Vol. 335 No. 1
I move amendment No. 10:
In page 24, subsection (2), line 19, after "the terms of", to insert "the claims of".
Our attention has been drawn to a certain lack of uniformity of wording between section 42(1) and section 42(2), namely "the terms of the claims" in line 13, "the latest filed claim" in line 18 and "the terms of the patent" in line 19. The amendment now proposed by the draftsman is felt to accord with article 69 of the European Patent Convention.
This section is rather unusual in what it does. It is illustrative of the pattern that is exhibited in this Bill in bending over backwards in favour of people who own patents. I quite appreciate that they have to have reasonable protection but in a number of respects — and I referred to one of them earlier — there is a shift in the normal burden of proof that is applicable to any normal legal situation. Normally a person bringing a case has to establish that case. That is the standard practice in all legal proceedings in every kind of case where legal rights have been infringed, contracts, tort or whatever. But here we find that the burden of proof is shifted and that a person can find himself as a defendant having to establish his own innocence. This, as a principle, is entirely wrong. It could be illustrated in a situation where a patent was in existence for making, say, ammonia by a particular process and it turns out that another person is making ammonia. The first person who owns the patent for making ammonia by that particular process then issues legal proceedings. The normal course which is applicable to every single case of civil proceedings that I know of is that the person bringing the claim has to establish the facts. That often presents difficulties, It is not easy, even if a person has a good claim, to be able to establish a case. But here this section transfers the burden onto the defendant and he has to explain satisfactorily that he is making his ammonia by a process other than that which is the subject of the patent. I do not think a key matter, the burden of proof in that kind of situation, is warranted in patent legislation.
I do not think I agree with Deputy Taylor's suggested amendment.
There is no amendment, it is a comment.
It is a comment which contains an implicit suggestion that it might be amended. First, the device of reversing the burden of proof is reasonably well known. I can agree it is not desirable to extend it beyond what is reasonable but here we are dealing with a process which is not scrutable to the patentor, a process being tried out by somebody else, let us say a competitor, in premises which the patentor has no right to enter and who has no right to interrogate the employees. It seems not an entirely unreasonable idea that where the product in question is a new product there should be a prima facie presumption that it has been produced by the up to now only process known for producing this new product. The example given by Deputy Taylor of ammonia seems not particularly in point because ammonia is an old product and can in fact be produced by perfectly natural means without any intervention of human ingenuity, as anybody who has ever changed a baby's nappy will know.
It is not the product but the process.
But the process has to result in a new product.
No.
Well, that is what the section says.
I am sorry, so it does.
I am sure there are many ways of obtaining ammonia but in this case where we are dealing with a quite new thing it is not unfair to presume, as a kind of working assumption, that a brand new product for the manufacture of which only one process is known so far, is in fact being produced when it is manufactured in somebody's works by the same process.
Again there is a provision here which is rather unusual in terms of normal legal law. That is subsection (1) (a) which gives the power to the owner of a patent to apply for an injunction restraining a defendant from an apprehended act of infringement. That is not normal procedure. Normally one cannot get an injunction to restrain someone from doing something which one apprehends he will do: one has to wait until he does it or commences to do it and one can then get an injunction to restrain him. That category of injunction, quia timet, is not normal and there seems no particular reason to give such a wide-ranging power as that just because a patentor may have an apprehension that there may be a breach. Why should he not wait until the breach occurs and then apply for his injunction?
The list in subsection (1) covers the remedies which are currently available under existing law so that there is no extension of those remedies. I am not certain that Deputy Taylor was right in saying that it would be rare to give an injunction in regard to an apprehended infringement. Perhaps if there is any infringement at all of certain patents it could be disastrous from the patentees point of view.
In section 46, which is dealing with the situation of innocent infringement of a patent, it is provided that damages shall not be awarded. The section is silent on the question of costs. I quite agree with the tenor of the section that it would be inappropriate to award damages, but might it not be reasonable to extend that a little bit further by saying that an innocent person who was not aware that a patent existed should not be condemned on costs either, as that could be quite a heavy burden on its own account even without damages?
What it says is "subject to the discretion of the court as to costs". That seems to underline the fact that it recognises the courts' existing discretion in regard to costs.
Would the Minister not agree that the defendant should not have to pay costs if he was not aware of the patent and had no reasonable grounds for supposing that the patent existed? Costs could be quite punitive——
It is open to the court not to award costs against him. I do not think it is necessary to add it specifically.
In line 47 there is an "e" missing in the word "infringement".
Agreed.
I move amendment No. 11:
In page 27, subsection (2), line 11, to delete "solicitor and client" and substitute "party and party".
There is a typographical error here. The word "judgement" should not have the letter "e" in the middle.
Unlike "infringement" either form is permissible.
In "judgement" there should not be an "e". This provision giving an entitlement specifically to costs as between solicitor and client is very unusual. I cannot recall ever having seen a provision of that nature in an enactment. It is standard practice that party and party costs, the normal costs that apply on the outcome of all legal proceedings, and matters arising between solicitor and client do not arise as a result of court proceedings between one party and the opposing side. I cannot see that making this distinction is warranted in this situation. It is most unusual to provide for solicitor and client costs.
I agree. I do not see any point in it. This reproduces section 60 of the 1964 Act and it has been on the Statute Book since 1964. I do not see any point in it. It is a contested case between two litigants and I do not see why the costs as between solicitor and client in this type of litigation should be written into this legislation. I accept the amendment.
