Patents (Amendment) Act 2006

Patents (Amendment) Act 2006 Skip to content Disclaimer Feedback Helpdesk Gaeilge Léim go dtí an t-ábhar Séanadh Aiseolas Deasc chabhrach English Gaeilge English Produced by the Office of the Attorney General Táirgthe ag Oifig an Ard-Aighne Home Legislation Acts of the Oireachtas Statutory Instruments Pre-1922 Legislation Constitution External Resources Bills (Houses of the Oireachtas) Iris Oifigiúil / Official Gazette Revised Acts (LRC) Classified List of Legislation (LRC) Translations (acts.ie) Translations (Houses of the Oireachtas) Government Publications for Sale EU Law (EUR-Lex) FAQ Disclaimer Feedback Helpdesk Search Baile Reachtaíocht Achtanna an Oireachtais Ionstraimí Reachtúla Reachtaíocht Réamh-1922 Bunreacht Acmhainní Seachtracha Billí (Tithe an Oireachtais) Iris Oifigiúil Achtanna Athbhreithnithe (CAD) (An Coimisiún um Athchóiriú an Dlí) Liosta Rangaithe Reachtaíochta Aistriúcháin (achtanna.ie) Aistriúcháin (Tithe an Oireachtais) Foilseacháin Rialtais ar Díol Dlí AE (EUR-Lex) CCanna (Ceisteanna Coitianta) Séanadh Aiseolas Deasc chabhrach Cuardach TitleTeideal Year(s) or rangeBliain nó blianta nó raon TypeCineál All Legislation Acts Statutory Instruments Advanced SearchCuardach Casta HomeBaile ActsAchtanna 2006 Patents (Amendment) Act 2006 Patents (Amendment) Act 2006 Permanent Page URL View by SectionAmharc de réir Ailt View Full ActAmharc ar an Acht Iomlán Bill History Stair Bille Commencement, Amendments, SIs made under the Act Tosach Feidhme, Leasuithe, IRí arna ndéanamh faoin Acht Open PDFOscail PDF Print Full ActPriontáil an tAcht Iomlán Number 31 of 2006 PATENTS (AMENDMENT) ACT 2006 ARRANGEMENT OF SECTIONS Section

Section 1

Section 2

Section 3

Section 4

Section 5

Section 6

Section 7

Section 8

Section 9

Section 10

Section 11

Section 12

Section 13

Section 14

Section 15

Section 16

Section 17

Section 18

Section 19

Section 20

Section 21

Section 22

Section 23

Section 24

Section 25

Section 26

Section 27

Section 28

Section 29

Section 30

Section 31

Section 32

Section 33

Section 34

Section 35

Section 36

Section 37

Section 38

Section 39

Section 40

Section 41

Section 42

Section 43

Section 44

Section 45

Section 46

Section 47

Section 48

Section 49

Section 50

Section 51

Acts Referred to Copyright and Related Rights Act 2000 2000, No. 28 Industrial Designs Act 2001 2001, No. 39 Patents Act 1964 1964, No. 12 Patents Act 1992 1992, No. 1 Trade Marks Act 1996 1996, No. 6 Number 31 of 2006 PATENTS (AMENDMENT) ACT 2006 AN ACT TO GIVE EFFECT TO CERTAIN PROVISIONS OF THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS ANNEXED TO THE AGREEMENT ESTABLISHING THE WORLD TRADE ORGANISATION DONE AT MARRAKESH ON 15 APRIL 1994; TO GIVE FURTHER EFFECT TO THE EUROPEAN PATENT CONVENTION SIGNED AT MUNICH ON 5 OCTOBER 1973; TO GIVE EFFECT TO THE PATENT LAW TREATY ADOPTED AT GENEVA ON 1 JUNE 2000; TO MAKE FURTHER PROVISION IN RESPECT OF MATTERS RELATING TO INTELLECTUAL PROPERTY AND FOR THOSE PURPOSES TO AMEND AND EXTEND THE PATENTS ACT 1992, THE TRADE MARKS ACT 1996, THE COPYRIGHT AND RELATED RIGHTS ACT 2000 AND THE INDUSTRIAL DESIGNS ACT 2001 AND TO PROVIDE FOR RELATED MATTERS. [11th December, 2006] BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:

Definitions.

1.— In this Act— “ Principal Act ” means the Patents Act 1992 ; “ 1996 Act ” means the Trade Marks Act 1996 .

