Amendment No. 1 in the name of Deputy Barry. Does the Deputy accept that amendment No. 2, an alternative, should be discussed with amendment No. 1?
Patents Bill, 1991: Committee Stage.
Section 1 agreed to.
SECTION 2.
Yes, Sir. I move amendment No. 1:
In page 10, subsection (1), lines 19 and 20, to delete the definition of "patent" and substitute the following:
" `patent' means a patent pursuant to Part II or Part III of this Act, except where the context otherwise requires;".
This is an extremely difficult, complex Bill that is being dealt with in the wrong place if you do not mind me saying so, Sir. This is a Bill being dealt with in this House by amateurs whereas it warrants a professional approach. This is definitely a Committee Stage type Bill that should be debated within a small committee of this House with Members backed up by the relevant expertise, including civil servants who would be allowed contribute to the debate. Because of its complexity and importance I have grave fears that our lack of knowledge may will mean that, at the end of the day we will produce a Bill that does not fulfil the purpose for which it was designed. I merely want to make that point.
A patent is a property right granted by the State authority which excludes others from the use or benefit of that patented invention without the consent of the patentee. A patent does not confer a positive right to use the invention because freedom of use may be dependent on other rights. It has been put to me that this method of interpretation would make it easier for those who will be operating the Act and applying for patents under the Act.
The amendment tabled by Deputy Barry is the same as amendment No. 2 in the Minister's name. The wording of the Minister's amendment is more accurate and has been vetted by the parliamentary draftsman. In the circumstances I am not accepting Deputy Barry's amendment. Two of the amendments relate to the definition of "patent" and "patent agent" respectively and make each definition more technically precise. This is a very technical Bill but we have given it a considerable amount of thought and time. The points put forward by Deputy Barry are relevant but we have accepted the advice of the parliamentary draftsman.
I have no problem about accepting the Minister's word on that. However, I should like an explanation as to why the wording in his amendment is regarded as superior to mine. If I am satisfied on that point I will withdraw my amendment.
We have not the benefit of the parliamentary draftsman's presence. The point made in relation to a select committee is very relevant in this regard. That is a matter for decision by the Whips and the Government. I sympathise with Deputy Barry's point in that regard since this is a highly technical Bill. All I can say is that the wording in the Minister's amendment is more accurate and has been vetted and approved by the parliamentary draftsman's office.
I accept that.
Amendment, by leave, withdrawn.
I move amendment No. 2:
In page 10, subsection (1), line 20, to delete "to make use of an invention".
Amendment agreed to.
I move amendment No. 3:
In page 10, subsection (1), line 21, after " `patent agent' " to insert "except in section 94".
Amendment agreed to.
Amendment No. 4 is in the name of the Minister. Amendment No. 5 is an alternative. These amendments may be taken together for discussion. Is that agreed? Agreed. I must advise Deputy Barry that if amendment No. 4 is agreed he will be prevented from moving amendment No. 5.
I move amendment No. 4:
In page 10, subsection (1), between lines 26 and 27, to insert the following:
" `proprietor of the patent' means the person to whom the patent was granted or the person whose title is subsequently registered under section 85;".
I want an assurance that the intent of my amendment No. 5 is carried through in amendment No. 4. If the Minister assures me that the amendments are basically the same, I will withdraw amendment No. 5.
I can give that assurance.
Amendment agreed to.
Amendment No. 5 not moved.
Section 2, as amended, put and agreed to.
Sections 3 to 8, inclusive, agreed to.
SECTION 9.
I move amendment No. 6:
In page 12, subsection (5), lines 41 and 42, to delete "giving effect, in relation to the patentability of inventions, to" and substitute "bringing said provisions into conformity, in relation to the patentability of inventions, with".
Subsection (5) states:
(5) The Minister may by order modify any of the provisions of this section or of section 10 (other than paragraph (a)) or section 11 for the purpose of giving effect, in relation to the patentability of inventions, to the European Patent Convention as amended by any international treaty, convention or agreement to which the State is or proposes to become a party.
The words which I propose to delete do not appear to be appropriate as the amendment of the European Patent Convention does not necessarily require an amendment to national law. The European Community member states agreed to the resolution annexed to the CPC that they would bring their national laws into conformity as far as practicable with the corresponding provisions in the three patent conventions. I must question whether this obligation is binding on Ireland. For that reason the words I am suggesting are more appropriate than those in the Bill.
We have to reject that proposition. The wording of the subsection was very carefully considered by the Attorney General's office and they are satisfied that it is correct. The phrase "giving effect" is used throughout the Bill and we are satisfied that it is the correct wording. Deputy Barry's amendment has been carefully considered by the Attorney General and by the parliamentary draftsman's office and we are satisfied that it would not be satisfactory.
Will the words in the Bill satisfy the three conventions when the third European Community Convention comes to be signed or is this simply to satisfy the two conventions with which we are concerned here?
It will satisfy the two conventions involved.
Not three. If that is the case, when the European Community convention comes before us, will it be covered by this legislation or will we have to legislate again after the referendum?
It will be necessary to bring in new legislation at that stage. We cannot amend the Act to take account of that situation. New legislation will be required and it will be brought before the House.
Is there any neater way of doing it?
I am afraid not. This is a very important Bill and we cannot anticipate further developments down the road. My advice is that it is preferable to bring in a Bill at that stage rather than amend this Bill.
Has it been decided that there will definitely have to be a referendum.
We are satisfied that it will require a referendum.
An bhfuil tú sásta?
Yes.
Amendment, by leave, withdrawn.
Section 9 agreed to.
SECTION 10.
I move amendment No. 7:
In page 13, paragraph (b), lines 6 and 7, to delete "other than a micro-biological process or the products thereof".
Like the proceding section, section 10 comes under Chapter II which deals with patentability. This section refers to the two basic exceptions to patentability. Section 10 (b) provides that a patent shall not be granted in respect of a "plant or animal variety or an essentially biological process for the production of plants or animals other than a micro-biological process or the products thereof". I have serious reservations about the last part of this subsection. Therefore, my amendment proposes the deletion of all words after the word "other".
The reason I have proposed the deletion of these words is that there is a principled basis for objection to the concept of patenting any life form. This concept is symptomatic of a society who are lacking in the proper respect and understanding for the natural world and consider it to be merely a resource of our industrial society. The basic justification for patents is that they encourage the development of new scientific techniques. Given the level of our understanding of micro-biological science and genetic engineering, and our limited understanding of the fundamental science and environmental effect it is not appropriate that we should use such techniques. The Green Party, Comhaontas Glas, believe that this represents a manipulation of the natural world by genetic enginnering and that it is a very serious manifestation of human arrogance. I call upon the Minister and the House to support this amendment.
This amendment would run counter to the European Patent Convention which we will ratify after enactment of the Bill. It would also create legal problems in that applicants making an Irish application would be disadvantaged vis-à-vis those seeking an Irish patent through a European application. Section 10 is required by the European Patent Convention. In the circumstances I cannot accept the amendment put forward by Deputy Garland.
The Minister seems to be presenting us with a fait accompli. He said that because section 10 is required by the European Patent Convention and we must accept this convention he really has no function in the matter. I put it to the House that this is another example of the way in which our soverenity is being infringed by our membership of the EC and our involvement in a Europe which is increasingly going down the wrong road. I totally reject the Minister's reasons for not accepting my amendment, and I intend to press my amendment.
Section 10 does not apply to plants and animals. Therefore, the concerns expressed by Deputy Garland are not relevant to the Bill. In the circumstances I do not understand why he should press his amendment. Obviously this is a matter for him but I do not think he is correct in his assessment of this section.
I take issue with what the Minister has said. The section excludes plants and animals but the Minister is overlooking the sting in the tail. While plants and animals are being excluded this rider has been inserted, "other than a micro-biological process or the products thereof". While I agree with the first part and I am glad the Minister and I agree what should be the Bill, it is what is in the Bill that counts. Therefore, I put it to the Minister that he is wrong and we should exclude the last part of subsection (b).
Question: "That the words proposed to be deleted stand" put and declared carried.
Amendment declared lost.
Section 10 agreed to.
Section 11 agreed to.
SECTION 12.
I move amendment No. 8:
In page 13, subsection (2), line 46, before "becomes a party" to insert "is or".
I presume the Minister wants the freedom to vary the six months grace period in this regard, and from the point of view of clarity I propose this amendment. This would enable the Minister to amend the European Patent Convention in the future and would not interfere with the thrust of what he is trying to do.
I accept the amendment put forward by Deputy Barry. While it is not absolutely necessary it clarifies the position.
Amendment agreed to.
Section 12, as amended, agreed to.
Sections 13 to 17, inclusive, agreed to.
SECTION 18.
Amendment No. 9 in the name of Deputy Peter Barry. Amendments Nos. 12 and 13 are considered to be related. Therefore, I propose that for discussion purposes we take amendments Nos. 9, 12 and 13 le chéile.
I move amendment No. 9:
In page 15, lines 22 to 24, to delete subsection (3).
Section 18 (3) states: "Every application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which such fee may be paid". I cannot see the necessity for this provision which runs counter to the practice throughout the world of not demanding fees when an application is made for a patent. I do not think any other signatories to this convention require an application for a patent to be accompanied by the prescribed filing fee. When I understand the concern of the Government to ensure that they get the money and that everything is in order, the international practice, which has been followed here up to now, should be continued. The World Intellectual Property Organisation have published an applicants guide to the Patent Co-operation Treaty in which they state that all fees can be paid within one month after the date of receipt of the international application by the receiving office. This means that people who apply for a patent right outside this country or to any international body will not have to pay a fee until one month after the date of receipt of the application, whereas in this country the Government are asking people to accompany their applications with filing fees. This will hurt the small person more than the big person, the large chemical companies will not mind accompanying their filing application with a fee, regardless of the size of the fee the fee probably varies — but perhaps the Minister would expand on that.
