Patents Act, 1992

Patents Act, 1992 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 1992 Patents Act, 1992 Patents Act, 1992 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 Print Full ActPriontáil an tAcht Iomlán Number 1 of 1992 PATENTS ACT, 1992 ARRANGEMENT OF SECTIONS PART I Preliminary and General Section 1. Short title and commencement. 2. Interpretation. 3. Orders and rules. 4. Expenses. 5. Repeals and transitional provisions. PART II Patents Generally CHAPTER I The Patents Office and the Controller 6. The Patents Office and the Controller of Patents, Designs and Trade Marks. 7. Grant of patents. 8. Extent of application of Part II. CHAPTER II Patentability 9. Patentable inventions. 10. Exceptions to patentability. 11. Novelty. 12. Non-prejudicial disclosures. 13. Inventive step. 14. Industrial application. CHAPTER III Applications 15. Right to apply for patent. 16. Right to patent. 17. Mention of inventor. 18. Making of application. 19. Disclosure of invention. 20. Claims. 21. Unity of invention. 22. Abstract. 23. Date of filing application. 24. Divisional application. 25. Priority right. 26. Claiming priority. 27. Effect of priority right. 28. Publication of application. CHAPTER IV Procedure up to Grant 29. Search report. 30. Use of foreign specification or search report. 31. Refusal or grant of patent. 32. Amendment of application. 33. Withdrawal of application. 34. Notification of grant; publication of specification. 35. Continuation in force of applications. CHAPTER V Provisions as to Patents after Grant 36. Term of patent. 37. Restoration of lapsed patents. 38. Amendment after grant. 39. Surrender of patent. CHAPTER VI The Effects of a Patent and a Patent Application 40. Prevention of direct use of invention. 41. Prevention of indirect use of invention. 42. Limitation of effect of patent. 43. Limitation of rights. 44. Rights conferred by patent application after publication. 45. Extent of protection. 46. Burden of proof. CHAPTER VII Infringement 47. Action for infringement of patent. 48. Proceedings for infringement by co-owner. 49. Restrictions on recovery of damages for infringement. 50. Relief for infringement of partially valid patent. 51. Proceedings for infringement by exclusive licensee. 52. Certificate of contested validity of patent. 53. Remedy for groundless threats of infringement proceedings. 54. Power of Court to make declaration as to non-infringement. 55. Right to continue use begun before date of filing or priority. 56. Action for infringement of published application. CHAPTER VIII Revocation 57. Application for revocation of patent. 58. Grounds for revocation. 59. Examination of application for revocation. 60. Controller's power to revoke patents on his own initiative. 61. Circumstances in which validity of patent may be put in issue. 62. Controller to be given notice of Court proceedings. PART III Short-Term Patents 63. Application for short-term patent. 64. Patent under Part II and a short-term patent not to co-exist for same invention. 65. Provisions relating to short-term patents and applications therefor. 66. Actions for infringement. 67. Special ground for revocation of short-term patent. PART IV Voluntary and Compulsory Licences 68. Application for entry in register that licences of right are available. 69. Cancellation of entry. 70. Compulsory licences. 71. Provisions as to compulsory licences. 72. Licences, etc. on application of Minister of Government. 73. Procedure on applications under sections 70 and 72. 74. Appeals and references to arbitrator. 75. Supplementary provisions as to licences. PART V Use of Inventions for the Service of the State 76. Assignment of invention, application, or patent to Minister of Government. 77. Right to use inventions for service of State. 78. Use of inventions pursuant to section 77; supplementary provisions. PART VI Property in Patent Applications and Patents Contract Conditions 79. Nature of patent applications and patents. 80. Co-ownership of patent applications and patents. 81. Determination of entitlement to patents, etc. 82. Effect of change of proprietorship. 83. Avoidance of certain conditions in contracts. PART VII Register of Patents; Evidence of Register, Documents, etc. 84. Register of patents. 85. Assignment, etc. of patent applications and patents. 86. Power of Court to amend register. 87. Certificate of Controller and certified copies of documents to be evidence. 88. Information about and inspection of patent applications and patents. 89. Request for search. PART VIII Proceedings Before the Controller or the Court 90. Exercise of discretionary power by Controller. 91. Costs and security for costs. 92. Evidence before Controller. 93. Right of audience before Controller. 94. Privileged communications. 95. Assessors. 96. Appeals from decisions of Controller. PART IX The Controller: Supplementary Provisions 97. Appointment of Controller. 98. Appointment of officers of Controller. 99. Fees. 100. Official Journal and publication of information. 101. Certain reports to be privileged. 102. Controller may apply to Attorney General for advice. 103. Annual report. 104. Hours of business and excluded days. PART X Patent Agents 105. Authorized agent may act. 106. Unauthorized claim to be patent agent. 107. Entitlement to be registered as patent agent. 108. Removal from register or suspension of registration of patent agents. 109. Rules relating to patent agents. PART XI Miscellaneous 110. Correction of errors. 111. Falsification of register, etc. 112. Unauthorized claim of patent rights. 113. False suggestion of official connection with Office. 114. Power of Minister to make rules. 115. Service of notice, etc. by post. 116. Articles forfeited under law. 117. Extent of territorial protection. 118. Immunity of Minister, Controller and officers as regards official acts. PART XII Provisions Regarding International Conventions 119. Effect of European patent. 120. Effect of filing application for European patent. 121. Authentic text of European patents and patent applications. 122. Conversion of European patent application. 123. Determination by Court of questions as to right to European patent. 124. Effect of patent decisions of competent authorities of other states. 125. Patent agents and other representatives. 126. European patent attorneys. 127. International applications for patents. 128. Orders to give effect to international agreements relating to patents. 129. Evidence of conventions and instruments under conventions. 130. Obtaining evidence for proceedings under European Patent Convention. 