I welcome Deputies Mulcahy and Fitzpatrick who are substituting for Deputies Martin Brady and Tony Dempsey. I also welcome the Minister of State at the Department of Enterprise, Trade and Employment, Deputy Michael Ahern, and his officials. We propose to consider the Bill from 11.30 p.m. until 1.30 p.m. Is that agreed? Agreed.
NEW SECTION.
I move amendment No. 1:
In page 3, before section 1, to insert the following new section:
"1.—In this Act—
"Principal Act" means the Patents Act 1992;
"1996 Act" means the Trade Marks Act 1996.".
The new section 1 lays down the definition of the term "Principal Act" as used in the Bill and also defines the meaning of the 1996 Act as used in the Bill, that is, the Trade Marks Act 1996.
Amendments Nos. 2, 10, 15, 19, 21, 22, 28 to 31, inclusive, and 40 and 42 are related and will be discussed together.
I move amendment No. 2:
In page 3, line 18, to delete "hereby".
These amendments, including one in the name of Deputy Hogan which I propose to accept, reflect changes in drafting style since the Bill was published.
I thank the Minister of State for allowing me the earth-shattering experience of having such a significant amendment accepted.
Amendment No. 4 is an alternative to amendment No. 3 and the two will be discussed together.
I move amendment No. 3:
In page 3, to delete lines 20 to 33 and substitute the following:
"(a) by inserting the following after the definition of “the Act of 1964”:
‘"Agreement establishing the World Trade Organisation" means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement which is for the time being in force in the State;',
(b) by inserting the following after the definition of “assignee”:
‘"Board of Appeal" means a Board of Appeal referred to in Article 21 of the European Patent Convention;',
(c) in paragraph (i) of the definition of “designate”, by inserting “, and includes a reference to a country being treated as designated in pursuance of the European Patent Convention or the Treaty” after “invention”,
(d) by inserting the following after the definition of “divisional application”:
‘"Enlarged Board of Appeal" means the Enlarged Board of Appeal referred to in Article 22 of the European Patent Convention;',
(e) in the definition of “European Patent Convention”, by inserting “, as amended for the time being” after “1973”,
(f) by inserting the following after the definition of “the Journal”:
‘"member of the World Trade Organisation" means a party to the Agreement establishing the World Trade Organisation;',
and
(g) by inserting the following after the definition of “the Treaty”:”.
Amendment No. 3 sets out the definitions used in the Bill. It is necessary because additional definitions are required as a result of the proposed amendment to the Bill, as published, namely, the definitions in paragraphs (b), (c), (d) and (e). The definitions in paragraphs (b) and (c) of the Bill, as published, have been renumbered as (f) and (g).
Amendment No. 4 proposes an amendment to the definition of TRIPs Agreement in line 24 of the Bill, that is, the substitution of the word "done" for "signed". As amendment No. 3 proposes the deletion of lines 20 to 33 of the Bill, this amendment falls if amendment No. 3 is accepted. If it is acceptable to Deputy Quinn, it is proposed to consider this amendment on Report Stage.
It is to do with terminology. I am quite happy with that approach. I thank the Minister of State.
Amendments Nos. 5 to 7, inclusive, may be discussed together.
I move amendment No. 5:
In page 4, before section 3, to insert the following new section:
"3.—Section 9 of the Principal Act is amended—
(a) in subsection (1), by inserting “, in all fields of technology,” after “An invention”, and
(b) by deleting subsections (4) and (5).”.
Amendments Nos. 5 and 7 make the necessary changes to sections 9 and 10 of the Act to incorporate the changes necessitated by the revision of Articles 52 and 53 of the European Patent Convention. Article 52 relates to patentable inventions and has been amended in paragraph 1 in the light of Articles 27(1) of the TRIPs agreement, with a view to enshrining technology in the basic provision of substantive patent law and making it plain that patent protection is available for technical inventions of all kinds.
Amendment No. 5 makes a corresponding change to section 9(1). Article 52(4) which provides that provided that methods of treatment of the human or animal body and diagnostic methods practised on the human body could not be regarded as inventions susceptible of industrial application has been deleted in the revision of EPC. While the surgical or therapeutic methods constitute inventions, they had been excluded by the fiction of their lack of industrial applicability. In reality, these methods were excluded in the interests of public health. It is therefore more transparent and preferable to include them as exceptions to patentability to group the three categories of exceptions to patentability together. Hence, Article 52(4) has been transferred to Article 53 as the new paragraph (c). It is, therefore, necessary to make the corresponding changes to sections 9 and 10 of the principal Act, by the deletion of the existing subsection (4) from section 9 and the insertion of a new paragraph (c)(i) and (ii) in section 10. Amendments Nos. 5 and 7 propose the necessary changes.
Subsection (5) of section 9 is proposed to be deleted as the Office of the Attorney General has advised that it may be legally unsound for the purposes of giving effect to the European convention, as amended, to modify the provisions referred to herein by ministerial order. This appears to have the same effect as Deputy Quinn's amendment. I note that the Deputy is opposed to section 4 which proposed to amend section 10 of the principal Act. The proposed amendment to section 10, paragraph (a) of the principal Act, is to bring into conformity with the terminology used in Article 27(2) of the TRIPs agreement and Article 53(A) of the revision of the European Patent Convention. The term “commercial exploitation” replaces the words, “publication or exploitation”.
Article 27(2) of the TRIPs agreement allows members to exclude from patentability only those inventions that commercial exploitation of which it is necessary to prevent to protect public order or morality.
I move amendment No. 7:
In page 4, before section 4, to insert the following new section:
"4.—Section 10 of the Principal Act is amended—
(a) in paragraph (a), by substituting “commercial exploitation” for “publication or exploitation”,
(b) in paragraph (b), by substituting “thereof;” for “thereof.”,
(c) by inserting the following after paragraph (b):
‘(c) a method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body.’,
(d) by renumbering the existing provision as subsection (1) of that section,
and
(e) by inserting the following:
‘(2) Subsection (1)(c) shall not apply to products, in particular substances or compositions, for use in any such method.’.”.
The section is opposed by Deputy Quinn.
I am happy with the explanation given by the Minister of State.
I move amendment No. 8:
In page 4, before section 5, to insert the following new section:
"5.—Section 11 of the Principal Act is amended by substituting the following for subsection (4):
‘(4) The provisions of subsections (2) and (3) shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in section 10(1)(c) provided that its use for any such method is not comprised in the state of the art.
(5) The provisions of subsections (2) and (3) shall also not exclude the patentability of any substance or composition referred to in subsection (4) for any specific use in any method referred to in section 10(1)(c), provided that such use is not comprised in the state of the art.’.”.
Section 11 reflects Article 54 of the European Patent Convention which relates to novelty of invention. Amendment No. 8 proposes the changes necessary to bring the section into line with the revised version of Article 54.
