Industrial and Commercial Property (Protection) Act, 1927

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INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927.

ARRANGEMENT OF SECTIONS Section

Section 1

Short title.

Section 2

Commencement of Act.

Section 3

Definitions.

Section 4

Repeals.

PART I.

ESTABLISHMENT OF INDUSTRIAL AND COMMERCIAL PROPERTY REGISTRATION OFFICE.

Section 5

Establishment of Industrial and Commercial Property Registration Office.

Section 6

Appointment of Controller of Industrial and Commercial Property.

Section 7

Controller to be a corporation and have official seal.

Section 8

Appointment of officers of controller.

Section 9

Fees to be charged by controller.

Section 10

Controller to publish Official Journal and other documents.

PART II.

PATENTS.

Section 11

Application for patent generally.

Section 12

Application for patent in certain cases.

Section 13

Specifications of inventions.

Section 14

Proceedings upon application.

Section 15

Provisional protection.

Section 16

Time for leaving complete specification.

Section 17

Comparison of provisional and complete specifications.

Section 18

Time for acceptance of complete specification.

Section 19

Documents to accompany specifications.

Section 20

Investigation of specifications published subsequent to application.

Section 21

Investigation of specifications published previous to application.

Section 22

Advertisement on acceptance of complete specification.

Section 23

Effect of acceptance of complete specification.

Section 24

Opposition to grant of patent.

Section 25

Grant and sealing of patent.

Section 26

Abandoned or void application.

Section 27

Date of patent.

Section 28

Effect and form of patent.

Section 29

Effect of existing British patents.

Section 30

Fraudulent applications for patents.

Section 31

Single patent for cognate inventions.

Section 32

Term of patent.

Section 33

Effect of failure to pay fees.

Section 34

Extension of term of patent.

Section 35

Patents of addition.

Section 36

Restoration of lapsed patents.

Section 37

Amendment of specification by controller.

Section 38

Amendment of specification by the court.

Section 39

Restriction on damages where specification amended.

Section 40

Provisions as to patents indorsed “licences of right”.

Section 41

Revocation of patents by court.

Section 42

Revocation of patents by controller.

Section 43

Prevention of abuse of monopoly rights.

Section 44

Operation of order for grant of licence.

Section 45

Register of patents.

Section 46

Inventor or patentee may assign benefit to Minister.

Section 47

Inventions related to instruments or munitions of war.

Section 48

Hearing with assessor.

Section 49

Counterclaim for revocation of patent.

Section 50

Power of court to grant relief in respect of particular claims.

Section 51

Exemption of innocent infringer from liability for damages.

Section 52

Order for injunction or inspection.

Section 53

Grant of patent to two or more persons.

Section 54

Avoidance of certain conditions attached to the sale, etc., of patented articles.

Section 55

Chemical products and substances intended for food or medicine.

Section 56

Acts which do not amount to anticipation.

Section 57

Discrepancies between provisional and complete specifications.

Section 58

Rights of representative of deceased inventor.

Section 59

Loss or destruction of patent.

Section 60

Publication of invention at certain exhibitions.

Section 61

Use of invention on foreign vessel in home waters.

Section 62

Patent agents to be registered.

Section 63

Management of register of patent agents.

PART III.

DESIGNS.

Section 64

Registration of designs generally.

Section 65

Registration of designs in certain cases.

Section 66

Registration of designs registered in Patent Office in London.

Section 67

Registration of designs in new classes.

Section 68

Certificate of registration.

Section 69

Register of designs.

Section 70

Copyright in registered designs.

Section 71

Requirements before delivery on sale.

Section 72

No publication by confidential disclosure of design.

Section 73

Inspection of registered designs.

Section 74

Information as to existence of registration.

Section 75

Cancellation of registration of design.

Section 76

Publication of designs at certain exhibitions.

Section 77

Ministers may acquire designs.

Section 78

Prohibition of infringement of copyright in design.

Section 79

Applications abandoned or refused.

PART IV.

TRADE MARKS.

Section 80

Register of trade marks.

Section 81

Trade mark must be for particular goods.

Section 82

Requisites for registration in Part A.

Section 83

Colour of trade marks.

Section 84

Deceptive or misleading trade marks.

Section 85

Application for registration in Part A.

Section 86

Application for registration in Part B.

Section 87

Translation of application from Part A to Part B.

Section 88

Registration of trade marks in certain cases.

Section 89

Registration of trade marks registered in Patent Office in London.

Section 90

Advertisement of application.

Section 91

Opposition to registration.

Section 92

Disclaimer of non-distinctive elements.

Section 93

Date of registration.

Section 94

Certificate of registration.

Section 95

Delay in completion of registration.

Section 96

Identical trade marks.

Section 97

Rival claims to identical marks.

Section 98

Concurrent user.

Section 99

Assignment and transmission of trade marks.

Section 100

Apportionment of trade marks on dissolution of partnership.

Section 101

Associated trade marks.

Section 102

Combined trade marks.

Section 103

Series of trade marks.

Section 104

Assignment and user of associated trade marks.

Section 105

Duration of registration.

Section 106

Renewal of registration.

Section 107

Procedure on expiry of period of registration.

Section 108

Status of unrenewed trade mark.

Section 109

Removal from register of word trade marks used as name of articles.

Section 110

Alteration of registered trade mark.

Section 111

Non-user of trade mark.

Section 112

Powers of registered proprietor.