131. Communication of information to European Patent Office, etc. 132. Financial provisions. FIRST SCHEDULE Transitional Provisions SECOND SCHEDULE Directions referred to in section 45 (3) Acts Referred to Arbitration Act, 1954 1954, No. 26 Companies Act, 1963 1963, No. 33 Continental Shelf Act, 1968 1968, No. 14 Foreign Tribunals' Evidence Act, 1856 1856, c. 113 Industrial and Commercial Property (Protection) Act, 1927 1927, No. 16 Local Government Act, 1941 1941, No. 23 Maritime Jurisdiction Act, 1959 1959, No. 22 Patents Act, 1964 1964, No. 12 Patents (Amendment) Act, 1966 1966, No. 9 Petty Sessions (Ireland) Act, 1851 1851, c. 93 Public Offices Fees Act, 1879 1879, c. 58 Solicitors Act, 1954 1954, No. 36 Superannuation and Pensions Act, 1976 1976, No. 22 Number 1 of 1992 PATENTS ACT, 1992 AN ACT TO MAKE NEW PROVISION IN RESPECT OF PATENTS AND RELATED MATTERS IN SUBSTITUTION FOR THE PROVISIONS OF THE PATENTS ACTS, 1964 AND 1966; TO ENABLE EFFECT TO BE GIVEN TO CERTAIN INTERNATIONAL CONVENTIONS ON PATENTS; AND TO PROVIDE FOR OTHER MATTERS CONNECTED WITH THE MATTERS AFORESAID. [27th February, 1992] BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS: PART I Preliminary and General Short title and commencement. 1.—(1) This Act may be cited as the Patents Act, 1992. (2) Except as otherwise provided, this Act shall come into operation on such day as the Minister may by order appoint. Interpretation. 2.—(1) In this Act, except where the context otherwise requires— “the Act of 1964” means the Patents Act, 1964 ; “applicant”, in relation to an application under this Act, means the person making the application and includes a person whose title has been registered under section 85 or in relation to whose title a direction has been given under that section and the personal representative of a deceased person by whom such an application is made; “application for a European patent” means an application made under the European Patent Convention; “assignee” includes the personal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the personal representative or assignee of that person; “commercially worked” means the manufacture of the product or the carrying on of the process which is the subject of 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; “company” means a company within the meaning of section 2 of the Companies Act, 1963 , or any other body corporate whether incorporated inside or outside the State; “the Controller” means the Controller of Patents, Designs and Trade Marks; “Convention on International Civil Aviation” means the Convention on International Civil Aviation signed at Chicago on the 7th day of December, 1944; “the Court” means the High Court and, in relation to proceedings to which section 66 applies, includes the Circuit Court; “date of filing” means— (a) in relation to an application for a patent made under this Act, the date which is the date of filing of the application by virtue of the relevant provision of this Act, and (b) in relation to any other application, the date which, under the law of the country where the application is made or in accordance with the terms of a treaty or convention to which the country is a party, is to be treated as the date of filing the application or is equivalent to the date of filing an application in that country; “date of priority” means the earliest date which has been claimed for priority purposes in accordance with section 26 ; “designate” means— (i) in relation to an application for a patent, designate (in pursuance of the European Patent Convention or the Treaty, as the case may be) the state or states in which protection is sought for an invention, (ii) in relation to a patent, designate (in pursuance of the European Patent Convention) the state or states in which the patent has effect; “director” includes any person occupying the position of director (by whatever name called) of any body corporate; “divisional application” has the meaning assigned to it by section 24 ; “the European list” means the list of professional representatives maintained by the European Patent Office in pursuance of the European Patent Convention; “European patent” means a patent granted under the European Patent Convention; “European Patent Bulletin” means the bulletin of that name published under the European Patent Convention; “European Patent Convention” means the Convention on the Grant of European Patents signed at Munich on the 5th day of October, 1973; “European Patent Office” means the office of that name established by the European Patent Convention; “exclusive licence” means a licence from a proprietor of or applicant for a patent which confers on the licensee or on the licensee and persons authorized by him, to the exclusion of all other persons (including the proprietor of or applicant for the patent), any right in respect of the invention and “exclusive licensee” and “non-exclusive licence” shall each be construed accordingly; “functions” includes powers and duties; “international application for a patent” means an application made under the Treaty; “inventor” means the actual deviser of an invention and “joint inventor” shall be construed accordingly; “the Journal” means the Patents Office Journal; “the Minister” means the Minister for Industry and Commerce; “the Office” means the Patents Office; “the Paris Convention for the Protection of Industrial Property” means the convention of that name signed at Paris on the 20th day of March, 1883, as amended or supplemented by any protocol to that convention which is for the time being in force in the State; “patent” means an exclusive right conferred pursuant to Part II or Part III ; “patent agent” except in section 94 has the meaning assigned to it by section 105 ; “patent application” means an application under Part II or Part III for a patent; “prescribed” means, in the case of proceedings before the Court, prescribed by rules of court, and, in any other case, prescribed by rules made under this Act; “proprietor of the patent” means the person to whom the patent was granted or the person whose title is subsequently registered under section 85 ; “published”— (a) in relation to any document which is required to be published under this Act, means made available to the public and includes the making available for inspection of the document as of right, at the Office and such other place (if any) as may be for the time being specified for the purpose by the Minister, by the public, whether on payment of a fee or not, and (b) in relation to any other document, matter, record or information which the Controller is authorized to publish means made available to the public and includes the making available of the document, matter, record or information in any form at the Office and such other place (if any) as may be for the time being specified for the purpose by the Minister, whether on payment of a fee or not; “the register” means the Register of Patents or the register of patent agents, as may be appropriate; “right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference in this Act to a right in a patent includes a reference to a share in the patent; “the Treaty” means the treaty known as the Patent Co-operation Treaty signed at Washington on the 19th day of June, 1970; “Union of Paris for the Protection of Industrial Property” means the union established by the Paris Convention for the Protection of Industrial Property. (2) In this Act, unless otherwise indicated— (a) a reference to a Part, section or Schedule is to a Part, section or Schedule of this Act, (b) a reference to a subsection is a reference to a subsection of the section in which the reference occurs. Orders and rules. 