The small person whom we want to encourage to be innovative, to be inventive, to register new patents, new inventions, etc., will be affected because he is probably devoting a considerable period of his time — he is certainly devoting some of his capital — to getting something ready for patent and now he is being asked, against what has been the custom up to now and which is not the custom in other parts of the world, to pay up front. I do not see why the Minister should write into an Act the fact that somebody must accompany his filing with a fee; I do not think that is necessary. My amendment suggests that this be deleted and the matter of fees could be done by regulation rather than included in an Act. I am not sure whether there is any Act on the Statute Book which states that an application must be accompanied with a fee as is prescribed here. I suggest to the Minister to continue what has been the practice up to now, not to take us out of conformity with what is happening internationally and in Europe which is a member of the co-signatories of this convention in Europe. In fairness to the small inventors the Minister should accept my amendment which seeks to withdraw subsection (3) of section 18 and allow what has been the practice up to now to continue.
The World International Property Organisation which has published a guide to the Patent Co-operation Treaty draws attention to the fact that all fees must be paid within one month. This is actually written into the guide. This is the practice under the Patent Co-operation Treaty and is endorsed by the World International Property Organisation. It is not obvious to me what the reason is for demanding fees up front and perhaps the Minister would explain. I know there is a let-out for the Minister in section 18 (3) which states:
...the Minister prescribes a later date by which such fee may be paid.
I think that subjection is unnecessary. If the Minister intends to provide a later date surely he would do it with conformity with the World International Property Organisation. What he appears to be doing in this instance is a backdoor method of allowing himself the possibility at some stage in the future, if the funds of Government so demand, to get money up front. At present, in the Patents Office, there are 19,600 to 20,000 applicants for patents, some of which are waiting for years to be adjudicated on. Under the Minister's proposal they are out of money but under this proposal they would be short of money much sooner.
If the filing fee is £100 and if the number of applications is 6,000 or 7,000, as the Minister said in reply to a parliamentary question some months ago, that would amount to a considerable sum of money. In fairness to the small person who would be one of the beneficiaries under the provisions of this Bill and also not to have us out of step with the rest of Europe and in order that we would not break a tradition that has been in existence for a number of years I would ask the Minister to accept my amendment.
I would like to inform Deputy Barry that there is no tradition at present for a delay in putting in a filing fee. There are about 4,500 applications per annum. We are allowing flexibility here for the Minister and future Ministers of the Department to decide on this issue. It is necessary at this stage bearing in mind the future of the Patents Office that the fee would be required on filing an application. The situation is that the subsection does allow the Minister to charge the filing fee at a later date than the filing date if he so decides. We are only confirming the present situation which is that the fee is provided on the day the application is filed. Amendments Nos. 12 and 13 seek to interfere with the arrangements to charge a filing fee as discussed above and they are not acceptable. Needless to say it is absolutely necessary that there would be funding to pay for the services of the Patents Office. It is appropriate that we should retain this flexibility for the Minister now and in the future, he requires a fee to be paid on the day but if he so desires he may decide to delay it if representations are made in that regard.
How much is the filing fee at present?
The present rate is in the region of £80 to £90.
Is there another fee to be paid on the grant?
There would be an additional fee of £60.
Is £60 the fee paid for the grant?
That is correct; it is £80 to £90 for the initial application and an additional £60 down the line when the patent has been granted.
I must admit I have some doubts about Deputy Barry's amendment. It is not inappropriate that some fee could reasonably be charged on making an application and lodging the papers for an application — I do not know why a patent should be different from everything else one applies for. If a fee is charged it is probably required for no other purpose than to avoid frivolous applications being made and much time being taken up and a lot of "try-ons" being made. It is important that these applications should be bona fides and genuine. Staff have to be paid and provided for in the Patents Office. If an application fee is not paid then the general body of taxpayers have to pick up the tab instead. This at least would make some contribution towards the cost of running the Patents Office. The amount of the fee might be a matter that could more appropriately be debated as to whether the fee of £80 is too high or too low. Deputy Barry's amendment appears to take the general view that it should be open to any person to put in an application and have no fee paid whatsoever to the Patents Office. I do not think that is realistic or would bear a common position with other comparable situations. The fee should not be so high that it would discourage any person who may bona fides think they have a suitable invention they want to patent or so low that it would encourage abuse of the process, "try-ons" and a large number of frivolous applications being put up which were not genuine. In those circumstances I would not be in a position, unfortunately, on this occasion, to support Deputy Barry's amendment on this issue.
My understanding was that the present position was that the fees were not looked for on filing but I accept the Minister's word on that. We are out of step with virtually all of western Europe. I believe that at the conference in The Hague in June of this year we were rather embarrassed in this regard and that we were the only people who wished to put this fee up front and that everybody else in Europe agreed, as I said, with the guide to the European Patent Convention. It is not a major point whether the fee is paid up front but it seems unnecessary that on this occasion, given all the signatories of this convention, we should be out of step in looking for fees with the filing rather than as is the case in other countries, accepting the fees 12 months after the date of filing.
Question: "That the words proposed to be deleted stand" put and declared carried.
Amendment declared lost.
Section 18 agreed to.
SECTION 19.
Amendment No. 10 is in the name of Deputy Barry. Amendment No. 11 is an alternative and it is proposed that for discussion purposes we will take amendments Nos. 10 and 11 together.
I move amendment No. 10:
In page 15, lines 28 to 32, to delete subsection (2) and substitute the following:
"(2) Provision may be made by rules prescribing the circumstances in which the specification of an application for a patent, or of a patent, for an invention which requires for its performance the use of a micro-organism is to be treated as disclosing the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.
(3) The Rules may in particular require the applicant or patentee—
(a) to take such steps as may be prescribed for the purposes of making available to the public samples of the micro-organism, and
(b) not to impose or maintain restrictions on the uses to which such samples may be put, except as may be prescribed.
(4) The rules may provide that, in such cases as may be prescribed, samples need only be made available to such persons or descriptions of persons as may be prescribed; and the rules may identify a description of persons by reference to whether the Controller has given his certificate as to any matter.".
This amendment covers a technical point. If the Minister's amendment covers what I am trying to cover I will be happy to withdraw my amendment and accept the Minister's amendment.
Amendment No. 11 in the name of the Minister achieves Deputy Barry's purpose but the wording in the Minister's amendment is less cumbersome and has been approved by the Attorney General's office. Our wording should satisfy Deputy Barry's requirements.
I accept that assurance.
Amendment, by leave, withdrawn.
I move amendment No. 11:
In page 15, subsection (2), line 32, after "subsection" to insert "and may specify other provisions, in relation to such applications".
Amendment agreed to.
Section 19, as amended, agreed to.
Sections 20 to 22, inclusive, agreed to.
SECTION 23.
Amendments Nos. 12 and 13 not moved.
Section 23 agreed to.
Section 24 agreed to.
SECTION 25.
I move amendment No. 14:
In page 17, subsection (1), lines 12 and 13, to delete "and the payment of any prescribed fee".
I wish to make the point I made earlier in relation to fees, that there should not be necessity for an up-front payment, that the fees required should be collected at a later date rather than on the date of signing.
Amendment, by leave, withdrawn.
I move amendment No. 15:
In page 17, subsection (2), line 14, after "is" to insert "equivalent to".
Amendment agreed to.
Section 25, as amended, agreed to.
Sections 26 to 28, inclusive, agreed to.
SECTION 29.
We now come to amendment No. 16 in the name of the Minister. Amendments Nos. 20 and 23 are related. Amendments Nos. 17, 21 and 24 are alternatives to amendments Nos. 16, 20 and 23. For the purposes of discussion we will take amendments Nos. 16, 17, 20, 21, 23 and 24 together. The House realises that when amendments are taken together for discussion purposes, if Deputies wish, a question may be put separately on any amendment, but there may not be any further discussion.
I move amendment No. 16:
In page 19, subsection (4), line 23, to delete "shall be deemed to have been withdrawn" and substitute "may be refused by the Controller".
Deputy Barry's amendment No. 17 is basically the same as this amendment.
There is a slight difference but it is not significant. I am prepared to withdraw my amendment.
Amendment agreed to.
Amendment No. 17 not moved.
Section 29, as amended, agreed to.
SECTION 30.
An Leas-Chenn Comhairle
We now come to amendment No. 18 in the name of the Minister. Amendment No. 19 is an alternative, so we will take amendment Nos. 18 and 19 together for discussion purposes.
I move amendment No. 18.
In page 19, subsection (1), lines 28 to 32, to delete all words from and including "who" in line 28 down to and including "section 29 (1)" in line 32 and substitute "may, within the time prescribed for the purpose of section 29 (1), submit a statement to the Controller that an application for a patent for the same invention has been made in a prescribed foreign state or under the provisions of any prescribed convention or treaty".
This amendment covers the issue in amendment No. 19 using different phrasing.
On the Minister's assurance that the amendments are interchangeable I accept the Minister's amendment.
Amendment agreed to.
Amendment No. 19 not moved.
I move amendment No. 20:
"In page 19, subsection (4), to delete line 53 and substitute "may be refused by the Controller.".
Amendment agreed to.
Amendment No. 21 not moved.
I move amendment No. 22:
In page 20, subsection (5), line 6, before "therein" to insert "claimed".
Amendment agreed to.
I move amendment No. 23:
In page 20, subsection (5), lines 10 and 11, to delete "shall be deemed to have been withdrawn at the end of the said period" and substitute "may be refused by the Controller".
Amendment agreed to.
Amendment No. 24 not moved.
Section 30, as amended, agreed to.
NEW SECTION.