This section provides a remedy for groundless threats of infringement proceedings. Subsection (2) reads:
Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of a patent, the plaintiff shall be entitled to the following relief, that is to say,
(a) ......
(b) ......
(c) ......
The effect of that under cover of a different kind of action is to force the defendant to make his case at once, notwithstanding the fact that he may not even be the owner of a patent — not that that is particularly material. If the object is to force the defendant into bringing the proceedings at once in this form, which is envisaged as merely threatened, it would be better to say so. If, on the other hand, it is envisaged as a purely interlocutory relief, it is a bit tough to expect the defendant to prove his case. Would it not be enough for him to be allowed carry on with his threats and advertisements if he were able to show he had reasonable grounds for supposing a patent had been infringed? I have no strong views about this. In other words, if the Minister thinks he ought to be put in the position of having to prove that the patent is being infringed and that he should be called on at once to put up or shut up, then perhaps that is not unreasonable; but it is a curiously roundabout way of making him introduce what sounds like a purely interlocutory arrangement. Then, if the plaintiff fails, the defendant presumably is still faced with the job of getting himself a substance of declaration in form of law in regard to the ownership of the patent. That is a remedy which is not envisaged in these three paragraphs.
This section provides protection, for example, against the activities of a patentee who coerces the customers of a competitor into ceasing to buy the competitor's goods without being prepared to put his patent and his complaint of infringement to the test of court proceedings. In such cases the competitor who is aggrieved by such threats may bring proceedings before the court. Such protection is given by section 61 of the 1964 Act. That section goes further in that it prevents a patentee giving a clear warning of alleged infringement, to the competitor himself, when he is considered to be making or importing infringing products or using an infringing process.
Section 50 therefore removes the protection given by section 61 of the 1964 Act to primary infringers while retaining it for their customers. Subsections (1), (2) and (4) reproduce section 61 of the 1964 Act subject to drafting. Subsection (1) allows any person aggrieved, who need not be the person to whom the threat is addressed, to bring proceedings, under subsection (2) if the threat proves unjustifiable, the patentee is liable for damages and an injunction to restrain further threats. Subsection (4) makes it clear that it is not a threat merely to notify a person of the existence of a patent. Subsection (3) is new compared with 1964. It excludes the bringing of a threats action when the alleged infringement is the primary act of making or importing a product or using a process.
I do not object to this, but the machinery is very peculiarly chosen. Let the Minister put himself in the position of a defendant. In proceedings under this section the defendant is a person who, by circular, advertisement or otherwise, has threatened somebody else with proceedings for infringement of a patent. He is forced by the proceedings envisaged under this section into a defendant posture, but he cannot avoid being decreed under headings (a), (b) or (c) unless he proves that the acts in respect of which the proceedings were threatened constituted an infringement of the patent. When he has proved that, he still has not got a declaration to that effect. All he has is a declaration that the threats were unjustifiable, an injunction against their continuance and damages. He has not got what he would have been entitled to if he were to go ahead and carry out his threats. In other words, so far as the letter of the law of procedure is concerned, he is back at square one having successfully but expensively defended the proceedings which this section creates. He still has to bring these proceedings to establish something which he cannot avoid being decreed for in the first proceedings unless he proves it. Perhaps I have not put that very well.
The purpose of this section, which is carried forward from the 1964 Act, is presumably to stop people threatening competitors by claiming ownership in respect of certain goods the competitor is selling. The difficulty of such a person under the 1964 Act appears to be greater than it would be under this section because the 1964 Act extended to making and importing as well as selling, and that has been dropped. I should have thought that, if somebody genuinely felt another party was infringing his patent in terms of the goods the other party was selling, instead of issuing advertisements, circulars and other threats of that nature he should issue proceedings in the ordinary way. If he does that, none of the onus is on him.
Quite correct.
He takes his place as an ordinary plaintiff.
I agree. We could insert a new paragraph (d) saying that the court should be entitled in the course of and as a result of the same proceedings to make the declaration that an infringement has taken place if the defendant succeeds in proving that.
Surely a declaration to the effect that the threats complained of were unjustifiable is the same thing, is it not?
The declaration that the threats complained of were unjustifiable is a declaration made in the plaintiff's favour. Suppose the "unless" clause eventuates, in other words, suppose the defendant succeeds in proving that the Act would constitute an infringement, he has been put to all the trouble and expense of proving that and it could be very considerable trouble if he has to call expert evidence. Surely the court should be entitled in the same proceedings to make a declaration which will be of some benefit to him. Unless the section is enlarged along those lines——
He could not get damages under (c) unless he was entitled to the patent.
The Minister is looking at it from the plaintiff's aspect all the time. I am asking that he look at it from the defendant's aspect. Suppose the defendant succeeds in proving that the Act in respect of which proceedings were brought did or would constitute an infringement——
Oh, the defendant, I am sorry.
Yes, the defendant. The defendant under the procedure which the Minister wants to establish as it now stands is put to all the trouble and expense of proving that an infringement has taken place. At the end of the day, when the smoke has cleared away and the lawyers have all gone home, he is still back at square one.
I do not know if I would have much sympathy with him. Obviously this section was put into the 1964 Act, and perhaps into one of the earlier ones too, to discourage that kind of commercial activity of people making outlandish claims about their patents.
