I move: "That the Bill be now read a Second Time."
Patent law has been revised only once since the foundation of the State. That revision was in 1964 and the Patents Act of the same year is still the current law on the subject. It is out of date in many respects and is particularly not conducive to expeditious examination of patent applications. Accordingly, one objective of the present Bill, which will replace the existing Patents Act, is to bring the law in certain key aspects into line with that of other European countries, particularly our EC partners, and to establish examination procedures for patent applications which are less officially time-consuming.
Another main objective of the Bill is to enable the State to ratify the European Patent Convention and the Patent Co-operation Treaty. The most significant of these two international agreements is the European Patent Convention which was signed by Ireland and 14 other European countries in Munich in September 1973 and which has been ratified by all our EC partners, except Portugal, and by Sweden, Switzerland, Austria and Liechtenstein. Many representations have been made in recent years by certain industrial sectors, by the Confederation of Irish Industry and by Deputies in this House, pressing for ratification of that Convention. After ratification, it will be possible to designate Ireland as a country in which patent protection for an invention is sought in addition to any or all of the other states which have ratified the Convention; and for that purpose the applicant only requires to make one application to the European Patent Office (EPO) in Munich whereas prior to the Convention individual applications had to be filed with the national patent office of each state in which patent protection was required. The European patent when granted by the EPO will have the same status in each of the designated states as if it were a national patent granted by the respective national patent offices; the effect will be the same in each state; and revocation of the patent by the national authorities will be possible only on the grounds specified in the convention. Finally, the duration of the European patent — a 20 year term — will be the same in each state.
In the interests, therefore, of effective protection of innovations the convention holds many attractions for applicants and I am pleased to be taking the opportunity of including in the present Bill, provisions which enable the fulfilment of the commitment to ratify signalled by Ireland's signature of this Convention in 1973. I have been persuaded, too, that ratification is regarded by research oriented industry as an important national incentive in the encouragement of industrial investment and innovation. Most of our Community partners ratified more than 12 years ago.
I mentioned the Patent Co-operation Treaty earlier. This Treaty was concluded in Washington in 1970. It has been ratified by all the Community member states — with the exception, again, of Ireland and Portugal. It has also been ratified by the EFTA countries, the USA, Canada, Australia and various other countries. The idea behind the treaty is to streamline patent application filing and novelty search procedures for applicants wishing to obtain patent protection in a wide number of countries. Applicants may make one central application — generally to their local patent office — designating the countries in which patent protection is required and the novelty search is carried out by an International Search Authority whose report of the search is then furnished to the patent office of each country in which protection is sought. Final examination and grant is performed by the various national offices. This system economises considerably on the amount of work an applicant would otherwise have to do in order to satisfy the multiplicity of individual national requirements.
Chapter III of Part II deals with the making of applications for patents. These provisions are broadly similar to the present law, with a few exceptions. The possibility to file what is called a provisional specification with an application followed later by a complete specification, is being abandoned. Under the Bill a specification describing the invention, and which includes claims defining the matter sought to be protected, will be required with an application. Nevertheless, it will be possible to have a filing date accorded to an application which is not formally in order provided the minimum requirements of section 23 are complied with and the deficiency is corrected later. Furthermore, it will be possible for an applicant to file an application and claim the priority of an earlier application he has filed in the office for the same invention, whereas at present only the priority of an earlier filing abroad can be claimed. These changes are more in line with modern practice elsewhere and are generally in the interest of applicants.
Chapter IV of Part II deals with the procedures for search and examination of applications. The provisions here are different in a number of respects from the present law. For an applicant who obtains a patent for the same invention in, say, the European Patent Office, Germany or the UK, it will still be possible to submit the specification of that patent as evidence of novelty and inventive step in respect of the Irish application.
A further objective of the Bill is the creation of a special system of patent protection for smaller type inventions. This is the short-term patent with which Part III of the Bill deals. I shall say more about this subject later.
When the Bill was being prepared I took the opportunity to review the procedures for examination and grant of patents under the present law. I was concerned about this matter in view of the large and growing backlog of applications currently awaiting examination. There was no prospect of eliminating this backlog without changing examination procedures and I am glad to say that the Bill contains new provisions in this respect which will be both adequate for the purpose and speed up examination considerably. Because of the existing large backlog, I have taken the opportunity, in the transitional provisions, of arranging that the new procedures will apply also in the case of all applications on hand when the Bill becomes law; otherwise the existing backlog, if processed under the present law, would take years to dispose of.
For the information of the House I will now outline the principal features of the Bill, indicating the differences from the present law and expanding some more on certain of the objectives to which I earlier referred.
Part I is a short, general, part listing definitions of terms used in the Bill; clarifying certain matters relating to orders or rules made under the Bill and providing for repeal of the present law.
Chapter I of Part II confirms the continuation in being of the Patents Office and the Controller of Patents, Designs and Trade Marks while Chapter II lays down the criteria that an invention must satisfy to be patentable, namely, novelty, inventive step and industrial applicability, and defines these criteria. It provides that patents cannot be obtained for certain subject matters, such as scientific theories, computer programmes, methods of medical or veterinary treatment, inventions whose exploitation would be contrary or public order or morality and plant or animal varieties. These provisions about what is patentable are quite different from and more specific than our present law which basically provides for the grant of a patent for any new or useful art, process, machine, manufacture or composition of matter. The provisions proposed bring our law into line with that of other European countries and are based on the corresponding provision of the European Patent Convention.