I move amendment No. 9:
In page 4, before section 5, to insert the following new section:
"6.—Section 23 of the Principal Act is amended by substituting the following for that section:
‘23.—(1) The date of filing of a patent application shall be taken to be the earliest date on which the applicant paid the filing fee and filed documents which contain—
(a) an indication that a patent is sought,
(b) information identifying the applicant or information sufficient to enable that person to be contacted by the Office, and
(c) (i) a description of the invention for which a patent is sought even where the description does not comply with other requirements of this Act or with any requirements that may be prescribed, or
(ii) a reference, complying with any relevant requirements that may be prescribed, to a previously filed application made by the applicant or the applicant's predecessor in title.
(2) It is immaterial for the purposes of subsection (1)(c)(i) whether the description of the invention concerned is in, or is accompanied by a translation into, a language accepted by the Office in accordance with any requirements that may be prescribed.
(3) If the Minister prescribes a later date for payment of the filing fee under section 18(3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in subsection (1) are filed.
(4) Where documents filed at the Office do not satisfy all of the conditions specified in subsection (1), the Controller shall as soon as practicable after the filing of those documents notify the applicant of the further documents required to be filed in order for the application to have a date of filing.
(5) Where documents filed at the Office satisfy all the conditions specified in subsection (1), the Controller shall as soon as practicable after the filing of the last of those documents notify the applicant of—
(a) the date of filing the application, and
(b) the requirements that must be complied with, and the periods within which they are required by this Act or rules made under this Act to be complied with, if the application is not to be treated as having been withdrawn.
(6) If any drawing or a part of a description referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing or that part of the description was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and—
(a) if the applicant makes any such request, the date of filing the drawing or that part of the description shall be so treated,
(b) if the request is not made, any reference to the drawing or that part of the description in the application shall be deemed to be deleted.
(7) If any drawing or part of a description referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing or that part of the description within the prescribed period, and—
(a) if the drawing or part of the description is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application,
(b) if the drawing or part of the description is not so filed, any reference to the drawing or part of the description in the application shall be deemed to be deleted.
(8) Where the applicant, subsequent to the date of filing under subsection (1), files a missing part of the description or a missing drawing, subsection (6)(a) or (7)(a) shall not apply where—
(a) on or before the date which is the date of filing the application under subsection (1) a declaration is made under section 26(1) in, or in connection with, the application, and
(b) the applicant makes a request for subsection (6)(a) or (7)(a), as the case may be, not to apply and that request complies with the prescribed requirements and is made within the prescribed period.
(9) An application which has a date of filing under this section or is deemed to have a date of filing accorded to it by virtue of section 24 or 81 shall be treated as withdrawn where any of the following applies:
(a) the filing fee has not been paid within the prescribed period;
(b) one or more claims or the abstract has not been filed within the relevant prescribed period;
(c) where a reference to a previously filed application has been filed as referred to in subsection (1)(c)(ii), the applicant fails to file at the Office—
(i) a description of the invention for which a patent is sought, before the end of the prescribed period,
(ii) a copy of the application referred to, complying with the relevant prescribed requirements, before the end of the prescribed period.
(10) This section applies to patent applications filed on or after the coming into operation of this section.'.".
The purpose of this amendment is to revise section 23 to reflect the requirements of Article 5 of the patent law treaty. Article 5 of the treaty sets out the formal requirements for obtaining a filing date and procedures to avoid loss of the filing date because of a failure to comply with other formality requirements.
Subsection (1) sets out what must be filed for the purposes of obtaining a filing date. Once these documents are filed, a filing date must be accorded. The information to be provided in paragraphs (a), (b) and (c) is broadly the same as in current section 23(1) of the Act. The documents must contain an indication that a patent is sought and they must also contain information identifying the applicant or information sufficient to allow the applicant to be contacted by the office. Paragraph (c)(i) requires that the office must receive disclosure of the invention in the form of a description even if this description does not comply with other requirements in the Act or rules, for example, that this part could be in a language other than English or Irish. Paragraph (c)(ii) provides for the requirement in Article 5 that in lieu of filing a description, the applicant can make reference to a previously filed application. The requirements such as the time limits for filing, certification of the earlier application by the office with which it was filed, if not filed with the Irish Patents Office, translation of the application etc. will be set out in the rules.
Subsection (2) provides that it is not necessary for the description filed under subsection (1)(c) above to comply with the translation requirements as set out in the rules in order to get a filing date, that is, the description to be filed does not have to be in the English or Irish language. However, it will be necessary to file a translation subsequently.
The new subsection (3) regarding payment of fees corresponds to existing section 23(2). It provides that the filing date accorded shall be the date on which the documents set out in subsection (1) are filed. If the Minister prescribes a later date for the payment of the filing fee under section 18(3) and under Article 5, a filing date must be given if documents containing the information in subsection (1) are filed. The documents need not be accompanied by a filing fee. Thus, it will be necessary to prescribe a later date for payment of the filing fee in the patents rule.
Subsection (4) provides that the applicant be notified where an application does not meet the requirements under subsection (1) and applicants must be notified of the additional documents required to be provided in order to be accorded a filing date.
Subsection (5) provides that the applicants must be notified of a filing date once the application has met the requirements under subsection (1). The applicant must be notified of additional requirements to be complied with in order for the application to proceed.
Subsection (6) corresponds to section 23(2) of the principal Act which allows for the late filing of a drawing but to reflect Article 5 it has been expanded to include also the late filing of a part of the description referred to in the application. Under this subsection the controller gives the applicant the opportunity to request that where a drawing or part of a description is filed subsequent to the date of filing, the date of filing be changed to the date on which the part or drawings are filed. If the request is made the filing date is changed. In the absence of such a request, the filing date remains the same while any reference to the later filed part of the description or drawing is deemed to be deleted.
Subsection (7) corresponds to the existing section 23(4) of the principal Act but it has been expanded to include a missing part of the description. The subsection provides that the controller shall invite the applicant to file a missing drawing or part of a description referred to in the application. If, however, it is filed subsequently, its incorporation will incur the penalty that the date of filing must be changed to the date on which the part or drawing is filed. If the drawing or the missing part of the description is not filed, the filing date will remain the same, while any reference to the drawing or part will be deemed to be deleted.
The new section 23(8) provides that where the applicant makes a declaration of priority in connection with an application, where he or she has filed an earlier application, in the State or another state party to the Paris Convention for the Protection of Industrial Property — to be replaced by a reference to the WIPO by the amendment of section 25 of the Act — and a request that the redating referred to in subsections (16) and (17) should not to apply, the date penalty will not apply if the request complies with the prescribed requirements. One of the requirements to be prescribed will be that the missing part of the description or the drawing should be present in the earlier application from which the application in question gains priority.
The new section 23(9) provides that an application can be deemed to have been withdrawn where the filing fee is not paid, requirements in respect of a previously filed application are not met or, as is currently the case, the claims or abstracts are not filed in time.
The new section 23(10) sets out transitional provisions to provide that the section will apply to patent applications filed after the section comes into force.