I have often heard the Minister complain about the legal profession, of which he is himself an ornament, and what he seems to think is their exceptional dedication to making money which distinguishes them unfavourably from every other profession. If that really is the Minister's belief, surely it was a dreadful mistake to make one clean job of these proceedings which he is forcing on the aggrieved party here.
The aggrieved party could take different proceedings if he wants to. He does not have to follow this.
I may be wrong about this but it seems, as it stands, that the defendant here has been put to the expense and trouble of actually proving something which the Minister says if he had been more diligent and better advised he might have taken more active steps to prove in the first place. He now has been put to the expense of proving it and the section as it stands provides no remedy for him. He gets nothing for his proof except that he avoids being decreed any of the forms of relief to the plaintiff. In other words, he is not even left, at the end of the day, with a declaration that an infringement has taken place.
If he put in a counterclaim for his own injunction, would not the whole matter then be dealt with?
The court has not jurisdiction to make any order in his favour. Its jurisdiction is strictly limited in paragraphs (a), (b) and (c). He proves to win in our subsection, saying that where he does prove such a thing the court may make such order as appears proper, or something like that, to avoid further expenses.
I do not think Deputy Kelly's point is well taken. In that kind of situation, he would be entitled to raise a counterclaim, claiming an injunction for infringement of his patent, if he had one. The court would be in a position to deal with that on a counterclaim. In any case, there is nothing to stop him from bringing his own proceedings. If he is claiming that a patent is being infringed and has issued threats to that effect it is a matter for him to bring his own proceeding and follow it up. He could deal with it on a counterclaim.
A successful defendant in these circumstances is probably likely to be looked on as a bit of a crank in some respects because he went about the thing in the way envisaged by the section. It may be that back in the past this practice was more prevalent than one would imagine it is now. I doubt if it is very prevalent now. Deputy Kelly is right that the successful defendant in these circumstances does not get a declaration in respect of his patent. He can, however, either do what Deputy Taylor said, counterclaim in the same proceedings, or start separate ones. If he cannot do either of those things, we will certainly see whether a case can be made for adding a subsection or just a paragraph to that effect.
Perhaps as Deputy Taylor has said, the court would have jurisdiction to make a declaration on a counterclaim.
I am inclined to think that they would, but I will inquire from the Attorney General.
Going back to section 49 as a result of my amendment there——
, Limerick West): I am afraid that the Deputy cannot be allowed to go back to section 49.
I just wanted to draw the Minister's attention to the fact that because of his accepting my amendment to line 11 a consequential adjustment will now be needed in the remaining two lines of that subsection which can be dealt with at a later stage. It is as well to deal with it. The last two lines are based on the solicitor and client provision, so it may be necessary to adjust that.
The proviso would probably go out.
Exactly, the remainder should be deleted. There is no need for it.
On the other hand, it could be argued that that whole subsection could go out because the point of the subsection is to award the solicitor and client costs. If these are not being awarded, there is no need for the subsection, because party and party would automatically follow.
Yes.
I will look again at the subsection with a view perhaps to taking out the whole subsection (2). That would be the effect.
I move amendment No. 12:
In page 27, subsection (1), lines 36 and 37, to delete "for which damages may be awarded as a result of proceedings for" and substitute "of".
The object of this amendment is mainly to secure consistency with sections 44 and 52 which refer to an act of infringement and an infringement of a patent. It is also noted that section 44 entitles a proprietor to claim other relief besides damages. It is also felt that the amendment will remove any ambiguity about the extent of the court's declaration under the subsection.
I move amendment No. 13:
In page 28, subsection (2) (b) (ii), line 24, to delete "corporate" and substitute "corporate,".
The object of this amendment is to introduce a comma which was omitted in the printing of the Bill.
I move amendment No. 14:
In page 28, lines 29 to 31, to delete subsection (3).
The basis of this amendment is that the individual concerned under subsection (2) (a) (i) (I) is given a fairly wide power to deal with his right. He has the right to assign the right to it, or to transmit such right on death. In subsection (3), for some reason which is not quite clear to me, he is not given the right to issue a licence in respect of it. I can see no basis for drawing a distinction there. Rights to assign it or transmit it on death are quite wide rights, and particularly the right of assignment. If he is given the right to assign it, quite properly, should he not also logically have the right to grant a licence in respect of it?
The proposal in subsection (3) is felt to be fair, and no reason is seen to extend the rights of subsection (2) so as to grant a licence to do the acts protected. The new rights in subsection (2) are considerable and it is felt they should not be extended further. Section 52 generally introduces a new right into Irish patent law. Prior to the 1964 Act a person who had been using an invention privately could obtain revocation of a later patent granted to someone else. This ground of revocation was abolished in the 1964 Act. As things now stand, non-public use of an invention is vulnerable to an infringement action by a later patentee.
I do not quite follow the reasoning. It is not a question of subsection (3) granting a higher right than that granted by subsection (2). Really the situation is the reverse. The right of assignment granted in subsection (2) is a major right. That is cut back in subsection (3) for some reason which seems to me illogical. The individual is given the right to assign the right. In other words he can say: "I own this right to do this process, or whatever", and he is quite at liberty to sell, assign or transfer that for all time to another person. That is the right of assignment given to him.
