Vol. 207 No. 12
I move amendment No. 1:
In page 6, lines 36 and 37, to delete all words after "means" and substitute:
"made available within the State to the public by the written word or by public use, or in any other lawful way and a document shall be deemed for the purpose of this Act to be published if it can be inspected as of right at any place within the State by members of the public whether by payment of a fee or otherwise."
There are a series of amendments. Would it be possible to take together Nos. 1, 2, 8, 42 and 44?
Yes.
Amendments Nos. 1, 2, 8, 42 and 44 will be taken together.
Although this may be to some extent a technical Bill, there is a very important matter of principle of some general concern involved in the amendments which I propose in the beginning of the Bill and in the later sections. The object of a patent is in fact to encourage industry. We must be careful that when new legislation is introduced, we do not introduce new concepts and provisions in that legislation which would to any degree affect the desired amendment which the legislation proposes to achieve. The Bill, as drafted, would appear to be introducing a departure from our patent legislation, a departure not in the comparable English legislation and a departure which could conceivably have serious consequences for industrial development in this country.
Up to this Bill, the law stood, and indeed has stood for hundreds of years, that when considering the grant of a patent or the objection to the granting of a patent, the matter which was the concern of the authorities considering this was whether there had been publication of the material in the country concerned with the granting of the patent. In England, the law was, and is, that what the patent authority was concerned with was whether or not there had been publication of the material in England. In Ireland, the law up to this Bill was, and is, that what the authority is concerned with is whether or not there has been publication of the material in Ireland. This is now being departed from, as I understand the Bill as drafted and as I understand the explanatory memorandum. It is now proposed that one of the grounds of invalidity will be that the invention has been made available to the public by disclosure anywhere and not merely by publication in the State.
This is a very radical departure from our existing legislation. It means that it might be possible to challenge the validity of a patent on the ground that there had been disclosure of the invention elsewhere in any part of the world.
This could conceivably cause very serious difficulty in the operation of this legislation and very serious difficulty in the granting of patents and the development of industry pursuant to the granting of patents. I should like to know the justification for such a serious departure from our existing legislation and from legislation which exists in England at present.
As I understand the explanatory memorandum, it is being suggested that the change may be necessary because of the adoption by this country of an international Convention which is being proposed by the Council of Europe. I do not know whether this is, in fact, the situation, but I should be glad if the Minister would indicate to the House if this is so. If this is the position, it should be borne in mind that the international Convention which this country has signed has not yet been ratified, and before the Convention can be ratified, eight instruments of ratification have to be deposited. As far as I am aware, no such instruments have been deposited as yet.
I should be glad if the Minister would inform the House what the position about the Convention is. If in fact we have undertaken an international obligation to widen the whole scope of the definition of "published" and "publication", it would be reasonable that we should not legislate for such a contingency until in fact the Convention comes into operation. I would suggest that if we have undertaken this international obligation, we should not change the law until it becomes necessary for us to do so. We should keep the law in the position it is in at present and, if necessary, amending legislation could be brought in at a later time.
One of the fundamental things in this Bill is that an invention or patent, before it can be accepted as such, must have absolute novelty. If an invention has not got absolute novelty, the contention is that it is not an invention any more. I believe that to adhere to what was the law and the practice formerly, whereby as long as a patent or an invention was not published within the State but may have been published elsewhere, would be archaic. The law as it stands now was consistent with means of travel and means of communication that existed many years ago, but, means of travel and means of communication having been improved so considerably, the purpose of the Bill is to ensure that we bring our law into conformity with these modern concepts, these modern means of communication.
There are 101 reasons why a patent which was published in one country and not published here should not be accepted as being novel in this country. One can take the extreme case that Deputy Costello quoted, about the patent having been published in some obscure country, perhaps in some obscure language, that the person seeking a patent for the same specification or the same invention should not be denied a patent here. But, on the other hand, if one took the other extreme, the publication of a patent, say, across our Border, in Newry or somewhere like that, should not be held to prevent a person receiving a patent for the same specification in this part of the country.
I do not think there is any case for retaining what is now an outmoded concept, an outmoded piece of legislation. The rest of the world has accepted this basis of absolute novelty. The existing law has been retained only in Britain and Ireland so far. So far as we are concerned, and indeed the same applies to Great Britain, we are a party to international Conventions that will require us, in any event, to conform with the international view of this matter and as far as the signing of these Conventions is concerned— there are a number of them—so far as the Council of Europe Conventions are concerned, there are two relating to patents in addition to a Convention recently concluded on unification of law. One of these has been ratified by 13 countries, including Ireland, Great Britain, France and Germany; the other, relating to international classification of patents, has been ratified by 11 countries and these include Ireland, Great Britain, France and Germany also.
The new Convention on laws is not yet in force. It was opened for signature in Strasbourg in November, 1963 and has been signed by nine of the Member countries of the Council of Europe, including Great Britain, France and Germany, and arrangements are being made for this country to sign the Convention in the near future.
So, on the basis of keeping our laws in conformity with the laws in other countries and in conformity with our obligations under these Conventions, it is necessary to remove this archaic anomaly from our law and I have no doubt that in the very near future it will also be removed from British law.
Would the Minister say under which of these Conventions it becomes necessary for us to alter the law?
The Convention concerned is the Council of Europe Convention on the Unification of Certain Points of Substantive Law on Patents for Invention.
That is what I thought. The earlier Convention, as I understand it, did not effect this procedure. The earlier Conventions would not make it necessary for us to change the law but this new Convention does. Am I not correct in saying this new Convention does require, according to Article IX, that the Convention will not come into force until three months after the deposit of the eighth instrument of ratification? The point I wish to make is: If, in fact, we do not become bound internationally to change our law until this is ratified and as it is quite possible that this ratification may not take place for some considerable time, I would suggest that we do not make this change, which could bring about very serious difficulties for us and for the development of industry in this country, until it becomes absolutely necessary for us to do so.
I must disagree entirely with Deputy Costello's suggestion that the amendment of the law as we now propose will seriously interfere with the development of industry in this country. On the contrary, it would be possible if a patent were well known in other countries and if an industrialist sought to use it here and got permission to use it, that somebody else could come along and by registering it in this country, could probably prevent its use for industrial purposes.