This is, for a particular reason, a very prescriptive set of procedures. I presume it is in harmony with the directive and that a similar procedure will apply across the European Union. Am I correct to presume that it will apply subject to domestic legal requirements in each jurisdiction?
The provisions comply with Article 5 of the World Intellectual Property Organisation copyright treaty and are not part of an EU directive.
Its aim is to bring domestic law into harmony with international standards that have already been negotiated and agreed. Will legal requirements to comply with domestic jurisprudence be met?
I have been informed that they will be met.
If we are to sign this in, it cannot be changed without an amendment to the Bill. Is this, in turn, related to an international agreement which is equally prescriptive?
Yes.
It brings us into line with international intellectual property structures.
And all of our own legislation.
I move amendment No. 10:
In page 4, line 13, to delete "hereby".
Amendments Nos. 11, 34 and 35 are related and may be discussed together.
I move amendment No. 11:
In page 4, before section 6, to insert the following new section:
"6.—Section 33 of the Principal Act is amended by inserting the following after subsection (1):
‘(1A) Subsection (1) does not affect the power of the Controller under section 110 to correct and error or mistake in the withdrawal of an application'.".
These amendments relate to and are consequential on the proposed revision of section 33 of the principal Act on the withdrawal of applications. Under section 33(1) of the principal Act, where an application is withdrawn, any withdrawal, even in error, cannot be revoked. The amendments seek to remedy this circumstance by providing for the possibility of correcting an error in the withdrawal of an application while providing protection for intervening third party rights.
Amendment No. 11 introduces a new subsection which provides that section 33(1) does not affect the power of the controller to correct an error in the withdrawal of an application. Amendments Nos. 34 and 35 concern, respectively, the procedure to be followed and the effect of restoration, especially the protection of the intervening rights of third parties. The amendments are consequential on the proposed amendment to section 33 that will allow the controller to correct an error or a mistake in the withdrawal of a patent application.
Amendment No. 34 seeks to amend section 110 of the principal Act on the correction of errors. The amendments proposed to section 110 set out the steps which must be followed where the controller receives a request to restore an application which has been withdrawn in error. The new subsection (2A) requires that where a patent application was published under section 28, a notice of the request to correct an error in the withdrawal of such an application be placed in the journal. New subsection (2B) provides that any person may in accordance with rules give the controller notice of opposition to the request and the controller shall determine the matter. New subsection (2C) provides that the controller must notify the person seeking the correction of any notice of opposition and shall determine the matter. As subsection (2A) provides for the advertisement in the journal of the request to the controller to correct an error in the withdrawal of an application and subsections (2B) and (2C) set out the opposition procedure, the amendments to subsection (3) provide that the controller will not, in addition, be obliged to notify the interested parties.
Where a withdrawn application is restored, it is necessary to provide for the protection of third parties acting in good faith who may have begun to use a patent after its withdrawal and before restoration. This is provided for in the proposed section 110A by amendment No. 35. The amendment seeks to insert a new section 110A, which sets out the effect of restoring an application that has been withdrawn in error where the withdrawn application had previously been published. It also provides protection for third parties acting in good faith who may in the period between withdrawal and publication of the application for restoration have begun to do an act that would have constituted infringement had the application not been withdrawn. The protection is similar to that proposed in respect of sections 35A and 35B regarding the reinstatement of applications for failure to meet a time limit.
Paragraph (b)(i) provides that any act done by the proprietor in respect of the application between its withdrawal and restoration is valid. Thus, it will be as if the application had continued in existence during the period of withdrawal. Paragraph (b)(ii) makes provision for infringing acts done during the period between an application being withdrawn in error and its restoration. It provides that where an application that had been published is restored, anything which has been done during the period between its withdrawal and restoration will constitute infringement of the rights conferred by publication of the application if the act was a repetition or continuation of an earlier act infringing those rights.
Paragraph (b)(iii) provides protection from infringement by third parties who in good faith exploit or make serious preparations to exploit an invention that is the subject of a withdrawn published patent application and in the period between withdrawal of the application and the publication of a notice of a request to restore the application in the journal. After publication of a request to correct an error in the withdrawal of an application, there can no longer be good faith on the part of a third party who began such an act because he or she would then be on notice that the applicant was seeking to restore his or her application. This paragraph makes specific reference to an order under section 37(7), the effect of which is that the third party acting in good faith can continue to use the invention without infringing the patent application and undertake certain other acts such as assignment in the course of a business or the right to do the act to another person.
Amendments Nos. 12, 13 and 38 are related and may be discussed together. Are all of the Minister of State's speaking notes so long-winded?
We are not in a position to scrutinise these provisions and must accept the assurances of the Minister of State in good faith. I would hate to be obliged to draft or legally scrutinise these provisions.
The provisions have been put before the legal advisers.
Have the legal requirements been met?
Yes.
Do we have the Minister of State's assurance?
Yes.
I thank the Minister of State.
I move amendment No. 12:
In page 4, before section 6, to insert the following new section:
"7.—The Principal Act is amended by inserting the following sections after section 35 but in Chapter IV:
‘35A.—(1) This section shall not apply to a patent application which has lapsed by reason of the failure to pay any renewal fee and section 35(3) shall continue to apply to any such application.
(2) Where an application for a patent is refused or is treated as having been withdrawn, as a direct consequence of a failure by the applicant to comply with a requirement of this Act or rules made thereunder within a period which is prescribed or specified by the Controller, subject to subsection (3), the Controller shall reinstate the application only if—
(a) the applicant requests the Controller to do so,
(b) the request complies with the prescribed requirements,and
(c) the Controller is satisfied that the said failure to comply occurred despite reasonable care having been taken to so comply.
(3) The Controller shall not reinstate the application if the period referred to in subsection (2) is prescribed or specified by the Controller—
(a) in relation to any proceedings before the Controller pursuant to Part VIII,
(b) for the purposes of section 25(1), or
(c) for the purposes of a request under this section or section118A.
(4) Where the application is made by 2 or more persons jointly, a request under subsection (2) may, with the leave of the Controller, be made by one or more of them without joining the others.
(5) Where the application has been published under section 28, the Controller shall publish notice of a request under subsection (2) in the Journal and within the prescribed period any person may give notice to the Controller of opposition thereto.
(6) If notice of opposition is duly given under this section, the Controller shall notify the applicant and determine the question.
(7) Where an application is reinstated under this section the applicant shall comply with the requirement referred to in subsection (2) within the further period specified by the Controller in making the order to reinstate the application, which further period shall not be less than 2 months.
(8) Where the applicant fails to comply with subsection (7) the application shall be treated as having been withdrawn on the expiration of the period referred to in that subsection.
35B.—(1) Where an application is reinstated under section35A—
(a) anything done under or in relation to the application during the period between termination and reinstatement shall be treated as valid,
(b) in a case where the application has been published under section 28 before its termination, anything done during the period referred to in paragraph (a), which would have constituted an infringement of the rights conferred by publication of the application if the termination had not occurred, shall be treated as an infringement of those rights if it was a continuation or repetition of an earlier act infringing those rights,
(c) in a case where the application has been published under section 28 before its termination and, after the termination and before publication of a notice of request for its reinstatement, a person—
(i) began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application if the termination had not taken place, or
(ii) made, in good faith, effective and serious preparations to do such an act, the person shall have the same protection as if an order had been made under section 37(7).