Interpretation (section 2 of Principal Act).

2.— Section 2 of the Principal Act is amended in subsection (1)— (a) by inserting the following after the definition of “the Act of 1964”: “ ‘ Agreement establishing the World Trade Organisation’ means the Agreement establishing the World Trade Organisation done at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement which is for the time being in force in the State;”, (b) by inserting the following after the definition of “assignee”: “ ‘ Board of Appeal’ means a Board of Appeal referred to in Article 21 of the European Patent Convention;”, (c) in paragraph (i) of the definition of “designate”, by inserting “, and includes a reference to a country being treated as designated in pursuance of the European Patent Convention or the Treaty” after “invention”, (d) by inserting the following after the definition of “divisional application”: “ ‘Enlarged Board of Appeal’ means the Enlarged Board of Appeal referred to in Article 22 of the European Patent Convention;”, (e) in the definition of “ European Patent Convention ”, by inserting “, as amended for the time being” after “1973”, (f) by inserting the following after the definition of “the Journal”: “ ‘ member of the World Trade Organisation’ means a party to the Agreement establishing the World Trade Organisation;”, and (g) by inserting the following after the definition of “the Treaty”: “ ‘TRIPs Agreement ’ means the Agreement on Trade-Related Aspects of Intellectual Property Rights annexed to the Agreement establishing the World Trade Organisation;”.

Patentable inventions (section 9 of Principal Act).

3.— Section 9 of the Principal Act is amended— (a) in subsection (1), by inserting “, in all fields of technology,” after “An invention”, and (b) by deleting subsections (4) and (5).

Exceptions to patentability (section 10 of Principal Act).

4.— Section 10 of the Principal Act is amended— (a) in paragraph (a), by substituting “commercial exploitation” for “publication or exploitation”, (b) in paragraph (b), by substituting “thereof;” for “thereof.”, (c) by inserting the following after paragraph (b): “(c) a method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body.”, (d) by renumbering the existing provision as subsection (1) of that section, and (e) by inserting the following: “(2) Subsection (1)(c) shall not apply to products, in particular substances or compositions, for use in any such method.”.

Novelty (section 11 of Principal Act).

5.— Section 11 of the Principal Act is amended by substituting the following for subsection (4): “(4) The provisions of subsections (2) and (3) shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in section 10(1)(c) provided that its use for any such method is not comprised in the state of the art.

Date of filing application (section 23 of Principal Act).

6.— Section 23 of the Principal Act is amended by substituting the following for that section: “Date of filing application.

23.— (1) The date of filing of a patent application shall be taken to be the earliest date on which the applicant paid the filing fee and filed documents which contain— (a) an indication that a patent is sought, (b) information identifying the applicant or information sufficient to enable that person to be contacted by the Office, and (c) (i) a description of the invention for which a patent is sought even where the description does not comply with other requirements of this Act or with any requirements that may be prescribed, or (ii) a reference, complying with any relevant requirements that may be prescribed, to a previously filed application made by the applicant or the applicant’s predecessor in title.

Priority right (section 25 of Principal Act).

7.— Section 25 of the Principal Act is amended— (a) in subsection (1), by the insertion after “the Paris Convention for the Protection of Industrial Property” of “or to the Agreement establishing the World Trade Organisation”, (b) in subsection (5), by the insertion after “the Paris Convention for the Protection of Industrial Property” of “or which is not a party to the Agreement establishing the World Trade Organisation”, and (c) after subsection (5), by the insertion of the following: “(6) In this section a ‘state party to the Agreement establishing the World Trade Organisation’ means a member of the World Trade Organisation and, for the purposes of subsection (5), every country or territory shall be taken to be a state in the case of which an order may be made under that subsection.”.

Withdrawal of application (section 33 of Principal Act).

8.— Section 33 of the Principal Act is amended by inserting the following after subsection (1): “(1A) Subsection (1) does not affect the power of the Controller under section 110 to correct an error or mistake in the withdrawal of an application.”.

Reinstatement of applications.

9.— Part II of the Principal Act is amended by inserting the following sections after section 35 but in Chapter IV of that Part: “Reinstatement of applications.

35A.— (1) This section shall not apply to a patent application which has lapsed by reason of the failure to pay any renewal fee and section 35(3) shall continue to apply to any such application.

Effect of reinstatement.