In any event, apart altogether from that, it is not only because we adhere to international Conventions that we propose to amend the law in this respect. It is mainly because it is the sensible thing to do. Again I go back to the question of novelty which is essential to any invention and unless it has that novelty, then it is not right that we should mainain novelty within the State when it is not a novelty in other countries. Apart from other reasons, one of the main reasons is that it is the sensible thing to do.
You are creating appalling difficulties of proof, the difficulty of proving, for example, that it is the spoken word anywhere in the world. I cannot really see how anybody is going to be able to prove it and how the Minister can maintain that the spoken word in any part of the world is capable of reasonable proof, even supposing I accept, which I do not necessarily do, the Minister's view that it is desirable to restrict purely to novelty. There is some sense in requiring proof of a document that is in written general circulation, as apart from personal circulation, but in relation to the spoken word, as I read that definition, if one person has a private conversation with another, it is sufficient to come within the terms of the definition in the Minister's Bill and I do not think that is what it means. Or, if one person writes a private letter to another, it is made available to the public, once that is repeated. That is not what is concerned. If something is in wide and general use in another country, I can see the Minister's point. If something is freely written about, lectured about, spoken about in the country, in wide and general use in another country, that is in, but, if we take the reverse example, that somebody from Japan was bound by something in a letter that is hidden away in the archives of the National Library, that is available to the public and nobody, in fact, has turned it up, but under that definition it would be caught if a similar law were made in another country. That is not what is intended in the Convention.
The same thing applies at present in relation to proof —publication within this country could be in the archives.
It is easy to prove in the jurisdiction of your own courts.
The question of proof will come into effect only when a specification is objected to or challenged and that would be a matter for the courts and, naturally enough, it will be necessary to prove that the publication was of such a character that an interested person in this State could reasonably be aware of it. I think we can always rely on the good sense and judgment of the court to determine these matters.
That is a cockeyed definition, in my view.
I moved amendment No. 3:
In page 8, subsection (4), line 5, after "country" to insert "in respect of that invention".
This is a drafting amendment for the purpose of clarification.
I move amendment No. 4:
In page 10, after subsection (6), to add to the section the following subsection:
"( ) The priority date of any matter disclosed in the descriptive part of a specification shall be the date on which that matter was first disclosed in pursuance of the application for a patent of which the specification forms a part or (in the case of a convention application) was first disclosed in the relevant application for protection in a convention country."
This is necessary because of later amendments to section 13.
It strikes me that amendments Nos. 10, 11, 12, 13, 14, 25, 26, 27, and 41 could be taken together.
They are not all quite the same.
How far does the Deputy agree with me that they can be taken together?
We can go on unless and until it is objected to.
The intention is to provide that in the case of what are described as co-pending applications, if the first application received has matter in respect of which a patent is not claimed and other matter in which a patent is claimed and if the second application includes an application for a patent in respect of the matter which is not claimed in the first application, then the second application is precluded from getting a patent in respect of the first matter in the first application. This is a matter which is not easy to explain.
Can I get agreement on taking any of the other amendments, Nos. 10, 11, 12, 13, 14, 25, 26, 27 and 41?
I would prefer that they be left until we come to them.
Very good.
I move amendment No. 6:
In page 10, subsection (1), line 35, after "Controller" to insert "(in this Act referred to as an examiner)".
This is a drafting amendment.
I move amendment No. 7:
In page 11, subsection (1), line 28, after "State" to add "and dated within 50 years next before the date of filing of the applicant's complete specification."
This amendment, is, in fact, contained in the British Patents Act of 1949 and I do not know why it has been left out of our Bill. It is obviously a good practice to maintain the principle that is in the British section and if, after 50 years, nothing further is heard of a disclosure contained in a patent specification, this should not hinder in any way a new claim being put forward. This is part of the British law on the subject and it seems to me to be reasonable. Our two legislations are very close on this matter and I do not see any reason why this has been left out.
It is true that the 50 years is provided for in existing British law and in our existing law. The historic reason is that a useful idea might be lost sight of after 50 years but all the other countries of the world who have patent legislation have moved away from this idea for the reason that if somebody unearths an idea that was patented more than 50 years ago, it was then and still is a matter of public knowledge. It is considered that it is not right that a person, because he can unearth such an idea which has been in public use for a considerable time, can come along to our Patent Office and establish an absolute right in that idea for himself to the exclusion of the rest of the world.
Apart from that quite fundamental reason, I again quote the Council of Europe Convention which requires any limitation of this kind to be abolished. Britain, Germany, and many other countries have signed this Convention. An idea which was published 50 years ago is no longer anything to which a person could claim an exclusive right just because he finds it out by some chance or by research.
Is it the position that we have to make this amendment because of a Council of Europe Convention?
Not only.
The Minister states that this is desirable but I disagree with him. His second reason is that it is necessary because of the Council of Europe Convention. Do I understand it that we have to amend our law because we signed the Convention?
If we sign a Convention, we do so with the intention to adhere to the terms of that Convention. There is at least a moral obligation on us to do so.
Is that the position? Apart from any consideration of whether this is a good measure, is the Minister's view that we must change the law in order to comply with the Convention?
If we want to comply with the Convention, we must change the law.
We are not complying with the Convention at the moment—is that the position? —and in order to comply with it, we must change the law?
That is the position.
I move amendment No. 9:
In page 11, subsection (4), line 45, to delete "prescribed specification" and to insert "specification filed in an office prescribed under paragraph (a) of subsection (6) of section 8 of this Act."
This is a drafting amendment.
I move amendment No. 10:
In page 12, subsection (1) lines 4 and 5, to delete "any claim of any other complete" and to insert ", or included in matter disclosed in the descriptive part of, any other."
The effect of this amendment is to provide that in the investigation required by this section, account may be taken of matter described in the early specification as well as that claimed. The purpose of the investigation under section 17 is to discover whether an applicant's claim is anticipated by an Irish specification which has not yet been published.
I think amendments Nos. 10 to 15 are similar.