Section 113

Rights of registered proprietor.

Section 114

Effect of registration in Part B.

Section 115

Registration to be prima facie evidence of validity.

Section 116

Registration to be conclusive after seven years.

Section 117

Unregistered trade mark.

Section 118

Admission of evidence of trade usages.

Section 119

No interference with use of own name, etc.

Section 120

Remedies for “passing off” not affected.

Section 121

Registration of marks by Ministers.

Section 122

Misuse of trade marks indicative of Irish origin.

Section 123

Trade marks used solely as certificates of quality, etc.

PART V.

GENERAL PROVISIONS RELATING TO PATENTS, DESIGNS AND TRADE MARKS.

Section 124

Trusts not to be entered in registers.

Section 125

Inspection of and extracts from registers.

Section 126

Reports of officers to be privileged.

Section 127

Registration of assignments, etc.

Section 128

Power of controller to amend register.

Section 129

Power of court to amend register.

Section 130

Rights of State in respect of patented inventions and registered designs.

Section 131

Remedy in case of groundless threats of legal proceedings.

Section 132

Certificate of validity questioned and costs thereon.

Section 133

Procedure on appeals to law officer.

Section 134

Exercise of discretionary power by controller.

Section 135

Costs and security for costs.

Section 136

Controller may consult law officer.

Section 137

Recognition of agents.

Section 138

Inventions, etc, contrary to law or morality.

Section 139

Controller to make annual reports.

Section 140

Minister may refer appeals to court.

Section 141

Minister may delegate his duties under this Act.

Section 142

Evidence before controller.

Section 143

Appearance of controller in proceedings for rectification.

Section 144

Costs of controller in court proceedings.

Section 145

Certificate of controller to be evidence.

Section 146

Sealed copies of documents in office to be evidence.

Section 147

Notices may be sent by post.

Section 148

Excluded days.

Section 149

Declarations by infants, lunatics, etc.

Section 150

Offences.

Section 151

Unauthorised user of State badges.

Section 152

International arrangements.

Section 153

Minister may make general rules, etc.

PART VI.

COPYRIGHT.

Section 154

Copyright.

Section 155

Infringement of copyright.

Section 156

Term of copyright.

Section 157

Compulsory licences.

Section 158

Ownership of copyright, etc.

Section 159

Civil remedies for infringement of copyright.

Section 160

Rights in respect of infringing copies, etc.

Section 161

Exemption of innocent infringer from certain liabilities.

Section 162

Restriction on remedies in the case of architecture.

Section 163

Limitation of actions.

Section 164

Penalties for dealing with infringing copies.

Section 165

Importation of copies.

Section 166

Works of joint authors.

Section 167

Posthumous works.

Section 168

Copyright in Government publications.

Section 169

Copyright in mechanical musical instruments.

Section 170

Reports of political speeches.

Section 171

Copyright in photographs.

Section 172

Application of this Part of this Act to registered designs.

Section 173

Works of foreign authors.

Section 174

Preservation of existing copyrights.

Section 175

Power to extend the benefit of this Part of this Act to works first published in a British dominion or foreign country.

Section 176

Abrogation of common law rights.

Section 177

Definitions and interpretation.

PART VII.

MISCELLANEOUS PROVISIONS IN RELATION TO COPYRIGHT.

Section 178

Delivery of books to libraries.

Section 179

Registration of artistic work defining a design.

Section 180

Application of Part VI. of this Act to artistic work defining a design.

Section 181

Register to be kept by proprietors of theatres, etc.

Section 182

Seizure, etc., of pirated copies of musical works.

Section 183

Seizure of pirated copies on request of copyright owner.

Section 184

Penalties for being in possession of pirated copies.

Section 185

Right of entry by police for execution of this Part of this Act.

Section 186

Penalty for certain offences.

Section 187

Definitions.

FIRST SCHEDULE.

SECOND SCHEDULE.

Acts Referred to Ministers and Secretaries Act, 1924 No. 16 of 1924 Number 16 of 1927.

INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927.

AN ACT TO MAKE PROVISION FOR THE GRANTING OF PATENTS FOR INVENTIONS, THE REGISTRATION OF DESIGNS AND TRADE MARKS, AND THE DEFINITION AND PROTECTION OF COPYRIGHT IN SAORSTÁT EIREANN. [20th May, 1927.] BE IT ENACTED BY THE OIREACHTAS OF SAORSTÁT EIREANN AS FOLLOWS:— PRELIMINARY.

Short title.

1.—This Act may be cited as the Industrial and Commercial Property (Protection) Act, 1927.

Commencement of Act.

2.—This Act shall come into operation on such day or days as may be fixed therefor by any order or orders of the Executive Council, either generally or with reference to any particular Part of this Act, and different days may be fixed for the commencement of different Parts of this Act, but so that no such day be later than six months after the passing of this Act.

Definitions.

