ORGANISATION MONDIALE 
DU COMMERCE 
Conseil des aspects des droits de. propriété 
intellectuelle qui touchent au commerce IJ>/l~/1/1~/J>/1 
5 août 1996 
(96-3058) 
Original: anglais 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
Irlande 
Le présent document contient le texte des lois et réglementations ci-après 1, notifiées par l'Irlande 
au titre de l'article 63:2 de l' Accord (voir le document IP/N/l/IRL/1): 
Loi de 1992 sur les brevets (n • 1 de 1992) 
Ordonnance d'entrée en vigueur de 1992 de la Loi sur les brevets 
de 1992 (S.I. n • 181 de 1992) 
Loi de 1964 sur les brevets (n • 12 de 1964) 
Ordonnance d'entrée en vigueur de 1964 de la Loi sur les brevets 
de 1964 (S.I. n • 91 de 1966) 
1 Anglais seulement. 2 
76 
78 
135 IP/N/I/IRL/P/l 
Page 2 
WIPO COLLECTION OF LAWS 
RECEIVED: 23 AUf2, .{ qq2 
Section Number 1 of 1992 
PATENTS ACT, 1992 
ARRANGEMENT OF SECTIONS 
PART I 
PRELIMINARY AND GENERAL 
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 TIlE CoNTROLLER 
6. The Patents Office and the Controller of Patents, Designs and 
Trade Marks. 
7. Grant of patents. 
8. Extent of application of Part 1I. 
BAlLE ATIIA CLIATII: 
ARNA FHOILSnJ AG OIFIG AN tsoLA TIIAIR. 
Le ceannach dfreach 60 
OIFIG DHtOLTA FOILSEACHAN RIALTAIS, TEACH SUN ALLIANCE, 
SRAID THEACH LAIGHEAN, BAll..E A TIIA CLIA TII 2, 
06 trf aOD dfolt6ir leabhar. 
DUBLIN: 
PUBLISHED BY THE STATIONERY OFFICE. 
To be purchased through any Bookseller. or directly from the 
GOVERNMENT PUBLICA nONS SALE OFFICE, SUN ALLIANCE HOUSE, 
MOLESWORTII STREET. DUBLIN 2. [1992.] Patents Act, 1992. 
CHAPTER II 
Section PATENTABILITY 
9. Patentable inventions. 
10. 
11. 
12. 
13. 
14. 
15. 
16. 
17. 
18. 
19. 
20. 
21. 
22. 
23. 
24. 
25. 
26. 
27. 
28. Exceptions to patentability. 
Novelty. 
Non-prejudicial disclosures. 
Inventive step. 
Industrial application. 
CHAPTER III 
APPUCATIONS 
Right to apply for patent. 
Right to patent. 
Mention of inventor. 
Making of application. 
Disclosure of invention. 
Qaims. 
Unity of invention. 
Abstract. 
Date of filing application. 
Divisional application. 
Priority right. 
Qaiming priority. 
Effect of priority right. 
Publication of application. 
CHAPTER IV 
PItocmUItE 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. IP IN 11 IIRL/P 11 
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[No. 1.] IP/N/I/IRL/P/l 
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[1992.] Patents Act, 1992. [No. 1.] 
CHAPTER V 
PROVISIONS AS TO PATENTS AFTER GRANT 
Section 
36. Term of patent. 
37. Restoration of lapsed patents. 
38. Amendment after grant. 
39. Surrender of patent. 
CHAPTER VI 
THE EFFECI'S OF A PATENT AND A PATENT APPUCATION 
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. IP IN 11/IRL/P 11 
Page 5 
[1992. ] Patents Act, 1992. [No. 1.] 
Section 
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 
therefore 
66. Actions for infringement. 
67. Special ground for revocation of short-term patent. 
PART IV 
VOLU~ARY 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 TIlE 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 pro­
visions. 
PART VI 
PROPERTY IN PATENT ApPLICATIONS AND PATENTS 
CoNTRACf CoNDmONS 
79. Nature of patent applications and patents. 
SO. Co-ownership of patent applications and patents. IP/N/1/IRL/PIl 
Page 6 
[1992.] Patents Act, 1992. [No. 1.] 