What is the effect of the amendments Nos. 10 to 15? Is it what the Minister has said?
They are all consequential on the amendment to which I have referred. I move amendment No. 11:
In page 12, subsection (2), line 14, to delete "a claim of" and to insert ", or included in matter disclosed in the descriptive part of,".
I move amendment No. 12:
In page 12, subsection (2), line 21, after "claim", to insert "or the matter disclosed in the descriptive part".
Do all these amendments deal with prior claim?
Yes. I move amendment No. 13:
In page 12, subsection (3), line 28, after "claimed in", to insert ", or included in matter disclosed in the descriptive part of,".
I move amendment No. 14:
In page 12, subsection (3), line 35, to delete "claim of" and to insert "relevant claim of, or the matter disclosed in the descriptive part of,".
I move amendment No. 15:
In page 12, lines 39 to 44, to delete subsection (4).
Amendments Nos. 16 and 45 may be discussed together.
I move amendment No. 16:
In page 13, subsection (1), line 21, to delete "law" and to insert "public order".
The words used in this Bill, as it stands in subsection (1) of section 15, paragraph (b), refer to the right of the Controller to refuse an application, if to grant it would be contrary to law or morality. In the amendment I propose to delete "law" and insert the words "public order". In the Council of Europe Convention, the words used are order publique and while it has not been translated officially into English, I think this is a reasonable translation.
I move amendment No. 17:
In page 13, subsection (2), lines 32 and 33, to delete "refuse the application unless the specification is amended by the insertion of" and to insert "insert in the complete specification".
This and amendment No. 18 go together and the aim is to enable the Controller to secure that any illegal use of an invention is disclaimed.
I move amendment No. 18:
In page 13, subsection (2), line 35, to delete "the Controller" and to insert "he".
I move amendment No. 19:
In page 13, line 56, after "section" to insert "or under rules made under this Act".
Section 17, as it stands, provides that an application for a patent shall be void unless within a certain period which may be prescribed certain requirements are complied with. The purpose of the amendment is to meet representations of patent agents and it is thought, by giving the opportunity of the limit being provided for by rules rather than by legislation, it would give wider discretion and would be better suited to the cases that might arise from time to time. If the limitation were in the section itself, that flexibility would not be there.
I understand the Minister is prepared to accept the reasonableness of the view that this section should be applied in as reasonable a way as possible and that there should be some flexibility in it. It is very desirable that the section should not work hardship and should not be applied in too draconian a fashion. I understand the Minister is proposing that, by rules and regulations, he will make it possible for an application not to be treated as void if, in fact, there is some unavoidable delay which has the effect of not complying strictly with section 17. In the amendment which I suggest later, I suggest that this power to extend the time and the discretion given to the Controller should be written into the section rather than left to rules.
I should like the Minister to consider the advisability of providing that, instead of these matters being referred to rules made under the Act, he should write it into the section as I have suggested in amendment No. 22. It seems to me to be desirable that this section should work in a reasonable way. Things can happen in the best regulated offices which could result in an application being marked "void" and I suggest, rather than leave it to regulations, the Minister should accept the suggestion I have made in the later amendment and actually write this into the Bill.
There are two considerations arising here, first, to facilitate agents or applicants for patents who might encounter unavoidable delay and secondly, there is the necessity to speed up the processing of applications. It is suggested that, rather than have a rigid time limit in the Bill, providing a time limit by way of rule which can be changed to suit changing conditions, would be a better idea and would obviate any hardship that might not be anticipated now and could arise in the future. I think the making of the limitation by way of rule is a better idea in the long run.
We are not discussing the later amendment at the moment and I shall reserve what I have to say until we are discussing it. I understand that the Minister's amendment gives him power to alter the time limit by rule. While that may be desirable, it is also desirable to give an overall discretion to the Controller in exceptional cases not to impose the full rigour of the section, in the rules that may be made. We can discuss that later when I move my amendment.
I move amendment No. 20:
In page 14, subsection (2), lines 11 and 12, to delete "(apart from any extension thereof)" and to insert "or that period as extended under subsection (3) of this section or under rules made under this Act".
This is a drafting amendment.
I move amendment No. 21:
In page 14, lines 16 to 25, to delete subsection (3).
What is the effect of this amendment?
It is consequential on amendment No. 19.
It is going to be done by rule, provided for in the rules?
Yes.
There is a tabling provision, is there not?
There is.
This prevents amendment No. 22 from being moved.
Then I had better not agree too hurriedly with it. I am grateful to the Chair for bringing that to my attention. I do not agree with this because I want to move the amendment to the section. The deletion of subsection (3) which I suggest, and the substitution of the new subsection was in order to endeavour to bring about a situation in the Act which would enable the Controller, if he thought fit and without the payment of any fees, to grant an extension or a series of extensions. As I understand the position as to how the section will operate as now amended, the Minister will make rules from time to time which may be varied according as times may change or as his experience indicates the wisdom of change, but there will still be the overriding requirement to comply, in a rather vigorous way, with the time limitation imposed by the rules.
I am suggesting that we should put a provision into this section so that where the Controller is satisfied that the information which he requires or the evidence which he requires cannot be furnished in the times that will be laid down by the rules, or if there are official requirements which are involved and the applicant has no knowledge of these requirements or for any other circumstances in which hardship would be caused, the Controller would have a general power to grant an extension of time. The operation of legislation such as this depends very much on the degree of co-operation and commonsense that must and does exist between the Controller and the patent agents. What I am suggesting would appear to be a reasonable piece of legislation by which the Controller would have power, where there are no avoidable delays and where hardship might result, to extend the time and get rid of what could in certain circumstances be real hardship as a result of the stringent application of the law.
Again, I suggest that the amendment I propose on subsection (1) of this section will adequately meet most cases that are likely to arise. As I said, there is more in this than just facilitating an applicant who meets with unavoidable difficulties. There are applicants, particularly from big firms, who prefer to delay publication of their inventions for their own reasons and therefore are dilatory accordingly. I think there should be power for the Controller to apply sanctions in cases such as this in order to ensure that these applicants are kept up to the mark. I think I can say that the time limit that will be prescribed under subsection (1) as amended will be considerably longer than the longest time reasonably needed to supply the evidence Deputy Costello mentions in paragraph (a) of his amendment. The time limit should also leave adequate time for official action after the evidence comes in. The extension he seeks under paragraph (b) is hardly likely to arise.