3.—In this Act— the word “patent” means letters patent for an invention; the expression “British patent” means a patent granted by the Patent Office in London; the word “patentee” means the person for the time being entered on the register as the grantee or proprietor of the patent; the word “invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, and includes an alleged invention; subject to the provisions of this Act, the words “inventor” and “applicant” respectively include the legal representative of a deceased inventor or applicant; the word “design” means only the features of shape, configuration, pattern, or ornament applied to any article by any industrial process or means, whether manual, mechanical, or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle of construction, or anything which is in substance a mere mechanical device; the word “article” means (as respects designs) any article of manufacture and any substance artificial or natural or partly artificial and partly natural; the word “copyright” when used in relation to a design registered under

Part III

. of this Act means the exclusive right to apply the design to any article in any class in which the design is registered; the expression “proprietor of a new or original design”— (a) where the author of the design, for good consideration, executes the design for some other person, means the person for whom the design is so executed, and (b) where any person acquires the design or the right to apply the design to any article either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired, and (c) in any other case means the author of the design, and where the property in, or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person; the expression “working on a commercial scale” means the manufacture of the article or the carrying on of the process described and claimed in a specification for a patent in or by means of a definite and substantial establishment or organisation, and on a scale which is adequate and reasonable in all the circumstances; the word “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof; the expression “trade mark” means a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with, or offering for sale; the word “controller” means the Controller of Industrial and Commercial Property appointed under this Act; the expression “the Office” means the Industrial and Commercial Property Registration Office established pursuant to this Act; the word “Journal” means the Official Journal of Industrial and Commercial Property issued by the controller pursuant to this Act; the expression “the register” means the appropriate register kept pursuant to this Act; the expression “British register” means the appropriate register kept in the Patent Office in London pursuant to the statutes relating to that Office; the expression “Patent Office in London” means the office in London called the Patent Office and maintained under the statutes relating to the granting of patents for inventions and the registration of designs and trade marks in the late United Kingdom and in Great Britain; the expression “late United Kingdom” means the late United Kingdom of Great Britain and Ireland;

the expression “self-governing British dominions” means and includes the Dominion of Canada, the Commonwealth of Australia, the Dominion of New Zealand, the Union of South Africa, and Newfoundland; the expression “British dominions” includes Great Britain and Northern Ireland and (save where the context otherwise requires) the self-governing British dominions; the expression “the Minister” means the Minister for Industry and Commerce; the expression “Law Officer” means the Attorney-General of Saorstát Eireann; the word “prescribed” means prescribed by general rules made under this Act; the word “court” means the High Court of Justice in Saorstát Eireann.

Repeals.

4.—The Acts mentioned in the First Schedule to this Act are hereby repealed to the extent mentioned in the third column of the said Schedule.

PART I.

ESTABLISHMENT OF INDUSTRIAL AND COMMERCIAL PROPERTY REGISTRATION OFFICE.

Establishment of Industrial and Commercial Property Registration Office.

5.—(1) There shall be established an Industrial and Commercial Property Registration Office for the purposes of this Act and such other purposes as may hereafter be assigned to it by the Oireachtas.

Appointment of Controller of Industrial and Commercial Property.

6.—(1) The Executive Council shall as soon as may be after the passing of this Act and thereafter as occasion arises appoint a fit person to the office of Controller of Industrial and Commercial Property, who shall hold office for such time and on such terms as the Executive Council shall appoint.

Controller to be a corporation and have official seal.

7.—(1) The Controller of Industrial and Commercial Property shall be a corporation sole under that name with perpetual succession and an official seal, and may sue and be sued by the name aforesaid.

Appointment of officers of controller.

8.—(1) The Minister shall appoint such persons to be officers of the controller, as, subject to the sanction of the Minister for Finance as to number, he may consider necessary for the purposes of this Act, and those officers shall hold office upon such terms and be remunerated at such rates and in such manner as the Minister for Finance may sanction.

Fees to be charged by controller.

9.—(1) There shall be charged by the controller and paid in respect of the grant of patents and the registration of designs, trade marks and artistic works, and applications therefor, and in respect of other matters in relation to patents, designs, trade marks and artistic works under this Act, such fees as may from time to time be prescribed by the Minister with the sanction of the Minister for Finance, so however that the fees prescribed in respect of the instruments and matters mentioned in the Second Schedule to this Act shall not exceed the fees respectively specified in that Schedule.

Controller to publish Official Journal and other documents.

10.—(1) The controller shall issue periodically an illustrated journal of patented inventions, registered designs, and registered trade marks to be called the Official Journal of Industrial and Commercial Property, and shall publish therein all such matters as are directed by this Act or otherwise by law to be published therein and such other matters and information as may appear to be useful or important to proprietors of patents, designs, trade marks, or copyright granted, registered, or subsisting in Saorstát Eireann.

PART II.—PATENTS.

Application for patent generally.

11.—(1) An application for a patent may be made by any person who claims to be the true and first inventor of an invention, whether he is or is not an alien, and whether alone or jointly with any other person.

Application for patent in certain cases.

12.—(1) Any person or the legal representative or assignce of any person who applied after the 6th day of December, 1921 and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann for a patent or protection in respect of an invention shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for a patent in respect of the same invention and shall be entitled to have such application under this Act dated and treated as having been made as of the date of the first-mentioned application for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date to be borne by any patent granted pursuant to the said application under this Act, and determining whether the invention had been previously published in Saorstát Eireann or in Great Britain.

Specifications of inventions.

13.—(1) A provisional specification must commence with the title of the invention and must describe the nature of the invention.

Proceedings upon application.

14.—(1) The controller shall refer every application for a patent to an examiner.

Provisional protection.

15.—Where an application for a patent in respect of an invention has been accepted, the invention may during the period between the date of the application and the date of sealing such patent be used and published without prejudice to the patent to be granted for the invention; and such protection from the consequences of use and publication is in this Act referred to as provisional protection.