Section 
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. 
fr7. 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. [1992. ] Patents Act, 1992. 
PART X 
PATENT AGENTS 
Section 
105. Authorized agent may act. 
106. Unauthorized claim to be patent agent. 
107. Entitlement to be registered as patent agent. IP IN 11/IRL/P 11 
Page 7 
[No. 1.] 
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. IP IN 11 IIRL/P 11 
Page 8 
[1992.] Patents Act, 1992. [No. 1.] 
Section 
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 
TRANsmoNAL PROVISIONS 
SECOND SCHEDULE 
DIRECTIONS REFERRED TO IN section 45 (3) 
Arbitration Act, 1954 
Companies Act, 1963 
Continental Shelf Act, 1968 ACTS REFElUtED TO 
Foreign Tribunals' Evidence Act, 1856 
Industrial and Commercial Property 
(Protection) Act, Im 
Local Government Act, 1941 
Maritime Jurisdiction Act, 1959 
Patents Act, 1964 
Patents (Amendment) Act, 1966 
Petty Sessions (Ireland) Act, 1851 
Public Offices Fees Act, 1879 
Solicitors Act, 1954 
Superannuation and Pensions Act, 1976 1954, No. 26 
1963, No. 33 
1968, No. 14 
1856, c. 113 
Im, No. 16 
1941, No. 23 
1959, No. 22 
1964, No. 12 
1966, No. 9 
1851, c. 93 
1879, c. 58 
1954, No. 36 
1976, No. 22 Short title and 
commencement. 
Interpretation. Number 1 of 1992 
PATENTS ACT, 1992 IP IN 11 IIRL/P 11 
Page 9 
AN ACT TO MAKE NEW PROVISION IN RESPECT OF PAT­
ENTS AND RELATED MATIERS IN SUBSTITUTION FOR 
THE PROVISIONS OF THE PATENTS ACTS, 1964 AND 5 
1966; TO ENABLE EFFECT TO BE GIVEN TO CERTAIN 
INTERNATIONAL CONVENTIONS ON PATENTS; AND 
TO PROVIDE FOR OTHER MATTERS CONNECfED 
WITII THE MATTERS AFORESAID. [27th February, 1992) 
BE IT ENACfED BY THE OIREACHTAS AS FOLLOWS:· 10 
PART I 
PREUMINARY AND GENERAL 
1.-(1) This Act may be cited as the Patents Act, 1992. 
(2) Except as otherwise provided, this Act shall come into oper-
ation on such day as the Minister may by order appoint. 15 
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 20 
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 25 
assignee, and references to the assignee of any person include ref­
erences 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 30 
means of a definite and substantial establishment or organisation, and 
on a scale which is adequate and reasonable in all the circumstances; IP/N/1/IRL/P/l 
Page 10 
[1992.] Patents Act, 1992. [No. 1.] 
"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 
5 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 
10 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 
15 (b) in relation to any other application, the dat~ 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 
20 an application in that country; 
25 
30 "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 
35 maintained by the European Patent Office in pursuance of the Euro­
pean Patent Convention; 
"European patent" means a patent granted under the European 
Patent Convention; 
"European Patent Bulletin" means the bulletin of that name published 
40 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 
45 by the European Patent Convention; [1992.] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 11 
[No. 1.] 
"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 5 
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 inven-10 
tor" 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" 15 
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 Il or 
~m w 
"patent agent" except in section 94 has the meaning assigned to it by 
section 105; 
"patent application" means an application under Part Il or Part III 
for a patent; 
"prescribed" means, in the case of proceedings before the Court, 25 
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; 30 
"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 docu­
ment as of right, at the Office and such other place (if 35 
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 infor­
mation which the Controller is authorized to publish 40 
means made available to the public and includes the 
making available of the document, matter, record or infor­
mation 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; 45 
"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, IP IN 11/IRL/P 11 
Page 12 
[1992.] Patents Act, 1992. [No. 1.] 