The right to grant a licence in respect of it would be a lesser thing than that. He would say: "I am not selling you this whole thing, but I am giving you permission by licence to use it for two or three years". At the end of that period it would revert back and remain with that person. That is a lesser thing for him to do than to transfer the entire right absolutely by assignment for all time. I agree that is an alteration of the law and a very valuable and welcome one. If he is given the right of assignment why not allow him to grant a licence of it for a couple of years if it is suitable to him to do that? He might not be in a position to exploit it himself, and he might want to get some money out of it by granting a licence for a year or two.
The right conveyed by the section is a right to continue a user begun before the date of filing or of priority. It is thought that it would be going too far, as against the subsequent patentee, if a person who had that right of continuance of user for his own personal private use or advantage were to be allowed to license it out to others as against the interests of the patentee. I am sure if the Deputy reflects on that he will agree. It is fortuitous that a prior user will no longer be forbidden from a continuing use of the process where he had begun to use it beforehand, and as of today he is in breach of the patent. To allow him to continue to use it for his own private use is one thing. To seek to confer on him a right to license it out to others is very much another thing, and would be unfair to the genuine legal holder of the patent.
I could understand the Minister's point if subsection (2) was limiting the right to use it to the individual who held it.
Yes.
Subsection (2) does not say that. It goes much further than that. It gives him a right to assign it to a different person altogether, to a third party for all time. He could sell it on.
It is personal to him. It will happen only once.
When he assigns it on, a completely new person has the right to use it for all time.
Yes, but it is the same right derived from the original user.
If he can give it to him for all time, why can he not give it to him for a shorter limited period if it would suit him to do that?
Because he could license it to 20 manufacturers and destroy the prospects of the patentee.
Perhaps he could be limited to licensing it to one person as he is limited to assigning it to one person. It is not a question of its being limited to him personally. I might not agree with that, but I could understand it. The subsection is not doing that. It gives him the right to assign it. If he has a right to assign it, why not let him license it?
Is the amendment withdrawn?
Perhaps the Minister could assist us.
I have explained it fully and I think it is acceptable. We are in the difficulty that there is agreement to finish this tonight. We have nearly 100 sections left and we have only 50 minutes. I would love to get on with it, rather than waste 20 minutes on a division, if that is possible.
Amendment No. 33 is consequential on amendment No. 15.
I move amendment No. 15:
In page 29, between lines 7 and 8, to insert the following new subsection:
"(4) For the purposes of this section an international application for a patent designating the State and published in accordance with the Treaty shall —
(a) if published in English, be treated as published under section 25 on its publication in accordance with the Treaty;
(b) if published in any other language and if the specified condition within the meaning of section 126 is satisfied, be treated as published under section 25 on the publication of the translation of the application required by section 126; but, if the application is published in a language other than English, the applicant may bring proceedings under this section in respect of an act mentioned in this section which is done before publication of the said translation, if, and only if, before doing that act he has sent by post or delivered to the person alleged to have done the act, a translation of the application."
What is involved here is merely the transfer of section 126 (6) to section 53 where it appears to be more appropriate. The subsection now in section 53 provides that the date from which provisional protection under the section is put on is the earliest date on which any potential infringer would be able to examine the application in an official language of the State as a result of its publication by the Patent Co-Operation Treaty in English or its being made available here in translation. This corresponds to treatment of a European patent application in section 118 (6).
I move amendment No. 16:
In page 29, paragraph (c), line 45, to delete "under any provision" and substitute "by virtue of section 21 or 76".
This section lists the statutory grounds for revocation and paragraph (c) prohibits extension of the subject matter. The basis of paragraph (c) is Article 138 of the European Patents Convention which is in essence repeated in Article 57 of the Community Patents Convention. The object of the amendment is to restrict this particular ground for revocation to the cases mentioned in Articles 57 of the European Convention, namely to provisional applications under section 21 and the cases where a new application is made consequent on a court determination of entitlement under section 76. As originally drafted section 55(c) was too wide. It may be mentioned that the amendment is broadly in line with the UK Act of 1977, section 72 (1) (b).
This is one of the sections I had in mind, possibly the only one, in which it was stated explicitly that someone is to get an opportunity of making observations. I wanted to contrast that with section 31 ——
This relates to the controller's new power to revoke a patent and it is a pretty drastic thing to revoke a patent. We did take that into account in section 31.
I move amendment No. 17:
In page 31, lines 1 to 8, to delete subsection (1) and substitute the following:
"58.—(1) Subject to the following provisions of this section, the validity of a patent may be put in issue only on a ground which is one of the grounds specified in section 55, and, in addition to the foregoing, such validity shall be raised only —
(a) by way of defence in proceedings for infringement under section 44 or 53, or
(b) in proceedings under section 50 or 54, or
(c) pursuant to section 71."
This change is proposed to be made to ensure that there is only one ground by which the validity of a patent may be put in issue but there are three possible procedures.
I shall not waste the time of the House by going into detail but I had intended to suggest to the Minister that he might consider adding to section 59 an explicit power to summons for cross-examination on his statement the person who is submitting to the court a statement in writing signed by him.
Has he power to do that under the Supreme Court ruling of 1971, which the Deputy may recall?
Very likely.
I think he has not. Remember that tribunals of the House were found not to have the power and certainly the controller would be in no better position than a tribunal of the House.
