Amendments Nos. 7, 8, 10, 11, 12, 13, 14 and 15 are consequential on amendment No. 1 and all may be discussed together.
Patents Bill, 1991: Committee Stage.
Section 1 agreed to.
SECTION 2.
I move amendment No. 1:
In page 9, subsection (1), lines 9 and 10, to delete the definition of "the Court" and substitute the following:
"‘the Court' means the High Court or the Patents Circuit Court".
These amendments provide for an amended definition of "court" in section 2, the definition section of the Bill, and for the establishment or setting up of a new Patents Circuit Court. These amendments provide for the insertion of six new sections. The new section 97 provides:
(1) There shall be constituted a Patents Circuit Court.
(2) The Patents Circuit Court shall have jurisdiction (its ‘special jurisdiction') to hear and determine such description of proceedings—
(a) relating to patents, designs, or trademarks; or
(b) ancillary to, or arising out of the same subject matter as, proceedings relating to patents, designs, or trademarks as may be specified in rules of court.
(3) The Patents Circuit Court may entertain proceedings within its special jurisdiction notwithstanding that no pecuniary remedy is sought.
(4) Nothing in this section shall be construed as affecting the ordinary jurisdiction of the Circuit Court.
The new section 98 provides:
(1) The Rules of the Circuit Court may provide for limits of amount or value in relation to any description of proceedings within the special jurisdiction of the Patents Circuit Court.
(2) If a limit is imposed on the amount of a claim of any description and the plaintiff has a cause of action for more than that amount, he may abandon the excess; in which case the Patents Circuit Court shall have jurisdiction to hear and determine the action but the plaintiff may not recover more than that amount.
(3) Where the court has jurisdiction to hear and determine an action by virtue of subsection (2), the judgment of the court in the action in full discharge of all demands in respect of the cause of action, and entry of the judgment shall be made accordingly.
(4) If the parties agree, by a memorandum signed by them or by their respective solicitors or other agents, that the Patents Circuit Court shall have jurisdiction in any proceedings, that court shall have jurisdiction to hear and determine the proceedings notwithstanding any limit imposed under this section.
The new section 99 provides that:
In considering in relation to proceedings within the special jurisdiction of the Patents Circuit Court whether an order should be made transferring proceedings from or to the High Court, the court shall have regard to the financial position of the parties and may order the transfer of the proceedings to the Patents Circuit Court or, as the case may be, refrain from ordering their transfer to the High Court notwithstanding that the proceedings are likely to raise an important question of fact or law.
The new section 100 provides:
(1) Where an action is commenced in the High Court which could have been commenced in the Patents Circuit Court and in which a claim for a pecuniary remedy is made, then, subject to the provisions of this section, if the plaintiff recovers less than the prescribed amount, he is not entitled to recover any more costs than those to which he would have been entitled if the action had been brought in the Patents Circuit Court.
(2) For this purpose a plaintiff shall be treated as recovering the full amount recoverable in respect of his claim without regard to any deduction made in respect of matters not falling to be taken into account in determining whether the action could have been commenced in the Patents Circuit Court.
(3) This section does not affect any question as to cost if it appears to the High Court that there was reasonable ground for supposing the amount recoverable in respect of the plaintiff's claim to be in excess of the prescribed amount.
(4) The High Court, if satisfied that there was sufficient reason for bringing the action in the High Court, may make an order allowing the costs or any part of the costs on the High Court scale or on such one of the Patents Circuit Court scales as it may direct.
The new section 101 provides:
(1) The President of the Circuit Court shall nominate a person entitled to sit as a judge of the Circuit Court as the patents judge.
(2) The Rules of the Circuit Court shall make provision for securing that, so far as is practicable and appropriate, proceedings within the special jurisdiction of the Patents Circuit Court are dealt with by the patents judge, and
(3) The Rules of the Circuit Court shall make provision empowering a Patents Circuit Court in proceedings within its special jurisdiction, on or without the application of any party—
(a) to appoint scientific advisers or assessors to assist the court, or
(b) to order the Controller to inquire into and report on any question of fact or opinion.
(4) Where the court exercises either of those powers on the application of a party, the remuneration or fees payable to the Controller shall be at such rate as may be determined in accordance with the rules of the Circuit Court and shall be costs of the proceedings unless otherwise ordered by the judge.
Section 102 provides:
(1) a registered patent agent may do, in or in connection with proceedings in the Patents Circuit Court which are within the special jurisdiction of that court, anything which a solicitor might do.
(2) The President of the Circuit Court may by regulations provide that the right conferred by subsection (1) shall be subject to such conditions and restriction as appear to the President of the Circuit Court to be necessary or expedient; and different provision may be made for different descriptions of proceedings.
These provisions are modelled on section 287 and 292 of the United Kingdom Copyright Designs and Patents Act, 1988, which set up the Patents County Court in that country. The argument put forward on the last occasion by the Minister for Industry and Commerce, Deputy O'Malley, when he introduced the Bill on Second Stage that there were not sufficient patent actions to justify such a special court is not valid. The reason there are very few patent actions at the moment is because most small and medium-sized firms find the costs and delays which are inherent in High Court proceedings prohibitive. If, as is proposed in these amendments, the court has jurisdiction to hear trademark matters as well as patent matters, then there would be a considerable workload.
It has long been recognised and was emphasised in the United Kingdom White Paper on Intellectual Property and Innovation which was published in 1986 that the benefits of an inellectual property system are seriously undermined if the associated legal machinery is too slow, too complicated and too expensive for many of the rights granted under the patents system to be enforced. In the United Kingdom a committee was set up under the chairmanship of Sir Derek Outlon, Q.C. then Permanent Secretary to the Lord Chancellor, to consider proposals for the reform of the entire patent litigation aspect. They recommended that patents jurisdiction be conferred on one or more of the county courts in parallel to the existing jurisdiction of the Patents Court which is part of the Chancery Division of the High Court in the United Kingdom.
The recommendations of the Oulton Committee were implemented in the Copyright Designs and Patents Act, 1988, and the first Patents County Court was set up at Wood Green Court complex in north London with a jurisdiction over patent and design matters for England and Wales. That is the type of model I would like the Minister to consider.
The new courts procedure is specially adapted for patent and design cases but it remains much simpler than High Court procedure. The parties are required to exchange written statements of the case setting out fully the facts, matters and arguments relied upon. The papers in the case including the parties' request for directions concerning the further progress of the action are considered by the judge and they are discussed by him with the parties representatives relatively informally and in private. Preparations for trial, which may include the obtaining of technical reports from the United Kingdom Patents Office are then made under the control of the court, the object being to see that justice is done to the cases of both parties with the minimum expenditure of time and money.
In many cases, the informed preliminary consideration by the judge may be expected to help the parties to settle their disputes without the matter proceeding in any great detail if possible. If the case goes later to trial, the thorough but cost-effective preparation should enable the hearing of witnesses and arguments to be concentrated in a shorter period and with the participation of fewer professional representatives and legal advisers, etc. than normally are required in High Court actions. I am making a case against the over-involvement of solicitors and barristers in these cases and for cutting down on remuneration that many barristers would like to get.
Registered patent agents normally have a right of audience before the new Patents Circuit Court and they can speak before the court on complex and technical matters. That is a real benefit. The benefits and success of the new Patents County Court — it is a single court — have been well pinpointed in a recent article entitled The British Patents County Court which was published in the newsletter of the European Practitioners in Industrial Property. That article makes the following salient points as far as I am concerned in regard to the whole question of delay and costs. First, while there has been very little criticism on the quality of the judgments provided by the High Court, nevertheless there has been unease at the time and money involved in litigation and at the fact that many small and medium-sized enterprises are very reluctant to even contemplate patent litigation.