3.—(1) Where a power to make orders or rules is conferred by this Act, such orders or rules may be made either as respects all, or as respects any one or more, of the matters to which the power relates, and different provisions may be made by any such orders or rules as respects matters which are of different classes or descriptions. (2) Every order or rule made under this Act shall be laid before each House of the Oireachtas as soon as may be after it is made and if a resolution annulling the order or rule is passed by either such House within the next twenty-one days on which the House has sat after the order or rule is laid before it, the order or rule shall be annulled accordingly, but without prejudice to the validity of anything previously done thereunder. (3) As soon as may be after any order or rule is made under this Act notice of the making thereof, and of the place where copies thereof may be obtained, shall be published in the Journal. (4) The power to make an order includes power to amend or revoke the order, except in the case of an order under section 1 (2). Expenses. 4.—The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas. Repeals and transitional provisions. 5.—The Act of 1964 and the Patents (Amendment) Act, 1966 , are hereby repealed, subject to the provisions of the First Schedule . PART II Patents Generally CHAPTER I The Patents Office and the Controller The Patents Office and the Controller of Patents, Designs and Trade Marks. 6.—(1) The Patents Office and the Controller of Patents, Designs and Trade Marks shall continue in being for the purposes provided for by this Act or any other enactment. (2) The Controller of Patents, Designs and Trade Marks shall continue as a corporation sole with perpetual succession and an official seal which shall be judicially noticed and may sue and be sued by that name. (3) The Patents Office shall be under the control of the Controller who shall be independent in the discharge of the functions conferred on him by this Act or any other enactment. (4) References in any enactment to the Industrial and Commercial Property Registration Office and to the Controller of Industrial and Commercial Property shall continue to be construed respectively as references to the Patents Office and the Controller. Grant of patents. 7.—Patents shall be granted by the Controller subject to and in accordance with the provisions of this Act. Extent of application of Part II . 8.—The subsequent provisions of this Part shall, in relation to short-term patents to which Part III applies, have effect subject to the provisions of that Part. CHAPTER II Patentability Patentable inventions. 9.—(1) An invention shall be patentable under this Part if it is susceptible of industrial application, is new and involves an inventive step. (2) Any of the following in particular shall not be regarded as an invention within the meaning of subsection (1): (a) a discovery, a scientific theory or a mathematical method, (b) an aesthetic creation, (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer, (d) the presentation of information. (3) The provisions of subsection (2) shall exclude patentability of subject-matter or activities referred to in that subsection only to the extent to which a patent application or patent relates to such subject-matter or activities as such. (4) 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 shall not be regarded as an invention susceptible of industrial application for the purposes of subsection (1). This provision shall not apply to a product, and in particular a substance or composition, for use in any such method. (5) The Minister may by order modify any of the provisions of this section or of section 10 (other than paragraph (a)) or section 11 for the purpose of giving effect, in relation to the patentability of inventions, to the European Patent Convention as amended by any international treaty, convention or agreement to which the State is or proposes to become a party. Exceptions to patentability. 10.—A patent shall not be granted in respect of— (a) an invention the publication or exploitation of which would be contrary to public order or morality, provided that the exploitation shall not be deemed to be so contrary only because it is prohibited by law; (b) a plant or animal variety or an essentially biological process for the production of plants or animals other than a microbiological process or the products thereof. Novelty. 11.—(1) An invention shall be considered to be new if it does not form part of the state of the art. (2) The state of the art shall be held to comprise everything made available to the public (whether in the State or elsewhere) by means of a written or oral description, by use, or in any other way, before the date of filing of the patent application. (3) Additionally, the content of a patent application as filed, of which the date of filing is prior to the date referred to in subsection (2)and which was published under this Act on or after that date, shall be considered as comprised in the state of the art. (4) The provisions of subsections (1), (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 subsection (4) of section 9 provided that its use for any method referred to in the said subsection (4) is not comprised in the state of the art. Non-prejudicial disclosures. 12.