I should say at this point that the Convention has acted as a harmonisation instrument generally in that those European countries which have ratified it have also tended to adopt the legal concepts of the Convention in their domestic law. As I have already pointed out, Chapter III of Part II deals with the making of applications for patents. These provisions are broadly similar to the present law, with a few exceptions.
Chapter IV of Part II deals with the procedures for search and examination of applications. The provisions here are different in a number of respects from the present law. For an applicant who obtains a patent for the same invention in, say, the European Patent Office, Germany or the UK, it will still be possible to submit the specification of that patent as evidence of novelty and inventive step in respect of the Irish application. However, where no corresponding outside patent application has been made, a search report on the invention will have to be established after the filing of the Irish application. The search report will be established under the authority of the controller by arrangement with an outside office which is capable of doing an adequate novelty search. When the foreign granted patent or search report, as the case may be, becomes available it will be laid open to public inspection by the controller in conjunction with the application and the applicant will be requested to submit any amendments to the specification of his application in the light of these documents. Any amendments will also be open to public inspection. The office will check whether the subject matter of the application is patentable.
These procedures replace the elaborate and time consuming provisions governing examination which the present law imposes and which have led to the enormous backlog in examination of applications to which I referred earlier. I am satisfied that the new procedures, which are similar to those in operation in some European countries, will work well in practice and make for a much more efficient and streamlined system.
The public, too, will have the possibility of inspecting applications at all stages. In addition, there are provisions in the public interest enabling applications to be made to the controller or the court for revocation of a patent on any of a range of grounds specified in section 58; the grounds include non-patentability of the invention and non-entitlement of the proprietor to a patent therefor. Thus, the system provides for a reasonable balance between the interests of the patent holder and the rights of the public.
Under the Bill the term of a patent will be 20 years; it is currently 16 years. The 20 year term is, again, the norm applying in Europe and is also the term of a European patent under the Convention. The research and development costs involved in developing and perfecting an invention can be very substantial. Also, in the case of certain inventions such as new pharmaceuticals, official authorisation is required before the new substances can be put on the market; these authorisations can take a long number of years to materialise, resulting in a significant erosion of the term of the patent. For these reasons the longer patent term is justified.
The provisions in Chapter VII of Part II dealing with infringement of a patent follow generally the lines of the present law. However, the Bill also provides, in accordance with the principles of the European Patent Convention, that proceedings may be instituted after grant for acts of infringement committed before the patent was granted. This is necessary to deter third parties from committing infringements in the interval between the date of publication of a patent application and the grant of the patent.
Part III of the Bill makes provision for the grant of short-term patents. The provisions here are completely new to Irish law and were devised in the interests of the smaller inventor who may find the task of obtaining a normal patent too costly and time consuming and, therefore, a disincentive to protecting his invention. Therefore, I have made provision which will ensure that short-term patents will be capable of being obtained without undue official obstacles and I intend to provide for lower official fees for these. In doing this I am conscious of the fact that small innovators face more drawbacks, cost-wise and otherwise, than larger companies in the innovation process and I hope the provisions which I have made will prove encouraging to them and an incentive to commercialise useful inventions.
The period of protection will be ten years. This will particularly suit the less technologically complicated inventions which by their nature may not have very long life cycles but which nevertheless have an important place in the whole process of industrial innovation and in the encouragement of new project startups. I should make it clear that short term patents will not be confined to small inventions and, indeed, it will be possible for an applicant who has applied for a short-term patent to make a simultaneous application for a full patent and later abandon whichever application he does not wish to pursue.
The final Part of the Bill, Part XII, contains those provisions which are necessary to enable Ireland to ratify the European Patent Convention and the Patent Co-operation Treaty. In the case of the European Patent Convention, what is basically required is that applications for European patents designating the State be treated as having the same legal status as national applications made to the Irish Patents Office; and that European patents designating the State, granted by the European Patent Office, be treated as if they were patents granted under our own national law. Part XII of the Bill fulfils these requirements, making also a number of consequential and other miscellaneous provisions. An important provision is that if the language of the specification of the granted European patent is not English, French and German being the two other permissible languages of the European Patent Office, a translation in English of that specification must be filed with the Irish Patents Office and published here in order for that patent to have effect in Ireland.
As regards the Patent Co-operation Treaty, in order to enable Ireland to ratify this Treaty, the Bill provides that Ireland may be designated in international patent applications filed under the Treaty. The Bill also specifies in section 127 that, as permitted by the Treaty, an international application designating the State shall be deemed to be an application for a European patent designating the State. Availing of this possibility has certain desirable advantages: it means that functions concerning international applications which would otherwise have to be performed by the Irish Patents Office will, instead, be performed by the European Patent Office, and the result at the end of the day will be the grant of a European patent designating Ireland having the same effects which I previously mentioned in relation to European patents.
In conclusion, I should like to mention another patent convention, namely the Community Patent Convention, which was signed by Ireland and the other Community member states in 1975. It will not be possible to ratify that Convention on the basis of the present Bill because an amendment of the Constitution is required before ratification of this Convention can take place. This matter will be kept under review in the context of other possible amendments of the Constitution which may arise in the period ahead.
I recommend the principle of this Bill for approval by the House.