Most of the Senators who spoke here on the last occasion when this matter was discussed, and in particular Senator McCarthy when he spoke last week, made a very strong case for the small and medium-sized enterprise. I support that. That is one of the reasons I suggest the establishment of a court which would ease the technicalities and so on associated with litigation.
Secondly, in September 1990 — we are talking in relatively new terms as far as the UK is concerned — a new court opened in north London called the Patents County Court — our equivalent would be the Circuit Court — which has been able to hear cases dealing with patents and/or designs.
Thirdly, it has jurisdiction extending over the whole of England and Wales and is able to provide all of the orders and injunctions that are available in the High Court. I suggest again that there should be no trouble at all, as far as I can see, in conjunction with the president of the appropriate courts, in setting up such courts fairly quickly. It should be feasible and possible to do so.
Fourthly, the Patents County Court has a specialist patents judge. This is one of the great benefits of this court. The first such judge was His Honour Judge Peter Ford who started his professional life as a barrister at the Patent Bar in the United Kingdom dealing with many of the intellectual property cases and was subsequently Chairman of the Legal Board of Appeal at the European Patent Office in Munich.
Fifthly, the new court operates under rules which are closely based on the ordinary county court rules, these rules establishing a procedure which has been found in practice to be swifter, more flexible and less formal than the High Court procedure and which has also been found — and this is most important — to lead to considerable cost saving.
I have spoken at length on this because I am dealing with six amendments. I am aware that these amendments were tabled yesterday but I have been working on the matter since last week and I appreciate that the Minister may want to look further at the matter. I urge him to accept these amendments. As far as we are concerned, we would like to see the best legislation we can possibly achieve leave the House. There are no partisan or political points to be made here today. I assure the Minister of our full co-operation in ensuring that this Bill is the best possible measure.
I congratulate the Cathaoirleach on his appointment and wish him good luck. I wish to place on record my appreciation to his predecessor, Senator Doherty, my constituency colleague, for his work. I know the Cathaoirleach will share with me regret at his departure at this stage and at the circumstances which led to that. I wish the Chair long life and best wishes in his important role as Cathaoirleach of this very important House.
I refer to the amendments put down by Senator Kennedy and restate the views put forward by my colleague, the Minister for Industry and Commerce, Deputy O'Malley, with which I fully concur. During the debate last week the Minister said he rejected the proposal. He pointed out that the Bill as it stands provides certain jurisdiction for the Circuit Court in regard to infringement proceedings involving short term patents. He went on to say that this should help to reduce the cost of litigation in those cases as he assumes the cost to small inventors holding short term patents would be less than if litigation were before the High Court. He also pointed out that, in practice, certain judges for the most part hear certain types of cases, including patent cases. He concluded by saying that there was not in any event in this country at the moment a sufficient burden of litigation to warrant any separate court being specially created to handle it. I do not think it would be our responsibility as such to set up such a court. That would be a matter for the Minister for Justice. It would require a considerable amount of discussion with the Attorney General and the Department of Justice before such a court, if it were agreed, could be established as proposed by Senator Kennedy.
About 1.5 per cent of all the patents granted are granted to Irish inventors and firms. To say that we would facilitate Irish inventors would not be accurate because only 1.5 per cent of them would apply. Therefore, it would be foreign patent holders who would have a greater interest in defending the patents before a court. In any event the volume of litigation is negligible so it would not be practical at this stage to set up such a court. We are giving jurisdiction to the Circuit Court in short term patent litigation. This will have a favourable effect on costs for small patent holders.
I thank Senator Kennedy for putting forward this concept. It may arise in the future but it depends on the demand in relation to patents. It is our intention to set up a separate patents office because there are considerable delays at the moment, through no fault of the staff who are doing tremendous work. The volume of work has increased considerably over the years. There is tremendous demand for the establishment of a separate office. From a financial point of view, it would be quite justified to set up a separate company to organise the patents area. It may be that in the future there will be need for a separate patents court but at this stage we are quite clear about our position.
We are not refusing the amendment for the sake of refusing. Senator Kennedy put forward a well argued case in relation to this but my arguments are stronger as only 1.5 per cent of all the patents issued are issued to Irish inventors. That would not justify the cost involved in setting up such a court system. Senator Kennedy would agree that by bringing the Circuit Court into this area we have reduced the cost for Irish inventors and other inventors. I regret I must reject the amendments.
I concur with the views expressed by the Minister that within the complexities of this Bill at this point everything is being done to accommodate small inventors who apply for patents. As I said on Second Stage, this is very important because many people were prohibited from applying in the past because they did not have a surplus of money. They are now being accommodated within this structure. As the Minister has very appropriately pointed out, only 1.5 per cent of applicants for patents are Irish. I am sure it would be costly to provide a special patents court at this time.
I thank the Minister for his response but I am disappointed he did not advert to many of the points I made. Basically, what I have advocated is the setting up of a low cost litigation court. That would have many benefits for the small and medium-sized enterprises Senator McCarthy talked about. It is also important that we encourage innovation and inventiveness among our community. The Minister said there is only a tiny percentage of Irish applicants and so on. It has been adverted to by various industrialists in recent times, especially by Mr. T.P. Hardiman, that there is a low level of inventiveness in this country and in regard to applications for patents and so on. I hope that in the future, with our highly educated younger generation, that will change.
We need at least one judge in the country who knows and specialises in that area. I must press my amendment. The Minister said that the time may arise in the future when he may be able to consider this proposal in more detail but because of the response and lack of analysis of what I put forward I will press the amendment.
I appreciate the points put forward, but most of them will be allowed for in the courts because there will be certain specialisation in the courts. The president would allocate a particular judge to an area like this, and that would be taken into account. Some time ago we advocated the setting up of a small claims court. That is coming into being now. I will not pre-judge the future in this regard.
The points raised by Senator Kennedy will be taken on board by me and my Department for future reference but at this stage we could not justify it. There has been an increase in the number of enterprising young people putting forward applications for inventions. We encourage them. We do not have a background of putting forward inventions. Since I took over responsibility for trade and marketing, I have seen some interesting proposals but the people felt their ideas were not good enough to look for a patent. I advocate that anyone who has an idea should apply for a patent and we are making the task much easier in this Bill.
This is important legislation which will assist young patent holders. It will assist patent applicants to have their patents accepted in a simpler and quicker way then was the case in the past. We have many people of talent but, unfortunately, we have an inferiority complex as far as the quality of some of our ideas is concerned. Inventions should be patented to give protection to those who go to the trouble of working on original ideas. I regret I am not in a position to accept the amendment. It is unnecessary and it would not be cost effective to accept it.
Without being directly concerned with Senator Kennedy's amendment which is probably not necessary for the reasons I stated, no court can be set up without incurring costs. The Patents Office is one of the few State offices which makes a profit and has done so in spite of the difficulties it encountered. We must give the credit for that to the Controller of Patents, Mr. Fitzpatrick, whose performance has been outstanding.
Perhaps the Minister might bear in mind that the improvement of computerisation in the Patents Office is important and that improvement of the library facilities is absolutely vital. It is crazy that small inventors must fly to London at enormous cost and use the library facilities there simply because they are not available here. This office makes money. I suggest that the Minister might bear three things in mind: improve computerisation of the Patents Office; improve the library facilities and improve the staffing.