I move amendment No. 25:
In page 20, before section 31, to insert the following new section:
"31.—Where an applicant makes the request provided for in section 29 (1), or submits as evidence under section 30 (1) (a) the results of a prescribed search, the Controller shall cause the patent application to be subjected to such examination as is necessary to determine whether the patent application complies with the requirements of the Act in the light of the search report, or the results of the search, as the case may be.".
I hope the Minister will bear with me while I try to get my point across. This is an important commonsense amendment and should be accepted. What we are asking is that in cases where Irish patent specifications do not conform with European and United Kingdom patent specifications, technical examination should occur in the public interest.
The suggestion in this Act is that a number of patents should be just nodded through without examination on the word of a patent controller. This is probably, in many cases, quite satisfactory. However there are cases of a very technical nature where they should be examined and where more than the controller himself should be satisfied that the patent can be put through.
The Minister should undertake to assure that there would be another examination of a technical nature besides that of the controller. If a member of the public brings it to the attention of the controller that something needs examination then it should be done. If any outside person, a third person, who may have an interest is involved, it would not be sufficient for the controller to rubber stamp and nod through a number of these patent applications. Most of the time he will be absolutely correct to do this but in cases where somebody may feel they have a similar patent pending or a similar patent already filed that this new application would interfere with, these people should have the right to request the controller to have an outside examination. This is reasonable and I would hope the Minister would accept it.
I am not in a position to accept the amendment put forward by Deputy Barry. This amendment seeks to impose duties on the controller which would be in contravention of the provisions of section 31 (1). The duties are ones appropriate to the applicant himself in consultation with his patent agent. I would like to make the point that there are roughtly 20,000 applications pending at the moment and anything that would in any way inhibit the work of the controller would be detrimental to the speedy processing of these applications. That is why, in the circumstances, I cannot accept the amendment put forward by Deputy Barry.
I must make it clear that the applicants themselves, in consultation with their patent agents, are in a position to make a case to the controller without the need to have this amendment in the Bill.
I am disappointed by the reaction of the Minister. This appears to have been forced on the Minister because of the backlog that has been allowed to build up in the Patents Office over the last seven or eight years. If the staff of the Patent Office had not been reduced to unrealistic levels, in spite of an increase in the number of applications for patents, then we would not have this section in this Bill and the Minister would not be looking for these powers for the controller.
There must be other ways of getting rid of this backlog which, I accept, has built up over the last ten years and which must be dealt with in fairness to those people who have made applications and must be dealt with speedily. However, it is not right, as is happening in this case, to throw out the baby with the bath water. In the interest of getting a quick resolution and removing the stockpile that has built up, the Minister is unnecessarily lowering the standards to be applied to future patents. I do not think he should do that. He should seek some other temporary way of getting rid of the backlog and then put the necessary controls into the Patents Office for the future. Accepting my amendment to insert this new section would allow him to do that and would give the necessary assurance to people, including patent agents, who are making lodgments and seeking to have what would have involved a considerable amount of work and expense handled properly and efficiently so that what they think of as their intellectual property is not taken from them by a flaw in this legislation.
The purpose of section (2) is to enable the Minister at a future date to make rules which would entitle the controller to scrutinise an application by reference to the sections of the Bill excluded above in subsection (1).
Experience will show whether it is necessary to do this and, of course, the question of the necessary staff resources to perform such additional tasks will also have to be considered.
I am quite satisfied that the reasons we cannot go along with this amendment are quite reasonable in the circumstances. Experience shows that where difficulty arises the applicants and their agents have a good relationship with the controller himself in this regard. My main concern is to ensure that we would not impose any requirements that would delay the processing of these applications in the future. That is my main concern at this stage.
I have no doubt but what the Minister says is correct. The agents have a good relationship with the controller at the moment. However, these agents and that controller will not be there forever whereas this legislation will have implications into the next century. We cannot pass legislation here on the basis that people have a good personal relationship. We have to pass it in a cold calculating way that would apply to all circumstances in the future. I do not think the Minister's explanation in that regard is at all satisfactory no matter how affable the controller is and no matter how understanding the people who file patents are. We should legislate here on the basis of the worst possible case.
It appears now from what the Minister has been saying that what we are doing here is being done because of the backlog of applications and that, because the present controller has a good relationship with the patents agents, there is no danger of anything happening. With due respect to the Minister, that is not a good basis for legislation. We want something much firmer and much more clinical than that.
Subsection (2) generally will allow the Minister or future Ministers to make provisions as suggested by Deputy Barry if required. We feel at this stage that they are not required and it would be cumbersome to include those at this stage. I accept the Deputy's point that present relationships would not be relevant in the future.
However, I am also satisfied that what is provided for in the Deputy's amendment is not required. We are not ruling out the possibility that in the future under subsection (2) there is nothing in subsection (1) which would preclude the controller, at his discretion, from refusing or suggesting amendments to a patent application by reference to any requirements of a section mentioned in that subsection which will be specified in rules. We could generally allow for that situation in the future. In the circumstances I cannot accept the amendment.
This is the subsection I am objecting to as well. The Minister is telling me I should not object to subsection (1) because subection (2) covers it but I am objecting to subsection (2) on different grounds. The Minister is not really satisfying me.
Is Deputy Barry pressing his amendment?
To be fair to the Minister of State I should read it again to make sure that I am not misquoting or misunderstanding him but I do not think the explanation given by him is satisfactory. Subsection (2) states:
Nothing in subsection (1) shall preclude the Controller, at his discretion, from refusing, or suggesting amendments to, a patent application by reference to any requirement of a section mentioned in that subsection which may be specified in rules.
It brings me back to one of the points I am objecting to, that the controller may suggest amendments, and it does not satisfy the point I made earlier that there is a danger that patents will be passed by the controller on a blanket basis without him giving, in a minority of cases, sufficient attention to them to allay the genuine concerns of people who feel that a patent is theirs as of right — this is one example and it is not necessarily the only one — and that their interests are not being preserved in that regard. I do not think the Minister of State's explanation on subsection (2) satisfies my concerns in regard to subsection (1).
I accept the points which have been put forward by Deputy Barry in defence of his amendment which are very reasonable but I have to bear in mind the fact that at present there is a backlog of 20,000 applications and we cannot put up any barriers in having those applications dealt with. I am very conscious of that fact.
Under this Bill the Minister will bring forward rules and regulations when he will take into account the Deputy's amendment and the proposals he has put forward. When we clear the backlog of 20,000 applications the Minister will be in a position to look at the section and bring in whatever regulations may be required which take account of the point the Deputy is making, which I accept is a reasonable one. The main reason I cannot accept the amendment, even though I accept the spirit of it, is that a major difficulty faces us at present and we cannot accept an amendment which would delay the processing of these applications. That may not be the best reason in the world but it is the one I am putting forward at present.
The Minister will have discretion under the Bill to bring in rules and regulations which take account of the point the Deputy is making and the concerns he is expressing now which may or may not be found to be relevant at that stage. That is the reason I am not accepting the amendment. I should point out that section 31 is exactly the same as the section being dealt with in France although that is no great reason why it should be accepted here. However, it is an additional point which may be of assistance to Deputy Barry in this regard. I accept the points being put forward by him and I will look at the amendment before Report Stage. What I am trying to say is not now, not yet.
I am glad the Minister of State accepts my point of view but I think the section is bad. While I do not want to drag the matter out and accept that he will look at the matter before Report Stage and perhaps do something, it is a bad principle to write into legislation a flawed section on the basis that we have a lot of work to do because of mistakes made outside this House. The Minister of State should find some way of dealing with the backlog of applications for patents very quickly.
I do not know what the answer is but I understand he is very short of technical staff and that the staff of the Patents Office has been cut by almost 20 per cent during the past ten years even though, as he himself has admitted, the number of applications received has risen considerably during that period. If he is short of technical staff there must be some way of recruiting these on a temporary basis to deal with the backlog. He could then make the legislation more permanent given that he has given us the impression that it amounts to fire brigade action to deal with the problems created under other circumstances. I hope he will look at the Patents Office to see what can be done.
To put it at its crudest, it is a money earner. I heard it suggested some months ago that because they were not operating at 100 per cent efficiency they could have lost as much as £8 million. I am aware that the standard figure is about £3 million but one commentator has said that it could be as much as £8 million. The Minister for Justice should find some way of dealing with the backlog and not leave it hanging over him ominously or allow it to dictate the type of legislation he should introduce. Perhaps he will accept my amendment on Report Stage so that we can have legislation we can all stand over. As I said earlier, this is not legislation which will apply for 18 months only. Am I right in saying this is the first Patents Bill we have had since the 1964 Act? This Bill could have a similar lifespan. We should therefore make it as near perfect as we can, given the lack of talent in this House to deal with such complex legislation.
The losses can be calculated at between £300,000 and £500,000 a year. I accept that that is an enormous amount of money and that it accumulates over a long period. As the House is aware, the Government are considering establishing the Patents Office as a semi-State autonomous body which would be in a better position, commercially, to react to market forces. I therefore accept the point made by Deputy Barry. Given the contributions that he has made to the Bill I would prefer to look at the matter before Report Stage. He should bear in mind the reason I have put forward is that I wish to expedite the registration of the 20,000 applications in an effort to deal with the backlog. I accept the Deputy's point and I will look at the matter again.
What I am suggesting is that the Minister of State should deal with the backlog separately, get rid of it and then table legislation.
That may be possible.
Amendment, by leave, withdrawn.
I move amendment No. 25a:
In page 20, subsection (1), line 18, after "sections" to insert "9 (1),".
Reference to section 9 (1) was inadvertently omitted when the Bill was being drafted and must be inserted in subsection (1) in addition to the other sections mentioned in that subsection. It is a drafting amendment.
Amendment agreed to.