(2) In this section "termination", in relation to an application, means—
(a) the refusal of the application, or
(b) the application is treated as having been withdrawn.’.”.
Amendments Nos. 12 and 38 arise from Article 12 of the patent law treaty which provides for the re-establishment of rights. Restoration of lapsed patents for failure to pay a renewal fee is already provided for in section 37 of the Patents Act. Amendment No. 12 inserts two new sections after section 35 to provide for the reinstatement of applications, while amendment No. 38 provides for a restoration where the proprietor of a European patent has failed to provide a translation within the permitted time limit under section 119. Amendment No. 13 is to clarify the protection of the intervening rights of a third party when a lapsed patent is restored under section 37 and to align the effects of restoration with those proposed in section 35B.
Is the reinstatement fee the same as the original fee?
That has not been determined in this Bill or the amendments.
I move amendment No. 13:
In page 4, before section 6, to insert the following new section:
"8.—The Principal Act is amended in section 37—
(a) by substituting the following for subsection (7)(b):
‘(b) shall be subject to such provisions as are prescribed for the protection of persons who, after the expiration of the period of extension specified for the purpose of section 36(3) and before publication of notice of the application in the Journal under subsection (4), may have begun to avail themselves of the invention which is the subject of the patent,’,
and
(b) by inserting the following after subsection (7):
‘(8) An order under this section for the restoration of a patent shall have the following effect:
(a) anything done under or in relation to the patent during the period beginning on the date on which the patent lapsed and ending on the date of an order under this section shall be treated as valid;
(b) anything done during the period referred to in paragraph (a) which would have constituted an infringement if the patent had not lapsed shall be treated as an infringement—
(i) if it was done at a time when it was possible for the patent to be renewed during the period of extension specified for the purpose of section 36(3), or
(ii) if it was a continuation or repetition of an earlier infringing act.'.".
Amendments Nos. 14 and 20 are related and may be discussed together.
I move amendment No. 14:
In page 4, before section 6, to insert the following new section:
"9.—Section 38 of the Principal Act is amended by inserting the following after subsection (6):
‘(7) In considering whether or not to allow an amendment proposed under this section the Court or the Controller shall have regard to any relevant principles applicable under the European Patent Convention.'.".
These amendments are to take account of the revision of the European Patent Convention as regards post-grant amendment. Amendment No. 14 provides that the controller and a court will continue to have discretion under section 38 to allow or refuse an amendment, but in exercising that discretion, subsection (7) requires the controller or the court to have regard to any relevant principles which are applicable in amendment or limitation proceedings under the European Patent Convention. This should ensure consistency in the approach as regards post-grant amendments in national proceedings and before the EPO.
Amendment No. 20 provides for both routes of amendment, that is, amendment of the specification under section 38 or amendment under the European Patent Convention. The revision to subsection (3) and the introduction of the new subsection (4) facilitate this. In either case, the amendment carried out must be to the satisfaction of the controller or court to avoid revocation of the patent.
I move amendment No. 15:
In page 4, line 29, to delete "hereby".
Amendments Nos. 16 and 41 are related and may be discussed together.
I move amendment No. 16:
In page 4, before section 7, to insert the following new section:
"7.—Section 45 of the Principal Act is amended in subsections (1) and (2) by deleting "the terms of" in each place where it occurs.".
Section 45 reflects the current version of Article 69 of the European Patent Convention. The extent of protection of a patent is determined by the terms of the claims. Amendments have been made to Article 69 because the expression "terms" is unclear in scope. The equivalent expressions in the three EPO languages, namely, English, French and German, do not have the same meaning. Amendment No. 15 provides for the necessary amendments in subsections (1) and (2) of section 45 to reflect this drafting provision.
Amendment No. 41 amends the Second Schedule, pertaining to directions referred to in section 45(3), and it is consequent on the additional paragraph on equivalence to the protocol on the interpretation referred to in Article 69 of the European Patent Convention. Its purpose is to further clarify the extent of protection conferred by a patent and thus to contribute to more uniform application of these provisions by the courts in the contracting states of the EPO in litigation proceedings.
Is there a problem with language interpretation in various cases taken before the courts? A pattern in the amendments indicates that the interpretation of language is an issue.
As I stated, patent law is written in English, French and German and there has been a problem with inconsistent terminology. The provisions are to alleviate this problem.
I move amendment No. 17:
In page 4, before section 7, to insert the following new section:
"8.—Section 50 of the Principal Act is amended by inserting the following after subsection (3):
‘(4) The Court may also grant relief under this section in the case of a European patent designating the State on condition that the claims are limited to the Court's satisfaction by the European Patent Office at the request of the proprietor.'.".
The purpose of the new subsection (4) is to provide that relief may be granted on condition that the claims are limited to the court's satisfaction by the European Patent Office at the request of the proprietor. The limitation would have to be done to the satisfaction of the court for the relief to be granted.
I move amendment No. 18:
In page 4, before section 7, to insert the following new section:
"9.—Section 53 of the Principal Act is amended by substituting the following for subsection (3):
‘(3) Proceedings may not be brought under this section as regards—
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process, or
(b) a threat, made to a person who made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.’.”.
Section 53 provides a remedy for any persons aggrieved by groundless threats made by a person — for example, the patent proprietor — to bring infringement proceedings. In certain circumstances, they may bring a claim against a person making the threat, including a claim of damages. The proposed amendment will limit the circumstances in which such a claim regarding groundless threats may successfully be made. Subsection (3)(a) provides for a revision in the existing section 53(3) and under the subsection it remains the case that the person — the patent proprietor, for example — is protected from a claim under section 53 as long as he threatens someone with infringement proceedings only in respect of an act alleged to consist of making or importing the patented product for disposal or of using the patent process in respect of acts of primary infringement, as opposed to acts of secondary infringement.
Under the proposed subsection (3)(b), protection for a patent proprietor is now extended to threats to bring proceedings in respect of any other act of infringement, such as selling or stocking the patented product or offering the patented product for use provided that the person being threatened has made or imported that product for disposal or used that process.
I take it this is an enabling measure to reinforce the innovator and protect him for predatory attacks by those who would more or less try to trip him up or threaten him. It is limiting the area in which a counterclaim can be made against an innovator who is lodging a patent.
The Deputy has described it perfectly.
It is pro-innovation.
I move amendment No. 19:
In page 4, line 36, to delete "hereby".
I move amendment No. 20:
In page 4, before section 8, to insert the following new section:
"8.—Section 59 of the Principal Act is amended—
(a) in subsection (3), by deleting “, under section 38,”, and
(b) by inserting the following after subsection (3):
‘(4) For the purposes of subsection (3), the reference to the specification being amended is to its being amended under section 38 and also, in the case of a European patent designating the State, to its being amended under any provision of the European Patent Convention under which the claims of the patent may be limited by amendment at the request of the proprietor.'.".