I concur with Senator McCarthy in relation to his appreciation of Mr. Fitzpatrick and his work as the Controller and Patent Officer. The points the Senator made are extremely good. In most cases the information is available. There may be cases where more technical information is required but the advent of computerisation and the development of the Patents Office should make this more readily available. This Bill will be the basis for the development of a highly efficient Patents Office.
The points made by the Senator are taken. Unfortunately there is a major backlog of patents at the moment which will not be cleared unless the office is freed from direct departmental responsibility. It is paying its way but it could be more profitable if it were a separate office. The Senator's knowledge of the subject as a former Minister in the area of science and technology is quite evident from the views expressed here.
The horse has bolted, in a sense, but I would like to express my regret that we did not do enough to have the European Patent Office located in Dublin. It would have made so much money for Ireland. It would have been of enormous benefit. We would have had applicants for patents from all over the world coming to Dublin. I do not believe we did enough and, as much as anyone else, I was derelict in my duties in that regard. The European Patent Office is now based in Munich. I have nothing against Germany but they have done extremely well out of the European Community. I suggest to the Minister that we might try strongly to have the Trademark Office located here.
The Senator is straying from the amendment.
I thought it might be the appropriate time to make that comment.
Some other time during the Bill perhaps.
I cannot let the occasion pass without agreeing with my colleague Senator McCarthy. I agree that big changes will have to be made in the Patents Office in regard to library and computer services and to the question of staffing.
The Minister made an interesting point. A very tiny percentage of the applicants are Irish. I hope that for the future that there will be a great sense of inventivness among our young people. Computers are part of the daily life of young people in school.
Senator McCarthy is totally unrealistic when he suggested there was any chance of the European Patent Office coming to Dublin. We deal with some 4,500 applications in this country every year. The London Patent Office deals with 30,000 applications every year. If it had not gone to Munich it would probably have gone to London or some other place. It is completely parochial to imagine that the European Commission and the Community would say the Patents Office should come to Dublin because it would create jobs. We all know it will create spin-off services, extra jobs and investment and so on. Perhaps the Senator thinks there is a case to be made in regard to the Trademark Office, but I do not think that is realistic either.
I have asked the Minister to accept a fairly low cost-effective measure here in regard to litigation. He is not in a position to accept it on this occasion but I think there may be another occasion.
In response to what Senator Kennedy said apropos the European Patent Office, at a Ministerial Council meeting when we were debating the matter, and which I attended as Minister of State at the Department of Industry and Commerce, there was almost a consensus around the table that the English language was the industrial language of the world. Even our colleagues from the then Federal Republic of Germany appeared to accept it as did our Greek and Spanish friends. The then Secretary for Industry, Raphael Clarke, suggested that in view of this fact the only and proper place for the Office should be London. I pointed out that we had not got any of these great spoils from Europe and that if we were making an issue of the English language being the industrial language of the world, the best English in the world was spoken in Ireland and Dublin was the appropriate place for the office to be located. I felt I had the support of some of our friends at that time but obviously the Germans hijacked it in due course.
As this is my first time speaking since your election, a Chathaoirligh, may I wish you well. I hope you will have many years in the position. I am here as a friend and will be glad to give you any assistance I can.
The Minister, in his reply to Senator Kennedy, said patent numbers in future would be greater in Ireland. You have to be very near to the subject of this Bill to know what it is about. I ask the Minister, in the interests of the young people about whom he is concerned, who will use this legislation in the years ahead, to ensure the Department publicise it adequately.
With regard to the points raised by Senator McCarthy in relation to the Community Trademark Office, I am aware that Senator McCarthy, as Minister for Science and Technology, very much supported the establishment of such an office in Ireland and fought a very strong case. He cannot take any blame for the location of the European Patent Office, which was actually established in 1976, in Munich. The Senator has been unfair on himself because I know he put a very strong case at the Council meeting. It is a difficult task — as Senator Kennedy rightly said — to try to locate an office here but Senator McCarthy put forward a very strong case for the establishment of the office in Ireland. We are continuing and will continue that representation in the European Council of Ministers.
I want to express my appreciation to Senator Honan for her contribution to the debate. She is quite correct on the question of making the Patents Office more accessible to young people and particularly to the regional colleges. I will certainly bear in mind the necessity of making it more open and meaningful and of making information on how to go about getting patents available to those offices and colleges and to young people who would be interested in that matter.
Is amendment No. 1 being pressed?
Yes.
Question put: "That the words and figures proposed to be deleted stand."
The Committee divided: Tá, 26; Níl, 18.
Tá
- Bennett, Olga.
- Bohan, Eddie.
- Byrne, Hugh.
- Byrne, Sean.
- Cassidy, Donie.
- Dardis, John.
- Farrell, Willie.
- Fitzgerald, Tom.
- Foley, Denis.
- Haughey, Seán F.
- Honan, Tras.
- Hussey, Thomas.
- Keogh, Helen.
- Kiely, Dan.
- Kiely, Rory.
- Lanigan, Michael.
- Lydon, Don.
- McCarthy, Seán.
- McKenna, Tony.
- Mooney, Paschal.
- Mullooly, Brian.
- O'Brien, Francis.
- Ó Cuív, Éamon.
- O'Keeffe, Batt.
- Ryan, Eoin David.
- Wright, G.V.
Níl
- Costello, Joe.
- Doyle, Avril.
- Harte, John.
- Hourigan, Richard V.
- Jackman, Mary.
- Kennedy, Patrick.
- McDonald, Charlie.
- McMahon, Larry.
- Manning, Maurice.
- Naughten, Liam.
- Neville, Daniel.
- Norris, David.
- O'Reilly, Joe.
- O'Toole, Joe.
- Ross, Shane P.N.
- Ryan, John.
- Staunton, Myles.
- Upton, Pat.
Tellers: Tá, Senators Wright and Fitzgerald; Níl, Senators Neville and McDonald.
Question declared carried.
Amendment declared lost.
Section 2 agreed to.
Sections 3 to 8, inclusive, agreed to.
SECTION 9.
I move amendment No. 2:
In page 12, subsection (1), line 20, to delete "susceptible" and substitute "capable".
While I do not wish to engage in a lengthy exercise in etymology, and while I agree fully that in formulating a new code we should follow as closely as possible the system set out in the European Patent Convention, it seems to me that the phrase "capable of" is more used in our laws and is more readily understood by the public than is the phrase "susceptible of". However, I must emphasise that the word "capable" is a synonym for the word "susceptible". Either would satisfy the requirements of the European Patent Convention. I have a preference for the word "capable" and I, therefore, propose this amendment. I would also like to add that "capable" is the word that has been enacted in British legislation. They obviously decided not to opt for the word "susceptible" as contained in the European Patent Convention but to go for what is more generally acceptable in legal terms and as far as the public will be concerned.
We find no major difference between "capable" and "susceptible". However section 9 (1), in its entirety mirrors the corresponding provision of the Europen Patent Convention and is now almost universally regarded as the acceptable definition of a patentable invention. We should stick, therefore, with a wording which is pretty well universally accepted. The amendment is, therefore, not acceptable to me.
I do not intend to put the matter to a vote, but the wording is not in fact universally accepted; it is not accepted by the British legislation. This matter was debated at great length in the House of Lords where there are very accomplished and eminent patent barristers and judges, such as Lord Lloyd and so on, who are well known international experts in their field. They opted for the word "capable". However, I will not press the amendment as I think there are more important amendments we can look at.
I agree with Senator Kennedy. I would much prefer to see the word "capable" in this section as it is a word we would normally use.
I have no particular view on the merits of one word vis-a-vis another. I think we are fiddling with semantics anyway.