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; 
5 "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 
10 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. 
3.--{l) Where a power to make orders or rules is conferred by this Orders and rules. 
Act, such orders or rules may be made either as respects all, or as 
15 respects anyone 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. 
20 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. 
25 (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). 
30 4.-The expenses incurred by the Minister in the administration of Expenses. 
this Act shall, to such extent as may be sanctioned by the Minister 
for Finance, be paid out of moneys provided by the Oireachtas. 
S.-The Act of 1964 and the Patents (Amendment) Act, 1966, Repeals and 
are hereby repealed, subject to the provisions of the First ~r':i~~g~~ 
35 Schedule. 
PART II 
PATENTS GENERALLY 
CHAPTER! 
THE PATENTS OFFICE AND 1liE CoNTROLLER. 
40 6.--{l) The Patents Office and the Controller of Patents, Designs The Patents Office 
and Trade Marks shall continue in being for the purposes provided and the Controller of Patents, Designs for by this Act or any other enactment. and Trade Marks. Grant of patents. 
Extent of 
application of Part 
/I. 
Patentable 
inventions. 
Exceptions to 
patentability . IP/NI1/IRL/PI 1 
Page 13 
[1992. ] Patents Act, 1992. [No. 1.] 
(2) The Co,ntroller 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 5 
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 10 
references to the Patents Office and the Controller. 
7.-Patents shall be granted by the Controller subject to and in 
accordance with the provisions of this Act. 
8.-The subsequent provisions of this Part shall, in relation to 
short-term patents to which Part III applies, have effect subject to 15 
the provisions of that Part. 
CHAPTER II 
P A TENTABIl11Y 
9.-(1) An invention shall be patentable under this Part if it is 
susceptible of industrial application, is new and involves an inventive 20 
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, 25 
(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 30 
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 35 
industrial application for the purposes of subsection (1). This provision 
shall not apply to a product, and in particular a substance or com­
position, 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 40 
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. 
IO.-A patent shall not be granted in respect of- 45 IP/N/1/IRL/P/1 
Page 14 
[1992. ] Patents Act, 1992. [No. 1.] 
(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; 
5 (b) a plant or animal variety or an essentially biological process 
for the production of plants or animals other than a micro­
biological process or the products thereof. 
11.-(1) An invention shall be considered to be new if it does not Novelty. 
form part of the state of the art. 
10 (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 
15 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 
20 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. 
12.-(1) For the application of section 11 a disclosure of the inven- Non-prejudicial 
tion shall not be taken into consideration if it occurred not earlier disclosures. 
25 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 inven­
tion, or 
30 (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 
35 treaty, convention or other agreement replacing that Con­
vention: 
40 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 iUs necessary to 
45 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 Inventive step. 
Industrial 
application. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 15 
[No. 1.] 
international exhibition specified in the statement is or was an inter· 
national 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. 5 
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 10 
inventive step. 
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 15 
Right to apply for IS.-Any person may make an application for a patent either alone 
patent. or jointly with another. 
Right to patent. 16.-{1) The right to a patent shall belong to the inventor or his 
Mention of 
inventor. successor in title, but if the inventor is an employee the right to a 20 
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. 25 
(2) H 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 30 
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. 
17.-{1) The inventor or joint inventors of an invention shall have 35 
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 40 
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 IP/NI1/IRL/PI 1 
Page 16 
[1992. ] Patents Act, 1992. [No. 1.] 
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. 
5 (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 
10 copies both of the published patent application and of the specification 
of the granted patent. 
18.-(1) Every application for a patent under this Part shall be Making of 
filed at the Office in the prescribed manner and be in the prescribed application. 
form. 
15 (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 
20 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. 
25 19.-(1) A patent application shall disclose the invention to which Disclosure of 
it relates in a manner sufficiently clear and complete for it to be invention. 
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 
30 an invention which requires for its performance the use of a 
micro-organism is to be treated for the purposes of this Act as com­
plying with that subsection and may specify other provisions, in 
relation to such applications. 