35B.— (1) Where an application is reinstated under section 35A— (a) anything done under or in relation to the application during the period between termination and reinstatement shall be treated as valid, (b) in a case where the application has been published under section 28 before its termination, anything done during the period referred to in paragraph (a), which would have constituted an infringement of the rights conferred by publication of the application if the termination had not occurred, shall be treated as an infringement of those rights if it was a continuation or repetition of an earlier act infringing those rights, (c) in a case where the application has been published under section 28 before its termination and, after the termination and before publication of a notice of request for its reinstatement, a person— (i) began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application if the termination had not taken place, or (ii) made, in good faith, effective and serious preparations to do such an act, the person shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the reinstatement of the application and the grant of the patent.

Restoration of lapsed patents (section 37 of Principal Act).

10.— The Principal Act is amended in section 37— (a) by substituting the following for subsection (7): “(7) An order under this section for the restoration of a patent may be made subject to such conditions as the Controller thinks fit, including, in particular, a condition requiring the entry in the register of any matter in respect of which the provisions of this Act as to entries in the register is not complied with and if any condition to which an order under this section is subject is not complied with by the proprietor of the patent, the Controller may revoke the order and give such directions consequential on the revocation as he thinks fit.”, and (b) by inserting the following after subsection (7): “(8) An order under this section for the restoration of a patent shall have the following effect: (a) anything done under or in relation to the patent during the period beginning on the date on which the patent lapsed and ending on the date of an order under this section shall be treated as valid; (b) anything done during the period referred to in paragraph (a) which would have constituted an infringement if the patent had not lapsed shall be treated as an infringement— (i) if it was done at a time when it was possible for the patent to be renewed during the period of extension specified for the purpose of section 36(3), or (ii) if it was a continuation or repetition of an earlier infringing act; (c) where, after the expiration of the period of extension specified for the purpose of section 36(3) and before the date of publication of the application for restoration of the patent in the Journal under subsection (4), a person— (i) began in good faith to do an act which would constitute an infringement of the patent if it had not lapsed, or (ii) made in good faith effective and serious preparations to do such an act, the person shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the restoration of the patent.

Amendment after grant (section 38 of Principal Act).

11.— Section 38 of the Principal Act is amended by inserting the following after subsection (6): “(7) In considering whether or not to allow an amendment proposed under this section the Court or the Controller shall have regard to any relevant principles applicable under the European Patent Convention.”.

Limitation of effect of patent (section 42 of Principal Act).

12.— Section 42 of the Principal Act is amended— (a) in paragraph (d), by the insertion after “the Union of Paris for the Protection of Industrial Property” of “or in any of the members of the World Trade Organisation”, and (b) in paragraph (e), by the insertion after “the Union of Paris for the Protection of Industrial Property” of “or of members of the World Trade Organisation”.

Extent of protection (section 45 of Principal Act).

13.— Section 45 of the Principal Act is amended in subsections (1) and (2) by deleting “the terms of” in each place where it occurs.

Relief for infringement of partially valid patent (section 50 of Principal Act).

14.— Section 50 of the Principal Act is amended by inserting the following after subsection (3): “(4) The Court may also grant relief under this section in the case of a European patent designating the State on condition that the claims are limited to the Court’s satisfaction by the European Patent Office at the request of the proprietor.”.

Remedy for groundless threats of infringement proceedings (section 53 of Principal Act).

15.— Section 53 of the Principal Act is amended by substituting the following for subsection (3): “(3) Proceedings may not be brought under this section as regards— (a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process, or (b) a threat, made to a person who made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.”.

Grounds for revocation (section 58 of Principal Act).

16.— Section 58 of the Principal Act is amended by the substitution for paragraph (d) of the following: “(d) the protection conferred by the patent has been extended by an amendment which should not have been allowed;”.

Examination of application for revocation (section 59 of Principal Act).

17.— Section 59 of the Principal Act is amended— (a) in subsection (3), by deleting “, under section 38,”, and (b) by inserting the following after subsection (3): “(4) For the purposes of subsection (3), the reference to the specification being amended is to its being amended under section 38 and also, in the case of a European patent designating the State, to its being amended under any provision of the European Patent Convention under which the claims of the patent may be limited by amendment at the request of the proprietor.”.

Application for entry in register that licences of right are available (section 68 of Principal Act).

18.— Section 68 of the Principal Act is amended in paragraph (c) of subsection (2) by the substitution for “(otherwise than by the importation of goods)” of “(otherwise than by the importation of goods from a country which is not a member of the World Trade Organisation)”.