I hope my colleague, Senator Kennedy, would not become to obsessed or involved in grovelling to the authoritarianism of the UK authorities. They are not authorities on everything, they are not the experts on everything. I hope we could make up our own minds.
Amendment, by leave, withdrawn.
Section 9 agreed to.
Sections 10 to 17, inclusive, agreed to.
SECTION 18.
An Leas-Chathaoirleach
Amendments Nos. 3, 4 and 5 are related and may be discussed together.
I move amendment No. 3:
In page 15, lines 22 to 24, to delete subsection (3).
Section 18 (3) provides that "Every application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which such fee may be paid". I believe that this subsection should be deleted because it runs counter to the practice throughout the world of not demanding fees upfront when an application is made for patent.
The World Intellectual Property Organisation, WIPO, have published an applicant's guide to the Patent Convention Treaty, the PCT, in which they state that "all fees can be paid within one month from the date of receipt of the international application by the receiving Office". This means, in effect, that people who apply for a patent outside Ireland or to an international agency will not have to pay a fee until one month after the receipt of the application, whereas, in Ireland, the Government will now require applicants to accompany their applications with filing fees upfront. This requirement will hurt, in particular, the small person and the small enterprise whom we want to be innovative and inventive, and to register new patents, new inventions, etc. I know the Minister will say there is a let-out in this subsection which adds "unless the Minister prescribes a later date by which such fee may be paid". However, the subsection is totally unnecessary and we should confirm with the guidelines that have been drawn up and endorsed by the World Intellectual Property Organisation. In this matter I believe we are out of step with virtually all of Europe in demanding these moneys upfront. I would, therefore, ask the Minister to consider this matter as a sign of his response to the very reasonable, commonsense amendments we have tabled here today.
Under no circumstances would I accept this amendment. We want to make this office self-sufficient and self-financing. With 4,500 applications per annum, at £80 per application, about £360,000 revenue per year is involved. I could not possibly go along with Senator Kennedy in this regard and accept an amendment which would deprive the new office, when it is re-established, of the possibility of being self-financing, leaving it in a position where it would run at a loss and become a net drain on the Exchequer.
The fee required on application is also an indication of the seriousness of an application. This is a very serious business and the fee is a simple requirement. The Senator's amendment would abolish the requirements to pay a fee upon filing application. The filing fee is required to cover part of the cost of processing a patent application and we cannot forego it. This amendment is therefore not acceptable.
The whole idea is that a patents office must charge fees to cover the cost of the services it provides. The two amendments proposed to section 23, like the amendment proposed to section 18, are again concerned with the suspension of the payment of a filing fee. The proposed amendment are unacceptable since we cannot dispense with the requirement of charging a fee upon filing application. We must live in the real world. It is lovely to be able to put down an amendment which would relieve the applicants of the obligation to pay a fee of £80 and deprive the Exchequer of £360,000 but in my view this would result in the Patents Office being flooded with applications which would have no real likelihood of ever being suitable to be patented. In the circumstances I have absolutely no wish to accept such an amendment and I could not do so. This section gives the Minister powers in this regard and it is appropriate that this Minister and future Ministers should have power to change the cost of the fee at any time.
It is imperative that every State office, if possible, should to a degree be self-financing; I believe that to be the purpose of this filing fee. The other important and cogent point is that a filing fee will discourage frivolous applications. People could have a crazy project in mind and instead of just putting it into the waste paper basket they file an application for a patent to the Patents Office at no cost to themselves where in fact they should be certified.
An Leas-Chathaoirleach
Is amendment No. 3 withdrawn?
I hope I am living in the real world. To suggest that people who specialise in these areas and who make applications at European and international level are not living in the real world is unrealistic. I would like to agree with the Minister and with Senator McCarthy that our own Patents Office should be self-financing as it is; over the years the Patents Office has not been a drain on public funds I must suggest to the Minister — this is the case Deputy O'Malley made on Second Stage here — that we endeavour to conform with international and European practice in these matters. This provision is out of step with the guidelines issued by WIPO. I will quote briefly from where it asks: "When are the fees due?". We are talking about international applications under the Patent Co-operation Treaty. Very briefly, "all fees can be paid within one month from the date of receipt of the international application by the receiving Office". That is the only concession I require. It states:
In certain cases the designation fee part of the international fee can be paid after the expiration of that month. The dates on which payments are deemed to have been received are determined by the receiving Office. The latter applies the same rules as are applied in the case of payments for national applications.
In rule 142 of the same guidelines it is stated:
For the due date of the designation fee a distinction has to be made between two cases: (i) where the international application does not contain a priority claim, the designation fee must be paid within one year from the date of receipt of the international application.
Various concessions are available from leading international organisations dealing with patent applications. The guidelines continue:
(ii) Where the international application contains a priority claim the designation fee must be paid within one year from the priority date or within one month from the date of receipt of the international application if that month expires after the expiration of one year from the priority date.
What I am suggesting here, a Leas-Chathaoirleach, is that by adopting this provision we are placing ourselves out of touch with international and European practice. By adopting this attitude the Minister and Government ensure that we remain out of touch with reality. We are not putting forward the best ideas in the interest of patent applications as far as this country is concerned.
I do not wish to restate my position. In this situation our Exchequer requires the funding from the start. I do not believe that the fee at present in operation would deter any applicant putting forward their case for a patent. If a person felt strongly about their invention, this fee would not deter them. To cut down on paperwork we believe this is proper procedure and I do not want to add to what I have stated already.
Question put: "That the words proposed to be deleted stand."
The Committee divided: Tá, 26; Níl, 17.
Tá
- Bennett, Olga.
- Bohan, Eddie.
- Byrne, Hugh.
- Byrne, Seán.
- Cassidy, Donie.
- Dardis, John.
- Farrell, Willie.
- Fitzgerald, Tom.
- Foley, Denis.
- Haughey, Seán F.
- Honan, Tras.
- Hussey, Thomas.
- Keogh, Helen.
- Kiely, Dan.
- Kiely, Rory.
- Lanigan, Michael.
- Lydon, Don.
- McCarthy, Seán.
- McKenna, Tony.
- Mooney, Paschal.
- Mullooly, Brian.
- O'Brien, Francis.
- Ó Cuív, Éamon.
- O'Keeffe, Batt.
- Ryan, Eoin David.
- Wright, G.V.
Níl
- Doyle, Avril.
- Harte, John.
- Hourigan, Richard V.
- Jackman, Mary.
- Kennedy, Patrick.
- McDonald, Charlie.
- McMahon, Larry.
- Manning, Maurice.
- Naughten, Liam.
- Neville, Daniel.
- Norris, David.
- O'Reilly, Joe.
- Ross, Shane P.N.
- Ryan, Brendan.
- Ryan, John.
- Staunton, Myles.
- Upton, Pat.
Tellers: Tá, Senators Wright and Fitzgerald; Níl, Senators Neville and McDonald.
Question declared carried.
Amendment declared lost.
Section 18 agreed to.
Sections 19 to 21, inclusive, agreed to.
SECTION 22.
Question proposed: "That section 22 stand part of the Bill."
The Minister might indicate more comprehensively than was done on Second Stage the purpose and the scope of the provision of the abstract as provided for in section 22. It is one of the conditions for the making of an application under section 18.
The abstract is a brief summary description of the invention which the applicant is obliged to file with his application. Subsection (1) makes it clear that the abstract has no legal effect in relation to either the application or the granted patent. It is used merely as part of the technical information data base compiled in the office. Subsection (2) allows the Comptroller and Auditor General to edit the abstract if he deems it necessary.