I move amendment No. 21:
In page 4, line 40, to delete "hereby".
I move amendment No. 22:
In page 5, line 1, to delete "hereby".
Amendments Nos. 23 to 27, inclusive, are related and are to be discussed together.
I move amendment No. 23:
In page 5, line 6, to delete "patent" and substitute "patent,".
I will be happy to hear the response of the Minister of State.
The grouped amendments are technical drafting amendments and I need to consider them further, which I will do before Report Stage.
I move amendment No. 28:
In page 7, line 10, to delete "hereby".
I move amendment No. 29:
In page 7, line 34, to delete "hereby".
I move amendment No. 30:
In page 8, line 5, to delete "hereby".
I move amendment No. 31:
In page 8, line 8, to delete "hereby".
I move amendment No. 32:
In page 8, before section 14, to insert the following new section:
"14.—Section 92 of the Principal Act is amended in subsection (3) by inserting "or by any other enactment" after "by this Act".".
Section 14 is a clarifying measure that amends section 92(3) of the Patents Act 1992 to ensure that the provision applies in the exercise of any of the functions assigned to the controller, not only under the Patents Act but also under any other enactment in which the controller is assigned functions. The provision in the Patents Act relates to the manner of providing evidence to the controller in any proceedings before him. It allows the controller to summon witnesses to attend before him to examine and to swear in or affirm witnesses attending before him, and require any witness to produce documentation, etc.
In practice, this provision has been applied in the case of legislation subsequent to the 1992 Act such as in the case of the Trade Marks Act 1996 and in the Industrial Designs Act 2001. This opportunity, however, is being availed of to apply the definitive provision in the Patents Act to subsequent enactments before the controller and that is the effect of this amendment.
Amendments Nos. 33, 50 and 56 are related and will be discussed together.
I move amendment No. 33:
In page 8, before section 14, to insert the following new section:
"15.—Section 96 of the Principal Act is amended in subsection (6)—
(a) by renumbering that subsection as paragraph (a) of that subsection,
(b) by inserting “and subject to paragraph (b)” after “this Act”, and
(c) by inserting the following paragraph:
‘(b) Where a written statement of the grounds of the order or decision of the Controller, in the exercise of his discretionary power, has been requested in the prescribed manner and within the prescribed period by a party to the proceedings, the period of three months shall begin on the date on which the written statement is furnished to the party requesting it.’.”.
While these amendments occur in three different intellectual property Acts they relate to the same subject matter. The point at issue is the period within which a decision or order of the Controller of Patents, Designs and Trade can be appealed to the court. If the amendments are approved all three Acts will provide consistently for the computation of the date for appeal to the court by reference in the first instance to the date of the controller's decision or order and in the second instance, where the written grounds of the controller are requested, from the date on which the written grounds of the controller's decisions are provided to the party, as opposed to the date of the controller's decision.
I move amendment No. 34:
In page 8, before section 14, to insert the following new section:
"16.—Section 110 of the Principal Act is amended:
(a) by inserting the following after subsection (2):
‘(2A) Where the Controller is requested to correct an error or mistake in a withdrawal of an application for a patent, which application was published under section 28 and details of the withdrawal were published by the Controller, the Controller shall publish notice of the request in the Journal.
(2B) Where the Controller has published a notice in accordance with subsection (2A) any person may within a prescribed period give notice to the Controller of opposition to the request.
(2C) If notice of opposition is given under subsection (2B), the Controller shall notify the person who made the request and shall determine the matter.",
(b) in subsection (3), by inserting “other than a request to correct an error or mistake in a withdrawal of an application for a patent referred to in subsection (2A),” after “subsection (1),’.”.
I move amendment No. 35:
In page 8, before section 14, to insert the following new section:
"17.—The Principal Act is amended by inserting the following section after section 110:
‘110A.—Where—
(a) the Controller is requested to correct an error or mistake in a withdrawal of an application for a patent, and
(b) an application for a patent has been restored in accordance with that request, the following provisions apply:
(i) anything done under or in relation to the application during the period between the application being withdrawn and its restoration shall be treated as valid;
(ii) where the Controller has published notice of the request referred to in section 110(2A), anything done during the period referred to in subparagraph (i) which would have constituted an infringement of the rights conferred by publication of the application if the application had not been withdrawn shall be treated as an infringement of those rights if it was a continuation or repetition of an earlier act infringing those rights;
(iii) where the Controller has published notice of the request referred to in section 110(2A) and, after the withdrawal of the application and before publication of the notice, a person—
(I) began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application if the withdrawal had not taken place, or
(II) made, in good faith, effective and serious preparations to do such an act, the person shall have the same protection as if an order had been made under section 37(7).'.".
I move amendment No. 36:
In page 8, before section 14, to insert the following new section:
"18.—The Principal Act is amended by inserting the following section after section 118 but in Part XI:
‘118A.—(1) If an applicant for, or proprietor of, a patent fails to observe any time limit specified by the Controller the applicant or proprietor may request an extension of time in accordance with the prescribed requirements.
(2) Subject to subsections (4) and (5), the Controller shall grant the request, provided that the prescribed requirements are complied with.
(3) If the request for an extension of time is granted, the legal consequences of the failure to observe the time limit specified by the Controller shall be deemed not to have ensued.
(4) Where a time limit has been extended under subsection (2) any further request for an extension of time may be granted by the Controller subject to the conditions that the Controller sees fit.
(5) This section does not apply to proceedings before the Controller pursuant to Part VIII of the Act.'.".
The purpose of this amendment is to reflect Article 11 of the patent law treaty, which requires that one extension of a time limit set by the office, as opposed to one prescribed in legislation, must be allowed and not subject to the exercise of discretion on the part of the controller. The amendment inserts a new section after section 118, namely, section 118A which will provide that where the applicant or proprietor of a patent has failed to observe a time limit specifically set by the controller that person may be granted one extension as of right. Subsection (1) provides that the applicant or proprietor who has failed to meet the time limit may request an extension of time and subsection (2) provides that the controller shall grant the extension, subject to subsections (4) and (5). Subsection (3) provides that if the extension of time is granted, the legal consequences of the failure to observe the time limit shall be deemed not to have ensued.
Subsection (4) provides that any further extension of time will be at the controller's discretion. There is no automatic right to a further extension of time and subsection (5) provides that the section does not apply to proceedings before the controller as this is where the controller exercises a quasi-judicial functions, for example where there are inter partes proceedings. This is in accordance with Article 11 of the patent law treaty.