35 20.-The claim or claims shall define the matter for which protection Oaims. 
is sought, be clear and concise and be supported by the description. 
21.-{1) A patent application shall relate to one invention only or Unity of invention. 
to a group of inventions so linked as to form a single general inventive 
concept. 
40 (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. 
22.-(1) The abstract shall only serve for use as technical infor-Abstract. 
mation; it may not be taken into account for any other purpose and 
45 in particular it may be used neither for the purpose of interpreting Date of filing 
application. 
Divisional 
application. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 17 
[No. 1.] 
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 re frame 
it so that it does. 5 
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 10 
(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) 15 
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 request-
ing, within the prescribed period, that the date on which the drawing 20 
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; 25 
(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-- 30 
(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. 35 
(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 40 
withdrawn at the end of that period. 
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 IP IN 11 IIRLIP 11 
Page 18 
[1992.] Patents Act, 1992. [No. 1.] 
(b) complies with the relevant requirements (including proced­
ure 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. 
5 25.-(1) A person who has duly filed in or for the State, or in or Priority right. 
for. any other state party to the Paris Convention for the Protection 
of Industrial Property, an application for a patent or for the regis-
tration 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 
10 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 
15 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 
20 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 
25 if, and only if, at the date of filing the subsequent applica­
tion, the previous application has been withdrawn, aban­
doned 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. 
30 (b) Where, pursuant to this subsection, a subsequent applica-
tion 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 
35 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 
40 equivalent to those laid down in the said convention, a right of priority 
having equivalent effect. 
26.-(1) An applicant desiring to take advantage of the priority of Qaiming priority. 
a previous application shall file, in the prescribed manner and within 
the prescribed period, a declaration of priority. Rules made under 
45 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 applica­
tion, notwithstanding the fact that they originated in different states, 
45 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. Effect of priority 
right. 
Publication of 
application. 
Search report. IP IN 11 IIRL/P 11 
Page 19 
[1992. ] Patents Act, 1992. [No. 1.] 
(3) If one or more priorities are claimed in. respect 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 5 
do not appear among the claims formulated in the previous applica­
tion, priority may nonetheless be granted if the documents of the 
previous application as a whole specifically disclosed such elements. 
27.-(1) The right of priority shall have the following effect, 
namely, the date of priority shall be regarded as being the date of 10 
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 any­
thing contained in this Act, the patent application and any patent 15 
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. 
28.-(1) A patent application shall be published in the prescribed 20 
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. 25 
(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 30 
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 35 
patent application-
(a) statements or other matter contrary to public order or moral­
ity; 
(b) statements disparaging the products or processes of any 
particular person other than the applicant, or the merits 40 
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 45 
29.-(1) If a patent application under this Part has a date of filing, IP IN 11 IIRL/P 11 
Page 20 
[1992. ] Patents Act, 1992. [No. 1.] 
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 
5 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 
10 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 
15 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 
20 within the prescribed period. If the applicant fails, before the expiry 
of the prescribed period, either to submit amendme'nts to the appli­
cation 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 
25 amended so as to confine it to one invention only. 
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 
30 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, 
35 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 infonnation as may 
be prescribed with regard to the filing of foreign applications for 
40 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 sub­
sequently withdrawn within a prescribed period the evidence shall be 
published by the Controller. 
45 (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 
50 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. Use of foreign 
specification or 
search report. Refusal or grant of 
patent. 
Amendment of 
application. 
Withdrawal of 
application. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 21 
[No. 1.] 
(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 amend­
ments as are required to the specification so that the subject-matter 5 
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 10 
by the Controller. 
(6) Any amendment or statement submitted in pursuance of sub­
sections (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. 15 
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 20 
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 25 
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 30 
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 35 
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. 
32.-(1) At any time before a patent is granted under this Act an 40 
applicant may, in acrordance 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. 45 
(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 50 
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. 
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 .. IP/NI 1 IIRL/PI 1 
Page 22 
[1992. ] Patents Act, 1992. [No. 1.] 