As far as paragraph (c) is concerned the Deputy mentions:
Any other circumstances existing in which hardship would be caused to the applicant by voiding of the application on the expiry of the said period or of any permitted extension thereof,
The circumstances under this paragraph represent something outside the applicant's control or some excusable error in order to justify an extension and again the Controller will be able to ascertain the reasons for this and be able to act accordingly by amending the time by way of rule rather than writing it into the section.
Is it proposed to fix a time limit or leave it to the discretion of the Controller?
A time limit will be fixed but it will be possible to alter it by rule in cases where undue hardship arises.
Do I understand that we would have to bring in a new statutory instrument? That is what is involved. There would have to be a new statutory instrument to deal with cases of hardship. I do not think that is desirable. As I understand the mechanism which is being proposed, the Minister will have power to make rules but in the case of hardship, I suggest that there should be an over-all discretion to the Controller to extend the time. If that is not there, the only way it can be done is by ad hoc legislation, by the making of new rules. That seems to be an extraordinarily cumbersome way of dealing with something which we would like to see dealt with effectively.
The discretion to give an extension can be provided in the rules and it would not be a matter of bringing in a new statutory instrument.
I would prefer to see it in the Act but if the Minister is going to put into the rules the power to extend the time in given situations, that certainly is an improvement. Will the rules indicate in what circumstances the extension will be given or is this going to be some arbitrary thing? Certainly I would prefer to see it in the Act.
I move amendment No. 23:
In page 14, subsection (2), line 62, after "advertise" to insert "in the Journal".
The amendment introduces the words "in the Journal" after the words "advertise" and limits the controller to advertising complete specifications in the Journal.
Is that not the position at present? There is no change?
No change.
Amendments Nos. 25, 26 and 27 are consequential on the amendment to section 13.
They may be discussed together.
I move amendment No. 25:
In page 15, subsection (1), lines 29 and 30, to delete "any claim of a complete" and to insert, ",or included in matter disclosed in the descriptive part of, another".
Is this the amendment dealing with current applications?
That is right. Co-pending applications they call them.
I move amendment No. 26:
In page 15, subsection (1), lines 32 to 34, to delete from "being" to the end of the paragraph and to insert ", the priority date of the relevant claim or the matter disclosed in the descriptive part of the other specification being earlier than that of the applicant's claim,".
I move amendment No. 27:
In page 15, subsection (1), lines 38 to 48, to delete paragraph (e) and to insert the following paragraph:
"( ) that the invention, so far as claimed in any claim of the complete specification, is obvious and clearly does not involve any inventive step having regard to any matter published in the manner specified in paragraph (b) of this subsection, any matter claimed or disclosed in the manner specified in paragraph (c) of this subsection or what was used in the State before the priority date of the applicant's claim."
It has been suggested to me that the words "or disclosed" should be deleted on the ground that, when an application is under consideration, the terms of the application are secret. They are not disclosed except to the Controller. If the words "or disclosed" were deleted, the subsection would then read "any matter claimed in the manner specified in paragraph (c)" and so on.
The word "disclosed" is subject to the four words immediately following, "in the manner specified". I understand that, in substance, removes the Deputy's objection.
But is it not a fact that, when an application is pending or is under consideration, the terms of the application, or specification, are not disclosed except to the Examiner?
That is the position.
Does the word "disclosed" here apply to disclosed to the Controller rather than disclosed to the public or other interested parties?
I should imagine disclosure applies only to the Controller, but I shall look into the matter; if there is any doubt, I shall have it amended.
I cannot understand how the phrase "disclosed" could be the proper one there.
That is why I have told Deputy Cosgrave I shall have a look at it. I am not so sure myself now.
With amendment No. 28, we will take amendment No. 38.
I move amendment No. 28:
In page 16, lines 5 to 10, to delete subsection (3) and to insert the following subsection:
"( ) For the purposes of paragraph (d) or paragraph (e) of subsection (1) of this section, no account shall be taken of any secret use."
It has been suggested to me that this might be deleted on grounds similar to those advanced on amendment No. 27. However, the Minister has agreed to consider the matter.
Amendment No. 29 was discussed with amendments Nos. 7 and 24.
Amendments Nos. 30, 31, 32, 33, 34, 35, 36, 37 and 38 are consequential.
I move amendment No. 30:
In page 20, subsection (1), line 19, after "Court", to insert "or the Controller".
The purpose of this amendment is to permit the presentation of a petition for an extension of the term of the patent to the Controller as well as to the court. The amendment is introduced in deference to representations made by the patent agents.
This is a desirable amendment but I am not quite sure whether its effect will be to permit the petition for the extension to be made to the Controller or to the court. What will happen if the Controller turns it down? Will there be an appeal to the court? I think there should be. I should like the Minister to have a look at the amendments and to ensure there is nothing anywhere which will affect any appeal from the Controller to the court.
I understand there will be the right of appeal to a judge but I shall check to make sure.
So long as it is clear from the later sections dealing with appeal that there is an appeal from any decision of the Controller and that there is no exclusion of the right of appeal by someone who decides to go first to the Controller instead of to the court.
The Deputy will come to it later in amendment No. 39. The second part provides that an appeal shall lie from any decision of the Controller.
I see.
I move amendment No. 31:
In page 20, subsection (2), lines 22 and 23, to delete "the Court may in its discretion extend the period within which a petition under this section may be presented" and to insert "the period within which a petition under this section may be presented may, at the discretion of the Court or the Controller, be extended by the Court or the Controller, as the case may be".
I move amendment No. 32:
In page 20, subsection (3), line 24, after "Court", to insert "or the Controller, as the case may be,".
I move amendment No. 33:
In page 20, subsection (4), line 28, after "and" to insert ", if the petition is presented to the Court,".
I move amendment No. 34:
In page 20, subsection (5), line 30, after "Court" to insert "or the Controller".