—(1) For the application of section 11 a disclosure of the invention shall not be taken into consideration if it occurred not earlier than six months preceding the filing of the patent application and if it was due to, or in consequence of— (a) a breach of confidence or agreement in relation to, or the unlawful obtaining of the matter constituting, the invention, or (b) the fact that the applicant or his legal predecessor has displayed the invention at an international exhibition which is either official or officially recognised under the Convention on International Exhibitions signed at Paris on the 22nd day of November, 1928, or any subsequent treaty, convention or other agreement replacing that Convention: Provided that the exhibitor states, when making the patent application, that the invention has been so displayed and files a supporting certificate within the period and under the conditions prescribed. (2) The Minister may for the purpose of subsection (1) prescribe a period other than the six months specified in that subsection and circumstances other than those specified in paragraph (a) or (b) of that subsection where the Minister is satisfied that it is necessary to do so in order to give effect to any treaty or international convention to which the State is or becomes a party and the said subsection shall be construed accordingly. (3) Where a statement appears in the Journal stating that an international exhibition specified in the statement is or was an international exhibition of the class referred to in subsection (1), then for the purposes of this section the statement shall be evidence that the international exhibition specified therein is or was an international exhibition of such class. Inventive step. 13.—An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art, but if the state of the art also includes documents within the meaning of section 11 (3) those documents shall not be considered in deciding whether or not there has been an inventive step. Industrial application. 14.—An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture. CHAPTER III Applications Right to apply for patent. 15.—Any person may make an application for a patent either alone or jointly with another. Right to patent. 16.—(1) The right to a patent shall belong to the inventor or his successor in title, but if the inventor is an employee the right to a patent shall be determined in accordance with the law of the state in which the employee is wholly or mainly employed or, if the identity of such state cannot be determined, in accordance with the law of the state in which the employer has his place of business to which the employee is attached. (2) If two or more persons have made an invention independently of each other, the right to a patent for the invention shall belong to the person whose patent application has the earliest or earlier (as may be appropriate) date of filing, but this provision shall apply only if the earliest or earlier application has been duly published under this Act. (3) For the purposes of proceedings before the Controller the applicant shall be deemed to be entitled to exercise the right to the patent. Mention of inventor. 17.—(1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any specification of a patent granted for the invention and shall also have a right to be so mentioned, if practicable, in any published patent application for the invention. (2) Unless he has already given the Controller the information hereinafter mentioned, an applicant shall within the prescribed period file with the Controller a statement— (a) identifying the person or persons whom he believes to be the inventor or inventors, and (b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent, and if he fails to do so, the application shall be deemed to be withdrawn. (3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time request the Controller to make a finding to that effect; and if the Controller does so, he shall accordingly amend the register and any undistributed copies both of the published patent application and of the specification of the granted patent. Making of application. 18.—(1) Every application for a patent under this Part shall be filed at the Office in the prescribed manner and be in the prescribed form. (2) A patent application shall contain— (a) a request for the grant of a patent; (b) a specification containing a description of the invention to which the application relates, one or more claims and any drawing referred to in the description or the claim or claims; and (c) an abstract. (3) Every application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which such fee may be paid. Disclosure of invention. 19.—(1) A patent application shall disclose the invention to which it relates in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. (2) Without prejudice to the generality of subsection (1), rules may prescribe the circumstances in which an application for a patent for an invention which requires for its performance the use of a micro-organism is to be treated for the purposes of this Act as complying with that subsection and may specify other provisions, in relation to such applications. Claims. 20.—The claim or claims shall define the matter for which protection is sought, be clear and concise and be supported by the description. Unity of invention. 21.—(1) A patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. (2) Without prejudice to the generality of subsection (1), rules may provide for treating two or more inventions as being so linked as to form a single general inventive concept for the purpose of this Act. Abstract. 22.—(1) The abstract shall only serve for use as technical information; it may not be taken into account for any other purpose and in particular it may be used neither for the purpose of interpreting the scope of the protection sought nor for the purpose of applying section 11 (3). (2) The Controller may determine whether the abstract adequately fulfils its purpose and if, in his opinion, it does not, he may reframe it so that it does. Date of filing application. 23.—(1) The date of filing of a patent application shall 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; and (c) a description of the invention even though the description does not comply with the requirements of this Act or with any requirements that may be prescribed. (2) If the Minister prescribes a later date for payment of the filing fee under section 18 (3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in that subsection are filed. (3) If any drawing referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and— (a) if the applicant makes any such request, the date of filing the drawing shall be so treated; (b) if the request is not made, any reference to the drawing in the application shall be deemed to be deleted. (4) If any drawing referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing within the prescribed period, and— (a) if the drawing is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application; (b) if the drawing is not so filed, any reference to the drawing in the application shall be deemed to be deleted. (5) If in the case of an application which has a date of filing by virtue of the foregoing provisions of this section, or is deemed to have a date of filing accorded to it by virtue of section 24 or 81 , one or more claims or the abstract has not been filed within the relevant prescribed period, the application shall be deemed to have been withdrawn at the end of that period. Divisional application. 