I move amendment No. 37:
In page 8, before section 14, to insert the following new section:
"19.—Section 119 of the Principal Act is amended—
(a) in subsection (2), by inserting “, limitation” after “amendment”,
(b) in subsection (4)—
(i) by inserting ", limited" after "amended" and
(ii) by inserting "or limitation" after "amendment",
(c) in subsection (5), by substituting the following for paragraph (a):
‘(a) under the European Patent Convention a European patent designating the State—
(i) is revoked for failure to observe a time limit and is subsequently restored, or
(ii) is revoked by the Board of Appeal and is subsequently restored by the Enlarged Board of Appeal, and',
and
(d) in subsection (6)(b)—
(i) by inserting "or a limitation" after "amendment", and
(ii) by inserting "or limited" after "amended".".
I move amendment No. 38:
In page 9, before section 15, to insert the following new section:
"15.—The Principal Act is amended by inserting the following after section 119:
‘119A.—(1) Where a translation of the specification concerned is not filed within the period prescribed under section 119(6), an application may be made to the Controller to restore the effect of section 119(1).
(2) An application under this section shall contain a statement (to be verified in the manner that may be prescribed) setting out the circumstances which led to the failure to file the translation referred to in subsection (1), and the Controller may require from the applicant any further evidence that he considers necessary.
(3) An application under this section shall be accompanied by the translation together with the prescribed fee.
(4) An application under this section shall be made within the prescribed period and shall be accompanied by the prescribed application fee.
(5) Where the Controller is satisfied that reasonable care was taken to ensure that the translation was filed within the period prescribed under section 119(6), the Controller shall advertise the application in the Journal, and within the prescribed period any person may give notice to the Controller of opposition thereto.
(6) Where notice of opposition is duly given under this section, the Controller shall notify the applicant and determine the issue.
(7) Where the Controller decides to allow an application under this section, he shall make a restoration order and publish notice of the restoration in the Journal.
(8) Where, in the period between the expiration of the prescribed period under section 119(6) for filing a translation and the date on which the application under this section was published in the Journal, a person—
(a) began in good faith to do an act which would have constituted an infringement of the rights conferred by the patent had it been in force, or
(b) made, in good faith, effective and serious preparations to do such an act, the person shall have the same protection as if an order had been made under section 37(7).
(9) Where the Controller refuses an application under this section, the patent shall be treated as always having been void.
(10) Where a restoration order is made by the Controller, a translation filed under subsection (3) shall be published.'.".
I move amendment No. 39:
In page 9, before section 15, to insert the following new section:
"16.—Section 120 of the Principal Act is amended—
(a) by substituting the following for subsection (4):
‘(4) Subsections (1), (2) and (3) shall cease to apply to an application for a European patent designating the State, except as provided for in subsection (4A), if—
(a) the application is refused or withdrawn or deemed to be withdrawn, or
(b) the designation of the State in the application is withdrawn or deemed to be withdrawn, but shall apply again if the rights of the applicant are re-established under the European Patent Convention, as from the re-establishment of those rights.’,
(b) by inserting the following after subsection (4):
‘(4A) (a) The occurrence of any of the events referred to in subsection (4)(a) or (b) shall not affect the continued operation of section 11(3) in relation to matter contained in an application for a European patent designating the State which by virtue of that provision has become part of the state of the art as regards other inventions.
(b) The occurrence of any of the events mentioned in subsection (4)(b) shall not prevent matter contained in the application for a European patent designating the State becoming part of the state of the art by virtue of section 11(3) as regards other inventions, where the event occurs before the publication of that application.
(c) Paragraph (b) shall apply only to European patents and European patent applications filed after the coming into operation of that paragraph.’,
and
(c) by substituting the following for subsection (7):
‘(7) (a) An application for a European patent may be filed at the Office. The Office shall forward an application to the European Patent Office within the time specified in the Implementing Regulations to the European Patent Convention.
(b) This provision shall not apply in respect of an application which is a European divisional application under the European Patent Convention.’.”.
This amendment refers to section 120 of the principal Act which sets out the effect of filing a European application designating the State which, subject to the provisions of the section, is treated as an application for a national patent, and subsection (4) provides for the consequences of the withdrawal or refusal of a European application or the removal of the designation of the State from such an application. It also provides for the effect of the revival of such an application under the European Patent Convention.
I move amendment No. 40:
In page 9, line 7, to delete "hereby".
I move amendment No. 41:
In page 9, before section 17, to insert the following new section:
"17.—The Principal Act is amended by substituting the following for the Second Schedule:
‘SECOND SCHEDULE
DIRECTIONS REFERRED TO IN SECTION 45(3)
General principles
Section 45 should not be interpreted in the sense that the extent of the protection conferred by a patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of certainty for third parties.
Equivalents
For the purpose of determining the extent of protection conferred by a patent, due account shall be taken of any element which is equivalent to an element specified in the claims.'.".
I move amendment No. 42:
In page 9, line 11, to delete "hereby".
I move amendment No. 43:
In page 9, before section 18, to insert the following new section:
"18.—Section 2 of the 1996 Act is amended in subsection (1) by inserting the following after the definition of "the Act of 1963":
‘"Agreement establishing the World Trade Organisation" has the meaning assigned by section 60;'.".
Section 2 is the interpretation section of the Trade Marks Act 1996 and this amendment is necessary because of Ireland's ratification of the agreement establishing the World Trade Organisation, WTO, which was signed at Marrakesh on 15 April 1994. The agreement on the trade-related aspects of intellectual properties, the TRIPs agreement is annexed to the WTO agreement and covers a range of intellectual property aspects including trade marks, designs, patents, and a copyright and related rights and contains minimum provisions which must be provided in those intellectual property laws of member countries of the WTO. In general, Irish trade mark law is compatible with the TRIPs agreement. However, this amendment, combined with amendments in section 41 and 43 of the Bill, ensures the Trade Marks Act 1996 is fully compliant with the TRIPs agreement.
I move amendment No. 44:
In page 9, before section 18, to insert the following new section:
"19.—Section 10 of the 1996 Act is amended by substituting the following for subsection (3):
‘(3) A trade mark which is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the State (or, in the case of a Community trade mark, in the Community) and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.'.".
This amendment is in regard to section 10 of the Trade Marks Act 1996, which sets out the grounds in which registration of a trade mark can be refused on relative grounds, that is, on the basis of the existence of earlier rights. This amendment amends that section to take on board jurisprudence established in two European Court of Justice decisions dating from 2003. As it stands, section 10(3) of the Trade Marks Act 1996 is not consistent with the court's interpretation of article 52 of the trade mark harmonisation Directive 89/104 EEC, on which the section is based.
I move amendment No. 45:
In page 9, before section 18, to insert the following new section:
"20.—Section 14 of the 1996 Act is amended by substituting the following for subsection (3):
‘(3) A person shall infringe a registered trade mark if that person uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark where the trade mark has a reputation in the State and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.'.".
The amendment proposed in this section is a logical follow-up amendment No. 44. Section 14 of the Trade Marks Act 1996 sets out the Acts which constitute infringement of a trade mark.