I move amendment No. 35:
In page 20, subsection (5), line 30, to delete "considering its" and to insert "making a".
I move amendment No. 36:
In page 20, subsection (6), line 34, after "Court" to insert "or the Controller".
I move amendment No. 37:
In page 20, subsection (6), line 35, after "Court", to insert "or the Controller, as the case may be,".
I move amendment No. 38:
In page 20, subsection (6), line 39, after "Court", to insert "or the Controller, as the case may be,".
I move amendment No. 39:
In page 20, after subsection (6) to insert the following subsections:
"( ) The Controller may, at any stage of the proceedings before him under this section, refer the petition to the Court and thereupon the petition shall be deemed to have been presented to the Court by the patentee of the invention to which it refers under subsection (1) of this section.
( ) An appeal shall lie from any decision of the Controller under this section."
I move amendment No. 40:
In page 21, before subsection (7), to insert a new subsection as follows:
"(7) The grant of a patent of addition shall not be refused, and a patent granted as a patent of addition shall not be revoked or invalidated, on the ground only that the invention claimed in the complete specification does not involve any inventive step having regard to any publication or use of—
(a) the main invention described in the complete specification relating thereto; or
(b) any improvement in or modification of the main invention described in the complete specification of a patent of addition to the patent for the main invention or of an application for such a patent of addition;
and the validity of a patent of addition shall not be questioned on the ground that the invention ought to have been the subject of an independent patent."
This section deals with patents of addition and there has been excluded from the section a subsection which appears in the English Act. I am not quite certain why it has been excluded. It seems to me the subsection is a valuable one and should be retained. The authoritative textbook on this subject, the 1951 edition of Terrell and Shelley, refers to the English subsection which we are now deleting. It refers to the fact that there are no separate renewal fees and then it says:
This advantage has been retained, but there has now been added the remarkable provision that the grant of a patent of addition shall not be refused and a patent granted as a patent of addition shall not be revoked on the ground only that the invention claimed does not involve any inventive step having regard to the publication or use either of the main invention described in the complete specification relating thereto, or of any improvement in or modification of the main invention described in the complete specification of any previous patent of addition.
It seems to me that this well-known author regards this as a very desirable subsection and we would want to have good reasons, I think, for its deletion. I should be interested to know why the Minister is not keeping it in.
We have never had a provision of this nature in the Irish law, for the reason that, when there is a main invention patented, simple modifications or extensions do not justify further applications for patents. It is considered that they would be a nuisance and contrary to the general interest. As well as that, to include the provision now would not conform with the Council of Europe Convention. Even though it is in British law as late as 1949, it is thought that by their adherence to the Council of Europe Convention, the British will require ether to repeal this provision or amend it drastically in order to conform with the Convention.
As I understand it, the Convention excludes patents of addition from the general conditions of what is an invention. The report on the draft Convention relating to European patent law suggests that the provisions which exist in the British law have proved a great benefit to patentees and, in fact, this report would indicate that some similar provision might be included in the Convention. I do not know whether the Minister has considered that aspect of the matter or not.
I am advised that what the Deputy has just mentioned is not in the Council of Europe Convention we have been discussing.
Is it actually prohibited by the Council of Europe Convention?
I understand the Convention excludes patents of addition from the general conditions.
What the Convention provides is that in order to justify being patented, an inventive step is necessary, and slight modifications or additions are not regarded as inventive steps, something new.
I wish to throw out the general suggestion which I have made already on an earlier section. We do seem to have undertaken some international obligations which the Minister may think are desirable. Be that as it may, it seems we must alter the law in order to comply with these international obligations. Of course, we must do that when we have entered into them but the point I wish to make is that if these international obligations arise under the Convention on Reunification of Certain Points of Substantive Law on Patents for Inventions which was signed in Strasbourg in November last, it may be some considerable time before this Convention operates. What I am suggesting is that the Minister should not alter the law until it becomes necessary for him to do so and that he should leave the law as it stands until the Convention has been ratified—I do not mean signed but ratified—and as soon as it has been ratified, then it may be necessary for us to comply with our international obligations by changing the law. We know only too well what happens to Council of Europe Conventions. It is quite possible that this will remain a dead letter as has happened time and time again. I suggest that if we are only changing this to comply with the Convention which is not yet in operation, we should leave it and perhaps it may never be necessary to change the law.
Before we sign international Conventions we naturally examine them and unless we agree with what they contain, we do not sign them. We are providing for conformity with this Convention in this Bill and we also agree with the ideas promulgated in this Convention. We think they are good ones and that we ought to adopt them.
We all know how these Conventions operate. There are years of negotiations sometimes and in Conventions of this sort, there is usually compromise. It is absolutely true to say that every part of a Convention is not embraced wholeheartedly by every member of the Council of Europe who has signed it. Some of them sign it with reservations; some of them sign it not liking it but because certain compromises have been reached. It would be wrong to suggest that there would be universal acceptance of every Convention by every member who signs it. Probably a member does not wish to hold out because some of these Conventions require the unanimity rule before they are adopted. As I say, we should wait until this Convention has been ratified before we change the law.
I move amendment No. 41:
In page 24, subsection (1), lines 34 to 37, to delete paragraph (a) and insert the following paragraph: "( ) that the invention, so far as claimed in any claim of the complete specification, was claimed in, or included in matter disclosed in the descriptive part of, another specification published on or after the priority date of the claim and filed in pursuance of an application for a patent in the State, the priority date of the relevant claim or of the matter disclosed in the descriptive part of the other specification being earlier than that of the claim;".
This amendment was discussed with Amendment No. 4.
Amendment No. 42 was discussed with Amendments Nos. 2 and 8.
I move amendment No. 43:
In page 24, subsection (1), lines 49 to 55, to delete paragraph (f) and insert the following paragraph:
"( ) That the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve any inventive step having regard to any matter claimed or disclosed in the manner specified in paragraph (a) of this subsection or to any matter published in the manner specified in paragraph (e) of this subsection;".
This amendment was discussed with amendment No. 4.
Amendment No. 44 was discussed with amendments Nos. 2, 8 and 42.