(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 
5 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; 
10 (c) no other right may be claimed under this Act in relation to 
the application. 
34.-(1) The Controller shall as soon as practicable after a patent Notification of 
has been granted publish a notice of the grant in the Journal. grant; publication of specifiCation. 
(2) At the same time as the publication of the notice of a grant, 
15 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. 
35.-(1) A pending application shall lapse at the end of the period '~ntinftion in 
prescribed for the payment of any renewal fee if the fee is not paid. a~r;li~tiom. 
20 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 
25 fee paid before the expiration of the period of extension so specified. 
30 (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 
36.-(1) A patent shall take effect on the date on which notice of Term of patent. 
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 
35 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 
40 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. 
45 (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. ' 
50 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. Restoration of 
lapsed patents. Amendment after 
grant. [1992.] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 23 
[No. 1.] 
(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. 5 
(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. 10 
(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 15 
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 20 
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 25 
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 30 
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 
~~~, ~ 
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. 
38.--(1) Subject to the following provisions of this section, the 40 
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 45 
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 50 
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. IP IN 11/IRL/P 11 
Page 24 
[1992.] Patents Act, 1992. [No. 1.] 
(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 
5 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 
10 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 amend­
ment, should be allowed. 
15 (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. 
39.-(1) A proprietor of a patent may at any time by written notice Surrender of 
20 given to the Controller offer to surrender his patent. 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 
25 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 
30 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 
35 invention before that date for the service of the State. 
CHAPTER VI 
THE EFFEcrs OF A PATENT AND A PATENT ApPUCATION 
4O.-A patent while it is in force shall confer on its proprietor the Prevention of direct 
right to prevent all third parties not having his consent from doing in use of invention. 
40 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, 
45 when the third party knows, or it is obvious to a reasonable 
person in the circumstances, that the use of the process is Prevention of 
indirect use of 
invention. 
Limitation of effect 
of patent. [1992. ] Patents Act, 1992. IP 1Nl 1 IIRL/P 11 
Page 25 
[No. 1.] 
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 stock­
ing for those purposes, the product obtained directly by a 
process which is the subject-matter of the patent. 5 
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 10 
therein, when the third party knows, or it is obvious in the cir­
cumstances 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 15 
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). 20 
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; 
(Q) the use on board vessels registered in any of the countries of 
the Union of Paris for the Protection of Industrial Prop-
erty, 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 air-
craft or land vehicle accessories when such aircraft or land 
vehicles temporarily or accidentally enter the State; 
(j) the acts specified in Article 27 of the Convention on Inter-
national Civil Aviation, where those acts concern the 
aircraft of countries, other than the State, benefiting from 
the provisions of that Article. 25 
30 
35 
40 
45 
limitation of rights. 43.-The rights conferred by a patent shall not extend to any act 
which, pursuant to any obligations imposed by the la.w of the Treaties IP IN 11 IIRL/P 11 
Page 26 
5 [1992. ] Patents Act, 1992. [No. 1.] 
establishing the European Communities, cannot be prevented by the 
proprietor of the patent. 
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. Rights conferred by 
patent apptic~tion 
after publication. 
4S.-(1) The extent of the protection conferred by a patent or a Extent of 
10 patent application shall be determined by the terms of the claims; protection. 
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 
15 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 
20 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 
25 Second Schedule to this Act. 
46.-(1) If the subject-matter of a patent or patent application is Burden of proof. 
a process for obtaining a new product, the same product when pro-
duced 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 
30 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 
35 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 
40 of every other party to the proceedings, apply to the Court 
for an order under this subsection. 
45 
50 (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 ~hall 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 dis­
closure (otherwise than on the application) of the 
secret would be unreasonable, Action for 
infringement of 
patent. [1992. ] Patents Act, 1992. 
the Court shall allow the application. IP IN 11 IIRL/P 11 
Page 27 
[No. 1.] 