The Public Accounts Committee at that stage was considered to be operating — and it could not otherwise operate because of its rules in breach of fundamental fairness by not giving somebody who is being accused an opportunity to cross-examine and confront his accuser. It was not the fault of the chairman or the committee itself but that the rules under which it operated did not make any provision for such a thing. I only suggest that the Minister might look at the possibility of including this as another subsection.
I shall look into that.
I move amendment No. 18:
In page 33, subsection (4), line 11, to delete "called upon" and substitute "required".
This amendment is proposed for the sake of greater consistency in drafting. The original draft which used the words "be so called upon" followed the style of the 1964 Act.
I move amendment No. 19:
In page 33, subsection (6), line 24, after "manner", to insert "(if any)".
This is regarded as purely a drafting amendment suggested by the draftsman.
I move amendment No. 20:
In page 34, subsection (2), lines 49 and 50, to delete "there has been any abuse of the monopoly rights under a patent" and substitute "any of the aforesaid grounds is established".
This amendment was suggested by the patents agents and seems reasonable. In drafting the section the Patents Office followed closely section 39 of the 1964 Act except that references in the earlier Act to abuse of monopoly rights were deleted throughout. The only reference remaining occurs in line 50 and it was thought appropriate that the section should be amended as indicated.
I have a note of paragraph (c) in subsection (2) to ask the Minister whether this meant that an Irish manufacturer or some such person could effectively take over under the procedure envisaged in section 62, an under-utilised patent of, say, a Belgian. If that is what it does mean, are there reciprocal provisions in force in other countries that are party to this convention?
It is taken out of the 1964 Act. I think the safest thing to say is that I do not know. I shall try to find out and let the Deputy know.
The time period specified is three years. Would the Minister consider reducing that? This is applicable in cases where a patent either is not being used at all or is being under-used. Utilisation of patents under those circumstances obviously could provide employment and generate economic activity. Perhaps three years is a bit too long to have to wait for utilisation of the process that would be controlled by it. Perhaps the Minister would consider a period of two years as more appropriate in our present difficult economic circumstances?
I understand that it has been three years since the Paris Convention of 1883 and precedent presses very heavily on the institutions of this State.
The unemployment situation is probably quite different now from what it was in 1883. We should avail of every opportunity for providing employment. There could be a situation where a patent was either not being used or was being under-used and it could be a source of employment. Somebody could come along to get a compulsory licence as provided for this very purpose in the Bill and he may be stalled off for an extra year. In the present strained economic circumstances it might be considered that two years would be sufficient to enable the owner of a patent to utilise it adequately. Perhaps the Minister would consider the point.
On the other hand, it was much quicker to get into production in 1883 than it is in 1982. There must be patents which it would be humanly, physically impossible to put into production in three years. Take, for example, patents in industrial diamonds and look at how long people like De Beers and GE take to implement those because of the enormity of the investment.
That may be so, but our interest is different to that of De Beers.
Possibly, De Beers could not build a plant in under four years.
Then they are going to be caught out anyway if that is the case, because three years is what is provided for in the Bill. If it is going to take four years it is not going to be provided in any case. Most of these processes could be brought into production and employment provided within a year or so as there are plenty of factories available by the IDA to do so. If two years go by from the date and nothing realistic has happened and if some Irish person is prepared to avail of this patent, provide employment and set something up, two years might cover most cases. I will not labour the point any further.
The Minister should ask himself whether there should be some provision in paragraph (e) subsection (1) of this section explicit in the Bill as to what is to happen to the commercial proceeds, if there are any, which may accrue to a Minister or the Government in forming or promoting an incorporated company to work commercially an application for a patent. It may not be necessary to make any such express provision but possibly there should be some provision which says what is to happen to any money which accumulates to the hands of the Minister.
These are remitted to the Minister for Finance.
That may be so.
I am advised that it would not be appropriate to put that into a Patents Bill.
Is there existing provision which would leave the money burning a hole in the Minister's pocket?
This is the same as section 91 of the 1964 Act.
This section deals with joint ownership and provides that the owners would hold an equal undivided share. From the description that suggests a joint holding under which it would pass to survivorship on the death of one of the owners. Would it not be safer to put in there after "share", "in common" which would obviously be the appropriate method of joint holding or in the case of a business transaction such as a patent?
I do not know why they use all the words and phrases they use here in relation to it. They should simply describe them as tenants in common. It would not be envisaged normally that they would hold a joint tenancy in a situation like this. I do not know why they do not use that phrase because that would put it beyond doubt. Instead they go on at great length here, "an equal undivided share in common". I will deal with the matter on Report Stage.
I move amendment No. 21:
In page 43, subsection (1), line 29, after "order", to insert "(including an order of apportionment)".
While it appears certain that this section as drafted would give the court power to determine not only complete entitlement to patents but also to apportion them, it has been felt desirable to make specific reference to the possibility of apportionment. That is the purpose of the amendment proposed.
I move amendment No. 22:
In page 44, subsection (1), line 40, to delete "to insert".
The words "to insert" in line 40 are superfluous in view of the inclusion of the corresponding words "to include" in line 38.
Could the Minister tell me what is the purpose of the rule in subsection (5) of this section which says "no notice of any trust, whether expressed, implied or constructive, shall be entered in the register, and the Controller shall not be affected by any such notice"? I wonder also whether the word the Minister is aiming at should be "express" rather than "expressed".