I move amendment No. 46:
In page 9, before section 18, to insert the following new section:
"21.—Section 25 of the 1996 Act is amended—
(a) by substituting the following for subsection (2):
‘(2) If a Judge of the District Court is satisfied by information on oath that there is reasonable ground for suspecting that infringing goods, material or articles are on any premises or place in the course of business or otherwise for the purpose of dealing in any way, the Judge may grant a search warrant authorising a member of the Garda Síochána, accompanied by such other members of the Garda Síochána or other person or persons as that member thinks proper, at any time or times within 28 days from the date of the issue of the warrant on production, where requested, of that warrant, to enter and search the premises or place specified in the warrant using reasonable force where necessary, and to do all or any of the following acts:
(a) to seize any such goods, material or articles;
(b) to make an inventory or prepare other evidence of infringement of a registered trade mark or potential infringement of a registered trade mark;
(c) to seize anything found there which that member believes on reasonable grounds may be required to be used in evidence in any proceedings brought in respect of an offence under this Act;
(d) to require any person found there to give his or her name and address.’,
(b) by inserting the following after subsection (2):
‘(2A) A warrant issued under this section may authorise persons, including the registered proprietor or his or her designated representative, to accompany and assist any member of the Garda Síochána in executing the warrant or in collating any inventory or other evidence.',
and
(c) in subsection (4), by inserting “or place” after “premises”.”.
The purpose of this amendment is to bring section 25(2) of the Trade Marks Act 1996 into line with more legislation in the area of intellectual property, such as the Copyright and Related Rights Act 2000. In general, section 25 of the Act provides for search and seizure powers of the District Court where suspected or actual infringement has occurred or is likely to occur.
It is not in contravention of the Berne Convention.
This will enable the District Court to seize goods with labels such as Nike and Adidas.
Yes, as well as records and DVDs.
Anything to do with the music industry.
That is very important.
It is extremely important for our international reputation. We are seen as the leaders in the protection of intellectual property. The computer industry is also very important.
If someone on a street market in Youghal comes across something he or she suspects to be counterfeit, it can be reported locally, the Garda can act locally and the courts can prosecute locally. The trader also has redress to the District Court to argue his or her case.
That is the result of this amendment.
It is a speedy response to counterfeiting.
Rather than having to go through the other methods, it can be done at local level.
That appears to be a common sense approach.
I move amendment No. 47:
In page 9, before section 18, to insert the following new section:
"22.—Section 29 of the 1996 Act is amended in subsection (2) by inserting the following after paragraph (c):
‘(ca) matters arising from the operation of law which affect the proprietorship of a registered trade mark;’.”.
As it stands, section 29(2) of the Trade Marks Act 1996, which sets out the transaction that constitutes registerable transactions under the Act, that is, transactions which must be noted on the registered trade mark, does not expressly provide for the record of mergers or changes in legal entity. In recent years, this type of activity has become a much more regular feature of business and the Association of Patent and Trademark Agents has stated that changes in legal entity should specifically be recognised as a registerable transaction in the Act. This amendment specifically provides for the recognition of changes affecting the proprietorship of a mark as a registerable transaction under the Act.
Is a registerable trade mark in perpetuity or in a 70-year timeframe such as that in place for songwriters?
One can keep renewing it and it can be for life.
I move amendment No. 48:
In page 9, before section 18, to insert the following new section:
"23.—Section 41 of the 1996 Act is amended in subsection (2) by inserting ", or the successor in title to such a person," after "on a person".".
Section 41 applies to any country or territory with which the State has entered a treaty, convention, arrangement or engagement for the reciprocal protections of trademarks. It permits the Government to make an order to confer a right to propriety on a person who has duly filed an application for protection of a trademark in such a country or territory. Section 40 of the Trade Marks Act 1996 contains similar provisions regarding countries party to the Paris Convention, but also extends the right to priority to successors in title. In this amendment, it is proposed to extend the right to priority to successors in title in the case of section 41.
Notwithstanding the competence of the European Union in matters of trade, is it the national responsibility of member states to protect intellectual property rights, trade rights and so on? In its legal capacity, does the European Union have a trade mark or intellectual property agreement with third countries?
Each country is a single territory as far as I am aware.
It is territorial, but there is a Community competence.
The position is the same in America. There are 11 territories which divide the country for patenting purposes and for registering intellectual property. That is the case for the music industry at any rate. I presume it is the same for everything else.
I move amendment No. 49:
In page 9, before section 18, to insert the following new section:
"24.—Section 60 of the 1996 Act is amended in subsection (1)—
(a) in paragraph (a), by deleting “and”,
(b) by inserting the following after paragraph (a):
‘(aa) “Agreement establishing the World Trade Organisation” means the Agreement establishing the World Trade Organisation signed at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement which is for the time being in force in the State;’,
and
(c) in paragraph (b), by substituting “the Paris Convention or the Agreement establishing the World Trade Organisation” for “that Convention”.”.
This is amendment ensures that the Trade Marks Act 1996 is fully compliant with Ireland's obligations as a member of the World Trade Organisation. Paragraph (b) includes a definition of the agreement establishing the WTO. Paragraph (c) expands the definition of the term “convention country” so that it will apply to countries other than the State which are party to the agreement establishing the WTO, as well as the Paris Convention. The practical effect of this is that any country which becomes a member of the WTO will be accorded the same rights as any country which is a party to the Paris Convention, from the perspective of conferring rights to priority in a trademark application to potential applicants.
What about India and China?
As they are both in the WTO, they come under these agreements, as does Japan.
I move amendment No. 50:
In page 9, before section 18, to insert the following new section:
"25.—Section 79 of the 1996 Act is amended by substituting the following for subsection (1):
‘(1) (a) Save as otherwise provided by this Act and subject to paragraph (b), except by leave of the Court, an appeal shall lie to the Court from a decision of the Controller under this Act within three months from the date of the decision.
(b) Where a written statement of the grounds of the decision of the Controller, in the exercise of his discretionary power, has been requested in the prescribed manner and within the prescribed period by a party to the proceedings, the period of three months shall begin on the date on which the written statement is furnished to the party requesting it.’.”.
I move amendment No. 51:
In page 9, before section 18, to insert the following new section:
"26.—Each provision of the 1996 Act specified in column (1) of the Table to this section is amended as specified in column (2) of that Table opposite the mention of that provision in column (1).
TABLE
|
Provisions Affected Amendment |
Amendment |
|
(1) |
(2) |
|
Sections 11(1)(c), 60(2), 61(1) and (2), 62(2) and (3) and 63(2) |
Insert “or the Agreement establishing the World Trade Organisation” after “the Paris Convention” in each place where it occurs. |
|
Section 64 |
Insert the following subsection after subsection (4): “(5) A reference in this section to Article 6ter of the Paris Convention shall be read as a reference to that Article as applied by the Agreement establishing the World Trade Organisation.”. |
"
The amendments are necessary to ensure that the Trade Marks Act 1996 complies fully with the agreement on trade-related aspects of intellectual property rights. The various references to the Paris Convention in the sections of the Act, as identified, are expanded and a reference is also included to the agreement establishing the World Trade Organisation. This is to ensure a country or territory that becomes a member of the WTO will be accorded the same rights in claiming priority from earlier applications as countries which are party to the Paris Convention.