Time for leaving complete specification.

16.—(1) If the applicant does not leave a complete specification with his application, he may leave it at any subsequent time within nine months from the date of the application: Provided that where an application is made for an extension of the time for leaving a complete specification, the controller shall, on payment of the prescribed fee, grant an extension of time to the extent applied for but not exceeding one month.

Comparison of provisional and complete specifications.

17.—(1) Where a complete specification is left after a provisional specification, the controller shall refer both specifications to an examiner.

Provided that where the complete specification includes an invention not included in the provisional specification, the controller may allow the original application to proceed so far as the invention included both in the provisional and in the complete specification is concerned, and allow an application for the additional invention included in the complete specification to be made and treated as an application for that invention made on the date at which the complete specification was left.

Time for acceptance of complete specification.

18.—(1) If a complete specification is not accepted within the period of fifteen months from the date of the application or, where that period is extended under this section, before the expiration of the last extension of such period the application shall at the expiration of such period or such extension thereof (as the case may be) become void.

Documents to accompany specifications.

19.—(1) Every provisional specification must be accompanied by a statement as to whether the applicant has or has not applied for a British patent for the invention described in that specification and, if he has not so applied, a further statement as to whether he does or does not intend so to apply.

Investigation of specifications published subsequent to application.

20.—(1) Where an application for a patent has been made and a complete specification has been left, the examiner shall, in addition to the other inquiries which he is directed to make by this Act, make a further investigation for the purpose of ascertaining whether the invention claimed in the specification has been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of the application, and left pursuant to any application for a patent made in Saorstát Eireann under this Act.

Provided that the controller, if satisfied that the invention claimed has been wholly and specifically claimed in any specification to which the investigation has extended, may, in lieu of requiring references to be made in the applicant specification as aforesaid, refuse to grant a patent.

Investigation of specifications published previous to application.

21.—(1) In addition to the investigation under the last preceding section, the examiner shall make an investigation for the purpose of ascertaining whether the invention claimed has been wholly or in part claimed in any specification published on or after the date of the application and deposited pursuant to a prior application.

Advertisement on acceptance of complete specification.

22.—On the acceptance of the complete specification the controller shall advertise the acceptance; and the application and specifications, with the drawings (if any), shall be open to public inspection.

Effect of acceptance of complete specification.

23.—After the acceptance of a complete specification and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the complete specification: Provided that an applicant shall not be entitled to institute any proceedings for infringement until a patent for the invention has been granted to him.

Opposition to grant of patent.

24.—(1) Any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the Office of opposition to the grant of the patent on any of the following grounds:— (a) that the applicant obtained the invention from the opponent, or from a person of whom he is the legal representative; or (b) that the invention was published in any complete specification, or in any provisional specification followed by a complete specification, deposited in the Patent Office in London pursuant to an application made in that Office within a period commencing fifty years before the date of the application for the patent the grant of which is being opposed and ending on the date of the commencement of this Part of this Act; or (c) that the invention was before the date of the application published in any complete specification, or in any provisional specification followed by a complete specification, deposited in the Office pursuant to an application made under this Act or has been made available to the public by publication before the date of the application in any document (other than any such specification as is mentioned in this clause or any British specification published before the commencement of this Part of this Act) published in Saorstát Eireann or published prior to the establishment of Saorstát Eireann in the late United Kingdom; or (d) that the invention has been claimed in any complete specification for a patent in Saorstát Eireann which though not published at the date of the application for the patent the grant of which is opposed was deposited pursuant to an application for a patent which is or will be of prior date to such patent; or (e) that the nature of the invention or the manner in which it is to be performed is not sufficiently or fairly described and ascertained in the complete specification; or (f) that the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification; or (g) that in the case of an application for a patent made under the provisions of sub-section (1) or sub-section (2) of section 12 (which relates to applications for patents in certain cases) of this Act, the invention claimed or described in the complete specification is not the same invention as the invention which was the subject of the application to the Minister for Economic Affairs of the late Provisional Government of Ireland or the Minister for Industry and Commerce of Saorstát Eireann or was the subject of the protection in the British dominion or foreign state (as the case may be); or

(h) that in the case of an application under the provisions of this Act relating to foreign and British dominion patents the specification describes or claims an invention other than that for which protection has been applied for in the foreign state or British dominion and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the application in the foreign state or British dominion and the leaving of the application in Saorstát Eireann; but on no other ground.

Grant and sealing of patent.

25.—(1) If there is no opposition, or, in case of opposition, if the determination is in favour of the grant of a patent, a patent shall, on payment of the prescribed fee, be granted to the applicant, or in the case of a joint application to the applicants jointly, and the controller shall cause the patent to be sealed with his official seal:

Provided that where— (a) an applicant has agreed in writing to assign a patent when granted to another party or a joint applicant and refuses to proceed with the application; or (b) disputes arise between joint applicants as to proceeding with an application; the controller on proof of such agreement to his satisfaction, or if satisfied that one or more of such joint applicants ought to be allowed to proceed alone, may allow such other party or joint applicant to proceed with the application, and may grant a patent to him, so however that all parties interested shall be entitled to be heard before the controller, and an appeal shall lie from the decision of the controller under this proviso to the law officer.

Abandoned or void application.

26.—Where an application for a patent has been abandoned, or become void, the specifications and drawings (if any) accompanying or left in connection with such application, shall not, save as otherwise expressly provided by this Act, at any time be open to public inspection or be published by the controller.

