Amendments Nos. 1 and 9 are related and may be discussed together.
Patents Bill, 1981: Committee Stage
SECTION 1.
I move amendment No. 1:
In page 8, subsection (2), line 15, to insert “40 (2),” before “117 (9)”.
This amendment is consequential on an amendment to section 40. Section 40 refers to the concept of exhaustion of rights. It is a new principle imported from the Community Patent Convention, Article 81. The principle was brought into the UK Act of 1977 at section 60, subsection (4), but that section will not be in force until the UK ratifies the Community Patent Convention. The patent agents here have argued that section 40 as drafted originally, now section 40, subsection (1), places greater restrictions on Irish inventors than on British inventors. The subject of the amendment is to provide that the exhaustion of rights provision will not come into effect until a date to be fixed by the Minister by order. The Minister will not fix the date until Ireland ratifies the CPC. It is my intention, immediately on the enacting of this Bill, to have work started on the further legislation that will be required to enable Ireland to ratify the convention. It is not possible at this stage to forecast how long it will be before this separate legislation will be enacted.
Question put and agreed to.
Section 1, as amended, agreed to.
SECTION 2.
Amendments Nos. 2 and 29 (a) are related and may be discussed together.
I move amendment No. 2:
In page 10, subsection (1), line 23, to delete "Industry" and substitute "Trade".
These amendments arise only out of the change of name of the Department.
I do not wish to offend the Minister, but what is involved here is more than a change of name. It arose from a very serious political decision which I understood the leader of the Minister's party was only waiting for an opportunity to reverse. Before we go through with this change, which involves the deletion of the word "industry" from the title of the Department as it was known when the Bill was drafted, I should like to know what exactly is the status of the Department and also what is the status of the industry wing of the Department of Industry and Energy. The party to which the Minister belongs made a serious fuss about the separation of the industry and commerce functions. I must admit that I sympathised with their point of view, but I understood from the Taoiseach in 1981 that this was the subject of very early questioning after the Government of which I was a member came into office. I understood that the then Deputy Haughey was only awaiting an opportunity to reverse this decision which he found reason to criticise. Admittedly, it was not the wisest decision made by our Government. Before we simply wave the matter through by way of purely a verbal change, I should like to know if there is any likelihood that the Department which the Minister opposite presided over once will be re-integrated in the same form or whether the new brass plate which I have observed only recently gracing the portals of the Kildare Street building indicates that the situation has become solidified rather than remaining provisional.
It is an interesting point but, while I do not wish to interfere with the Minister's reply, I do not know whether the point is relevant to the section as it affects the Minister.
I do not wish to embarrass the Minister or to cause any fuss about this matter, but we should not wave through something as purely a verbal amendment which we are asked to consider exclusively in consequence of the substantial decision to separate the two functions concerned, under one of which the Minister is still functioning. The House is entitled to some indication as to what is the future of this Department and also of the Department headed by Deputy Reynolds. Is there any prospect of re-integrating the industry and commerce functions, something that I understood the Minister's colleagues to be keen to do as quickly as possible and something also which the Minister, though not for reasons of personal aggrandisement would wish to do also? May we take it that the decision of the last Taoiseach in this matter, though criticised at the time by his opponents, is to stand permanently?
I do not know what the position will be in the future. It would not be appropriate for me to put the matter beyond that except to say that I considered the decision to make this change to have been wrong. Having gone back to the Department or at least to that part of it that I occupy now, I am equally convinced that the decision to change was wrong. It was not in the national interest to have the Department divided in the way in which it was divided in 1981.
That is as far as I can reasonably expect the Minister to go.
Question put and agreed to.
Section 2, as amended, agreed to.
Sections 3 and 4 agreed to.
SECTION 5.
I move amendment No. 3:
In page 11, subsection (1), line 41, to delete "the Patents Act, 1964," and substitute "the Act of 1964".
Section 2, subsection (1), which is the interpretation section, provides that in this Act, the Act of 1964 means the Patents Act, 1964, and that the words, "the Act of 1964" should therefore be used rather than the words "the Patents Act, 1964".
Amendment agreed to.
Section 5, as amended, agreed to.
SECTION 6.
Question proposed: "That section 6 stand part of the Bill."
Section 6, subsection (1), provides that a patent would be granted only for an invention which is susceptible of industrial application which is new and which involves an inventive step. There is an element of tautology here. Clearly if there is invention there is an inventive step. The second point that occurs to me is in relation to how one draws a distinction between an invention and a discovery which is excluded under subsection 2 (a). That seems to be a very fine distinction.
So far as I know the phrase "inventive step" is European language.
This section follows the wording of Article 52 of the European Patents Convention. The meaning of the wording has been arrived at by way of case law. It is a delicate sort of word and it might perhaps be better to leave it alone.