Compulsory licences (section 70 of Principal Act).

19.— Section 70 of the Principal Act is amended by the substitution for that section of the following: “Compulsory licences.

70.— (1) At any time after the expiration of the period of three years, or such other period as may be prescribed, beginning on the date of the publication of notice of grant of a patent any person may apply to the Controller for a licence under the patent, or for an entry in the register to the effect that licences under the patent are to be available as of right, on any or all of the following grounds: (a) that— (i) a demand in the State for the subject matter of the patent is not being met or is not being met on reasonable terms, or (ii) a demand in the State for a product which is protected by the patent is being met by importation other than from a member of the World Trade Organisation; (b) that the establishment or development of commercial or industrial activities in the State is unfairly prejudiced.

Provisions as to compulsory licences (section 71 of Principal Act).

20.— Section 71 of the Principal Act is amended by the substitution for that section of the following section: “Provisions as to compulsory licences.

71.— (1) Where an order for the grant of a licence or for an entry in the register has been made pursuant to an application under section 70, any person may apply to the Controller to amend or cancel the order on the grounds that the circumstances which led to the order have changed or have ceased to exist and are unlikely to recur.

Procedure on applications under sections 70 and 72 (section 73 of Principal Act).

21.— Section 73 of the Principal Act is amended— (a) in subsection (1), by the insertion after “upon which the application is based” of “and shall be accompanied by evidence indicating that the applicant sought to obtain a licence from the proprietor of the patent but has been unable to obtain such a licence on reasonable terms and within a reasonable time”, and (b) after subsection (1), by the insertion of the following: “(1A) The Controller may, when so requested by the applicant, dispense with the evidence referred to in subsection (1)— (a) where there exists a national emergency or other circumstances of extreme urgency, or (b) in the case of an application for a licence for public non-commercial use:

Provided that the proprietor of the relevant patent has been informed as soon as reasonably practicable of the intention of the applicant to apply to the Controller for a licence under the patent.”.

Appeals and references to arbitrator (section 74 of Principal Act).

22.— Section 74 of the Principal Act is amended in subsection (1) by the substitution for “section 70 or 72” of “section 70, 71 or 72”.

Supplementary provisions as to licences (section 75 of Principal Act).

23.— Section 75 of the Principal Act is amended— (a) in subsections (2) and (3), by the substitution for “section 70 or 72” of “section 70, 71 or 72” in each place it occurs, and (b) in subsection (3), by the insertion after “European Economic Community” of “or with the TRIPs Agreement”.

Evidence before Controller (section 92 of Principal Act).

24.— Section 92 of the Principal Act is amended in subsection (3) by inserting “or by any other enactment” after “by this Act”.

Appeals from decisions of Controller (section 96 of Principal Act).

25.— Section 96 of the Principal Act is amended in subsection (6)— (a) by renumbering that subsection as paragraph (a) of that subsection, (b) by inserting “and subject to paragraph (b)” after “this Act”, and (c) by inserting the following paragraph: “(b) Where a written statement of the grounds of the order or decision of the Controller, in the exercise of his discretionary power, has been requested in the prescribed manner and within the prescribed period by a party to the proceedings, the period of three months shall begin on the date on which the written statement is furnished to the party requesting it.”.

Correction of errors (section 110 of Principal Act).

26.— Section 110 of the Principal Act is amended— (a) by inserting the following after subsection (2): “(2A) Where the Controller is requested to correct an error or mistake in a withdrawal of an application for a patent, which application was published under section 28 and details of the withdrawal were published by the Controller, the Controller shall publish notice of the request in the Journal. (2B) Where the Controller has published a notice in accordance with subsection (2A) any person may within a prescribed period give notice to the Controller of opposition to the request. (2C) If notice of opposition is given under subsection (2B), the Controller shall notify the person who made the request and shall determine the matter. (2D) Where the Controller decides to allow a request under this section to correct an error or mistake in a withdrawal of an application for a patent and notice of the request was published in the Journal under subsection (2A), the Controller shall make an order restoring the application and publish notice of the restoration in the Journal.”, and (b) in subsection (3), by inserting “other than a request to correct an error or mistake in a withdrawal of an application for a patent referred to in subsection (2A),” after “subsection (1),”.

Effect of restoring a withdrawn application under section 110 of the Principal Act.

27.— The Principal Act is amended by inserting the following section after section 110: “Effect of restoring a withdrawn application under section 110.