Date of patent.

27.—Except as otherwise expressly provided by this Act, a patent shall be dated and sealed as of the date of the application: Provided that no proceedings shall be taken in respect of an infringement committed before the acceptance of the complete specification.

Effect and form of patent.

28.—(1) Subject to the provisions of this Act every patent granted under this Act and sealed with the official seal of the controller shall operate and have effect and shall be expressed to operate and have effect— (a) to confer on the person to whom the same is granted his executors, administrators and assigns (in this sub-section collectively referred to as the grantee) the full, sole, and exclusive right, power and authority by himself, his agents or licensees at all times so long as the patent remains in force to make, use, exercise, and vend in Saorstát Eireann the invention in respect of which the patent is granted; (b) to confer on the grantee the sole right to have and enjoy the whole profit and advantage from time to time accruing by reason of the said invention during such period as the patent remains in force; (c) to prohibit all persons whatsoever in Saorstát Eireann while the patent remains in force from making use of or putting in practice the said invention or any part thereof, or in anywise imitating the same, or in anywise representing or pretending themselves to be the inventors of the said invention or of the said invention with any addition thereto or subtraction therefrom without the consent, licence or agreement of the grantee in writing under his hand and seal; (d) to make all persons who, while the patent remains in force, shall, in Saorstát Eireann, in anywise infringe any right, power, or authority expressed in the patent to be thereby conferred on the grantee or do any act, matter, or thing the doing of which is expressed in the patent to be thereby prohibited, answerable according to law to the grantee for such infringement or the doing of such act, matter, or thing.

Effect of existing British patents.

29.—(1) Every patent granted by the Patent Office in London before the commencement of this Part of this Act shall have and be deemed always to have had in Saorstát Eireann during the period between the 6th day of December, 1921, or the date of such patent (whichever is the later) and the commencement of this Part of this Act the same force and effect as such patent had during that period in Great Britain, but from and after the commencement of this Part of this Act every such patent shall (notwithstanding that it bears a date prior to the passing of this Act or to the commencement of this Part of this Act) be deemed to be a patent granted under this Act as of the date such patent actually bears and shall have immediately on the commencement of this Part of this Act the same force and effect in Saorstát Eireann as such patent had in Great Britain immediately before such commencement and shall thenceforth have and be subject to all privileges, liabilities and incidents conferred or imposed by this Act or otherwise by law on patents granted under this Act.

Fraudulent applications for patents.

30.—(1) A patent granted to the true and first inventor shall not be invalidated by an application in fraud of him, or by provisional protection obtained thereon, or by any use or publication of the invention subsequent to that fraudulent application during the period of provisional protection.

Provided that no action shall be brought for any infringement of the patent so granted committed before the actual date when such patent was granted.

Single patent for cognate inventions.

31.—(1) Where the same applicant has put in two or more provisional specifications for inventions which are cognate or modifications one of the other, and has obtained thereby concurrent provisional protection for the same, and the controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may accept one complete specification in respect of the whole of such applications and grant a single patent thereon.

Term of patent.

32.—The term limited in every patent for the duration thereof shall, save as otherwise expressly provided by this Act, be sixteen years from its date.

Effect of failure to pay fees.

33.—(1) A patent shall, notwithstanding anything therein or in this Act, cease if and whenever the patentee fails to pay a prescribed fee in relation thereto within the prescribed time or, where that time is extended under this section, within such extension of that time.

Extension of term of patent.

34.—(1) A patentee may, after advertising in manner provided by rules of the court his intention to do so, present a petition to the court praying that his patent may be extended for a further term, but such petition must be presented at least six months before the time limited for the expiration of the patent:

Provided that the court may in its discretion extend such period within which such a petition may be presented.

Patents of addition.

35.—(1) When a patent for an invention has been applied for or granted under this Act or a patent is by virtue of this Act deemed to be a patent granted under this Act, and the applicant or the patentee, as the case may be, applies for a further patent in respect of any improvement in or modification of the invention, he may, if he thinks fit, in his application for the further patent, request that the term limited in that patent for the duration thereof be the same as that ofthe original patent or so much of that term as is unexpired.

Provided that, if the patent for the original invention is revoked, then the patent of addition shall, if the court or controller so orders, become an independent patent, and the fees payable, and the dates when they become payable, shall be determined by its date, but its duration shall not exceed the unexpired term of the patent for the original invention.

Restoration of lapsed patents.

36.—(1) Where any patent has become void owing to the failure of the patentee to pay any prescribed fee within the prescribed time, the patentee may apply to the controller in the prescribed manner for an order for the restoration of the patent.

Amendment of specification by controller.

37.—(1) An applicant or a patentee may at any time, by request in writing left at the Office, seek leave to amend his specification, including drawings forming part thereof, by way of disclaimer, correction, or explanation, stating the nature of, and the reasons for, the proposed amendment.

Provided that a court shall be entitled in construing a specification as amended to refer to the specification as accepted and published.

Amendment of specification by the court.

38.—In any action for infringement of a patent or proceedings before a court for the revocation of a patent, the court may by order allow the patentee to amend his specification by way of disclaimer, correction, or explanation in such manner, and subject to such terms as to costs, advertisements, or otherwise, as the court may think fit:

Provided that no amendment shall be so allowed that would make the specification, as amended, describe an invention substantially larger than, or substantially different from, the invention described by the specification as it stood before the amendment, and where an application for such an order is made to the court notice of the application shall be given to the controller, and the controller shall have the right to appear and be heard, and shall appear if so directed by the court.