I move amendment No. 45:
In page 25, subsection (1), line 14, to delete "law" and to insert "public order".
This amendment was discussed with amendment No. 16.
I move amendment No. 46:
In page 25, subsection (1), lines 15 to 18, to delete paragraph (1).
It is necessary to delete this paragraph because as it stands it is an anomaly. The paragraph refers to "secret use" of which no account is taken in this Bill and we do not regard secret use as being relevant.
I move amendment No. 47:
In page 25, lines 19 to 32, to delete subsection (2).
I move amendment No. 48:
Before subsection (3) to insert a new subsection as follows:
"( ) For the purposes of paragraphs (e) or (f) of subsection (1) no account shall be taken of any secret use".
This amendment also refers to secret use. This is in the corresponding English section and it is desirable that it should be kept in. This is the sort of thing that gives rise to controversy later on. Reference will be made in court to the English legislation and the fact that this has been left out of the Irish legislation and the significance of this. Rather than have the ambiguity that will arise if it is left out, I think it better to put it in.
I am advised there is no ambiguity, but in view of what the Deputy says, I shall ask the draftsman to have another look at it.
People accuse lawyers of liking ambiguity, but I think it is a wrong accusation.
Representations have been made to me to the effect that this problem of prior claiming is a very difficult one. It has been engaging the consideration of experts in many countries and at present there is full-scale inquiry in Britain. It has been suggested to me that the effect of the amendments may interfere with the right of applicants, because they would have the effect of including in the prior art anything described in a patent application of earlier date which had not been made public on the priority date of the latter application. It is agreed this may be necessary when considering the scope of the protection claimed in the latter application, but it should not be taken into consideration when considering the question of obviousness on the ground that an invention cannot be said to be obvious on account of some description which was not published when the invention was conceived.
It is also suggested that this deals with the valid claim in an earlier specification. Recently, a warning was given in a report issued by the Committee of National Institutes of Patent Agents on the draft Convention relating to patent law. Page 6 of that report deals with the matter. It says:
If, for instance, everything disclosed in a patent of an earlier date forms part of the state of art, then it becomes impossible to obtain in a later patent protection for a matter which, though so disclosed, is not the subject matter claimed in the earlier patent.
It suggests a distinction should be drawn between that part of the description of the earlier part which is clearly the basis of the claims and the other part which is possibly not directly relevant to the claims, for example, a description of a device which may be used entirely in association with the device which is the subject of the invention claim. I understand this represents the considered opinion of those in the patent agency profession in Europe and those who are generally concerned with the principles of patent law.
I move amendment No. 49:
In page 33, subsection (1), lines 22 to 29, to delete paragraph (b) and to insert the following paragraph:
"( ) that the application for a patent or (in the case of a convention application) the application for protection in a convention country was made not more than six months after the date of such publication:".
There is in the Council of Europe Convention a similar provision to the subsection now proposed. In view of conflicting opinion as to how different countries may interpret the Convention, it is thought desirable to impose this time limit of six months. Otherwise, an inventor might be able to get a valid patent in this State but find he had lost his rights abroad in one or more countries by delaying too long before making application.
I move amendment No. 50:
In page 33, subsection (2), line 47, after "applicant" to insert "if the first-mentioned application was made not more than six months after any such use or publication".
I move amendment No. 52:
In page 33, subsection (1), lines 57 and 58, to delete ", or of anything done, in consequence of such a communication, for the purpose of the investigation".
The subsection as it stands is thought to be too wide and the amendment is intended to avoid the risks attached to the premature disclosure of an invention thought to be inherent in the very wide scope of the words used in this section. The amendment is designed to cure that defect.
I move amendment No. 53:
In page 34, subsection (2), lines 8 to 10, to delete "prejudice the right of the inventor to apply for and obtain a patent in respect of the invention or the validity of any patent granted on the application" and to insert "be deemed to be an anticipation of the invention".
I move amendment No. 54:
Before section 71, but in Part VII, to insert the following new section:
Without prejudice to any provisions of this Act requiring the Controller to hear any party to proceedings thereunder, or to give to any such party an opportunity to be heard, the Controller shall give any applicant for a patent or for the amendment of a specification, an opportunity to be heard before exercising adversely to the applicant any discretion vested in the Controller by or under this Act.
This amendment is taken from section 87 of the British Act. Again, it is designed to try to make the working of the Act a little easier. It seems to me to be a reasonable provision. What is suggested is that, without prejudice to any of the provisions, the Controller may give to any party an opportunity to be heard. The idea is that the Controller, having considered the matters and the representations made in the various forms sent to him, may exercise his discretion against the applicant. It seems to me that in many cases this could not only cause annoyance but hardship. Where the applicant would like to have the possibility of making his case known to the Controller, certainly he should be given an opportunity of doing so.
This type of case arises in many circumstances where there is a discretionary power vested, sometimes in a Minister, sometimes an official of his Department, and where he exercises it against the applicant's wishes. The applicant is naturally disturbed and annoyed by the fact that the Minister has exercised his discretion against him. Very frequently this could be got over if, in fact, a hearing could be arranged and if, in fact, an opportunity could be given to the applicant to be heard. It does seem to me that as this type of legislation is very common now and a great deal of power is given to the Minister and given to officials of his Department, that it is desirable that justice should not only be done but should be seen to be done and where a Minister is going to exercise his power against the applicant or where, in this case, the Controller is going to exercise it, he should give an opportunity to the applicant to be heard.
It might mean that the Controller in this instance, would not for one moment change his opinion but the applicant would have had the benefit of being given a chance to get him to change his opinion and it is quite possible that in certain circumstances the Controller might so do. We should not be shy about copying British legislation in this regard where it is obviously good.
The amendment proposed by the Deputy would require that section 71 as in the Bill be deleted. Section 71 in the Bill is the same as the words of the corresponding section in our own 1927 Act. There is no difference in substance seen between it and the substance of Deputy Costello's amendment, which is the wording of the British Act.
The fact is that no difficulty has arisen in interpreting the section since it was first introduced, no hardship has been created for applicants, and the wording of the British section was examined before the Bill was drafted but was rejected in favour of the wording of our own 1927 Act which has worked in practice and without any hardship.