It should be "express".
Leaving aside that point. I am not entirely clear why, if there is a trust affecting the patent, it is not to be entered in the register.
Apart from the mispelling that is here, the phraseology is otherwise the same as in the Registration of Title Act, 1891, and the Act in the sixties, whatever year that was. The controller would be in an impossible position if he had to be cognisant of trusts and equitable interests. He will have to take the register at its face value in the same way as you would have to take the register in the land registry. He could not be following the equitable ownership. As the Deputy said, the word "expressed" is the wrong word, it should be "express".
I move amendment No. 23:
In page 47, subsection (8), lines 26 and 27, to delete "the publication of a patent application under section 25" and substitute "a patent is granted".
This section deals with substitution of applicants during the processing of an application. The section as orginally drafted provided for the possibility of such substitution up to the date of publication of the application. The corresponding provision in the 1964 Act, section 22 (1), provided for the possibility of such substitution up to the date of grant of the patent. It is felt that this is the more appropriate provision. This subsection, in contrast with the rest of the section, may apply to unpublished as well as published applications. Amendment No. 24 involves merely the insertion of a comma.
Amendment No. 25 proposes to delete a superfluous "that".
I move amendment No. 24:
In page 47, subsection (8), line 27, to delete "that" and substitute "that,".
I move amendment No. 25:
In page 47, subsection (8), line 29, to delete "that".
This is the section I adverted to earlier. It deals with the exercise of discretionary powers by the controller. I am not sure that the expression "discretionary power" is clearly understood in Irish law. It seems to me to be a rather porous expression which might not be far from being arbitrary. I gave instances earlier of powers which are genuinely discretionary and the Minister cannot be called to account when he exercises them — appointments to boards and so on. Powers to exercise statutory functions are not discretionary and I do not think they could be described properly as discretionary. They are exercised with the specific purpose of achieving the objects of the Act. I will not hold the House up but I am not entirely happy with the way the section has been drafted and perhaps the Minister would ask the Attorney General's Office to have a look at it to see if, after having it drawn to their attention, they still think it is appropriate to describe thus the kind of function of the controller when he makes a disposition which might affect somebody prejudicially.
I will have to look at it.
The section provides that the High Court or Supreme Court hearing a dispute in connection with a patent may call in the assistance of an assessor. It provides that the expenses of the assessor, which could be substantial, will be fixed by the court and will be paid as part of the expenses incurred by the Minister, in other words, the taxpayer. It seems to me that the expenses of the assessor should be paid by the unsuccessful party to the proceedings. Such proceedings represent very high-powered business, multinational millionaire firms arguing about patent infringements or revocations, and it seems rather hard on the taxpayer that he should be involved to meet the cost of the assessor who would have been called in. It would seem more appropriate that either of the parties, or both jointly, who are having the benefit of the assessor, would bear the cost.
This has been there for some time. I do not know why it is put in this way. Normally, it should follow the cost of the action. If you have a case at hearing before a judge for a week or ten days and you lose it, whatever else it costs you it does not cost you the judge's salary. The assessor appears in a quasijudicial role because of the difficulty of understanding these wretched patents.
Would he not be more like an expert witness than a judge? It seems hard that the taxpayer should have to meet the cost.
There have been assessors in a number of recent inquiries, the Whiddy one for instance. I think Mr. Justice Costello had three of them.
One of them bailed out prematurely.
Did he? I feel their remuneration would be looked at on the lines of that of a judge. I suggest that on balance it would be better to leave it as it is.
The amount involved in these proceedings could be very substantial, perhaps not as high as the cost of the Whiddy Tribunal, but you would be dealing with big business firms. They are the types normally who would be involved in patent litigation and they can well afford the expenses involved. Such firms reap the benefit of the assessor's advise. It seems to me the least they could do is to bear the burden of the expenses.
It is the loser who would bear it.
Let them both bear it.
We will have a look at it before Report Stage.
I understand there were assessors in the Stardust Tribunal.
I am talking about assessors in court cases.
I do not think the relatives of the deceased were well able to pay for the services of assessors.
We come to amendment No. 26 in the name of the Minister. Amendments Nos. 27, 28 and 29 are cognate and may be discussed together.
I move amendment No. 26:
In page 52, subsection (2) (b), line 16, to delete "Act" and substitute "section".
The purpose of these amendments is to substitute "section" for "Act" to facilitate the bringing of certain parts of the Act into operation at different times.
I move amendment No. 27:
In page 52, subsection (3), line 54, to delete "Act" and substitute "section".
I should like the Minister to look at the use of the word "directions" in line 50, at the end of page 53. I am not sure of the precise legal meaning of the word. In context with the words "Attorney General" it may have been used instead of "advice". However, I suggest it would be out of the question for the controller in the exercise of his quasijudicial responsibilities to be bound by directions given to him by the Attorney General or by any other lawyer. He might listen to their advice but I do not think the Attorney General can tell him what to do.
The Deputy is correct. There should not be directions in the sense that the controller felt he had no option but to follow them.
That is what I mean.
There is a tradition in the public service of thinking that the Attorney General's word is God. They very rarely act otherwise than in accordance with his advice. In practice it turns out to be a kind of direction.