110A.— (1) Where— (a) the Controller is requested to correct an error or mistake in a withdrawal of an application for a patent, and (b) an application for a patent has been restored in accordance with that request, the following provisions apply: (i) anything done under or in relation to the application during the period between the application being withdrawn and its restoration shall be treated as valid; (ii) where the Controller has published notice of the request referred to in section 110(2A), anything done during the period referred to in subparagraph (i) which would have constituted an infringement of the rights conferred by publication of the application if the application had not been withdrawn shall be treated as an infringement of those rights if it was a continuation or repetition of an earlier act infringing those rights; (iii) where the Controller has published notice of the request referred to in section 110(2A) and, after the withdrawal of the application and before publication of the notice, a person— (I) began in good faith to do an act which would have constituted an infringement of the rights conferred by publication of the application if the withdrawal had not taken place, or (II) made, in good faith, effective and serious preparations to do such an act, the person shall have the rights conferred by subsection (2).

Extension of time limits specified by Controller.

28.— The Principal Act is amended by inserting the following section after section 118 but in Part XI: “Extension of time limits specified by Controller.

118A.— (1) If an applicant for, or proprietor of, a patent fails to observe any time limit specified by the Controller the applicant or proprietor may request an extension of time in accordance with the prescribed requirements.

Effect of European patent (section 119 of Principal Act).

29.— Section 119 of the Principal Act is amended— (a) in subsection (2), by inserting “, limitation” after “amendment”, (b) in subsection (4)— (i) by inserting “, limited” after “amended” and (ii) by inserting “or limitation” after “amendment”, (c) in subsection (5)— (i) by substituting the following for paragraph (a): “(a) under the European Patent Convention a European patent designating the State— (i) is revoked for failure to observe a time limit and is subsequently restored, or (ii) is revoked by the Board of Appeal and is subsequently restored by the Enlarged Board of Appeal, and”, and (ii) by substituting “the person shall have the rights conferred by subsections (8)(c) and (10) of section 37 and subsections (9) and (11) of that section shall apply accordingly.” for “he shall have the same protection as if an order had been made under section 37(7).”, and (d) in subsection (6)(b)— (i) by inserting “or a limitation” after “amendment”, and (ii) by inserting “or limited” after “amended”.

Restoration where translation not filed under section 119(6).

30.— The Principal Act is amended by inserting the following section after section 119: “Restoration where translation not filed under section 119(6).

119A.— (1) Where a translation of the specification concerned is not filed within the period prescribed under section 119(6), an application may be made to the Controller to restore the effect of section 119(1).

Effect of filing application for European patent (section 120 of Principal Act).

31.— Section 120 of the Principal Act is amended— (a) by substituting the following for subsection (4): “(4) Subsections (1), (2) and (3) shall cease to apply to an application for a European patent designating the State, except as provided for in subsection (4A), if— (a) the application is refused or withdrawn or deemed to be withdrawn, or (b) the designation of the State in the application is withdrawn or deemed to be withdrawn, but shall apply again if the rights of the applicant are re-established under the European Patent Convention, as from the re-establishment of those rights.”, (b) by inserting the following after subsection (4): “(4A) (a) The occurrence of any of the events referred to in subsection (4)(a) or (b) shall not affect the continued operation of section 11(3) in relation to matter contained in an application for a European patent designating the State which by virtue of that provision has become part of the state of the art as regards other inventions. (b) The occurrence of any of the events mentioned in subsection (4)(b) shall not prevent matter contained in the application for a European patent designating the State becoming part of the state of the art by virtue of section 11(3) as regards other inventions, where the event occurs before the publication of that application. (c) Paragraph (b) shall apply only to European patents and European patent applications filed after the coming into operation of that paragraph.”, (c) by substituting the following for subsection (5): “(5) Where between the cesser, by virtue of subsection (4), of subsections (1), (2) and (3) as regards an application for a European patent and the re-establishment of the rights of the applicant, a person begins in good faith to do an act which would, apart from section 77, constitute an infringement of the rights conferred by publication of the application if subsections (1), (2) and (3) then applied, or makes in good faith effective and serious preparations to do such an act, subsections (5A) to (5D) shall apply. (5A) The person referred to in subsection (5) shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding subsections (1) to (3) applying again and notwithstanding the grant of the patent. (5B) Subsection (5A) does not extend to granting a licence to any person to do an act referred to in subsection (5). (5C) If the act referred to in subsection (5) was done, or the preparations were made to do it, in the course of a business, the person entitled to the right conferred by subsection (5A) may—