Question put and agreed to.
SECTION 23.
Amendments Nos. 4 and 5 not moved.
Section 23 agreed to.
Section 24 agreed to.
SECTION 25.
Question proposed: "That section 25 stand part of the Bill."
May I ask the Minister to indicate if through section 25 he contemplates any changes in respect of priority right compared with the Patents Act, 1964?
The general concept of a priority right in relation to an application is quite simple. If, for instance, a British investor makes an application in Britain for a patent, he can make an application in Ireland or in any other country which is a member of the Paris Convention at any time within 12 months of his British filing date and claim the priority of the British filing date in respect of his Irish application. This means in effect that should more than one applicant apply to the Irish office for a patent for the same invention the applicant who can claim the earliest priority date is the one who will have the right to a patent for the invention. Subsection (1) makes provision to this effect. It also provides that a claim to priority can exist in respect of a previously filed application in the Irish office. This can be very useful where, for instance, an applicant might for some reason wish to abandon his earlier application and proceed within 12 months with a new one. The right of priority will apply in respect of a prescribed period. It is intended that this shall be 12 months for the previous filing and that conditions including payment of a fee can also be prescribed.
Question put and agreed to.
SECTION 26.
Question proposed: "That section 26 stand part of the Bill."
Would the Minister indicate if any changes are contemplated in the existing legislation? This important section deals with claiming priority.
Subsection (1) requires an applicant to make a declaration as to the earlier application whose priority he is claiming and to submit a copy of the previous application with translation of that application if it is in a foreign language. Under subsection (2) the priority of more than one previous application can be claimed even if the filings were in two different countries. Any time limit for claiming priority will run from the earliest previously filed application. The effect of subsections (3) and (4) is to establish that priority date of a prior application can only be relied upon to the extent that the subject matter of the Irish application is of the same scope as the application whose priority is claimed.
Question put and agreed to.
Section 27 and 28 agreed to.
SECTION 29.
Question proposed: "That section 29 stand part of the Bill."
Would the Minister elaborate on what is involved in regard to the search report provided for in section 29?
Under subsection (4) the Controller will request the applicant when sending him the copy of the search report to submit any amendment to the specification of the patent application which is called for in the light of the search report. Amendments must be submitted within a prescribed period. We added a Dáil amendment in that regard. The subsection as it appears in the Dáil Bill imposes the penalty of withdrawal of an application where the applicant did not respond to the Controller's invitation to carry out any necessary amendments in the light of the search report; thus the application would go dead.
After publication of the Bill representations were made that this would be an unwarranted penalty to impose in the case where the applicant's failure to act was due to circumstances outside his control, like a postal strike, for instance. It has been decided, therefore, to substitute the penalty of withdrawal for a provision where the Controller may refuse application where the applicant failed to act. This will keep the application alive because an applicant is entitled to request a hearing when the Controller proposes to refuse so that he has the opportunity to argue his case before the Controller. This is the effect of the amendment we put forward in the Dáil.
Question put and agreed to.
Section 30 agreed to.
NEW SECTION.
I move amendment No. 6:
In page 20, before section 31, to insert the following new section:
"31.—Where an applicant makes the request provided for in section 29 (1), or submits as evidence under section 30 (1) (a) the results of a prescribed search, the Controller shall cause the patent application to be subjected to such examination as is necessary to determine whether the patent application complies with the requirements of the Act in the light of the search report, or the results of the search, as the case may be.".
This reasonable amendment provides for a substantive examination where there is no corresponding European or British patent. This is an important common sense amendment and should be accepted by the Minister. What we are seeking is that in cases where the Irish patent specifications do not conform with the European or United Kingdom patent specifications a substantive technical examination should occur in the public interest. There is a suggestion in this Bill which was confirmed here by Deputy O'Malley, Minister for Industry and Commerce, that a number of patents should be nodded through without examination by the professional examiners simply on the word of the Patent Controller. This may be satisfactory in many cases; however, there are cases of a technical nature where there should be a substantive examination by the professional examiners and where more than the Controller himself should be satisfied that the patent should go through.
The Minister no doubt will point to the large backlog of arrears in the Patents Office. This seems to be the continuing scenario here — the backlog of arrears and so on. Who was responsible for the backlog? Who was responsible for the curtailment of staff and so on? There must be a better way of getting rid of this backlog. It is not right for the Minister to throw the baby out with the bath water. It is not right in endeavouring to get a quick resolution of an arrears problem and to remove the stockpile that has built up, that the Minister is unnecessarily lowering standards to be applied to future patents.
Dealing with this important subject I adverted to similar legislation in the United Kingdom because I think it is appropriate that we should look at it. Unlike Senator McCarthy, I often draw inspiration from their legislation and I would hope that legislators throughout the world would draw inspiration from one another. In dealing with that legislation in the United Kingdom the Lord Chancellor — I will quote two or three paragraphs from what he said regarding this important matter of the strength and validity of patents — stated during Committee Stage of their legislation on 24 January 1971:
A major criticism of the present system is that the patents when granted do not carry a sufficiently high presumption of validity. Patents of doubtful validity can often be recognised as of little value, but their existence causes uncertainty and can act as a deterrent to a manufacturer competing in the same field of technology who may not want to run the risk of being involved in expensive litigation. This can bear hard on the small firm which, for reasons of expense, is less likely than the large firm to be in a position to evaluate the likelihood of its own patents or those of others being upheld, if challenged.
The Lord Chancellor went on to say:
This situation cannot be allowed to continue into the future when strong European and Community patents will be effective here.
I would like to suggest to the Minister of State that the same situation prevails here, only it is far more serious, because there is now substantive and technical examination carried out under the British legislation. The Minister is suggesting the opposite here. The Lord Chancellor continued:
The answer to this problem is to strengthen the search and examination carried out by the Patent Office.
The Minister is doing quite the opposite to the existing legislation. He refers to sections 14 and 15 of that legislation. Under section 14 of their legislation the search is not limited, as was the case, to discovering documents which would destroy novelty. It is extended to the discovery of documents which are of relevance in assessing inventive step. We are adopting the European Patents Convention. We are talking about matters like industrial application, inventive step, novelty and so on, and we are, according to this legislation giving this over to the controller. The Lord Chancellor concludes that their legislation represents a genuine, technical advance. Under section 15, the subventive examination is extended to exclude the consideration of inventive steps. He says:
We believe that these two clauses should enhance the value of our patent system. They are also backed up by other provisions; in particular the present limitations on the area of search are broadened.
In the light of what is being said in these few paragraphs I would like to put it to the Minister that the same critical situation arises under this proposed legislation. A major criticism of the system which is being introduced in this Bill is that the patents when granted will not carry a sufficiently high presumption of validity and that the answer must be to strengthen search and examination carried out by the Patents Office in so far as difficult technical applications are concerned. It is a bad principle — and I share the views of my colleague in the Dáil, Deputy Barry — to write into legislation a flawed section which could well undermine the whole system on the basis, as the Minister has repeatedly said, that an accumulated backlog needs to be cleared. The Controller of Patents, Trademarks and Designs has repeated over the years that this question of the backlog needed to be addressed. The first solution he put forward was that staff needed to be augmented, that the resources needed to be improved rather than a curtailment. Of course, the opposite happened. There is a real danger that patents will be passed by the Controller on a blanket basis without giving the minority of cases, technical cases, sufficient attention. I urge the Minister, in the interests of having good legislation, to look at this matter. I will be pressing this amendment.