There is a case in the Irish Reports, McLoughlin and the Minister for Social Welfare, in which Mr. Justice O'Daly said a deciding officer may not be mandated by his superior Minister to any particular decision. I do not remember the facts of the case but it was about the entitlement to a pension or status of an official who worked in the Chief State Solicitor's office. What happened was a deciding officer had been given a direction by the Minister for Social Welfare, which presumably went back to the Attorney General's office ultimately, as to the status of the man and the judge said that this could not be done. The deciding officer, albeit a member of the Department himself, was there to decide according to his own best judgement what the entitlement of the official was.
I move amendment No. 28:
In page 54, subsection (1), line 37, to delete "Act" and substitute "section".
I move amendment No. 29:
In page 55, subsection (2), line 36, to delete "Act" and substitute "section".
Could I suggest to the Minister to consider putting in a proviso as part of subsection (2) that a decision to erase the name of a patent agent from the register should not be published until either the expiration of the appeal period or the decision of the court to uphold the controller's own decision? The Minister will appreciate that the mere publication of the fact that at first instance the controller had decided to erase someone's name from the register could be extremely, perhaps finally, damaging to a patent agent. It would be merciful and sensible to direct that that should not be published until either the expiry of the appeal period or the decision of the court to uphold the controller's finding.
I will amend to that effect on Report Stage.
I move amendment No. 29a:
In page 59, line 10, to delete "Industry" and substitute "Trade".
Amendment No. 30 in the names of Deputies Taylor, B. Desmond and J. Ryan, in so far as it involves a potential charge on the revenue, is ruled out of order.
The proposal in this section represents a very undesirable trend which has come into our legislation in recent times and that is to grant immunities to Ministers and civil servants of various grades from being sued by members of the public. This is becoming all too prevalent and is undesirable. We had it recently in the Fire Services Bill where the Minister and his officials were given complete immunity from suit. As a result, a citizen can be damaged or injured as a result of some negligence or carelessness on the part of the Minister or one of his officials or agents and that person is debarred by the legislation from getting damages for the loss he suffers. It could arise in all kinds of ways under this Bill. For example, an applicant for a patent may have a very expensive piece of apparatus which would be with the examiner for the purpose of examination. It could be damaged and he would have no claim. The whole principle as the margin note says — immunity of Minister, controller and officers as regards official acts — is a retrograde step and could be unconstitutional.
I refer to some comments made by two Supreme Court judges in the case of Byrne v Ireland. Mr. Justice Walsh said at page 218 of the Irish Reports:
In my view the whole tenor of our Constitution is to the effect that there is no power, institution or person in the land free of the law save where such immunity is expressed or provided for in the Constitution itself.
At page 229 Mr. Justice Budd said:
From what is to be deduced in the main from an analysis of the foregoing provisions of the Constitution in so far as they affect the immunity of the State from suit, it would seem correct to say that the Constitution is not imbued with futile conceptions of privilege and exemptions but rather with modern conceptions of the duty of the State and the recognition by it of the human rights and needs of those who are citizens of the State.
Instead of hedging the State with privileges and immunities the general trend is to place obligations on the State. We have an example of a Bill putting in a section to hedge the Minister and his officials with immunity. That is a throw-back to the old days of the King can do no wrong and the State can do no wrong. I thought that in recent times we were moving away from that kind of trend.
If there is an act of carelessness or negligence on the part of a Minister or his agents and as a result a citizen suffers loss or damage, under the Constitution and in common sense that person should have a right of recourse to the courts and be compensated by the State for that wrong. If the concept of immunity is not highlighted it could become quite common in all legislation and the responsibilities of every Minister could be hedged with these immunities. In the debate on the earlier Bill, the Minister was right in pointing out on amendment of mine that no special position ought to attach to a Government agency. The same argument applies here. The point was made by the Leas-Cheann Comhairle that my amendment could represent a charge on the State and was being disallowed. It could be argued that the reverse is true and if the measure is found unconstitutional quite a substantial charge could result on the State as a result of leaving it in. If a person was injured and felt his constitutional rights were refused, he could take that matter to the High Court or Supreme Court and be successful. In that situation the cost of the proceedings, which would be substantial, would become a charge on the State. I would ask the Minister to consider what I have been saying in connection with that matter.
Deputy Taylor is perfectly right; I had made the very same note in the margin of my own Bill. In addition to the considerations based on Byrne against Ireland mentioned by Deputy Taylor and considerations about the Royal prerogative, I would ask the Minister to look at it under Article 40.1 of the Constitution which speaks about the equality of citizens before the law. While it is true that it speaks about citizens and that it does qualify in the next section the generality of that by talking about differences of function, they have got to be relevant differences of function. The Minister would take a long time to persuade me that there was anything relevant in the difference of the function of the controller or himself and the function of an ordinary citizen so as to permit the differentiation between them, which this section would purport to allow, to the extent that one would be liable for a negligent performance of some duty imposed on him by statute and the other would not. Of course there are obvious differences of social function between the controller on the one hand and ordinary citizens on the other. But there is no nexus between the difference of social function and the desirability, if it exists, of freeing the Minister or the controller from the ordinary liability to the ordinary law the rest of us have to endure.
I shall be glad to look at that before Report Stage.
I move amendment No. 31:
In page 64, subsection (3), line 17, to delete "with the meaning of this Act" and substitute "(within the meaning of this Act)".
This drafting amendment is required to correct an obvious mistake which occurred in the printing of the Bill.