I do not know whether the Minister means Irish or European case law in that sense.
Both, I think.
It seems to me that the words "inventive step" add nothing to the section since it must be implied that a patent may be granted only for an invention. We are talking here of an invention which involves an inventive step and I consider that to be tautologous.
It is not the invention which involves the inventive step but the industrial application of it. At least, that is how I read the subsection.
The Chair is fearful of what refinements we might get into in the presence of such legal luminaries.
This follows the wording in Article 42 of the European Patents Convention. I am advised that the definition of patentable inventions differs from that in section 2 of the 1964 Act but that the difference is likely to be small in practice.
Are we happy to live with that difference and accept section 6?
What about the distinction between invention and discovery? Why is a discovery not patentable?
Subsection (2), which is the one that contains the word "discovery", specifies a list of matters which are not to be regarded as inventions and the list corresponds to the European Patents Convention, Article 52 (2). The items on the list have been held to be unpatentable under existing law and the list has the object of reducing any uncertainty occasioned by the abolition of the existing definition of invention. The list is non-exhaustive and so does not prevent other things being held to be outside the scope of the term "invention" in subsection (1). There is no definition of "discovery" in the Bill.
We are all making an act of faith that the chaps behind the European Patents Convention knew what they were talking about.
One wonders from what language it was translated.
Through how many languages was it translated?
That is what worries me.
And to think that we have to put all this stuff into Irish before it can be published in book form.
There seems to be an inconsistency there using the ordinary general English language because we are told that essentially an invention can be patented and in subsection (2) we are told that a discovery cannot. Can somebody tell me the distinction between an invention and a discovery in terms of the ordinary parlance of the English language because it escapes me at present?
A discovery is probably the discovery of something that always existed in nature, that the mould on cheese tends to cure lesions, or something like that. That was always true if someone had known it while an invention is something which, perhaps, might have always been true but the invented dimension of it only results from putting one kind of mechanism together with another.
It needs to be susceptible of industrial application. Presumably a discovery is something that when it happens one shouts "eureka" afterwards.
If one discovers something that is capable of industrial application is that patentable?
Surely an invention is a creative act whereas a discovery is not?
Newton's discovery of the law of gravity, I am advised, is a discovery.
He did not discover gravity; that was discovered long before.
My advice is wrong but whatever he discovered could not be patented.
Harvey's circulation of the blood would be a better one in the same year.
Harvey then would not be allowed to patent the discovery of the circulation of the blood.
Is Deputy Taylor happy to accept that there is a difference between "discovery" and "invention"?
I cannot see it.
Is Deputy Taylor happy to accept section 6?
Will the Minister consider deleting the word "discovery" because I have a feeling it might give rise to more confusion?
I cannot because I gather it is in the European Patents Convention and we could give rise to greater problems by deleting it than by leaving it. At least we know what a discovery is and we agree that it cannot be patented. Therefore, there is no harm in leaving it in the list of the things that cannot be patented.
I can visualise somebody who has discovered something being argued down on the basis that it is a discovery and not an invention. The distinction is very thin. Why open up the door to heavy legal proceedings in drawing such a fine distinction?
Long, well paid summer afternoons in court No. 7.
Question put and agreed to.
SECTION 7.
Question proposed: "That section 7 stand part of the Bill."
What is behind the phrase in paragraph (a):
A patent shall not be granted in respect of:
(a) an invention the publication or exploitation of which would be contrary to public order or morality, provided that the exploitation shall not be deemed to be so contrary only because it is prohibited by law;
There is the material for a lot of trouble lurking behind that paragraph. I do not wish to open the can unduly wide but perhaps the Minister will give us some hint — he can veil it as well as he wishes — of what he is referring to in that phrase.
I am advised that the provisions of this section correspond broadly to existing law. Paragraph (a) excludes inventions objectionable on grounds of morality or public order corresponding to EPC Article 53(a) and to section 51(b) of the 1964 Act. The proviso has the effect that although the use of an invention may be unlawful here this is not of itself to prevent the grant of a patent for a product which may be exported to countries where its use is not illegal.
In other words, some device or preparation could be invented here in conditions where its use or sale here was against the law but it would not prevent a patent being granted with the object that it could be exploited elsewhere.
That is correct; sold elsewhere. It is in aid of exports.
I will say no more.
Surely there is a point of law here. Anybody who would be manufacturing or involved with that product would be an accessory and would be involved in criminal activity. Are we purporting to legalise that, provided it is for export? That would involve a change in the criminal law as well as a change in the industrial law. The word "morality" is a very loose one and can mean all sorts of things to different people. There is no definition of it here and I do not know who would determine the parameters of the morality that is envisaged.