This amendment is not acceptable. An identical amendment was tabled on—Committee Stage in the Dáil. It would conflict with section 31 (1). The proposed amendment seeks to impose examination duties on the Controller. All that is required is that the applicant, in consultation with his patent agent, should put forward any amendments which may be required in the light of the search report established under section 29 (1) or the evidence submitted under section 31. In the circumstances it would be unnecessary and would be unhelpful to have an amendment as put forward by Senator Kennedy.
We have given very careful consideration to the amendment. It has given us an opportunity, having debated it in the Dáil, of having a detailed examination in the Seanad. It gives us an opportunity to review our position. I cannot accept the amendment. When the applicant employs somebody who is technically qualified to evaluate and make any necessary amendments to the application, that is the proper procedure. The amendment would be unhelpul to the smooth working of this legislation and, in the circumstances, I must reject it.
During Second Stage I referred to the case of The State (Jacob Rajan and Others) v. the Minister for Industry and Commerce and the Controller of Patents, Designs and Trademarks. That was an important case not alone from the point of view of the Minister for Industry and Commerce and the Controller of Patents, Designs and Trademarks but for that group of professional examiners who do such an excellent job in carrying out an examination of patent applications. During the course of his judgment in that case Justice Barron referred to the fact that:
Each member of the technical staff is recruited to the position of Examiner and each is academically highly qualified. They are university graduates either with postgraduate qualifications or research or industrial experience or both.
It is most important that these professional examiners be given the widest scope to perform their undoubted obligations in the best traditions of their profession. They asked a question of the Controller and it is reported in the judgment of Justice Barron. The examiners replied to the memorandum by a memorandum of their own, dated 17 January 1985. This involved detailed comments on the Controller's memorandum and so on. Two important questions were asked by the examiners. They asked if the Controller — and I am asking the Minister — would indicate what changes in the examination practice that has hitherto pertained in regard to these matters will occur as a result of this legislation; and, secondly, if the Minister would indicate the nature of the duties of the professional examiners.
This case raises important implications for us. In that judgment Justice Barron referred to the fact that:
The Controller is undoubtedly in charge, but this should not be confused with a right to direct officers to refrain from carrying out statutory functions.
I hope that in the future there is a better relationship between the Controller and the professional and technical staff. That relationship between the professional staff and the Controller was indicated by Kingsmill Moore, J. in McLoughlin v. the Minister for Social Welfare, 1958 Irish Law Reports, where he says:
It is common knowledge that professional men — architects, doctors, engineers — are employed in considerable numbers in Government Departments. They are none the less civil servants, subject to civil service discipline and tradition. They preserve also the traditions of their own profession.
It is important for us to acknowledge that the corps of professional examiners have indeed adhered to a very fine tradition and I hope this legislation will not undermine the very fine work that is being carried out by the professional examiners. I would hate to see a situation, as is suggested here and as the High Court judge indicates, where if the directives and memoranda that were issued by the Controller in regard to most of these examiners were not challenged in the courts, then many of those examiners would have been made redundant — the word "redundant" is used by the judge — thereby, leaving the examiners with nothing to do.
This amendment is important. The Minister, Deputy O'Malley, indicated here previously that this was the purpose of the amendment. I welcome the assurance given by the Minister here this morning that it is the purpose of the Government and the Department to set up the Patents Office as an independent, autonomous organisation and I look forward to that. As far as I am concerned, the role of the professional examiners seems to be in a state of limbo and has not been clarified so far in this House.
I disagree with Senator Kennedy in this case. My ambition, and indeed the ambition of my colleague, Minister O'Malley, is to make the Patents Office a very efficient organisation. In regard to the case the Senator is referring to, it was rather unusual that a case of that nature was taken at that stage. I am pleased to be in a position, with the support of the Seanad, to rectify the position that has resulted in a backlog of 20,000 applications at the moment. The present powers of patent examiners will be changed in this legislation. That is our ambition. That is the decision of Minister O'Malley and myself. We are very pleased to be in a position to put a Bill of this nature through the House in order to speed up the workings of the Patents Office. It will allow the Controller to get on with his job without in any way being hindered by the situation that exists at the moment.
Furthermore, all the applicants normally engage patent agents who are technically qualified to evaluate and make any necessary amendments to an application. Therefore, I do not think it is necessary for the patent examiners to carry this responsibility. In these circumstances I am quite clear, as is my colleague, on the rationale behind this section and in no circumstances will I accept the amendment put forward by Senator Kennedy. I will go further and say that I would not accept his arguments in this regard, because the situation is such at the moment that there are enormous delays and a backlog of work in that office. I believe that this new legislation, and the proposals which my Department and the Government are considering for the setting up of a separate agency, will allow the Patents Office to improve their services to the public. They will also be in a position of having very strong legislation to make the office more effective.
In these circumstances I have to reject this amendment.
Amendment put.
The Committee divided: Tá, 14; Níl, 25.
Tá
- Doyle, Avril.
- Harte, John.
- Hourigan, Richard V.
- Jackman, Mary.
- Kennedy, Patrick.
- McDonald, Charlie.
- McMahon, Larry.
- Manning, Maurice.
- Naughten, Liam.
- Neville, Daniel.
- O'Reilly, Joe.
- Ross, Shane P.N.
- Staunton, Myles.
- Upton, Pat.
Níl
- Bennett, Olga.
- Bohan, Eddie.
- Byrne, Hugh.
- Byrne, Seán.
- Cassidy, Donie.
- Dardis, John.
- Farrell, Willie.
- Fitzgerald, Tom.
- Foley, Denis.
- Haughey, Seán F.
- Honan, Tras.
- Hussey, Thomas.
- Keogh, Helen.
- Kiely, Dan.
- Kiely, Rory.
- Lydon, Don.
- McKenna, Tony.
- Mooney, Paschal.
- O'Brien, Francis.
- Ó Cuív, Éamon.
- O'Toole, Joe.
- Ryan, Brendan.
- Ryan, Eoin David.
- Wright, G.V.
Tellers: Tá, Senators Neville and McDonald; Níl, Senators Wright and Fitzgerald.
Amendment declared lost.
Sections 31 to 65, inclusive, agreed to.
SECTION 66.
Amendments Nos. 7 and 8 not moved.
Section 66 agreed to.
Section 67 agreed to.
SECTION 68.
I move amendment No. 9:
In page 35, between lines 33 and 34, to insert the following new subsection:
"(3) In settling the terms of any licence referred to in subsection (2) the Controller—
(a) shall endeavour to secure the widest possible user of the invention in the State consistent with the proprietor deriving a reasonable advantage from his patent rights,
(b) shall endeavour to secure to the proprietor the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in the State,
(c) shall endeavour to secure equality of advantage among the several licensees, and for this purpose may, on due cause being shown, reduce the royalties or other payments accruing to the proprietor under any licence previously granted,
(d) may so frame the terms as to preclude the licensee from importing into the State any goods the importation of which, if made by persons other than the proprietor or those claiming under him, would be an infringement of the patent, and in case such terms are so framed the proprietor and all licensees under the patent shall be deemed to have mutually covenanted against such importation.".
The purpose of this amendment is quite clear. It reintroduces the desirable provisions in section 37 (3) of the existing patents legislation — the Patents Act, 1964. I propose that these provisions be retained in the Bill because I do not believe it is desirable to have the matter of setting of fees and the terms of a licence, etc., decided by the Controller without general statutory guidelines and directions. Statutory guidelines should be set down by the Houses of the Oireachtas and we should not allow the Controller to invent or make up those guidelines, however admirable and competent the Controller may be, as he goes along. These guidelines have been in operation for the past 27 years and the Controller issued licences always subject to them. The Minister will say, as he said in the Dáil, that this provision was rarely if ever used but that does not mean they are unnecessary because the Controller always took, and indeed was under statutory obligation to do so, cognisance of them before he issued a licence.