We now come to amendment No. 26. Amendment No. 27 is related. Therefore both amendments may be discussed together.
I move amendment No. 26:
In page 20, subsection (2), line 25, to delete ", or suggesting amendments to,".
The Minister of State will probably have received the same advice on these amendments, that section 31 (5) should be consistent with sections 62 and 64. They are drafting amendments. I made the point on the Competition Bill earlier that we did not use the same language in all legislation. I am willing to postpone discussion of these amendments until Report Stage as I am aware the Minister of State only got these amendments late last night and may not have had a chance to study their implications. The purpose of the amendments is to tidy up the text and, if he so wishes, I will postpone them until Report Stage.
The rewording is not acceptable. The Attorney General's opinion was sought when the Bill was being prepared and we are satisfied with the wording of the section. In the circumstances I cannot accept these amendments.
I gave the wrong impression when I was speaking earlier. It is in the Bill and is much more fundamental than I stated earlier on. The Bill provides that nothing in subsection (2) shall preclude the controller, at his discretion, from suggesting amendments to a patent application by reference to any requirements of the section. It seems extraordinary that a controller should suggest amendments. I can understand how, in a friendly informal way, he would talk to people who applied for a patent and give advice. However, to write into legislation the right of the controller to suggest amendments to an application for a patent seems to be extraordinary. I know that in relation to planning laws an applicant is spoken to by the planning officers and the local authorities. In some cases the planning officer may give a reason for not granting the application but if a revised application is submitted it might be looked at again. Section 31 (2) goes further because it says that nothing in subsection (1) shall preclude the controller, at his discretion, from refusing or suggesting amendments to a patent application by reference to any requirement of a section mentioned in that subsection which may be specified in rules. I do not know any other Act in which that provision is contained although I know it happens frequently. It can save a lot of time and heartbreak if there is a discussion between the applicant and the controller in this case so that an application will be submitted which is acceptable to the controller and which he feels has a better chance of being agreed to.
In the context of what I already said about the section and Report Stage, it would be relevant to look at the matter in the light of what Deputy Barry has said.
We are talking about section 31 (2) and the Minister will look at lines 24 to 27 again?
Yes, on the basis of what I already stated in relation to the Deputy's original amendment. The Deputy wants the section to be more definite regarding what is required.
It will relate to consultation on a voluntary basis and not by legislation.
Yes.
Does that mean it will relate to amendments Nos. 26 and 27?
Yes, in that context.
Acting Chairman
Is amendment No. 26 withdrawn?
Yes, I will resubmit it on Report Stage.
I cannot give a firm commitment but I will look at the amendments in line with the section to see if I can adjust them.
Amendment, by leave, withdrawn.
Amendment No. 27 not moved.
Acting Chairman
Amendments Nos. 28 and 29 are related and may be taken together. Is that agreed? Agreed.
I move amendment No. 28:
In page 20, subsection (5), line 35, to delete "for" and substitute "in respect of".
This section will provide large fees for lawyers and my amendment relates to the fact that, where there are two applicants for a patent, the controller has the right to refuse one of them. Of course, that could involve years of litigation and this is merely a drafting amendment substituting "in respect of" for "for".
We regard the amendment as unnecessary and we are satisfied that the section is correct as it stands.
Amendment, by leave, withdrawn.
I move amendment No. 29:
In page 20, subsection (5), line 38, to delete "pursuance" and substitute "respect".
There is an error in the subsection as it appears in the Bill and the purposes of the amendment is to make the necessary correction.
Amendment agreed to.
Question proposed: "That section 31, as amended, stand part of the Bill."
I am concerned about subsection (1) which says that if it appears to the controller that an application does not comply with a requirement of this Act... the controller shall so inform the applicant and if the applicant, within the time specified by the controller, fails to satisfy the controller that the said requirement is complied with or to amend the application so as to comply therewith the controller shall, subject to section 90, refuse the application. Section 90 requires the controller to give a hearing on the matter to the applicant. It seems rather contradictory and strange to me because the section makes it mandatory on the controller to refuse the application if those conditions are not met, subject to hearing the applicant. It is no more than a mere formality: he hears the applicant and, when he has come to his conclusions, he is obliged to refuse the application. I have not tabled an amendment in this regard but it would be more prudent and consistent to substitute the word "may" for the word "shall". In other words, the controller, having heard the applicant, may change his mind and may refuse the application. There is an inconsistency there and the Minister should consider altering the word "shall" to the word "may".
I thank Deputy Taylor for his contribution. We will comply with his request but that will have to be done on Report Stage, unless the House agrees to it now.
Acting Chairman
Is that agreed?
I will certainly agree to Deputy Taylor's request. If the Deputy wishes we can clarify the matter on Report Stage.
I formally move that:
In line 22 delete the word "shall" and substitute the word "may". I do not think there is a problem with that.
Amendment agreed to.
Section 31, as amended, agreed to.
Sections 32 to 34, inclusive, agreed to.
SECTION 35.
I move amendment No. 30:
In page 21, subsection (2), line 22, to delete "three" and substitute "six".
Amendment agreed to.
Acting Chairman
Amendments Nos. 31, 35 and 37 to 44, inclusive, may form an alternative composite proposal and amendment No. 36 is related. Therefore, it is suggested that amendments Nos. 31 and 35 to 44, inclusive, be taken together, by agreement.
I move amendment No. 31:
In page 21, between lines 26 and 27, to insert the following subsection:
"(3) The provisions of section 37 shall apply to an application to which this section relates as if the references in that section to a patent and the proprietor of a patent were references to a patent application and the applicant for a patent, respectively.".
Will the Minister explain what is involved here?
Amendment No. 31 proposes to insert a new subsection to section 35, the effect of which is to provide for the restoration of lapsed patent applications on the same basis as that set out in section 37. That section provides for the restoration of patents which have lapsed through non-payment of renewal fees.
Does that mean that where a patent has lapsed because of non-payment of renewal fees there will be a right of appeal and the application will be allowed to be re-instated without penalty?
That is correct.
I agree to the amendment.
Amendment agreed to.
Section 35, as amended, agreed to.
SECTION 36.
I move amendment No. 32:
In page 21, subsection (1), line 31, to delete "twenty years" and substitute "ten years".
We have now moved on to Chapter V of the Bill which deals with provisions as to patents after grant. My amendment deals with subsection (1) which provides that the patent period be extended from 16 to 20 years. As I mentioned on Second Stage, not only am I opposed to extending the patent period but I would like to see it reduced from 16 years to ten years. The whole principle of patents is dubious in that it gives businesses a competitive-free 16 years to exploit an invention. This has enabled many large private companies to exploit consumers and rip them off. The present law is bad enough but to consider extending the period to 20 years is unacceptable. One of the areas that particularly impinges on patents is the pharmaceutical industry which is a major beneficiary of patent law. It is a typical example of large profits being protected by patents legislation, to the detriment of people unable to pay exorbitant prices and of the State which, through the general medical services, has to pick up the tab for 75 per cent of the drugs bill in Ireland.
Another reason I am opposed to this section — this matter has not been referred to in the House previously — is that it would affect the indigenous pharmaceutical industry here which, I would remind Deputies, employs 1,000 people. It supplies 10 per cent of the drugs market here and has a growing and substantial export business. The survival of this industry is threatened by this legislation. We should not forget that the indigenous chemical industry is owned by local people and the profits are ploughed back into the economy rather than exported into the black hole as is the case with multi-national companies. It is interesting that the former Minister for Finance admitted that the policy of encouraging multi-national companies to come here has been an abject failure and that what this country should be doing is developing indigenous industry, particularly indigenous pharmaceutical industry.
This section will be a death knell to this industry. Up to now the industry had to accept a patent period of 16 years and they were gearing up their product line to take on new lines which were formerly protected by patents. They now find that after the passing of this Bill they will have to wait another four years. It is appalling that no other Deputy has taken up this extremely important point. I am very anxious to hear the Minister's comments on the matter.
It is fair to say that my party and I are not very enamoured with the chemical industry because it has been responsible for enormous pollution problems. However, we need a pharmaceutical industry and it should be home-based rather than multi-national. I ask the Minister to give this matter very serious consideration.
I am sure Deputy Garland will not regard it as acceptable that there be pollution from either home-based or multi-national companies. It is unacceptable in either case.
Absolutely.
I reject this amendment. The European Patent Convention requires a patent term of 20 years. Since 1927 the period applying here has been 16 years while for the last 15 years the period laid down in regulations in the rest of Europe has been 20 years. In the circumstances I cannot accept Deputy Garland's amendment. It would have a detrimental effect vis-à-vis the patent convention. I see no good reason for reducing the period.
I am glad Deputy Garland brought up this matter by way of amendment. I have amendments tabled which will allow this discussion take place, and it is necessary it should take place. Deputy Garland is not really correct when he said this matter was not raised in this House before. I raised it on Second Stage when referring to indigenous companies — I do not like using the word "indigenous" because I do not know what it means any longer. It has no bearing on the industries that exist now. There is a conflict in relation to adjustments to the Bill to suit different circumstances. The conflict arises with what I would call generic companies — I am speaking purely of the pharmaceutical industry even though this applies to a range of other companies who will be affected by this Bill. The generic pharmaceutical industry has been manufacturing drugs which are sometimes 20 per cent cheaper once the patent of the original drug expires.
The patent of a drug manufactured anywhere in the world is protected in this country for 16 years at present but after that any pharmaceutical company can manufacture the generic product, which is exactly the same product and sell it to the health boards or to the public. In other parts of Europe the patent is protected for 20 years and the purpose of the Bill is to bring us into line with the practice in the rest of Europe. Various industries have made representations to the patent agencies throughout Europe to increase the life of the patent. Because of the enormous cost of research and development into new products, whether pharmaceutical, engineering, motor parts, companies will not carry out the research if the patent is not protected for longer than 16 years. If the pharmaceutical companies do not carry out research, world health will suffer unnecessarily.