Amendment No. 35 is consequential on amendment No. 32 and thay may be discussed together.
I move amendment No. 32:
In page 68, lines 14 to 21, to delete subsection (4).
Amendment Nos. 32 and 35 involve moving subsection (4) from its position in the section to the end of the section which appears more appropriate for a definition of this kind.
In addition it is proposed, in amendment No. 35, to delete the requirement to provide a copy of the application or of the amendment. However, the new provision retains the requirement to provide to the Patent Office a translation where the application or amendment is not in English. This has been agreed with the World Intellectual Property Organisation who manage the Patent Co-Operation Treaty.
I move amendment No. 33:
In page 68, lines 24 to 38, to delete subsection (6).
I move amendment No. 34:
In page 68, subsection (7), line 40, to delete "the" where it firstly occurs, and substitute "a".
The word "the" before the word "patent" in line 40 is being changed to read "a". This amendment is aimed at securing consistency in the Bill.
I move amendment No. 35:
In page 69, between lines 19 and 20, to insert the following new subsection:
"(11) In this section `specified condition' means—
(a) in the case of an application which is not in English, a condition that a translation has been filed at the Office and the filing fee has been paid to the Office by the applicant; and
(b) in the case of an amendment which is not in English of an application, a condition that a translation has been filed at the Office.".
Perhaps the Minister would take a look at subsection (1) (c). I understood that the effect of ordaining that judicial notice was to be taken of something was that parties were dispensed of the need to prove it, so that judicial notice of certain notorious facts, such as the crude outline of world geography, the phases of the moon or the seasons of the year did not require proof. It may be just that I have forgotten but I am not sure that one correctly speaks about taking judicial notice of things like decisions of, or expressions of opinion pursuant to, the European Patent Convention by a composite authority on any question arising under or in connection with that convention. That seems to me to be an extremely wise expression. If what is meant is that the controller is to take judicial notice merely of the fact that some court in some other State party to the convention other than ours has given an interpretation of this, that or the other, there could be no objection to it, assuming that the expression "judicial notice" is correct. If what is intended is that the controller is to regard himself as bound by it or is to regard it as in some way binding on him, then "judicial notice" is the wrong expression and I would think also the principle of the thing objectionable. Perhaps the Minister would look at it if it is simply to extend the dispensability of proof.
I think that is what it is.
If that is what it is, then there is no objection.
I think that is all it is, that he is not bound by the contents of it, but merely so that one would not have to produce an official from the convention to prove it, if it is printed as an official document or——
I see, there is no implication that the controller or anybody else is bound by the content of the decision.
I am informed that he is not. No, it relates only to proof of the document, as I understand it. If it is not that way, I will have to look at it before Report Stage.
If any question of binding were to arise it would be objectionable.
It would be a very broad section if it were that because a decision or expression of opinions pursuant to the Convention by a competent authority might include courts in Denmark or somewhere.
As we have very few minutes remaining, we have agreed to complete Committee Stage.
Amendments Nos. 36, 37, 38 and 40 to 46 are cognate and may be discussed together.
I move amendment No. 36:
In page 72, line 1, to delete "Act" and substitute "Article".
In Amendments Nos. 36, 37, 38 and 40 to 46 inclusive the word "Act" is being replaced by the word "Article". The objection of these amendments is to provide for the possibility of different Articles of the Schedule and sections of the Bill coming into operation at different times.
Amendment No. 39 refers to Article 3 of the Schedule to do with the term of a patent. Under the 1964 Act the term was 16 years; under the new Bill the term will be 20 years. The Schedule provides for determining whether a patent application pending at the date of commencement of the new Act shall have its term determined under the 1964 Act or under the new Act. The change proposed is essentially that provided in the United Kingdom Act of 1977. The change follows essentially a suggestion by the patent agents.
I move amendment No 37:
In page 72, line 7, to delete "Act" and substitute "Article".
I move amendment No. 38:
In page 72, line 8, to delete "Act" and substitute "Article".
I move amendment No. 39:
In page 72, lines 10 to 14, to delete Article 3 and substitute the following:
"3. (1) The term of any patent which is a patent to which this Article applies and which, immediately before the commencement of this Article, has at least five years of its term unexpired shall be twenty years.
(2) The period, or the aggregate of the periods, for which any patent which is a patent to this Article applies and which, immediately before the commencement of this Article, has less than five years of its term unexpired, may, on a petition presented after such commencement, be extended under section 27 of the Act of 1964 shall not exceed four years.
(3) This Article applies to any patent which by virtue of this Schedule is subject to the Act of 1964.".
I move amendment No. 40:
In page 72, line 15, to delete "Act" and substitute "Article".
I move amendment No. 41:
In page 72, line 23, to delete "Act" where it firstly occurs, and substitute "Article".
I move amendment No. 42:
In page 72, line 52, to delete "Act" and substitute "article".
I move amendment No. 43:
In page 73, line 5, to delete "Act" and substitute "Article".
I move amendment No. 44:
In page 73, line 34, to delete "Act" and substitute "Article".
I move amendment No. 45:
In page 74, line 2, to delete "Act" and substitute "Article".
I move amendment No. 46:
In page 74, line 10, to delete "Act" and substitute "Article".
When is it proposed to take Report Stage?
Next Wednesday.
Subject to agreement between the Whips.