(a) authorise that act to be done by any partner of that person for the time being in that business, and (b) assign the right, or transmit that right on death (or in the case of a body corporate on its dissolution), to any person who acquires that part of the business in the course of which the act was done or preparations had been made to do it. (5D) Where a product is disposed of by any person to another person in exercise of a right conferred by subsection (5A) or (5C) that other person and any person claiming through that other person shall be entitled to deal with the product in the same way as if it had been disposed of by the applicant.”, and (d) by substituting the following for subsection (7): “(7) (a) An application for a European patent may be filed at the Office. The Office shall forward an application to the European Patent Office within the time specified in the Implementing Regulations to the European Patent Convention. (b) This provision shall not apply in respect of an application which is a European divisional application under the European Patent Convention.”.

Authentic text of European patents and patent applications (section 121 of Principal Act).

32.— Section 121 of the Principal Act is amended— (a) in subsection (4), by substituting “subsections (5) to (8) shall apply.” for “he shall have the same protection as if an order had been made under section 37(7).”, (b) by inserting the following subsections after subsection (4): “(5) The person referred to in subsection (4) shall have the right to continue to do the act concerned or, as the case may be, to do that act, notwithstanding the publication of the corrected translation and notwithstanding the grant of the patent.

Conversion of European patent application (section 122 of Principal Act).

33.— Section 122 of the Principal Act is amended in subsection (1) by substituting “Where an application designating the State is deemed withdrawn under the provisions of the European Patent Convention because it has not been forwarded to the European Patent Office in due time,” for “Where under the European Patent Convention an application for a European Patent designating the State is deemed to have been withdrawn because it has, not within the period required by the said Convention, been received by the European Patent Office,”.

Transitional provisions (First Schedule to Principal Act).

34.— The First Schedule to the Principal Act is amended by the repeal of paragraph 4.

Directions referred to in section 45(3) (Second Schedule to Principal Act).

35.— The Principal Act is amended by substituting the following for the Second Schedule: “SECOND SCHEDULE Directions referred to in section 45(3) General principles Section 45 should not be interpreted in the sense that the extent of the protection conferred by a patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of certainty for third parties.

Equivalents For the purpose of determining the extent of protection conferred by a patent, due account shall be taken of any element which is equivalent to an element specified in the claims.”.

Revocation.

36.— The Patents (International Arrangements) Order, 1996 ( S.I. No. 38 of 1996 ), and the Patents Act 1964 (Section 93) (Declaration Order), 1976 ( S.I. No. 314 of 1976 ), are revoked.

Interpretation (section 2 of 1996 Act).

37.— Section 2 of the 1996 Act is amended in subsection (1) by inserting the following after the definition of “the Act of 1963”: “ ‘ Agreement establishing the World Trade Organisation’ has the meaning assigned by section 60;”.

Relative grounds for refusal of registration (section 10 of 1996 Act).

38.— Section 10 of the 1996 Act is amended by substituting the following for subsection (3): “(3) A trade mark which is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the State (or, in the case of a Community trade mark, in the Community) and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.”.

Infringement of registered trade mark (section 14 of 1996 Act).

39.— Section 14 of the 1996 Act is amended by substituting the following for subsection (3): “(3) A person shall infringe a registered trade mark if that person uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark where the trade mark has a reputation in the State and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.”.

Infringing goods, material or articles: powers of seizure and search (section 25 of 1996 Act).

40.— Section 25 of the 1996 Act is amended— (a) by substituting the following for subsection (2): “(2) If a Judge of the District Court is satisfied by information on oath that there is reasonable ground for suspecting that infringing goods, material or articles are on any premises or place in the course of business or otherwise for the purpose of dealing in any way, the Judge may grant a search warrant authorising a member of the Garda Síochána, accompanied by such other members of the Garda Síochána or other person or persons as that member thinks proper, at any time or times within 28 days from the date of the issue of the warrant on production, where requested, of that warrant, to enter and search the premises or place specified in the warrant using reasonable force where necessary, and to do all or any of the following acts: (a) to seize any such goods, material or articles; (b) to make an inventory or prepare other evidence of infringement of a registered trade mark or potential infringement of a registered trade mark; (c) to seize anything found there which that member believes on reasonable grounds may be required to be used in evidence in any proceedings brought in respect of an offence under this Act; (d) to require any person found there to give his or her name and address.”, (b) by inserting the following after subsection (2): “(2A) A warrant issued under this section may authorise persons, including the registered proprietor or his or her designated representative, to accompany and assist any member of the Garda Síochána in executing the warrant or in collating any inventory or other evidence.”, and (c) in subsection (4), by inserting “or place” after “premises”.