I understand it takes approximately eight years from the time the patent is registered before the drug is put on the market. The pharmaceutical company, for example, have to recoup their costs in the remaining eight years life of the patent. I acknowledge, however, that they make huge profits in these eight years when the only expenses they have is manufacturing and distribution of the drug but they had incurred major expense in the first eight years of the life of the drug. While it is argued that pharmaceutical companies make hefty profits in fairness it must be said that we benefit greatly from the research they have carried out over the centuries. When one considers the number of drugs that has been developed, it must be remembered that the pharmaceutical companies were prepared to invest in research before they could ever hope to benefit financially from the manufacture of the drug. That kind of effort must be rewarded and indeed encouraged. As I said previously on Second Stage, there was an interesting article in The Economist about a month ago which shows that the profit-life of a drug is shortening all the time and that a drug has a life of two or three years before another drug comes on the market. Research is also becoming much more expensive. However, the article also puts the counter-argument that an element of the high cost of drugs is that very few people in the world pay for drugs out of their own pocket and it is generally the Government, by one means or another — for example, the VHI, the health boards — in fact, the tab is picked up by the taxpayer——
There is no free lunch, one pays for it directly or indirectly.
The necessity for better and better drugs, which by definition are invariably dearer and dearer, is being generated by the taxpayer through the Government, who write the final cheque to the pharmaceutical company. There are countless examples of drugs that have wiped out diseases all over the world. Mankind has benefited.
No doubt Deputies Taylor and Garland and I might have differing views about the amount of money that should be kept by shareholders in pharmaceutical companies throughout the world, but by and large I believe the pharmaceutical companies have reinvested their profits in research that has been good for mankind. Undoubtedly, as Deputy Garland has said, some companies have behaved disgracefully towards the environment. Some Deputies are much more conscious of the environment than others. I happen to live in an area where there is a concentration of pharmaceutical industries but there is also a very active environmental lobby who feel as strongly as Deputy Garland about the potential damage to the environment as a result of this industry. However, I consider that the number of controls on the chemical companies and the level of expertise in the planning section of Cork County Council and the number of staff available to oversee the implementation of the planning controls will ensure that the environment is protected. Indeed, I hope the Environmental Protection Agency will underscore this point.
We should not forget that pharmaceutical companies provide high quality jobs. Indeed the pharmaceutical generic industry employ somewhere in the region of between 1,500 and 2,000 people but the international pharmaceutical companies that are located here employ in the region of 16,600 people, nearly ten times as many. That is not to say that we should not protect as far as possible the generic drug companies so that they can continue to expand. In fact, the experience all over the world is that the generic drug industry is expanding and is creating more jobs and we should ensure that this trend continues. However, I am not sure we should do that, as Deputy Garland has suggested, by not ratifying this convention. That is probably the wrong way to do it. The IDA have solved the problem of job creation before and I am sure they will not be found wanting in this regard. I have a certain sympathy with the generic drugs industry because I think they keep the brake on the international pharmaceutical companies and ensure that drugs are available in some instances at 15 per cent lower than the price of the patented product.
I, like most Deputies, have had representations from both sides and I have given some thought to the matter. Should Deputy Garland wish to press his amendment I will not be supporting it because I believe we have to ratify this convention. Given the fact that there are six, at most, generic drug companies, the Government should undertake a study through the IDA of how the industry can be helped not just to survive — it has been said that some will fold when this legislation is enacted — but to expand and develop because there is a big market for generic drugs outside of this country. Patents run out at different times all over the world. The IDA should assist the generic drug companies to identify patents that are coming to the end of their life under this convention which would allow the generic drug companies to cash in on a lucrative market.
Ireland is not the only place where there is a gap between the price of the generic drug and the branded product and health boards want to buy the generic product for budgetary reasons, because it is the cheapest possible drug. That is not to say it would be of a lower standard than a more expensive drug.
The only policy political point we have on the Bill is the one we are making on this amendment tabled by Deputy Garland. We should not accept the amendment. I understand the reason it was put forward and I have a certain amount of sympathy with those on whose behalf the Deputy speaks, but it is in the long term interests of the country to ratify the convention. It is also the Minister's responsibility as a marketing Minister to undertake to ensure that the three, four or five companies involved — I am not sure just how many there are in the country — can discuss with the IDA the way in which they can be helped to increase the range of drugs they manufacture and increase their market share in this country. The convention was ratified and signed in 1973 and I think that this might be the third version of the Bill to come before the House, previous Bills having fallen on Governments going out of office. If I understand correctly, the companies may face a difficult time though it is hard to understand why they should be taken by surprise by this Bill. At the same time there are drugs patents that would have been expected to run out of their 16 year time limit within the next few years but will now be protected for a further four year period. There is definitely a difficulty in that regard and the Government should consider means by which they might help what I could call the generic drug manufacturing companies but what Deputy Garland calls indigenous drug manufacturers to get through that period. The companies must be encouraged to expand because there is no doubt that generic drug manufacturers all over the world are expanding. That is a legitimate area in which the IDA should interest themselves in helping the companies to expand and is assisting them to find new markets for their products. Deputy Leyden, in the context of the Irish Marketing Board, could also assist the companies in finding new markets for their products.
I wish first to make a preliminary point on the issue of the ratification of the European Patent Convention. Is that the convention that we want to ratify?
That is correct.
Perhaps we do not want to ratify that convention, but we can get by without ratifying all of these conventions. It is not the end of the world if we do not ratify them and we are not ratifying all the Community conventions anyway. There is another Treaty, the Patent Co-operation Treaty, which we have not ratified and have given no indication of setting about ratifying for various technical reasons. It does not necessarily follow that it is the end of the world — there is life if the European Patent Convention is not ratified; we could get by. If economic constraints are strong enough perhaps we should put up with that if we have to. We should be very cautious about the position.
One has to draw a distinction between two categories of terms for patents. One is the category covered by this section, that is, new patents. The patent period for new patents that will be granted under this Bill is being extended from 16 years to 20 years. I agree with Deputy Garland and I support his amendment. The 20 year provision is too long and should not be agreed to. I accept the point made by Deputy Barry that those firms and companies that invest very considerable resources in researching and developing new products, chemicals and drugs must be rewarded. That is true, it is a fair point and I accept it. They must be rewarded, but the question that next arises is what is fair reward. For how long should companies be given the benefit of patent rights on their product? Why stop at the proposed 20 years? Why not make the period 30 years, 40 years or any other period? It is not just a matter of saying that those companies must be rewarded. It is true, they must be rewarded, but one has to strike a balance in these matters and take into account other pressures and other factors. There must have been an enormous degree of pressure brought to bear on the EC in this convention to have the period extended from 16 years to 20 years. Of course, the powers that be in Europe have agreed to that. If, as Deputy Barry says, in the overwhelming majority of cases those drugs lose their major efficacy and benefit after only two or three years anyway — and I am sure he is right on that point, he has researched the matter — why is there a need to increase an already very long period of 16 years to 20 years? I myself should have thought that a period of 16 years was over-generous and for the life of me I see no basis for agreeing to an extension of the period on new patents to 20 years. I should regard that as a strong argument.
Deputy Garland has talked of the importance of having drugs available at reasonable prices, at prices people can afford, disconnected from the artificial patent rights benefit element that is included in those products. In the price of any drug product there are two elements, there is the actual cost of production — which is usually insignificant — and there is the profit element to the pharmaceutical firms which in many cases, probably makes up 98 per cent of the cost. This hits consumers badly, and it is no good for Deputy Barry to say that most people do not pay for drugs, that they are mostly paid for through health boards, the VHI or by way of medical cards. Of course the consumer pays, there is no free lunch. The taxpayer and the people pay for the drugs in one way or another — through taxation, PRSI or whatever. Therefore, the argument that one need not worry too much about the issue because payment is made by way of these various channels is not a sound argument.
However, this Bill goes even further than that. In my view it introduces a provision that is completely unacceptable. Not actually in this section, but in the First Schedule — and I had intended to address the issue when speaking on the schedule — the Bill provides that existing patents granted years ago will be extended automatically from 16 years to 20 years. The holders of patents that were granted ten or 12 years ago must be very surprised and gratified.
When they did their research, made their applications and had their patents granted originally all that they wanted, all that they asked for and all that they expected was a time limit of 16 years. Now, unasked for, for nothing and for no consideration they are being given an unexpected present. What kind of arrangement is this? Where is the possible justification for taking such a step? What is the other side of the coin?
Small producers of generic drugs who have been waiting patiently for years for the opportunity to manufacture certain drugs, to distribute them and to sell them where they are needed at 10 per cent or 5 per cent of the patent protected cost, now see that a patent that might have been due to expire next year will be extended by four years. Admittedly, they were getting themselves all geared up to do themselves a favour by manufacturing the generic product when the patent would expire next year but also to do the entire country and members of the public a favour by producing the drug at 5 per cent or 10 per cent of its present cost. Now they discover that, completely out of the blue, for no sensible or logical reason whatever, an extra four years is being tagged onto that. That is unacceptable. There is no morality in that; there is no legality in it. How the EC ever accepted that I will never understand. How our Minister out there agreed to it and did not veto it or vote against it is utterly beyond me. It is a disservice to the country, a disservice to the thousands of people who are employed in the pharmaceutical industry here. It should not be accepted. The Labour Party will not accept it and will vote against it.
I am sorry that I missed Deputy Garland's reasoning for this amendment. I devoted a large part of my contribution on Second Stage to the whole question of generic drugs and the arguable contribution they could make to limiting costs on our national health service and so on. I must say I am not sure that I carry whatever wisdom is in that argument to support this amendment.