I move amendment No. 52:
In page 9, before section 18, to insert the following new section:
"27.—The Third Schedule to the 1996 Act is amended by inserting the following after paragraph 15:
‘ Transitional Provisions
16. The amendment effected by section 26 of the Patents (Amendment) Act 2006 to section 61(2) shall not affect the continuation of any bona fide use of a trade mark begun before 1 January 1996.
17. The amendments effected by section 24(c) of the Patents (Amendment) Act 2006 and the amendment effected by section 26 of the said Act to section 63 shall not effect the rights of a person whose bona fide use of a trade mark to which section 63 applies and which is protected under the Agreement establishing the World Trade Organisation began before 1 January 1996.’.”.
This amendment augments the transitional provisions of the Trade Marks Act 1996 by reference to ratification of the World Trade Organisation, WTO, agreement. Paragraph 16 seeks to ensure any bona fide use of the mark engaged in by a person or persons prior to the entry into effect of the WTO agreement remains unaffected.
Paragraph 17 seeks to ensure the continuation in effect of rights of any person who had, before the entry into force of the WTO agreement, engaged in bona fide use of an emblem or abbreviation or name subsequently protected under WTO agreement and does not affect same.
I move amendment No. 53:
In page 9, before section 18, to insert the following new section:
"28.—The Copyright and Related Rights Act 2000 is amended by inserting the following after section 364:
‘364A.—In any proceedings before any court under this Act, the Controller shall not be awarded or be ordered to pay costs.'.".
Both the Trade Marks Act 1996 and the Industrial Designs Act 2001 contain similar provisions. While the issue is less likely to arise in the case of copyright and related rights, it is considered that for consistency, a similar approach should be adopted. This section ensures that in any court proceedings in which a controller is involved under the Copyright and Related Rights Act, the controller can neither be the recipient of an award for costs nor be ordered to pay costs.
I move amendment No. 54:
In page 9, before section 18, to insert the following new section:
"29.—Subsection (2) of section 367 of the Copyright and Related Rights Act 2000 is repealed.".
The subsection in question requires the controller of patents, designs and trademarks to decide within a period of three months whether to refer to arbitration a dispute referred to him or her under the terms of the Copyright and Related Rights Act 2000. In practice, it has not proved to be possible for the controller to discharge this statutory duty. Typically, the type of cases which can be referred to the controller involve disputes between licensing bodies and persons requiring licences. Having considered alternative possibilities for time limitations on referrals to arbitration, the Department concluded that the most expedient course consistent with proper legal and administrative principles, would be to repeal subsection (2), thus removing the time limit. We have asked the Office of the Attorney General for advice on this matter and it is in agreement with the amendment.
I move amendment No. 55:
In page 9, before section 18, to insert the following new section:
"30.—Section 57 of the Industrial Designs Act 2001 is amended by substituting the following for subsection (2):
‘(2) Notwithstanding sections 29 and 43—
(a) no infringement proceedings may be begun before the date of publication of the registration of the design, and
(b) no offence shall be regarded as committed under section 66 by anything done before the date referred to in paragraph (a).’.”.
As it stands, section 29 of the Industrial Designs Act 2001 provides in effect that a design registration dates back to the date of filing of the application. However, it is unclear whether the rights conferred by a registered design, such as, for example the right to take action against an infringement can only take effect from the date of publication of the design registration. The purpose of this amendment is to clarify that no infringement proceedings can be instigated before the date of publication of registration of a design. Paragraph (a) states that no offence can be committed before the date of publication of the registration of design.
I move amendment No. 56:
In page 9, before section 18, to insert the following new section:
"31.—Section 84 of the Industrial Designs Act 2001 is amended by substituting the following for subsection (1):
‘(1) (a) Save as otherwise provided by this Act and subject to paragraph (b), except by leave of the High Court, an appeal lies to the High Court from any decision or order of the Controller under this Act within 3 months from the date of the decision or order.
(b) Where a written statement of the grounds of the decision or order of the Controller, in the exercise of his or her discretionary power, has been requested in the prescribed manner and within the prescribed period by a party to the proceedings, the period of 3 months shall begin on the date on which the written statement is furnished to the party requesting it.’.”.
I move amendment No. 57:
In page 9, after section 18, to insert the following new section:
"32.—(1) This Act may be cited as the Patents (Amendment) Act 2006.
(2) Subject to subsection (3), this Act shall come into operation on such day or days as the Minister may appoint by order or orders either generally or with reference to any particular purpose or provision and different days may be so appointed for different purposes or different provisions of this Act.
(3) This section and sections 1, 2(a), (f) and (g), 5, 6, 9, 7, 8 to 15, 16, 17 to 21 and 23 to 31 shall come into operation on the passing of this Act.”.
This section provides a citation that the Act will, subject to certain sections, come into operation upon passage of this Act. The sections of the Act as outlined at paragraph (3) cannot come into effect upon passage for a number of reasons, primarily including the revision of the European Patent Convention and the necessity to amend certain corresponding patent or trade mark rules.
As amendments Nos. 59 and 60 are alternatives to amendment No. 58, amendments Nos. 58 to 60, inclusive, will be discussed together.
I move amendment No. 58:
In page 3, to delete lines 5 to 13 and substitute the following:
"AN ACT TO GIVE EFFECT TO CERTAIN PROVISIONS OF THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS ANNEXED TO THE AGREEMENT ESTABLISHING THE WORLD TRADE ORGANISATION; TO GIVE FURTHER EFFECT TO THE EUROPEAN PATENT CONVENTION; TO GIVE EFFECT TO THE PATENT LAW TREATY; TO MAKE FURTHER PROVISION IN RESPECT OF MATTERS RELATING TO INTELLECTUAL PROPERTY AND FOR THOSE PURPOSES TO AMEND AND EXTEND THE PATENTS ACT 1992, THE TRADE MARKS ACT 1996, THE COPYRIGHT AND RELATED RIGHTS ACT 2000 AND THE INDUSTRIAL DESIGNS ACT 2001 AND TO PROVIDE FOR RELATED MATTERS.".
The purpose of this amendment is to expand the Long Title of the Bill to include a reference to the patent law treaty and to other intellectual property legislation which the Bill proposes to amend.
I thank the Minister of State and his officials for attending. I thank the members for their co-operation and continued support for the Chair in the processing of legislation.
I thank Deputies Hogan, Quinn, McHugh and Callanan for their co-operation in bringing this important legislation through Committee Stage. I also thank the Chairman and his staff for organising the meeting. I am aware that they experienced some problems in fitting it in and thank them for so doing. Last, but by no means least, I thank my officials for their advice and the excellent manner in which they have conducted their business.
Much hard work went into this legislation.
On the completion of the drafting of this legislation, I suggest all the civil servants involved should be entitled to priority transfers, should they so choose.
The Deputy may be in a position to carry out such a measure in the not too distant future.