24.—A patent application (a “divisional application”) which— (a) is in respect of subject-matter which does not extend beyond the content of an earlier application as filed, and (b) complies with the relevant requirements (including procedure and time limits) specified in the rules, shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority. Priority right. 25.—(1) A person who has duly filed in or for the State, or in or for any other state party to the Paris Convention for the Protection of Industrial Property, an application for a patent or for the registration of a utility model or for a utility certificate or for an inventor's certificate, or his successors in title, shall enjoy, for the purpose of filing a subsequent patent application under this Act in respect of the same invention, a right of priority during such period as may be prescribed, subject to compliance with any prescribed conditions and the payment of any prescribed fee. (2) Every filing that is equivalent to a regular national filing under the national law of the state where it was made (including the State), or under bilateral or multilateral agreements, shall be recognised as giving rise to a right of priority. (3) In this section “a regular national filing” means any filing that establishes the date on which the application was filed, whatever may be the outcome of the application. (4) (a) A subsequent application for the same subject-matter as a previous first application and filed in or in respect of the same state (including the State) shall be considered as the first application for the purposes of determining priority if, and only if, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without having been open to public inspection and without having left any rights outstanding, and has not served as a basis for claiming right of priority. (b) Where, pursuant to this subsection, a subsequent application is considered as a first application, the first application may not thereafter serve as a basis for claiming a right of priority. (5) If the first filing has been made in a state which is not a party to the Paris Convention for the Protection of Industrial Property subsections (1) to (4) shall apply if the Government makes an order to that effect under this subsection consequent upon bilateral or multilateral agreements under which the State grants on the basis of a first filing made in or for that state and subject to conditions equivalent to those laid down in the said convention, a right of priority having equivalent effect. Claiming priority. 26.—(1) An applicant desiring to take advantage of the priority of a previous application shall file, in the prescribed manner and within the prescribed period, a declaration of priority. Rules made under this Act may require the filing of a copy of the previous application and, if the language of the latter is a foreign language, a translation in English. (2) Multiple priorities may be claimed in respect of a patent application, notwithstanding the fact that they originated in different states, and, where appropriate, multiple priorities may be claimed for any one claim, and where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority. (3) If one or more priorities are claimed in respeet of a patent application, the right of priority shall cover only those elements of the patent application which are included in the application or applications whose priority is claimed. (4) If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted if the documents of the previous application as a whole specifically disclosed such elements. Effect of priority right. 27.—(1) The right of priority shall have the following effect, namely, the date of priority shall be regarded as being the date of filing of the patent application for the purposes of subsections (2) and (3) of section 11 and section 16 (2). (2) Where a patent application is filed and the priority of a previous application is claimed under section 26 , then, notwithstanding anything contained in this Act, the patent application and any patent granted in pursuance of it shall not be invalidated by reason only of the fact that any subject-matter disclosed in the previous application was made available to the public at any time after the date of filing of the previous application. Publication of application. 28.—(1) A patent application shall be published in the prescribed manner as soon as practicable after the expiry of the period of eighteen months beginning on the date of filing, or, if priority has been claimed, beginning on the date of priority; provided that at the request of the applicant the application may be published before the expiry of the period aforesaid. (2) Subject to subsection (3), a patent application shall not be published if, before the termination of the technical preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn. (3) A patent application which forms the basis for a divisional application under section 24 shall be published with its divisional application unless it has already been published under subsection (1). (4) The Controller shall advertise the date of publication of a patent application in the Journal. (5) The Controller may cause to be omitted from the published patent application— (a) statements or other matter contrary to public order or morality; (b) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person; provided that mere comparisons with the prior art shall not be considered disparaging per se. CHAPTER IV Procedure up to Grant Search report. 29.—(1) If a patent application under this Part has a date of filing, includes one or more claims and is not withdrawn or deemed to be withdrawn the Controller shall, on the request of the applicant made within the prescribed time, accompanied by the prescribed fee (“the search fee”) cause a search to be undertaken in relation to the invention and a report (a “search report”) of the results of the search to be prepared. The rules may specify by whom the search report shall be prepared and the scope thereof. (2) If it appears, in the course of the search, that an application discloses more than one invention the search shall be conducted in relation only to the first invention specified in the claims. A search may however be conducted in relation to the additional invention, or inventions, if the applicant, within the time allowed by the Controller, submits a request to that effect accompanied by the search fee. (3) The Controller shall send a copy of the search report to the applicant and, unless the application is withdrawn within a prescribed period, shall publish it. (4) If the application is not withdrawn, the Controller shall allow the applicant an opportunity to amend the application in the light of the search report or reports. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary, the application may be refused by the Controller. In the case of an application to which subsection (2) applies, such application shall be amended so as to confine it to one invention only. Use of foreign specification or search report. 30.—(1) In lieu of making the request provided for in section 29 (1), an applicant for a patent under this Part may, within the time prescribed for the purpose of section 29 (1), submit a statement to the Controller that an application for a patent for the same invention has been made in a prescribed foreign state or under the provisions of any prescribed convention or treaty and where such a statement is submitted the applicant shall submit, within the prescribed period, such evidence as may be prescribed of either— (a) the results of the search carried out on the said application, or (b) the grant of a patent in pursuance of the said application. (2) The applicant shall, if so required by the Controller, also furnish to the Controller within the prescribed time such information as may be prescribed with regard to the filing of foreign applications for protection of the invention for which a patent is sought. (3) The evidence submitted under subsection (1) shall be accompanied by the prescribed fee. Unless the application is subsequently withdrawn within a prescribed period the evidence shall be published by the Controller. (4) Where the evidence submitted is that referred to in subsection (1) (a) the Controller shall, unless the application is withdrawn, allow the applicant an opportunity to amend the application in the light of that evidence. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary, the application may be refused by the Controller. (5) Where the evidence submitted is that referred to in subsection (1) (b) the Controller shall, unless the application is withdrawn, allow the applicant an opportunity to amend the application in the light of that evidence. The applicant shall in particular submit such amendments as are required to the specification so that the subject-matter claimed therein does not extend beyond that of the evidence. Any amendments shall be submitted within the prescribed period. If the applicant fails, before the expiry of the prescribed period, either to submit amendments to the application or a statement that no amendment is considered necessary the application may be refused by the Controller. (6) Any amendment or statement submitted in pursuance of subsections (4) and (5) or section 29 (4) shall, where a duly authorized patent agent acts on behalf of the applicant, be submitted by such agent. Refusal or grant of patent. 31.—(1) If it appears to the Controller that an application does not comply with a requirement of this Act or the rules made thereunder, (other than the requirements of sections 9 (1), 11 , 13 , 14 , 19 and 20 ) the Controller shall so inform the applicant and if the applicant, within the time specified by the Controller, fails to satisfy the Controller that the said requirement is complied with or to amend the application so as to comply therewith the Controller may, subject to section 90 , refuse the application. (2) Nothing in subsection (1) shall preclude the Controller from refusing, or requiring amendment of, a patent application by reference to any requirement of a section mentioned in that subsection which may be specified in rules. (3) A patent shall not be granted by the Controller until he has requested the applicant to pay the prescribed fee for the grant of a patent and the applicant has paid the said fee within the prescribed time. If the said fee is not so paid, the application shall be deemed to be withdrawn. (4) The grant of a patent shall be notified to the applicant in the prescribed form. (5) Where two or more patent applications for the same invention having the same date of filing or the same date of priority are filed by the same applicant or his successor in title, the Controller may on that ground refuse to grant a patent in respect of more than one of the applications. Amendment of application. 32.—(1) At any time before a patent is granted under this Act an applicant may, in accordance with the prescribed conditions, amend the application of his own volition. (2) Any amendment made under this section or under section 29 , 30 or 31 shall be invalid to the extent that it extends the subject matter disclosed in the application as filed. (3) The Controller may refuse an amendment under this section if, in his opinion, it ought properly to have been submitted under the provisions of section 29 or 30 . (4) Where an amendment of an application under this section or under section 29 , 30 or 31 involves alterations to the specification or any drawing the applicant shall, if requested to do so, file a fresh specification or drawing, as the case may require, within the time specified by the Controller. Withdrawal of application. 33.—(1) At any time before a patent is granted under this Act the applicant may withdraw in writing his application and any such 55 withdrawal may not be revoked. (2) Where a patent application is withdrawn under this section, or is deemed under this Act to have been withdrawn, or is refused under any provision of this Act, the following provisions shall apply: (a) if the application has been published under section 28 , the provisions of section 11 (3) shall continue to apply as regards the application; (b) the applicant shall continue to enjoy the right of priority under section 25 which he enjoyed immediately before such withdrawal or refusal; (c) no other right may be claimed under this Act in relation to the application. Notification of grant; publication of specification. 34.—(1) The Controller shall as soon as practicable after a patent has been granted publish a notice of the grant in the Journal. (2) At the same time as the publication of the notice of a grant, the Controller shall publish a specification of the patent containing the description and claims, and drawings (if any), and also such matters and information as appear to him to be useful or important. Continuation in force of applications. 35.—(1) A pending application shall lapse at the end of the period prescribed for the payment of any renewal fee if the fee is not paid within that period or within that period as extended under this section. (2) The period prescribed for payment of any renewal fee shall be extended by such period, not being a period of more than six months, as may be specified in a request made in that behalf by the applicant to the Controller if the request is made and the prescribed additional fee paid before the expiration of the period of extension so specified. (3) The provisions of section 37 shall apply to an application to which this section relates as if the references in that section to a patent and the proprietor of a patent were references to a patent application and the applicant for a patent, respectively. CHAPTER V Provisions as to Patents after Grant Term of patent. 