It may be correct for Deputy Taylor, as he has done, to draw a distinction between the duration of application for a patent in future and the retrospection that is involved in this section. But, in terms of making application for a new patent and extending the time from 16 years to 20 years, I thought that was part of the essence of what this entire Bill was about.
I should like the Minister to reassure me whether I am right in the advice that I have that there is a very considerable time span between application being made for the patent and the licence being granted. For example, I understand it can be as long as ten years from the date on which a patent is applied for to the licence actually being granted. If that is true it seems to me that it is a relatively short period of time within which to provide major companies involved in major research, development and expenditure in order to recoup that cost. If that is true we are reduced to having a look at the employment content. Certainly I do not want to be cast in the role of advancing an argument, for example, for the big drug multinationals. I have not been sufficiently long out of the trade union movement to forget that there are approximately 5,000 jobs or more in the multinational sector of the drugs industry. There are very few jobs in such an indigenous sector as we have in the generic drugs area, something like 500. Even then to call it indigenous is a misnomer in as much as the main indigenous company concerned is majority owned, I think, by a Dutch multinational.
Without appearing to pander to a special lobby case I ask the Minister whether it is true that there is this time span of some years, whether it is unreasonable that this extended period ought be allowed in which to recoup the costs involved. I am not so sure that it is the nub of this Bill to argue the difference between 16 and 20 years. I do not see how it is a major issue. I do not see how it restrains us in any way — if the political will was there — to address the question of generic drugs in the wider sense in which I dealt with that on Second Stage.
I am not convinced that there is a big issue of principle here. It is important in a country in which, above all else, we need to argue for research and development to be located here. In those circumstances it is essential that we send out the signals that we are pro-industry, pro-jobs, pro-research, pro-innovation. If we send out any signals to the contrary we are damaging the prospects of having located here a more sustainable and innovative infrastructure for industrial development.
That is my disposition on the matter without having heard what Deputy Garland had to say. It may well be that I am ill-advised. I do not profess to be an expert on the question of patents. It is not a subject that has kept me awake at night. There are many others that preoccupy one at present but this is not one of them. I do not think it is a major issue of principle.
For a change I must concur with what Deputy Rabbitte has said, which is a fair summary of the position. What Deputy Barry stated is quite correct, that we would all be in agreement with the 20-year period. We are concentrating too much here on the generic drugs industry whereas there are many other industries in this business as well. As Deputy Rabbitte said, we should concentrate on research and development, giving an incentive to those who engage in that very expensive exercise. We cannot place such generic companies at a disadvantage vis-à-vis their counterparts anywhere else in Europe. We must render Ireland an attractive location for the establishment of research and development facilities.
As Deputy Rabbitte said, the drugs industry is different from others in that it may take a period of eight to nine years to have a particular drug licensed, which is deducted from the 20-year period, leaving one with an 11 to 12-year period in which one can actually sell that drug and recoup the costs of its research and development. I would say that companies are well aware of the drugs that are coming off patent and are available for manufacture here. There are some tremendous companies here in the generic field very anxious to develop drugs coming off patent in any part of the world. Indeed, anything that An Bord Tráchtála can do to assist them would be forthcoming in relation to exploitation of that area. However, within the computer industry and manufacturing in general Irish companies would be placed at a disadvantage by undertaking research and development into a product and then discover that people could produce their product after a 16-year period, thereby depriving them of their justifiable reward, and, indeed, the employment created in that area.
For many reasons I can advance the 20-year period as being very reasonable. Deputy Taylor mentioned the length of time but he did not bear in mind the duration of the licensing of a particular drug which is very relevant. The European Patent Convention has to be ratified before we can ratify any future Community Patent Convention, bearing in mind that constitutional problems will arise in that regard in the future.
I am not accepting Deputy Garland's amendment and I am objecting to it for the reasons I have already advanced. I might make the point that many patented companies actually produce generic drugs so that there is an intermix of these types of operations; there are some in my constituency also. I am very conscious of the cost of drugs as such. Not all generic drugs are necessarily cheap although there may be a myth abroad that they are; they are not necessarily always that cheap. People who incur the cost of research and development into a particular product should be given an opportunity of recouping that cost and indeed of reinvesting in further research and development. As a matter of policy we are encouraging companies to concentrate their research and development in Ireland and we support them in that regard. In those circumstances I reject the amendment put forward by Deputy Garland.
I have listened very carefully to what Deputies have said. We now fall into two camps, Deputy Barry, the Minister and Deputy Rabbitte on one side and Deputy Taylor and I on the other. This rather motley crew have made a very good contribution to this little debate. They have not changed my views on the matter one iota. I realise that there are drawbacks and that whatever we do we are in a cleft stick. What were we thinking of in 1973 when this was ratified? I cannot remember what Government were in power in 1973 and, perhaps Deputy Barry or Deputy Taylor will tell me. We have managed for 18 years without ratifying this convention and I suggest we could do without it for another few years. Perhaps we should refuse to ratify it, thereby forcing a further convention to be held on patents. We could put forward the views of many Deputies and, perhaps, have the convention changed. For those reasons I am pressing my amendment.
I wish to correct a misunderstanding. In saying that the life of a drug was two to three years I was quoting from an article in The Economist published three or four weeks ago. It stated that the competition between drugs companies is such that within a few years the sales life of a drug will be as low as two or three years, putting further pressure on companies to invest more in research and to bring out even more modern drugs. The article expressed concern at the cost of what were called “priceless” medicines.
Why do they want 20 years?
The time research and the registration of the drug does not change. The recouping of the money is taking less time.
Question put: "That the words proposed to be deleted stand."
The Committee divided: Tá, 117; Níl, 15.
Tá
- Ahearn, Therese.
- Ahern, Bertie.
- Ahern, Dermot.
- Ahern, Michael.
- Allen, Bernard.
- Aylward, Liam.
- Barnes, Monica.
- Barrett, Michael.
- Barrett, Seán.
- Barry, Peter.
- Belton, Louis J.
- Bradford, Paul.
- Brady, Gerard.
- Brady, Vincent.
- Brennan, Mattie.
- Brennan, Séamus.
- Briscoe, Ben.
- Browne, John (Carlow-Kilkenny).
- Browne, John (Wexford).
- Bruton, John.
- Byrne, Eric.
- Calleary, Seán.
- Callely, Ivor.
- Carey, Donal.
- Clohessy, Peadar.
- Connaughton, Paul.
- Connolly, Ger.
- Connor, John.
- Geoghegan-Quinn, Máire.
- Gilmore, Eamon.
- Harte, Paddy.
- Hillery, Brian.
- Hilliard, Colm.
- Hogan, Philip.
- Hyland, Liam.
- Jacob, Joe.
- Kelly, Laurence.
- Kenneally, Brendan.
- Kirk, Séamus.
- Kitt, Michael P.
- Kitt, Tom.
- Lenihan, Brian.
- Leonard, Jimmy.
- Leyden, Terry.
- Lyons, Denis.
- Martin, Micheál.
- McCartan, Pat.
- McCormack, Pádraic.
- McCreevy, Charlie.
- McDaid, Jim.
- McEllistrim, Tom.
- McGinley, Dinny.
- Mac Giolla, Tomás.
- McGrath, Paul.
- Molloy, Robert.
- Morley, P. J.
- Nealon, Ted.
- Nolan, M. J.
- Noonan, Michael J. (Limerick East).
- Cotter, Bill.
- Coughlan, Mary Theresa.
- Cowen, Brian.
- Creed, Michael.
- Crowley, Frank.
- Cullimore, Séamus.
- Currie, Austin.
- Daly, Brendan.
- D'Arcy, Michael.
- Davern, Noel.
- Deasy, Austin.
- Deenihan, Jimmy.
- Dempsey, Noel.
- de Valera, Síle.
- Doyle, Joe.
- Dukes, Alan.
- Durkan, Bernard.
- Ellis, John.
- Fahey, Frank.
- Finucane, Michael.
- FitzGerald, Garret.
- Fitzgerald, Liam Joseph.
- Fitzpatrick, Dermot.
- Flaherty, Mary.
- Flanagan, Charles.
- Flood, Chris.
- Flynn, Pádraig.
- Gallagher, Pat the Cope.
- Noonan, Michael J. (Limerick West).
- O'Brien, Fergus.
- O'Connell, John.
- O'Dea, Willie.
- O'Donoghue, John.
- O'Hanlon, Rory.
- O'Keeffe, Ned.
- O'Kennedy, Michael.
- O'Leary, John.
- O'Toole, Martin Joe.
- Power, Seán.
- Quill, Máirín.
- Rabbitte, Pat.
- Reynolds, Gerry.
- Roche, Dick.
- Shatter, Alan.
- Sheehan, Patrick J.
- Sherlock, Joe.
- Smith, Michael.
- Stafford, John.
- Taylor-Quinn, Madeleine.
- Timmins, Godfrey.
- Treacy, Noel.
- Tunney, Jim.
- Wallace, Dan.
- Wallace, Mary.
- Walsh, Joe.
- Wilson, John P.
- Wyse, Pearse.
- Yates, Ivan.
Níl
- Bell, Michael.
- Ferris, Michael.
- Foxe, Tom.
- Garland, Roger.
- Howlin, Brendan.
- Kavanagh, Liam.
- Moynihan, Michael.
- O'Shea, Brian.
- O'Sullivan, Gerry.
- O'Sullivan, Toddy.
- Quinn, Ruairí.
- Ryan, Seán.
- Spring, Dick.
- Stagg, Emmet.
- Taylor, Mervyn.
Tellers: Tá, Deputies D. Ahern and Clohessy: Níl, Deputies Howlin and Stagg.
Question declared carried.
Amendment declared lost.