Restriction on damages where specification amended.

39.—Where an amendment of a specification by way of disclaimer, correction, or explanation, has been allowed under this Act, no damages shall be given in any action in respect of the use of the invention before the date of the decision allowing the amendment, unless the patentee establishes to the satisfaction of the court that his original description was framed in good faith and with reasonable skill and knowledge.

Provisions as to patents indorsed “licences of right.”

40.—(1) At any time after the sealing of a patent the controller shall, if the patentee so requests, cause the patent to be indorsed with the words “licences of right,” and a corresponding entry to be made in the register, and thereupon— (a) any person shall at any time thereafter be entitled as of right to a licence under the patent upon such terms as, in default of agreement, may be settled by the controller on the application of either the patentee or the applicant:

Provided that any licence the terms of which are settled by agreement shall be deemed, unless otherwise expressly provided, to include the terms and conditions specified in paragraphs (c) and (d) of this sub-section as if they had been imposed by the controller thereunder in like manner as if the terms had been settled by the controller; (b) in settling the terms of any such licence the controller shall be guided by the following considerations— (i) he shall, on the one hand, endeavour to secure the widest possible user of the invention in Saorstát Eireann consistent with the patentee deriving a reasonable advantage from his patent rights, (ii) he shall, on the other hand, endeavour to secure to the patentee the maximum advantage consistent with the invention being worked by the licensee at a reasonable profit in Saorstát Eireann, (iii) he shall also 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 patentee under any licence previously granted:

Provided that, in considering the question of equality of advantage, the controller shall take into account any work done or outlay incurred by any previous licensee with a view to testing the commercial value of the invention or to securing the working thereof on a commercial scale in Saorstát Eireann; (c) any such licence the terms of which are settled by the controller may be so framed as to preclude the licensee from importing into Saorstát Eireann any goods the importation of which, if made by persons other than the patentee or those claiming under him, would be an infringement of the patent, and in such a case the patentee and all licensees under the patent shall be deemed to have mutually covenanted against such importation; (d) every such licensee shall be entitled to call upon a patentee to take proceedings to prevent the infringement of the patent, and if the patentee refuses, or neglects to do so within two months after being so called upon, the licensee may institute proceedings for the infringement in his own name as though he were patentee, making the patentee a defendant. A patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings. Service on him may be effected by leaving the writ at his address for service given on the register; (e) if in any action for infringement of a patent so indorsed the infringing defendant is ready and willing to take a licence upon terms to be settled by the controller, no injunction against him shall be awarded, and the amount recoverable against him by way of damages (if any) shall not exceed double the amount which would have been recoverable against him as licensee if the licence had been dated prior to the earliest infringement:

Provided that this paragraph shall not apply wherethe infringement consists of the importation of infringing goods; (f) the renewal fees payable by the patentee of a patent so indorsed shall, as from the date of the indorsement, be one moiety only of the fees which would otherwise have been payable.

Provided that a patentee shall not be deemed to be so precluded by reason only of his having granted a licence under the patent where the licence does not limit his right to grant other licenees.

Any order under this sub-section shall be subject to appeal to the court.

Revocation of patents by court.

41.—(1) Revocation of a patent may be obtained on petition to the court.

Revocation of patents by controller.

42.—(1) Any person who would have been entitled to oppose the grant of a patent, or is the successor in interest of a person who was so entitled, may, within one year from the grant of the patent, apply to the controller for an order revoking the patent on any one or more of the grounds on which the grant of the patent might have been opposed:

Provided that when an action for infringement or proceedings for the revocation of the patent are pending in any court, an application under this section shall not be made except with the leave of the court.

Prevention of abuse of monopoly rights.

43.—(1) Any person interested may at any time apply to the controller alleging in the case of any patent that there has been an abuse of the monopoly rights thereunder and asking for relief under this section.

Provided that, if an application is presented to the controller on this ground, and the controller is of opinion that the time which has elapsed since the date of the patent has by reason of the nature of the invention or for any other cause been insufficient to enable the invention to be worked within Saorstát Eireann on a commercial scale, the controller may adjourn the application for such period as will in his opinion be sufficient for that purpose; (b) if the working of the invention within Saorstát Eireann on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by the patentee or persons claiming under him, or by persons directly or indirectly purchasing from him, or by other persons against whom the patentee is not taking or has not taken any proceedings for infringement; (c) if the demand for the patented article in Saorstát Eireann is not being met to an adequate extent and on reasonable terms, regard being had amongst other circumstances, to the potential demand that might be evoked if the patented article were sold at a lower price; (d) if the price at which the patented article is sold is, having regard to all the circumstances, unreasonably high in comparison with that at which the article is sold in other countries; (e) if, by reason of the refusal of the patentee to grant a licence or licences upon reasonable terms, the trade or industry of Saorstát Eireann or the trade of any person or class of persons trading in Saorstát Eireann, or the establishment of any new trade or industry in Saorstát Eireann is prejudiced, and it is in the public interest that a licence or licences should be granted; (f) if any trade or industry in Saorstát Eireann or any person or class of persons engaged therein, is unfairly prejudiced by the conditions attached by the patentee, whether before or after the passing of this Act, to the purchase, hire, licence, or use of the patented article, or to the using or working of the patented process:

Provided that, for the purpose of determining whether there has been any abuse of the monopoly rights under a patent, it shall be taken that patents for new inventions are granted not only to encourage invention but to secure that new inventions shall so far as possible be worked on a commercial scale in Saorstát Eireann without undue delay.