This amendment is necessary to ensure that there is consistency in this matter over a long period. It may be that one Controller will take a particular view over a period of years and another Controller may take a different view.
It is for the Houses of the Oireachtas to set the guidelines. These guidelines have operated over the past 27 years. It is impossible to say they were rarely used because the Controller used them and he was under a statutory obligation to do so. I, therefore, urge the Minister to accept this amendment or to bring in his own amendment.
This amendment is not acceptable. An identical amendment tabled for Committee Stage in the Dáil was rejected as it would conflict with section 21 (1). The proposed amendment purports to impose examination duties on the Controller when all that it required is that the applicant, in consultation with his patent agent, should put forward any amendments which may be required.
A very important point was put forward by Senator Kennedy. Before adverting to the amendment, it is necessary to look at section 68. The objective of this section is to enable a patent holder to in effect advertise the fact that he is willing to give a licence as of right under his patent and he can request the Controller to make an entry to that effect in the Patents Register. When this is done, any third party is entitled as a right to a licence under the patent and only in default of agreement between the patentee and the third party may the terms of a licence be settled by the Controller. The situation is, therefore, very much one in which one might expect licence terms to be mutually agreed between the patent owner and a licensee. If licences were not to be agreed, in most cases there would be no point in the patent owner asking for endorsement of the patent licences of right in the register in the first place.
My difficulty with the new subsection which the amendment proposes to insert is that it is purports to lay down directions to be followed by the Controller in settling the terms of a licence which it seems to me the patent owner will find totally off-putting and, therefore, a disincentive to use this section at all. The fact that some of the provisions are included in the present law does not change my mind. The fact is that similar licences of right provisions exist in the present law and they are simply never utilised. In my view, there is no point in having provisions of this sort unless they serve as a stimulus to industrial and commercial development.
Looking at elements of the amendment, I consider the directions proposed to be given to the Controller in settling the terms of licences to be extremely cumbersome. The Controller is, for instance, required to secure the widest possible user of the invention in the State in settling the terms of a licence but there is no guidance a to how the Controller is to do this. Next, the Controller is obliged to secure the maximum advantage to the proprietor of the patent consistent with the licences working the invention at a reasonable profit. How is one to reconcile these objectives without going into interminable detail and place such burdens on the Controller as are totally incompatible with the scarce resources available to him to perform his chief task, namely, the grant of patents, as effectively and efficiently as possible? Next, the Controller is obliged to secure quality of advantage among the several licensees. The Controller, for instance, is to engage consultants to determine how this objective is to be met.
Another element of the amendment would authorise the Controller to frame the terms of a licence and preclude a licensee from importing goods covered by the patent. I do not think this criteria would stand up to scrutiny under the Treaty of Rome. All in all, therefore, the matter should be left to the judgment of the Controller in each case as happens with other matters which he has to decide under the Bill. Moreover, under section 70, which deals with the grant of compulsory licence by the Controller, no directions of the type proposed in the amendment are included in that section and it would be totally unbalanced to do so in section 68.
In the circumstances, I can not possible accept the amendment for the very good reasons I have outlined in detail. The amendment should be rejected by the Seanad.
Amendment put.
The Committee divided: Tá, 13; Níl, 23.
Tá
- Cosgrave, Liam.
- Doyle, Avril.
- Hourigan, Richard V.
- Jackman, Mary.
- Kennedy, Patrick.
- McDonald, Charlie.
- McMahon, Larry.
- Manning, Maurice.
- Naughten, Liam.
- Neville, Daniel.
- O'Reilly, Joe.
- Ross, Shane P.N.
- Staunton, Myles.
Níl
- Bennett, Olga.
- Bohan, Eddie.
- Byrne, Hugh.
- Byrne, Seán.
- Cassidy, Donie.
- Dardis, John.
- Farrell, Willie.
- Fitzgerald, Tom.
- Foley, Denis.
- Haughey, Seán F.
- Honan, Tras.
- Hussey, Thomas.
- Keogh, Helen.
- Kiely, Dan.
- Kiely, Rory.
- Lydon, Don.
- McKenna, Tony.
- Mooney, Paschal.
- O'Brien, Francis.
- Ó Cuív, Éamon.
- O'Keeffe, Batt.
- Ryan, Eoin David.
- Wright, G.V.
Tellers: Tá, Senators Neville and McDonald; Níl, Senators Wright and Fitzgerald.
Amendment declared lost.
Section 68 agreed to.
Sections 69 to 75, inclusive, agreed to.
SECTION 76.
Question proposed: "That section 76 stand part of the Bill."
I should be grateful if the Minister would indicate the changes that are being introduced in this legislation in regard to the use of inventions for the service of the State. That is important. Perhaps the Minister will indicate, under Part V, in particular section 76, the changes that are being made in this Bill.
I do not have much detail on this area for Senator Kennedy. Under subsection (1): a Minister may accept on behalf of the State an assignment of the whole of or share in any invention. Where he does so the Minister may do all or any of the matters specified in paragraphs (a) to (e) of subsection (1). That gives the Minister considerable powers but it is also very useful on behalf of the State that the Minister would be in a position to have these powers in the Bill. It may raise in relation to an application for a patent or indeed in the development of a patent that the State, or the IDA on behalf of the State, may have an involvement in that regard. It is a provision that may be required in the future. In a sense we are endeavouring as far as possible to ensure that this Bill is very broad and will allow for situations that may arise in the future. In the circumstances the Minister should be in a position to accept on behalf of the State an assignment of the whole of or a share in an invention. For instance, an invention could be left to the State by an inventor and we would have to be in a position to accept it. That is the main reasoning behind it. The cost of developing a particular invention could be so costly that it would require State involvement. If one thinks of State companies — the ESB, Telecom Éireann or Bord na Móna — there may be instances where they have to accept such an assignment. Generally speaking, the provision is useful and I am satisfied with it; I think Senator Kennedy is also satisfied that it should be there.
Question put and agreed to.
Sections 77 and 78 agreed to.
SECTION 79.
Question proposed: "That section 79 stand part of the Bill."
I did not put down an amendment on this section but I might do so on Report Stage. I raised the question with the Minister for Industry and Commerce on Second Stage regarding the rights of employee inventors. The Minister indicated that no representations were made to his Department in this regard. That may very well be true but surely employee inventors are entitled to some recognition and legal protection. I suggest that the common law approach to employees who make useful inventions for which the employer may derive vast and substantial profits in our existing legislation is not fair or just to employee inventors. We must be careful to strike a balance but it seems to me that in many cases the employer is in a very strong bargaining position while some employees may be in a very weak bargaining position. I am surprised that Senators who are members of the Labour Party and those who might be regarded as having a social streak or be supporters of the broad left, did not table such an amendment in spite of the fact that I raised this matter on Committee Stage. I am not a socialist or anything like it. It may be that these young, intelligent employees whose inventions subsequently are very beneficial to employers are not in a position to take up this matter with employers.
When the legislation passed through the Houses of Parliament in the United Kingdom there was general welcome across the board for it. The Conservative and Labour Members in the House of Lords welcomed it. It seems strange that in a small country like ours we would not have some type of protection. The common law is not sufficient, the way the common law is incorporated into the Patents Act, 1964, is not fair to employee inventors. I am surprised that some Labour Party Senators who might be regarded as being on the left did not advert to this. Perhaps the Minister might say something on it now.