We might also be in a position where a patent granted under this section was the subject of a licensing contract or a contract to dispose of it by sale outright here. That contract might run into questions of its validity having regard to public order and morality, notwithstanding the fact that we had formally patented the thing. I do not want to explore this.
Neither do I. I do not wish to get into the vein of public order or morality which tends to be a longwinded one when a discussion opens on it. I cannot imagine that there can be very many things that this would apply to but in the days before the Act was passed about contraceptives, the sale of them was illegal but that did not stop one patenting some new form of contraceptive and exporting it.
Let us leave that delicate area out altogether if we can and take the instance of some form of drug, an intoxicant. Let us suppose the Minister, or Deputy Taylor, discovered that some process other than fermentation produced an agreeable intoxicant effect so much so that it could be sold and exploited. If the intoxicant were a serious one presumably its sale would be prohibited under one of the Acts on this subject so that it would fall under the rubric of being prohibited by law. Clearly the exploitation of it in this jurisdiction would be contrary to public order and morality but we would leave ourselves in the situation of permitting it to be patented. I draw the Minister's attention to this fact.
The subsection is remarkable in that it is debasing the law in the sense that if a process is brought forward which is contrary to public morality it cannot be patented, but if it is only contrary to law that does not matter. It is putting the impact of morality above that of the law and this seems rather strange. If it is infringing a law, it is all right; if it is infringing morality, it is not on. That is putting morality at a higher level than law.
I understand that the phraseology in this section appears in the European Patents Convention. All the other countries will have to legislate for it as well. The whole thing sounds a bit ridiculous to me but it is there and I am advised that we have to pass it. Even though we are all rather amazed and confused by it we might as well let it go through. I understand that it is in the convention and that it corresponds broadly to present law. They put it in in 1964, Whether they knew why or not I do not know.
Is the Minister saying that we should pass something which he considers ridiculous?
Would it not be more satisfactory generally in cases of this kind to enact something here to which an international convention would be scheduled? This convention is cast in language which both from the legal point of view and from the technical point of view is not really all that transparent. We do not know what some of this stuff means or may mean or is likely to mean. Rather than pass it in the form of sections of an Irish Act, might it not be better to hold it at something of a distance, to schedule it and to enact the schedule as part of the law, so far as that is not inconsistent with our own domestic law and the Constitution?
Article 53, under the heading "Exceptions to Patent ability" states:
European patents shall not be granted in respect of:
(a) inventions the publication or exploitation of which would be contrary to "ordre publique" or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States.
It is exactly the same, except that it uses the French form for public order.
Perhaps that article means that the thing shall not be deemed by the Irish Patent Office to be contrary to public order and morality simply because it is contrary to law to make it in Denmark. Perhaps the reference to some or all of the member states is not intended to be reflexive, not intended to comprehend the state in which the application is being processed. I can see the sense of that if we are not to be asked to import into our own law the content of the statute law of other member states. It seems to be putting the Minister and any successor he may have in an impossible position in presiding over a Bill in which there is a clause of this kind. He is not really able to explain what it means and I do not blame him. Perhaps his Department might inquire whether the suggestion I have made is what the convention was aiming at. I can scarcely believe that in the other member states they are solemnly enacting something which permits their patent offices to patent something unless it is contrary to public order and morality but that it shall not be deemed to be such merely because it infringes their own national law. I always understood that respect for the positive law was an item of morality.
Deputy Kelly may very well be right because it is a contradiction in terms. If something is prohibited by law it is contrary to public order and morality and the section would purport to put a degree of respectability on something which would be prohibited by law. The explanation may well be as Deputy Kelly suggests. It is the only possible explanation of the subsection as it stands. It gives a most remarkable result by saying that one can disregard a matter that would be prohibited by the law of this State.
Article 53 envisages a situation where, for example, an invention or its exploitation could be deemed to be contrary to the law of all the contracting states and it still could be patentable because the phrase used is "in some or all" and even if illegal in all the contracting states it would still be patentable.
Section 1 (3) of the British Act of 1977 expressed it more briefly but bluntly than we have done. It states that a patent shall not be granted for an invention, the publication or exploitation of which would be generally expected to encourage offensive, immoral or anti-social behaviour. Subsection (4) goes on to state that for the purposes of subsection (3) behaviour shall not be regarded as offensive, immoral or anti-social only because it is prohibited by any law in force in the United Kingdom or any part of it.
It is the same import.
I am not sure I agree with Deputy Taylor because there are all kinds of offensive behaviour which may be against by-laws but not against the statute law. There are all sorts of by-laws applicable to Saint Stephen's Green and to the city buses. One might be guilty of that behaviour by being rude to passengers or singing ballads into their ear without doing anything which by any ordinary acceptance of the expression is in any palpable sense against public order or morality. Although I have very often condemned in this House the habit of copying the British, here is an instance in which we have declined to copy them but I must say their solution as the Minister has enunciated it is a better one than ours. "Public Order and morality" is, as far as I can remember, a constitutionally-anchored phrase here and has fairly serious, sonorous over-tones and significances while the rather more general English expression implying brandishing umbrellas in a bus or any kind of boisterous offensiveness creates less conflict. Will the Minister ask his advisers to look at the matter?