(d) if the controller is satisfied that the objects of this section cannot be attained by the exercise of any of the foregoing powers, he may order the patent to be revoked, either forthwith or after such reasonable interval as may be specified in the order, unless in the meantime such conditions as may be prescribed in the order with a view to attaining the objects of this section are fulfilled, and the controller may, on reasonable cause shown in any case, by subsequent order extend the interval so specified:

Provided that the controller shall make no order for revocation which is at variance with any treaty, convention, arrangement, or engagement with any foreign country or British dominion made by or binding on Saorstát Eireann; (e) if the controller is of opinion that the objects of this section will be best attained by making no order under the above provisions of this section, he may make an order refusing the application and dispose of any question as to costs thereon as he thinks just.

Operation of order for grant of licence.

44.—Any order for the grant of a licence under this Act shall, without prejudice to any other method of enforcement, operate as if it were embodied in a deed granting a licence executed by the patentee and all other necessary parties.

Register of patents.

45.—(1) There shall be kept at the Office a book called the register of patents, wherein shall be entered the names and addresses of grantees of patents granted under this Act, notifications of assignments and of transmissions of such patents, of licences under such patents, and of amendments, extensions, and revocations of such patents, and such other matters affecting the validity or proprietorship of such patents as may be prescribed.

Inventor or patentee may assign benefit to Minister.

46.—(1) Any inventor or patentee may (either for or without valuable consideration) assign to a Minister on behalf of the State all the benefit of an invention and of any patent obtained or to be obtained for the invention.

Inventions relating to instruments or munitions of war.

47.—(1) The inventor of any improvement in instruments or munitions of war may (either for or without valuable consideration) assign to the Minister for Defence on behalf of the State all the benefit of the invention and of any patent obtained or to be obtained for the invention.

Hearing with assessor.

48.—(1) In an action or proceeding for infringement or revocation of a patent, the court may, if it thinks fit, and shall, on the request of all parties to the proceedings, call in the aid of an assessor specially qualified, and try the case wholly or partially with his assistance, in which event the action shall be tried without a jury unless the court otherwise directs.

Counterclaim for revocation of patent.

49.—A defendant in an action for infringement of a patent, if entitled to present a petition to the court for the revocation of the patent, may, without presenting such a petition, apply in accordance with the rules of the court by way of counterclaim in the action for the revocation of the patent.

Power of court to grant relief in respect of particular claims.

50.—(1) Notwithstanding anything to the contrary appearing in section 39 (which relates to restriction on damages where specification amended) of this Act, if the court in any action for infringement of a patent finds that any one or more of the claims in the specification in respect of which infringement is alleged are valid, it shall, subject to its discretion as to costs and as to the date from which damages should be reckoned and subject to such terms as to amendment as it may deem desirable, grant relief in respect of any such claims which are infringed without regard to the invalidity of any other claim in the specification.

Exemption of innocent infringer from liability for damages.

51.—A patentee shall not be entitled to recover any damages in respect of any infringement of a patent from any defendant who proves that at the date of the infringement he was not aware, nor had reasonable means of making himself aware, of the existence of the patent, and the marking of an article with the word “patent,” “patented,” or any word or words expressing or implying that a patent has been obtained for the article, stamped, engraved, impressed on, or otherwise applied to the article, shall not be deemed to constitute notice of the existence of the patent unless the word or words are accompanied by the year and number of the patent:

Provided that nothing in this section shall affect any proceedings for an injunction.

Order for injunction or inspection.

52.—In an action for infringement of a patent, the plaintiff shall be entitled to relief by way of injunction and damages but not to an account of profits, but subject as aforesaid the court may on the application of either party make such order for an injunction or inspection, and impose such terms and give such directions respecting the same and the proceedings thereon as the court may see fit.

Grant of patent to two or more persons.

53.—Where a patent is granted to two or more persons jointly, they shall, unless otherwise specified in the patent, be treated for the purpose of the devolution of the legal interests therein as joint tenants, but, subject to any contract to the contrary, each of such persons shall be entitled to use the invention for his own profit without accounting to the others, but shall not be entitled to grant a licence without their consent, and, if any such person dies, his beneficial interest in the patent shall devolve on his personal representatives as part of his personal estate.

Avoidance of certain conditions attached to the sale, etc., of patented articles.

54.—(1) It shall not be lawful in any contract in relation to the sale or lease of, or licence to use or work, any article or process protected by a patent to insert a condition the effect of which will be— (a) to prohibit or restrict the purchaser, lessee, or licensee from using any article or class of articles, whether patented or not, or any patented process, supplied or owned by any person other than the seller, lessor, or licensor or his nominees; or (b) to require the purchaser, lessee, or licensee to acquire from the seller, lessor, licensor, or his nominees, any article or class of articles not protected by the patent; and any such condition shall be null and void, as being in restraint of trade and contrary to public policy:

Provided that this subsection shall not apply if— (i) the seller, lessor, or licensor proves that at the time the contract was entered into the purchaser, lessee, or licensee had the option of purchasing the article or obtaining a lease or licence on reasonable terms, without such conditions as aforesaid; and (ii) the contract entitles the purchaser, lessee, or licensee to relieve himself of his liability to observe any such condition on giving the other party three months notice in writing and on payment in compensation for such relief in the case of a purchase of such sum, or in the case of a lease or licence of such rent or royalty for the residue of the term of the contract, as may be fixed by an arbitrator appointed by the Minister.