With amendment No. 55, perhaps the amendments up to amendment No. 63 might be discussed.
I move amendment No. 55:
In page 43, subsection (1), line 52, after "Court", to insert "(in this section referred to as the Judge)".
I move amendment No. 56:
In page 44, subsection (3), line 3, to delete "before the Court".
I move amendment No. 57:
In page 44, subsection (4), line 10, to delete "`Court" and insert "Judge".
I move amendment No. 58:
In page 44, subsection (5), line 11, to delete "Court" and insert "Judge".
I move amendment No. 59:
In page 44, subsection (6), line 14, after "may" to insert "be made by the Judge and may".
I move amendment No. 60:
In page 44, subsection (6), line 16, to delete "Court" and insert "Judge".
I move amendment No. 61:
In page 44, subsection (7), line 20, to delete "Court" and insert "Judge".
I move amendment No. 62:
In page 44, subsection (7), line 22, to delete "Court" and insert "Judge".
I move amendment No. 63:
In page 44, lines 27 and 28, to delete subsection (8) and to insert the following subsection:
"( ) An appeal to the Supreme Court on a specified question of law shall lie from the decision of the Judge on an appeal to him under this Act (other than an appeal under section 11, 12, 13, 14, 19, 20, 21, 22, 28, 30 or 31 of this Act)."
Representations have been made to me and to other Deputies, and may well have been made to the Minister on this matter, on behalf of the solicitors' profession, possibly also on behalf of the Bar, on the ground that the provisions in the Bill as drafted, as contained in section 75, alter the existing law to the detriment of the legal profession by enabling persons other than solicitors and counsel to undertake legal work. While the sole interests of the profession may not be the most important aspect of it, it is suggested that there is no sound justification in the public interest because it is an established principle of public policy that legal services should be rendered by duly qualified legal practitioners and that the Bill as at present drafted contravenes this principle because section 75 makes provision for appeals to the High Court and in such appeals the right of audience shall extend to the principal or principals in the proceedings before the Controller and to registered patent agents and to other representatives appearing on his or their behalf.
It is, I believe, correct to say that there is no precedent in the existing law here, in the North or in Britain, for conferring on person other than duly qualified lawyers the right of audience in the High Court in matters of this kind and, so far as I know, there can be found no precedent for this innovation in the English Patent Acts of 1949 to 1961.
A number of matters contained in the section and, indeed, in earlier sections, are eminently justiciable controversies which when brought within the jurisdiction of the High Court on appeal, should be conducted by lawyers who are versed in procedure and practices as well as the rules of evidence.
I should be glad, therefore, if the Minister would indicate that he is prepared to consider between now and Report Stage this aspect of the matter. It has been the subject of the most serious consideration by the professions concerned. Personally, I can speak on this matter with some detachment. The Minister should seriously consider the representations which have been made and which probably will be conveyed to him.
This is, as I understand it, and as the solicitors' profession and the barristers' profession consider, an innovation which is not provided for in the patent laws in Britain and is a distinct departure from established practice in this country.
Could I just very briefly support the remarks made by Deputy Cosgrave in this matter and urge the Minister to look at this section more carefully? I should be inclined to agree that the number of lawyers, taken as individuals, who are likely to be affected in any way by this section is negligible but there does seem to be a point of broad principle involved here and one which I think the Minister, as a lawyer, will appreciate.
Deputy Cosgrave has made the case, and I believe it to be a fact— I should like to know from the Minister whether it is or not—that the proposal he is making in this Bill to allow people other than properly qualified lawyers a right of audience before the court in these matters of appeal—and, remember, that extends to a whole lot of matters under this Bill—is establishing a precedent; in other words, that it is at the moment without precedent either here or in England, so far as the patent law is concerned.
I believe that is the case. If it is, I think the Minister should approach the matter very slowly and very carefully. Perhaps he would indicate to us when dealing with this section whether his reason for bringing in this proposal, which to me seems quite unnecessary, was that it is one of the matters contained in the Convention to which we are subscribing by this legislation. If that is so, then it presents a different complexion in that it may be intimated that similar provisions will exist in legislation elsewhere.
Deputy Cosgrave did not exaggerate when he emphasised the fact that any principle such as this must obviously be regarded by members of the legal profession, whether of the Bar or of the solicitors' profession, as a matter of gravity, not only from the point of view of the members of the profession but also from the point of view of the ordinary people whom the members of the profession serve in court. I would ask the Minister to reconsider this matter very carefully.
There is a little historical background to this which Deputies may not have considered. In the first place, the old law provided for appeals to the Law Officer as well as to the court. That Law Officer being the Attorney General, who is mainly responsible for advising Ministers, it is held that he should not be the appellate. Therefore we are removing the Law Officer from the provisions of the Bill.
There may also be the reason of unconstitutionality.
That may be so. The second reason is that the appeal to the court is an appeal to a special court. The court in this context is not necessarily the High Court as such. The President of the High Court nominates a judge to deal with these matters.
A High Court judge?
Yes. Hitherto a patent agent had the right to appear before the Law Officer on behalf of his client. Now since the Law Officer has gone, to deny him the right of appeal before what replaces the Law Officer would be a reduction of his rights of appearing on behalf of his client. Up to this, he could go before the Law Officer. There is no Law Officer now. Therefore he cannot conduct an appeal on behalf of his client if we exclude him from the court. As Deputies are aware, if any person is involved in a law suit, he is entitled to appear personally before any tribunal in the land.
That was always the law.
It has always been the law that, no matter how ignorant a person may be of legal matters, he can still go to court on his own behalf. I cannot say that I have not some sympathy with the points made by the two Deputies but the court is not the High Court. It is something that is specifically put there to deal with these appeals but I shall have another look at the matter.
I am glad that the Minister is looking at it again and may I ask him to look specifically at the analogy with the Land Commission and the Land Commission Court? There is a perfect analogy there.
The Minister is not quite right in saying that this is the same as the British legislation.
I did not say that.