Registration of transactions affecting registered trade mark (section 29 of 1996 Act).

41.— Section 29 of the 1996 Act is amended in subsection (2) by inserting the following after paragraph (c): “(ca) matters arising from the operation of law which affect the proprietorship of a registered trade mark;”.

Claim to priority from other relevant overseas application (section 41 of 1996 Act).

42.— Section 41 of the 1996 Act is amended in subsection (2) by inserting “, or the successor in title to such a person,” after “on a person”.

The Paris Convention (section 60 of 1996 Act).

43.— Section 60 of the 1996 Act is amended in subsection (1)— (a) in paragraph (a), by deleting “and”, (b) by inserting the following after paragraph (a): “(aa) “Agreement establishing the World Trade Organisation” means the Agreement establishing the World Trade Organisation done at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement which is for the time being in force in the State;”, and (c) in paragraph (b), by substituting “the Paris Convention or the Agreement establishing the World Trade Organisation” for “that Convention”.

Appeals from the Controller (section 79 of 1996 Act).

44.— Section 79 of the 1996 Act is amended by substituting the following for subsection (1): “(1) (a) Save as otherwise provided by this Act and subject to paragraph (b), except by leave of the Court, an appeal shall lie to the Court from a decision of the Controller under this Act within three months from the date of the decision. (b) Where a written statement of the grounds of the decision of the Controller, in the exercise of his discretionary power, has been requested in the prescribed manner and within the prescribed period by a party to the proceedings, the period of three months shall begin on the date on which the written statement is furnished to the party requesting it.”.

Agreement establishing the World Trade Organisation – consequential amendments to 1996 Act.

45.— Each provision of the 1996 Act specified in column (1) of the Table to this section is amended as specified in column (2) of that Table opposite the mention of that provision in column (1).

TABLE Provisions Affected Amendment

(1)

Section 64

Insert the following subsection after subsection (4): “(5) A reference in this section to Article 6ter of the Paris Convention shall be read as a reference to that Article as applied by the Agreement establishing the World Trade Organisation.”.

Transitional provisions (Third Schedule to 1996 Act).

46.— The Third Schedule to the 1996 Act is amended by inserting the following after paragraph 15: “Transitional Provisions 16. The amendment effected by section 45 of the Patents (Amendment) Act 2006 to section 61(2) shall not affect the continuation of any bona fide use of a trade mark begun before 1 January 1996.

Costs of Controller in proceedings.

47.— The Copyright and Related Rights Act 2000 is amended by inserting the following after section 364: “Costs of Controller in proceedings.

364A.— In any proceedings before any court under this Act, the Controller shall not be awarded or be ordered to pay costs.”.

References of dispute to arbitrator (section 367 of Copyright and Related Rights Act 2000).

48.— Subsection (2) of section 367 of the Copyright and Related Rights Act 2000 is repealed.

Infringement actionable by registered proprietor (section 57 of Industrial Designs Act 2001).

49.—

Section 57

of the Industrial Designs Act 2001 is amended by substituting the following for subsection (2): “(2) Notwithstanding sections 29 and 43— (a) no infringement proceedings may be begun before the date of publication of the registration of the design, and (b) no offence shall be regarded as committed under section 66 by anything done before the date referred to in paragraph (a).”.

Appeals (section 84 of Industrial Designs Act 2001).

50.—

Section 84

of the Industrial Designs Act 2001 is amended by substituting the following for subsection (1): “(1) (a) Save as otherwise provided by this Act and subject to paragraph (b), except by leave of the High Court, an appeal lies to the High Court from any decision or order of the Controller under this Act within 3 months from the date of the decision or order. (b) Where a written statement of the grounds of the decision or order of the Controller, in the exercise of his or her discretionary power, has been requested in the prescribed manner and within the prescribed period by a party to the proceedings, the period of 3 months shall begin on the date on which the written statement is furnished to the party requesting it.”.

Short title and commencement.

51.— (1) This Act may be cited as the Patents (Amendment) Act 2006 .

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