforded a reasonable opportunity of considering the matter.

Mr. Murphy

It has been said there was agreement to take all Stages of the Bill today but I must say the Labour Party were not consulted at any stage and did not come to any agreement on the matter.

An Leas-Chathaoirleach

I will not have discussions of this kind. I do not want to have precedents of this sort in relation to order in the House established. While the remarks may be highly meritorious they are, nevertheless, highly irrelevant to the question: "That the Bill do now pass". These remarks are being made by people who previously agreed to take all Stages today.

Mr. J. Lynch

I bow to the Leas-Chathaoirleach's ruling and I will confine myself strictly to the motion: "That the Bill do now pass". I should like to go back to Senator Ross's opening speech when he said this matter now represents the last piece of legislation to bring industrial and commercial law up to date. There is one outstanding matter to be dealt with and that is industrial designs. That is being considered at the moment and I will have to come to this House again with another Bill. If arrangements were made to finish at this hour I was not a party to them. I did not want to shorten the debate in order to finish today. I do not object to what Senators said.

Question put and agreed to.

The Seanad adjourned at 9.50 p.m. until 3 p.m. on Thursday, 11th June, 1964.