The Minister may have left the impression without intending to do so that this is the same as the British legislation. The British set up a special tribunal specifically declared not to be a branch of the High Court. We have not done that. I think these amendments are something more than drafting amendments, as the Minister said they were. I should like the Minister to consider carefully if it would be possible to set up an appeal tribunal, a tribunal that would not be part of the High Court. The Minister is not doing that in this Bill. He is still setting up an appeal to a court which, in fact, is the High Court. A very considerable principle is being affected. I should also like to know if the Minister has had any representations from patent agents that their rights are being affected. My information is that that is not so, that there has not been any demand for a right of audience by patent agents in the High Court. If there has not been any demand for that, the Minister would be right in re-examining the section carefully.
Perhaps amendment No. 65 could be taken in conjunction with amendment No. 64.
I move amendment No. 64:
In page 47, subsection (3), before paragraph (d) to insert a new paragraph as follows: "(d) is not an alien".
The object of amendments Nos. 64 and 65 is to deal with the particular position of patent agents under this legislation. It is suggested in amendment No. 64 that a patent agent should not be an alien. This is, in fact, the law as it applies in Britain and I should think that it would not be unreasonable to suggest that a similar type of provision should be inserted here. The second amendment is designed to make quite clear that persons whose names are on the existing register should not be affected by the section in any way.
To restrict the persons within the limits suggested by the Deputy would exclude aliens. In the British law, there is a provision that British citizens or British subjects, I think, and citizens of the Irish Republic may practice as patent agents. It is possible that will have to be amended in Britain also, particularly if they, as well as we, become members of the Economic Community because the Treaty of Rome operates to prevent restrictions of this nature. In any event, under subsection (11) of the section, the Minister is empowered to make rules prescribing who will be eligible for registration and that will enable the Minister to provide for future commitments in regard to this matter without writing it into the Act. I think it would be undesirable to introduce this amendment at this stage.
Can the Minister say at this stage that the regulations would provide something on the lines I have suggested with, say, reciprocal arrangements comparable with English legislation?
Yes; I think something of that nature will be provided.
The Minister did not deal with amendment No. 65 which deals with the possibility of existing persons on the register——
I do not think it is necessary if the Deputy does not insist on moving his previous amendment. I understood it to be consequential on the acceptance of the previous amendment. The existing register is continued by subsection (2) of the section.
Do I understand the Minister to say that the section, as it is at present drafted, gives effect to what I wish to bring about by the amendment?
Yes; it is also provided in the Second Schedule. The Deputy need have no fears about it.
I move amendment No. 66:
In page 48, subsection (7), lines 4 and 5, to delete "any document" and to insert "a deed assigning the right to make an application for a patent, a deed assigning a patent granted to a patent agent or any other document (not being a deed)".
This is something that has been discussed with representatives of the Incorporated Law Society whose main purpose was to ensure that a patent agent would not draft any legal instruments. The amendment is a compromise, between the position as it was originally intended to obtain in the Bill and the views put forward by the Incorporated Law Society, which I believe will be acceptable to them.
Did the Minister himself see the Society?
No, I did not.
Did the Minister's officials see the Society?
Yes.
I do not want to have a similar situation arising to that which arose in relation to the Companies Bill. I got the memorandum from the Incorporated Law Society only this morning and my information is different from that which the Minister has given. It is to the effect that the amendment is not acceptable to the Law Society, as such. The section now, even with the Minister's amendment, does not correspond with the English section. Section 88 of the English Patents Act of 1949 limits the exemption to any document other than a deed. The Minister's amendment goes in a different direction and I suggest that the exemption or exception— whichever you call it—should be included.
I am not happy about this. I admit frankly that I do not understand the amendment; "a deed assigning the right to make an application for a patent" is clear but "a deed assigning a patent granted to a patent agentel"—does this mean that under the section it is not possible for anybody, other than a qualified solicitor, to do an assignment of a patent from one commercial person to another? And that exemption is only to cover the case where a patent agent has, so to speak, applied for a patent as a nominee? Is that what is intended?
Yes.
And is it purely limited to that?
Yes.
I did not so understand the amendment and I am not sure whether others have misunderstood it. I shall leave it at that and we can come back to it on the Report Stage.
I should like to explain that when the members of the Incorporated Law Society were seen, I did not say that they conveyed acceptance of the amendment but that I believed that it would be acceptable to them.
I understood the Minister to say that they had accepted it
I move amendment No. 67:
In page 48, before subsection (8) to insert the following subsection:
"() A person (in this subsection referred to as an agent) duly authorised by any person under subsection (1) of this section to act as his agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and that person, cease to act as agent for that person."
It looks as if there should be agreement on this.
Yes. It was drafted in accordance with the views of the parliamentary draftsman. He tidied up the amendment which Deputy Costello submitted according to the best drafting practice, as he saw it. My amendment is, in fact, Deputy Costello's.
Amendment No. 68 should have appeared under the Second Schedule, but due to a printer's error, is has been printed under the wrong heading.
Even Homer can nod.
I move amendment No. 68:
In page 56, paragraph 4, line 23, after "specification", to insert "(other than a specification relating to an invention referred to in section 55 of the Act of 1927)".
Under the 1927 Act, there is a limitation on the patentability of substances produced by chemical processes. This limitation is removed by the provisions of the Bill but there are safeguards in section 9, subsection (7) and also in section 42. The amendment to paragraph (4) as proposed will enable the benefit of the change to be applied in the case of applications which have not yet been accepted. The amendment was suggested by the Association of Registered Patent Agents.
I move amendment No. 69:
In page 57, lines 5 to 12, to delete paragraph 5 and insert the following paragraph:
"The provisions of sections 19, 34 and 35 of this Act relating to the grounds on which the grant of a patent may be opposed or on which a patent may be revoked shall not apply in any case where the complete specification was accepted before commencement of this Act, but the provisions of the Act of 1927 relating to those matters shall continue to apply in any such case notwithstanding the repeal of those provisions of that Act."
Next stage?
This day week?
I do not mind the Minister ordering it but it will be impossible to take it then because it will not be feasible to consider the amendments and the discussion until the report of the debates is ready. To-day's debate will not be available for discussion with the people concerned until Monday. We can negotiate about it in the usual way.