36.—(1) A patent shall take effect on the date on which notice of its grant is published in the Journal and, subject to subsection (2), shall continue in force until the end of the period of twenty years beginning with the date of filing of the patent application. (2) A patent shall lapse at the end of the period prescribed for payment of any renewal fee if the fee is not paid within that period or within that period as extended under this section. (3) The period prescribed for payment of any renewal fee shall be extended by such period, not being a period of more than six months, as may be specified in a request made in that behalf by or on behalf of the proprietor of the patent to the Controller if the request is made and the prescribed additional fee paid before the expiration of the period of extension so specified. (4) The Minister may by order alter the period for which a patent shall remain in force for the purpose of giving effect to a provision of any international treaty, convention or agreement relating to the term of protection of a patent to which the State is or proposes to become a party. Restoration of lapsed patents. 37.—(1) Where a patent has lapsed by reason of a failure to pay any renewal fee within the prescribed period or within that period as extended under section 36 (3), an application may be made to the Controller, within two years from the date on which the patent lapsed, for the restoration of the patent. (2) An application under this section may be made by the person who was the proprietor of the patent or by his personal representative, and where the patent was held by two or more persons jointly, the application may, with the leave of the Controller, be made by one or more of them without joining the others. (3) An application under this section shall contain a statement (to be verified in such manner as may be prescribed) fully setting out the circumstances which led to the failure to pay the renewal fee, and the Controller may require from the applicant such further evidence as he may think necessary. (4) If the Controller is satisfied that the failure to pay the renewal fee was prima facie unintentional, that reasonable care had been taken to ensure payment of the fee within the prescribed period and that there has not been undue delay in the making of the application, he shall advertise the application in the Journal, and within the prescribed period any person may give notice to the Controller of opposition thereto. (5) If notice of opposition is duly given under this section, the Controller shall notify the applicant and shall determine the question. (6) If the Controller decides to allow an application under this section for restoration, he shall upon payment of any unpaid renewal fee and of such additional fee as may be prescribed, make a restoration order in accordance with the application. (7) An order under this section for the restoration of a patent— (a) 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 (b) shall be subject to such provisions as are prescribed for the protection of persons who, during the period beginning on the date on which the patent lapsed and ending on the date of the order under this section, may have begun to avail themselves of the invention which is the subject of the patent, 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. Amendment after grant. 38.—(1) Subject to the following provisions of this section, the Controller may, on an application made in the prescribed manner by the proprietor of a patent, allow the specification of the patent to be amended, subject to such terms as to advertising the proposed amendment and such other conditions, if any, as he thinks fit; provided that no such amendment shall be allowed where there are pending before the Court or the Controller proceedings in which the validity of the patent has been or may be put in issue. (2) In any proceedings before the Court or the Controller in which the validity of a patent is put in issue, the Court or, as may be appropriate, the Controller may, subject to the following provisions of this section, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the Court or the Controller thinks fit. (3) An amendment of a specification under this section shall be invalid to the extent that it extends the subject matter disclosed in the application as filed or the protection conferred by the patent. (4) An amendment of a specification under this section shall have effect and be deemed always to have had effect from the date of the grant of the patent. (5) Where an application for leave to amend a specification has been advertised in accordance with subsection (1) or (2), any person may give within the prescribed period notice to the Court or the Controller, as may be appropriate, of his opposition to an amendment proposed by the proprietor of the patent, and if he does so shall notify the proprietor and the Court or the Controller shall consider the opposition in deciding whether the amendment, or any other amendment, should be allowed. (6) Where an application for an order under this section is made to the Court, the applicant shall notify the Controller who shall be entitled to appear and be heard on the hearing of the application and shall so appear if so directed by the Court. Surrender of patent. 39.—(1) A proprietor of a patent may at any time by written notice given to the Controller offer to surrender his patent. (2) Where an offer is made under this section, the Controller shall advertise the offer in the prescribed manner and any person interested may, within the prescribed period commencing on the date of the publication of the advertisement, give notice to the Controller of opposition to the proposed surrender. (3) Where notice of opposition is duly given under this section the Controller shall notify the proprietor of the patent and determine the question. (4) Subject to subsection (3), if the Controller is satisfied that a patent may properly be surrendered, he may accept the offer. (5) As from the date when notice of acceptance is published in the Journal the patent shall cease to have effect but no action for infringement shall lie in respect of any act done before that date and no right to compensation shall accrue for any use of the patented invention before that date for the service of the State. CHAPTER VI The Effects of a Patent and a Patent Application Prevention of direct use of invention. 