I will. Our draftsman was more inclined than the UK draftsman to follow the exact text of the European Patents Convention and to allow interpretation of it to await case law. Ours is subject only to public order and morality whereas the UK one is much more specific in the sense that it is not a high constitutional phrase. It is "anything that would encourage offensive, immoral or anti-social behaviour". They are broad phrases. Anti-social activity can be relatively trivial.
Such as smoking cigarettes. That is anti-social but in a trivial way. It is prohibited in certain public buildings and in certain parts of buses and so on. I can accept that in trivial areas like this the English legislature or some other legislature might say they do not mind patenting certain things, even though their law might disapprove of their use as being offensive or anti-social, for use in countries that do not have the same standards. However, our phrase, "public order and morality" occurs in Article 40 of our Constitution and covers an area of activity such as the Minister instinctively thought it did when we started to discuss this matter because he got into the subject of the Criminal Law (Amendment) Act and family planning legislation.
To leave the subsection as it stands would mean it would be quite in order to patent something that was prohibited under our law, provided only that it was not contrary to public order or morality. That is really the test. The question of its legality under our law would be neither here nor there. We would have a situation where we would say it would be in order for the Patents Office to grant a patent for something that was prohibited by law here. It seems a remarkable conclusion.
This is to allow exports. For example, we do not have any armaments industry here and that is rather a pity because it is one of the most successful industries in virtually every western country. We are losing out in cash terms——
That observation would be contrary to public order and morality.
For example, the Swiss get much of their income from armaments——
I have no illusions about the Swiss.
Whatever we may think about it, we do not have an armaments industry. However, if someone were to start inventing armaments here, although it would be illegal to use or to sell them here, that person would be entitled to a patent. For example, if he invented some new form of sea-skimming missile or whatever is fashionable at the moment it would be unreasonable for him not to be able to patent his invention and to sell the production of it abroad.
The Minister has given a striking instance but I do not think it is really the point. Let us take the case of the publication or exploitation of a new kind of firearm or armoured car such as that invented by my colleague in UCD. I do not know what is the situation with regard to that but I understand it was intended for warlike purposes. The exploitation of that is not prohibited here but I presume it is subject to some kind of licensing regime. I cannot believe we have a complete legal prohibition on the development of munitions of war. On the contrary, we have statutes which envisage such things. They may not be in force now but the Emergency Powers Act specifically envisaged such things. I do not want to hold up the House on this but I ask the Minister to look at this matter again.
I will have a look at the matter between now and Report Stage to clarify the situation.
Will the Minister tell the House what is the authoritative language of the European Patents Convention? Is it French or English?
French, probably.
The English have seen fit to translate the French formulation with the words "offensive, immoral or anti-social conduct". In other words, they have given their version in their language in a much less exalted and high-flown words than we have used.
Our words are much closer to the original convention. The British changed it fairly significantly but we hardly changed it all.
They have got away with it for five years without incurring the charge of absurdity whereas I am afraid we will incur that charge.
I think our section, absurd as it is, is less absurd than the British section.
May the House take it that, with the assurance given by the Minister, the section is agreed.
Question put and agreed to.
SECTION 8.
Question proposed: "That section 8 stand part of the Bill".
Subsection (2) states:
The state of the art shall be held to comprise everything made available to the public (whether in the State or elsewhere)....
Does that mean that an applicant for a patent will have to establish or prove that nowhere else in the world is this particular invention, that nowhere else will it form part of "the state of the art"? That would seem a very heavy burden of proof for any person to meet. I do not know how the burden of proof operates in that situation.
I am advised the novelty has to be universal.
Does the person have to prove that? That would be a very difficult task.
I think he has to prove it. He proves it by satisfying the examiners in the Patents Office that it is novel. I presume part of the process of doing that is to produce searches from other patents offices and in our case also from the office in Munich. If he gets certificates from the other offices of its not being patented I suppose that is prima facie evidence of novelty.
Subsection (3) states:
Additionally, the content of a patent application as filed, of which the date of filing is prior to the date referred to in subsection (2) and which was published under section 25 on or after that date, shall be considered as comprised in the state of the art.
That does not apply to applications filed after that date anywhere but in the State. This addition appears to be confined to applications filed in the State and it does not appear to give any status to applications filed outside the State after that date.
Progress reported; Committee to sit again.
Sitting suspended at 1.30 p.m. and resumed at 2.30 p.m.