Amendment No. 33, in the name of Deputy Garland. Amendment No. 34 is an alternative. It is proposed, therefore, with the agreement of the House to take amendments No. 33 and 34 le chéile for discussion purposes. Is that agreed? Agreed.
I move amendment No. 33:
In page 21, lines 42 to 46, to delete subsection (4).
Subsection (4) states:
The Minister may by order alter the period for which a patent shall remain in force for the purpose of giving effect to a provision of any international treaty, convention or agreement relating to the term of protection of a patent to which the State is or proposes to become a party.
It seems that the purpose of this subsection is to empower the Minister to further extend the life of the patent. Bad and all as is the decision we have just made to increase the length of a patent from 16 to 20 years, at least it was a decision made in this House, not made by the Minister. The effect of the subsection is that this would be the sole prerogative of the Minister. We certainly cannot accept this. I have been advised that there is grave doubt about the constitutionality of this section. The last thing we want is to have this Bill referred to the Supreme Court, who I am sure, have better things to do.
The section is self-explanatory. Subsection (4) states:
The Minister may by order alter the period for which a patent shall remain in force for the purpose of giving effect to a provision of any international treaty, convention or agreement relating to the term of protection of a patent to which the State is or proposes to become a party.
The Minister needs the flexibility provided in this subsection to respond to any future changes in the conventions we have ratified. Incidentally, the number of years could be extended but it could also be reduced to the 16 years which the Deputy is so anxious to include in the legislation. In order to avoid bringing forward amendments to this legislation or new legislation in that regard, I think the Minister and future Ministers should have that flexibility which I do not see being changed in the foreseeable future. Nevertheless, that may arise in time in relation to international conventions that would be agreed in the future and for that reason the Minister should have the flexibility to adjust the length of time if so required.
I would like to make one quick comment on the last point made by the Minister. I am glad the Minister does not foresee any change in the immediate future. I thought from the first part of his contribution that a door of uncertainty which I had been trying to close would be opened. If the IDA are to attract industry into this country it must be on a certainty basis that allows people make investments and recoup their investment over a period.
Is Deputy Garland pressing his amendment?
I would like to make one brief comment which I omitted in my first contribution. If the Minister would agree to consider the McDaid case of 1989 I will withdraw my amendment, otherwise I will press it.
We can look at many McDaid cases.
We had one in the last few weeks.
We will consider the particular case referred to by the Deputy. I do not have the actual details of that McDaid case, but we are well aware of the other McDaid case. I want to make it clear I do not foresee any reduction in the time; it would be a question of increasing the number of years. It is only an enabling provision to allow the Minister to have flexibility. That is all we are seeking and I do not envisage any change in that situation in the foreseeable future and certainly I do not foresee any reduction — to allay Deputy Barry's fears — in the 20 year period which has been mentioned.
Deputy Garland, an bhfuil tú sásta?
No, I am pressing my amendment.
Question: "That the words proposed to be deleted stand", put and declared carried.
Amendment declared lost.
Amendment No. 34 not moved.
Section 36 agreed to.
SECTION 37.
Amendments Nos. 35 to 44, inclusive, not moved.
Section 37 agreed to.
Sections 38 to 45, inclusive, agreed to.
SECTION 46.
Question proposed: "That section 46 stand part of the Bill."
This section refers to the burden of proof. It is concerned with patents for inventions which are for a new process for producing a new product. This can be quite an important matter especially where the new product is very valuable commercially. Special difficulties of proof arise where somebody else makes the same product and the question arises as to whether they have used the patented process in doing so. Proof could be difficult to find especially if the product was manufactured abroad. Accordingly, subsection (1) establishes the principle that where a third party produces the same product as the patented one, it will be taken that the product was obtained by use of the patented process unless it is clearly obvious that this is not the case. This is called a reversal of the burden of proof because under the normal ruling in civil proceedings it would fall on the patentee to prove that the product marketed by a third party was actually made by the patented process.
Subsection (2) anticipates that the reversal of the burden of proof, as provided for in subsection (1), could lead to a patentee seeking to use the proceedings against the third party to discover for his own benefit the third party's know-how and trade secrets. To avoid such abuse, subsection (2) obliges the court to have regard to the interests of the defendant in the protection of his manufacturing and commercial secrets and for that purpose, if it thinks fit, to hear evidence in private and in the absence of parties other than the defendant. Subsection (3) contains further provisions in connection with proceedings as referred to in subsection (2). Subsection (3) provides for procedures for private consideration by the court in the interests of protecting manufacturing or trade secrets.
Is this a new provision, this switching the burden of proof, or has that always been the position in patent law?
It is a new provision and it follows the European Patent Convention.
I have some reservations and concern about this major change in our patent law. It is a basic inalienable feature of our civil law that the burden of proof rests on the person bringing the claim. To shift the burden of proof here in favour of the patentee is a completely new provision in all aspects of Irish civil law. Switching the burden of proof may well be appropriate in some European civil law systems but it does not sit easily on our system. I am concerned about it. It is a novel procedure and its effects would not be desirable. It could be the thin end of the wedge. If a person has a patent and alleges infringement he should be required to establish his case in the normal way of obtaining the necessary evidence. To do otherwise puts the burden on a perhaps innocent third party of having to establish his innocence which could prove as great a difficulty for him as it would for an alleged aggrieved patentee. We should not lightly pass this section. This is quite a draconian measure in essence and in what effect it might have. We should consider what is involved in it.
I wish to confirm that it is a completely new provision. However, it is in line with the convention. I would point out to the Deputy that this was accepted by the House in a patents Bill in 1982 which lapsed, not that that would justify its acceptance in 1991.
Is it required under the convention?
Yes.
Question put and agreed to.
Sections 47 to 62, inclusive, agreed to.
SECTION 63.
We now come to amendment No. 45 in the name of Deputy Barry. Amendment No. 46 is an alternative. I propose, therefore, with the agreement of the House that amendments Nos. 45 and 46 be taken together for discussion purposes.
I move amendment No. 45:
In page 33, lines 14 to 16, to delete subsection (4) and substitute the following:
"(4) An invention shall be patentable under this Part if it is new and susceptible of industrial application, provided that it is not clearly lacking in inventive step.".
I am prepared to withdraw the amendment on the Minister's assurance that there is not any real difference between it and amendment No. 46.
Amendment, by leave, withdrawn.
I move amendment No. 46.
In page 33, subsection (4), to delete lines 15 and 16 and substitute "susceptible of industrial application provided it is not clearly lacking an inventive step.".
I have the advantage of having had the parliamentary draftsman verify my amendment. I am satisfied that Deputy Barry's amendment No. 45 is obsolete as a result of my amendment.
What does "an inventive step" mean?
That it cannot be obvious, is the interpretation of "inventive step".
Amendment agreed to.
Section 63, as amended, agreed to.
Section 64 agreed to.
SECTION 65.
I move amendment No. 47:
In page 34, subsection (1), line 9, to delete "24,".
Amendment agreed to.
I move amendment No. 48:
In page 34, between lines 11 and 12, to insert the following subsection:
"(2) A patent application (a `divisional application') made in accordance with section 24 may proceed as an application for a short term patent. Section 24 shall have effect in relation to an application for a short term patent.".
This amendment means that section 24, which refers to a divisional application, should be applicable to a short term patent so as to allow a short term patent application be divided out of an ordinary patent application. It is a technical point. If there is an ordinary patent application then the short term patent on that should be allowed. I understand that that is what happens in practice. However, it is not written into the legislation and it would be useful if it were.
The aim of Deputy Barry's amendment is achieved by my amendment No. 47.
Amendment, by leave, withdrawn.
Section 65, as amended, agreed to.
SECTION 66.
The next amendment is amendment No. 49 in the name of Deputy Barry. Amendment No. 53 is an alternative and amendment No. 50 is consequential on amendment No. 49. It is proposed, therefore, for discussion purposes to take amendments Nos. 49, 50 and 53 together.
I move amendment No. 49:
In page 34, between lines 25 and 26, to insert the following subsection:
"(2) At any time after the grant of a short term patent any person interested may make a request to the Controller, accompanied by the prescribed fee not exceeding the reasonable cost of providing a service, to cause the search referred to in subsection (1) to be made, and the search report shall be furnished to that person and to the proprietor of the short term patent.".
Any person should be entitled to request the controller to carry out a search in relation to the invention of a short term patent on paying the prescribed fee. It is not clear that the search referred to in section 89 would be sufficiently comprehensive in this regard.
The amendment put forward by Deputy Barry is similar to the Minister's amendment No. 53 but the Minister's wording is technically more perfect.
I am surprised. I did not know it could be better than mine. As I said earlier this is an extremely complex, non-political Bill except for the section Deputy Garland referred to. We are all concerned to pass the best legislation possible. That would have been done far better in a small room. If the Minister assures me that his amendment will have the same effect as what I am proposing in my amendment — and he has had the opportunity of studying it — I will withdraw mine and allow his to be passed.
Amendment, by leave, withdrawn.
Amendment No. 50 not moved.
I move amendment No. 51:
In page 34, subsection (3), lines 29 and 30, to delete "he has also filed an application for a patent for the same invention" and substitute "an application for a patent for the same invention has also been filed".
Amendment agreed to.
I move amendment No. 52:
In page 34, subsection (5), lines 38 and 39, to delete "and 56" and substitute ", 56 and 62".
Amendment agreed to.
I move amendment No. 53:
In page 34, between lines 40 and 41, to insert the following subsection:
"(6) The Minister may, by rules, permit any person other than the proprietor to make a request to the Contoller to cause a search report to be prepared in relation to an invention which is the subject of a short term patent. The rules may specify that such a request shall be subject to the payment of any prescribed fee. A search report prepared under this subsection shall be published by the Controller.".
Amendment agreed to.
Question proposed: "That section 66, as amended, stand part of the Bill."