40.—A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in the State all or any of the things following: (a) making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for those purposes; (b) using a process which is the subject-matter of the patent, or, when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, offering the process for use in the State; (c) offering, putting on the market, using or importing, or stocking for those purposes, the product obtained directly by a process which is the subject-matter of the patent. Prevention of indirect use of invention. 41.—(1) A patent while it is in force shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply in the State a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect. (2) Subsection (1) shall not apply when the means referred to therein are staple commercial products, except when the third party induces the person supplied to commit acts which the proprietor of a patent is enabled to prevent by virtue of section 40 . (3) Persons performing acts referred to in paragraph (a), (b), or (c) of section 42 shall not be considered to be parties entitled to exploit an invention pursuant to subsection (1). Limitation of effect of patent. 42.—The rights conferred by a patent shall not extend to— (a) acts done privately for non-commercial purposes; (b) acts done for experimental purposes relating to the subject-matter of the relevant patented invention; (c) the extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription issued by a registered medical practitioner or acts concerning the medicine so prepared; (d) the use on board vessels registered in any of the countries of the Union of Paris for the Protection of Industrial Property, other than the State, of the invention which is the subject of the patent, in the body of the vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the territorial waters of the State, provided that the invention is used in such waters exclusively for the needs of the vessel; (e) the use of the invention which is the subject of the patent in the construction or operation of aircraft or land vehicles of countries of the Union of Paris for the Protection of Industrial Property, other than the State, or of such aircraft or land vehicle accessories when such aircraft or land vehicles temporarily or accidentally enter the State; (f) the acts specified in Article 27 of the Convention on International Civil Aviation, where those acts concern the aircraft of countries, other than the State, benefiting from the provisions of that Article. Limitation of rights. 43.—The rights conferred by a patent shall not extend to any act which, pursuant to any obligations imposed by the law of the Treaties establishing the European Communities, cannot be prevented by the proprietor of the patent. Rights conferred by patent application after publication. 44.—(1) A patent application shall, on and from the date of its publication under section 28 , provisionally confer upon the applicant such protection as is conferred by virtue of sections 40 to 43 . (2) A patent application shall be deemed never to have had the effects set out in subsection (1) if it is withdrawn, is deemed to be withdrawn or is finally refused. Extent of protection. 45.—(1) The extent of the protection conferred by a patent or a patent application shall be determined by the terms of the claims; nevertheless, the description and drawings shall be used to interpret the claims. (2) For the period up to the grant of a patent, the extent of the protection conferred by the patent application shall be determined by the latest filed claims contained in the publication under section 28 ; however, the terms of the claims of the patent as granted or as amended in accordance with section 38 shall determine the extent of protection conferred by section 44 ; provided that the foregoing provisions of this subsection shall not be construed as granting to an applicant protection greater than that sought by him at the date of publication under section 28 . (3) In the interpretation of this section, the Court shall have regard to the directions contained in the Protocol on the Interpretation of Article 69 of the European Patent Convention and set out in the Second Schedule to this Act. Burden of proof. 46.—(1) If the subject-matter of a patent or patent application is a process for obtaining a new product, the same product when produced by a person other than the proprietor or applicant, as the case may be, shall, in the absence of sufficient evidence to raise an issue as to whether the product was obtained by that or another process, be deemed to have been obtained by the process which is such subject-matter. (2) In considering whether a party has discharged the burden imposed upon him by this section, the Court shall have regard to the interest of the defendant in the protection of his manufacturing and business secrets, and for that purpose the Court may, if it thinks fit, hear or receive evidence on behalf of the defendant in the absence of any other party to the proceedings. (3) (a) Any party to infringement proceedings may, in the absence of every other party to the proceedings, apply to the Court for an order under this subsection. (b) If in considering an application for an order under this subsection the Court is satisfied that— (i) the applicant is in possession of a manufacturing or commercial secret, and (ii) the secret (evidence of which shall be given in the absence of any party to the proceedings other than the applicant) is such as would enable the applicant to discharge the burden imposed by this section, and (iii) in the circumstances of the case to require the disclosure (otherwise than on the application) of the secret would be unreasonable, the Court shall allow the application. (c) Where the Court makes an order under this subsection, the burden imposed under this section shall, in relation to the relevant infringement proceedings, be regarded as having been discharged by the applicant. CHAPTER VII Infringement Action for infringement of patent. 47.—(1) Civil proceedings for infringement of a patent may be brought in the Court by the proprietor of the patent in respect of any act of infringement which he alleges he is entitled under sections 40 to 43 and section 45 to prevent and (without prejudice to any other jurisdiction of the Court) in those proceedings a claim may be made— (a) for an injunction restraining the defendant from any apprehended act of such infringement; (b) for an order requiring the defendant to deliver up or destroy any product covered by the patent in relation to which the patent is alleged to have been infringed or any article in which the product is inextricably comprised; (c) for damages in respec …