Chemical products and substances intended for food or medicine.

55.—(1) In the case of inventions relating to substances prepared or produced by chemical processes or intended for food or medicine, the specification shall not include claims for the substance itself, except when prepared or produced by the methods or processes of manufacture described and claimed or by their obvious chemical equivalents: Provided that, in an action for infringement of a patent where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution shall in the absence of proof to the contrary be deemed to have been produced by the patented process.

Any decision of the controller under this sub-section shall be subject to appeal to the court.

Acts which do not amount to anticipation.

56.—(1) An invention covered by a patent granted or registered in Saorstát Eireann shall not be deemed to have been anticipated by reason of its publication in— (a) a specification left in the Patent Office in London pursuant to an application made in that Office not less than fifty years before the date of the application for the patent, or (b) a provisional specification left in the Patent Office in London before the commencement of this Part of this Act and not followed by a complete specification, or (c) a provisional specification left in the Office and not followed by a complete specification.

Provided that the protection afforded by this sub-section shall not extend to a patentee who has commercially worked his invention in Saorstát Eireann otherwise than for the purpose of reasonable trial of the invention prior to the application for the patent.

Discrepancies between provisional and complete specifications.

57.—A patent shall not be held to be invalid on the ground that the complete specification describes a further or different invention to that contained in the provisional specification if the invention therein described, so far as it is not contained in the provisional specification, was novel at the date when the complete specification was put in, and the applicant was the first and true inventor thereof.

Rights of representative of deceased inventor.

58.—(1) If the person claiming to be inventor of an invention dies without making an application for a patent for the invention, application may be made by, and a patent for the invention granted to, his legal representative.

Loss or destruction of patent.

59.—If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the controller, the controller may at any time seal a duplicate thereof.

Publication of invention at certain exhibitions.

60.—(1) The exhibition of an invention at an industrial or international exhibition, certified as such by the Minister, or the publication of any description of the invention during the period of the holding of the exhibition, or the use of the invention for the purpose of the exhibition in the place where the exhibition is held, or the use of the invention during the period of the holding of the exhibition by any person elsewhere, without the privity or consent of the inventor, or the reading of a paper by an inventor before a learned society or the publication of the paper in the society's transactions, shall not prejudice the right of the inventor to apply for and obtain a patent in respect of the invention or the validity of any patent granted on the application: Provided that— (a) the exhibitor, before exhibiting the invention, or the person reading such paper or permitting such publication, gives the controller the prescribed notice of his intention to do so; and (b) the application for a patent is made before or within six months from the date of the opening of the exhibition, or the reading or publication of such paper.

Use of invention on foreign vessel in home waters.

61.—(1) A patent shall not prevent the use of an invention for the purposes of the navigation of a foreign vessel within the area of jurisdiction of the Government of Saorstát Eireann, or the use of an invention in a foreign vessel within that area, provided it is not used therein for or in connection with the manufacture or preparation of anything intended to be sold in or exported from Saorstát Eireann.

Patent agents to be registered.

62.—(1) There shall be kept at the Office a book called the register of patent agents, and no person shall practice, describe himself, or hold himself out, or permit himself to be described or held out, as a patent agent, unless— (a) in the case of an individual, he is registered as a patent agent in the register of patent agents; (b) in the case of a firm, the firm and every partner of the firm is so registered; (c) in the case of a company, the company and every director and the manager (if any) of the company is so registered.

Management of register of patent agents.

63.—(1) Any person who— (a) resides or has a place of business in Saorstát Eireann, and (b) is not an alien, and (c) possesses the prescribed educational and professional qualifications, and (d) complies with the prescribed conditions, shall be eligible to be registered in the register of patent agents and shall on application in the prescribed form and manner and payment of the prescribed fee be so registered.

PART III.—DESIGNS.

Registration of designs generally.

64.—(1) The controller may (subject to the provisions of this section) on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not published in the late United Kingdom before the establishment of Saorstát Eireann and not previously published in Saorstát Eireann register such design under this Act.

Registration of designs in certain cases.

65.—(1) Any person or the legal representative or assignee of any person who applied after the 6th day of December, 1921, and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann for the registration of a design shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for the registration of the same design and shall be entitled to have such application under this Act dated and treated as having been made as of the date of the first-mentioned application for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date as of which the design is to be registered, and determining whether the design had been previously published in Saorstát Eireann.

Registration of designs registered in Patent Office in London.

66.—(1) The person who is for the time being registered in the Patent Office in London as the proprietor of a design which is registered in that Office at the commencement of this Part of this Act shall, on payment of the prescribed fee and furnishing to the controller for registration certified copies of such design and of the entries in the British register relating thereto, be entitled at any time within six months after the commencement of this Part of this Act to have such design registered under this Act in the register of designs in the Office in the same classes and subject to the same notices and other matters as such design is registered in and subject to in the Patent Office in London at the date of the application for registration under this Act.

Registration of designs in new classes.

67.—Where a design has been registered in one or more classes of goods the application of the proprietor of the design to register it in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated— (a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or