Subsection (2) refers to the controller publishing the search report referred to in subsection (1). Where does he publish it? How do we know from the section where he publishes it?
The document is open to inspection in the office.
Is that what publishing means?
That is what publishing means.
How do we know that?
It is in the definition.
Question put and agreed to.
SECTION 67.
The next amendment is amendment No. 54 in the name of the Minister. Amendment No. 55 is an alternative. It is suggested, therefore, that we take amendments Nos. 54 and 55 together for discussion purposes.
I move amendment No. 54:
In page 34, lines 42 to 46, to delete all words from and including "an" in line 42 down to the end of the section and substitute "it shall also be a ground for revocation of a short term patent that the claims of the specification of the patent are not supported by the description.".
Could the Minister facilitate me by saying that his amendment is superior to mine and serves the same purpose? I am not sure if it does.
My amendment provides that it shall also be a ground for revocation of a short term patent that the claim of the specification of the patent are not supported by the description.
Is it not correct that mine serves the same purpose?
That is correct.
Since the Minister's amendment achieves what my amendment sets out to achieve, I will withdraw mine and allow the Minister's to pass.
Amendment agreed to.
Amendment No. 55 not moved.
Section 67, as amended, agreed to.
SECTION 68.
I move amendment No. 56:
In page 35, between lines 33 and 34, to insert the following subsection:
"(3) In settling the terms of any licence referred to in subsection (2) the Controller—
(a) shall endeavour to secure the widest possible user of the invention in the State consistent with the proprietor deriving a reasonable advantage from his patent rights,
(b) shall endeavour to secure to the proprietor the maximum advantage consistent with the invention being worked by the licencee at a reasonable profit in the State,
(c) shall endeavour to secure equality of advantage among the several licensees, and for this purpose may, on due cause being shown, reduce the royalties or other payments accruing to the proprietor under any licence previously granted,
(d) may so frame the terms as to preclude the licensee from importing into the State any goods the importation of which, if made by persons other than the proprietor or those claiming under him, would be an infringement of the patent, and in case such terms are so framed the proprietor and all licensees under the patent shall be deemed to have mutually covenanted against such importation.".
The intent of this is quite clear. I do not believe it is desirable to have the matter of the setting of fees and the terms of the licence at the discretion of the controller without general statutory directions. This amendment seeks to write in the terms of reference for the controller and not leave it to the controller to decide what they should be. This is exactly what was in the 1982 Bill which fell with one of those laws in the early eighties.
Proposals on these lines are in the present Act. They are considered to be counter-productive because they deter patentees from using these licences of right provisions. This has been the experience to date in this regard. Even though Deputy Barry may be correct in relation to the 1982 Bill which lapsed, our knowledge and experience shows that it would not be a helpful amendment to put forward at this stage.
Will the Minister clarify that?
The proposals the Deputy is putting forward are in the present Act.
I am proposing that the terms and the conditions of the controller be written in rather than having him decide them. Is the Minister able to point out to me where it is in this Bill? I think the Minister misunderstood me.
I am referring back to the 1964 Act.
I am referring to the Bill.
They were not found necessary and that is why they were not included in the Bill.
I think they are necessary. Why was it found they were unnecessary? The point I am trying to make is that statutory guidelines should be set down by this House and we should not allow the controller to invent them or make them up as he goes along.
No patentee has ever availed of this provision during the past 27 years, since 1964. We found that it was not necessary therefore to include it in the 1991 Bill. Given our experience under the 1964 Act we found that there was no demand or need for it and that is the reason we have not included it in the Bill.
If they are contained in the 1964 Act, the controlling Act, this means that the guidelines were set down in a statute and the controller is not free to make up his own guidelines. By not including the same guidelines in this Bill, we are now saying to the controller that he is free to do as he chooses. This is not desirable.
Given our experience under this Act, we are satisfied that there is no need to include this provision. The reason we are not including it is that there was no demand for it and not one patentee ever availed of it.
I am obviously not making myself clear. Guidelines were included in the 1964 Act and the controller issued licences subject to those guidelines. Just because no one ever availed of this provision does not mean that they are unnecessary because the controller took cognisance of them before he issued a licence. If this Bill goes through there will be no guidelines for the controller because the 1964 Act will have been repealed. As no guidelines are included in this Bill the controller will be free to issue licences using whatever guidelines he chooses to dream up himself.
No use has been made of this section during the past 27 years. No patentee has ever availed of the section. It is therefore redundant and there is no need to include it in this Bill. The 1964 Act will become obsolete when this Bill becomes law. It has never been availed of and we do not feel it should be included in the 1991 Bill. It is irrelevant.
I do not want to drag the matter out but I would like to be clear in my mind on what is involved. We are dealing with section 68 which reads:
At any time after the grant of a patent the proprietor of the patent may apply to the Controller for an entry to be made in the register to the effect that licences under the patent are to be available as of right, and where such an application is made, the Controller shall give notice of the application to any person entered on the register as being entitled to an interest in the patent, and if the Controller is satisfied that the proprietor of the patent is not precluded by contract from granting licences under the patent he shall make such entry.
During the past 27 years the general guidelines under which the controller issued licences have been laid down in the law but we are now saying to him that from now on there will be no guidelines and he must make them up as he goes along. As I said a couple of hours ago. I am sure that the present controller will behave in an impeccable manner but the point is that over the passage of time the controller will change and the next controller may not apply the same standards or set of guidelines. I find it difficult to understand that the guidelines have not been availed of as I would have thought they would have guided the controller in issuing licences. I would have thought also it would be more desirable to give guidelines to a controller, no matter who the individual may be, under which to operate to ensure that there would be consistency in the matter over a long period of time. I want to re-enter the amendment on Report Stage when I would like to get more information so I will withdraw it now and re-enter it on Report Stage.
I thank the Deputy for withdrawing the amendment and I will come back with a more detailed response on Report Stage.
Amendment, by leave, withdrawn.
Section 68 agreed to.
Section 69 agreed to.
SECTION 70.
Amendments Nos. 57 and 58 not moved.
Section 70 agreed to.
Sections 71 to 79, inclusive, agreed to.
SECTION 80.
I move amendment No. 59.
In page 44, between lines 2 and 3, to insert the following subsections:
"(1) Where two or more persons are entered in the register as applicants for or proprietors of a patent, the Controller may, upon application made to him in the prescribed manner by any of those persons, give such directions in accordance with the application as to the sale or lease of the patent application or the patent or any interest therein, the grant of licences under the patent application or patent, or the exercise of any right under section 80 in relation thereto, as he thinks fit.
(2) If any person who is entered in the register as an applicant for or proprietor of the patent fails to execute any instrument or to do any other thing required for the carrying out of any direction given under this section within fourteen days after being requested in writing so to do by any of the other persons so registered, the Controller may, upon application made to him in the prescribed manner by any such other person, give directions empowering any person to execute that instrument or to do that thing in the name and on behalf of the person in default.
(3) Where an application has been made under this section, the Controller shall notify—
(a) in the case of an application under subsection (1), the other person or persons registered as applicant for or proprietor of the patent concerned;
(b) in the case of an application under subsection (2), the person in default;
and shall thereafter determine the question.
(4) No direction shall be given under this section so as to affect the mutual rights or obligations of trustees or the personal representatives of a deceased person, or their rights or obligations as such.".
This is one of the sections of the Bill which may give rise to contention in the future. I am endeavouring to limit the areas which could give rise to contention as far as possible in the amendment. This Bill will not give the controller any power to give directions to co-owners of a patent which corresponds to the power given in section 75 of the 1981 Bill. The Minister of State earlier referred to it as the 1982 Bill. I am not sure which date is the correct one but the Bill was published in the early eighties. Similar powers are contained in section 51 of the Patents Act, 1964 which will go out of existence once this Bill becomes law.
I see no reason why this power should be excluded and I therefore suggest that new subsections should be inserted in this section. These subsections almost correspond precisely with section 75 of the 1981 Bill, as published. As I said earlier today, the Second Stage of that Bill was discussed in the House but it was not passed. The point I am trying to make is that the controller will have no power under this Bill to give directions to co-owners similar to the powers contained in section 75 of the 1981 Bill. My amendment would give him such powers in the 1991 Bill.
Provisions such as these were considered by the parliamentary draftsman and the Attorney General's office and were regarded as being matters appropriate for consideration by a court. Apart from this, the controller's main job is to deal expeditiously with the grant of patents and not to get bogged down in legal wrangles between joint patent owners. That is the reason I am not accepting the amendment which has been put down by Deputy Barry.
I presume we are talking here about having an adjudication made in the High Court. Such an action can be extremely costly if two people are involved. In relation to matters in dispute under the Competition Bill it was eventually agreed to have these dealt with by the Circuit Court. If these matters have to be dealt with by the High Court the cost for those who may already have been put to considerable expense will be very high. I do not think the adjudication or judgment of the controller would necessarily preclude anybody from taking it afterwards to the High Court but, if possible, the matter should be settled out of court.
I would like the Minister of State to look at this matter again as efforts should be made to resolve differences without the need to go to court. The cost of litigation is extraordinarily high with due respect to the Members of the House who practice in the legal profession. We should do everything we can to prevent disputes being taken to the courts if they can be solved by agreement or an adjudication of the controller of the Patents Office. This should be done rather than send people to court.
It is important that the controller get on with the business of dealing with patents and not get bogged down in litigation which can be very complicated and contentious.
And expensive.
It would be very hard for the controller to adjudicate because he would not have the judicial expertise required. After very careful examination by the Attorney General's Office and the draftsman's office it was felt necessary that adjudication should be transferred where it arises. It would land there anyway and, ultimately, it could go to the courts if there was dissatisfaction with the controller's decision.
Progress reported; Committee to sit again.