The section confirms the legal status of a patent application and a patent. There is a class of property referred to in the law of choses in action as opposed to physical property. Applications for patents are nevertheless rights which can be assigned like property and on the basis of which the owner of the rights may sue for infringement. We have had no complaints about the provisions in the present law which leaves it to the contract of employment to determine entitlement to a patent.
Question put and agreed to.
Sections 80 to 96, inclusive, agreed to.
NEW SECTIONS.
Amendments Nos. 10 to 15, inclusive, not moved.
Sections 97 to 105, inclusive, agreed to.
SECTION 106.
I move amendment No. 16:
In page 56, lines 3 to 6, to delete subsection (3) and substitute the following:
"(3) Provided that if in any circumstances he thinks it right so to do the Minister may authorise any person whom he considers suitable to act as a patent agent in a particular case or at a particular time.".
The purpose of this amendment is to reinstate the wording of section 86 (2) of the Patents Act, 1964. It is quite a reasonable amendment and I urge the Minister to accept it.
The proposed amendment is identical to the one tabled in the Dáil on which there was a detailed debate. The amendment is not acceptable. The purpose of section 106 (3) is to enable the Minister to authorise from time to time suitably qualified persons, other than registered patent agents, to act on behalf of inventors in the filing of patent applications. The person concerned would have to apply to the Minister and demonstrate his qualifications to undertake such work. The amendment proposed by the Senator is misconceived in that, as drafted, it only allows the Minister to authorise people who are patent agents to act on behalf of others and thus the element of competition in this area of activity which is implicit in section 106 (3) would be removed. This provision is one that should be very welcome to the general public. It allows a person putting forward patent to engage a person who is suitably qualified. That person will apply to the Minister and the Minister may or may not approve their application. Basically, it ensures that the patent agents will not have a monopoly in this area. I feel this is a welcome development.
We also have to ensure that inventors only engage suitably qualified persons to put forward their applications for patents. In the circumstances it is not unreasonable that the Minister would have some say in this area. Generally, all applications come through patent agents. This may be the case in the future also, because patent agents provide an excellent service for an inventor. They take the burden of responsibility from the inventor who is not an expert in the area of obtaining a patent. I would generally recommend that an inventor would go to a patent agent to ensure that the invention is patented as quickly as possible. The patent agent would also have qualifications and knowledge in relation to European and international patents. In the circumstances I think it would be the desirable course. It is the one I recommend to inventors to avoid the large volume of documentation and detailed work that goes into lodging an application.
Nevertheless, in the case where a person is working in conjunction with somebody else or is aware of a person who is suitably qualified to submit an application on their behalf, then under this provision the Minister may accept the application. The Minister is in a position to accept the person's qualifications. For instance, if the invention is a drug, to my mind a suitably qualified chemist would be an appropriate, person to file an application. There is no point in an inventor in that area getting a person who is not suitably qualified to submit their application.
This type of provision is there to assist inventors. Quite frankly, I do not think many situations will arise where there will be any conflict or difficulty. I also feel that when a person is once accepted as being suitable, it would make their future applications quite unnecessary. In the circumstances, for very solid and sound reasons I could not accept the amendment put forward by Senator Kennedy.
I reiterate again that patent agents who are at present working in this country are very well qualified and provide an excellent service but we are not in favour, generally speaking, of monopolies and they have, basically, a monopoly at the moment. This removes that monopoly and allows the Minister an opportunity to approve an application from an agent or other person who puts it forward. In the circumstances I feel this amendment would not be acceptable to myself or my colleague, Minister O'Malley.
Is amendment No. 16 being pressed?
It is. The Minister has indicated a number of criteria by which this legislation should be judged. I agree basically with what he has just said. It seems to me, however, that the amendment I am proposing would meet those criteria better than what the Minister has indiciated. There is no question of a monopoly for the patent agents. I would, however, like to pay tribute to the patent agents in this country for the excellence of their professional work in helping inventors, especially small inventors with their applications. This is a very specialised and complicated area and the patent agents are doing an excellent job. The Minister indicated this would only arise on very rare occasions. My amendment would, in fact, meet that requirement. It would be in the public interest and, therefore, I am pressing the amendment.
Question put: "That the words proposed to be deleted stand."
The Committee divided: Tá, 23; Níl, 19.
Tá
- Bennett, Olga.
- Bohan, Eddie.
- Byrne, Hugh.
- Byrne, Seán.
- Cassidy, Donie.
- Dardis, John.
- Farrell, Willie.
- Fitzgerald, Tom.
- Foley, Denis.
- Haughey, Seán F.
- Honan, Tras.
- Hussey, Thomas.
- Keogh, Helen.
- Kiely, Dan.
- Kiely, Rory.
- Lydon, Don.
- McKenna, Tony.
- Mooney, Paschal.
- O'Brien, Francis.
- Ó Cuív, Éamon.
- O'Keeffe, Batt.
- Ryan, Eoin David.
- Wright, G.V.
Níl
- Cosgrave, Liam.
- Costello, Joe.
- Doyle, Avril.
- Jackman, Mary.
- Kennedy, Patrick.
- McDonald, Charlie.
- McMahon, Larry.
- Naughten, Liam.
- Neville, Daniel.
- Norris, David.
- Harte, John.
- Hederman, Carmencita.
- Hourigan, Richard V.
- O'Reilly, Joe.
- Ross, Shane P.N.
- Ryan, Brendan.
- Ryan, John.
- Staunton, Myles.
- Upton, Pat.
Tellers: Tá, Senators Wright and Fitzgerald; Níl, Senators Cosgrave and Neville.
Question declared carried.
Amendment declared lost.
Section 106 agreed to.
Sections 107 to 132, inclusive, agreed to.
FIRST SCHEDULE.
Amendments 17 and 18 are related and may be discussed together.
Government amendment No. 17:
In page 72, paragraph 7 (k), line 43, to delete "said statement" and substitute "evidence".
The two amendments proposed in paragraph 7 (k) are Government amendments. These are purely technical amendments. Paragraph 7 (k) was amended on Committee Stage in the Dáil by the deletion of certain words at the opening of the paragraph. Consequential adjustments should have been made also to the text further down the paragraph at the time, but were not. The amendments proposed are, therefore, necessary so that the paragraph as a whole makes sense.
Amendment agreed to.
Government amendment No. 18:
In page 72, paragraph 7 (k), to delete all words from and including "had" in line 44 down to and including "not" in line 46 and substitute "is not furnished within the time prescribed by the said Rules".
Amendment agreed to.
First Schedule, as amended, agreed to.
Second Schedule agreed to.
Title agreed to.
Bill reported with amendments.
When is it proposed to take the next Stage?
Now.
Next week was agreed between the Whips. I understood from the Acting Whip that there was agreement to take the Final Stages next week; I got an assurance from him that Committee Stage only would be taken today. I think the Minister would agree with that.
If an agreement has been reached, that is fine, but this Bill is very important and we are very anxious to get it back to the Dáil. I appeal to Senators to accept Report Stage if possible but, if not, that is a matter for the Seanad. This is very urgent.
I appreciate what the Minister has said and we want to give the Bill a speedy passage through this House but there is a tradition here that, if at all possible, Committee Stage and remaining Stages are not taken together. It is a very important Bill and we on this side of the House would like to have a further look at it. It will take a short time next week.
Will the Acting Leader comment on what is agreed?
If that has been agreed with the Whip, and I understand it has, then we have no objection to taking this next week.
Report Stage ordered for Wednesday, 12 February 1992.
Sitting suspended at 6 p.m. and resumed at 6.30 p.m.