(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. 5 
CHAPTER VII 
INFRINGEMENT 
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 10 
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 appre­
hended act of such infringement; 
(b) for an order requiring the defendant to deliver up or destroy 15 
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 respect of the alleged infringement; 
(d) for an account of the profits derived by the defendant from 20 
the alleged infringement; 
(e) for a declaration that the patent is valid and has been infringed 
by the defendant. 
(2) The Court shall not, in respect of the same infringement, both 
award the proprietor of a patent damages and order that he shall be 25 
given an account of the profits. 
Proceedings for 48.-(1) In the application of sections 40 to 43 to a patent of which 
infringement by co-there are two or more J' oint proprietors each of the references therein owner. to the proprietor shall be construed--
(a) in relation to any act, as a reference to that proprietor or 30 
those proprietors who, by virtue of section 80 or any 
agreement referred to in that section, is or are entitled to 
do that act without its amounting to an infringement; and 
(b) in relation to any consent, as a reference to that proprietor 
or those proprietors who, by virtue of section 80 or any 35 
such agreement, is or are the proper person or persons to 
give the requisite consent. 
(2) One of two or more joint proprietors of a patent may without 
the concurrence of the others bring proceedings in respect of an act 
alleged to infringe the patent, but shall not do so unless all the others 40 
are made parties to the proceedings as defendants, but any of the 
others who, pursuant to the requirements of this subsection, is made 
a defendant shall not be liable for any costs or expenses unless he 
enters an appearance and takes part in the proceedings. IP IN I l/IRL/P 11 
Page 28 
[1992. ] Patents Act, 1992. [No. 1.] 
49.-(1) In proceedings for the infringement of a patent damages 
shall not be awarded, and no order shall be made for an account 
of profits, against a defendant who proves that at the date of the 
infringement he was not aware, and had no reasonable grounds for 
5 supposing, that that patent existed, and a person shall not be deemed 
to have been so aware or to have had reasonable grounds for so 
supposing by reason only of the application to a product of the word 
"patent" or "patented" or any word or words expressing or implying 
that a patent has been obtained for the product, unless the number 
10 of the relevant patent accompanied the word or words in question. 
(2) In proceedings for infringement of a patent the Court may, if 
it thinks fit, refuse to award any damages or make any order in respect 
of any infringement committed during an extension period specified 
in a request under subsection (3) of section 36 but before the payment 
15 of the renewal fee and any additional fee prescribed for the purpose 
of that subsection. 
(3) Where an amendment of a specification of a patent has been 
allowed under this Act, no damages shall be awarded in any pro­
ceedings for an infringement of the patent committed before the date 
20 of the decision allowing the amendment, unless the Cpurt is satisfied 
that the specification of the patent, as originally published, was framed 
in good faith and with reasonable skill and knowledge. 
50.-(1) If in proceedings for infringement of a patent the validity 
of the patent is put in issue and it is found that the patent is only valid 
25 in part, the Court may grant relief in respect of that part of the patent 
which is found to be valid and infringed; provided that the Court shall 
not grant relief by way of damages or costs except in the circumstances 
mentioned in subsection (2). 
(2) Where in proceedings for the infringement of a patent the 
30 plaintiff proves that the specification of the patent was framed in good 
faith and with reasonable skill and knowledge, the Court may grant 
relief in respect of that part of the patent which is valid and infringed, 
subject to the discretion of the Court as to costs and as to the date 
from which damages should be reckoned. 
35 (3) As a condition of relief under subsection (1) or subsection (2) 
the Court may direct that the specification shall be amended to its 
satisfaction upon an application made for that purpose under section 
38, and such an application may be made whether or not all other 
issues in the proceedings have been determined. 
40 51.-(1) Subject to the provisions of this section, the holder of an 
exclusive licence under a patent shall have the like right as the 
proprietor of the patent to take proceedings in respect of any infringe­
ment of the patent committed after the date of the licence, and in 
awarding damages or granting any other relief in any such proceedings 
45 the Court shall take into consideration any loss suffered or likely to 
be suffered by the exclusive licensee as a result of the infringement 
or, as the case may be, the profits derived from the infringement, so 
far as it constitutes an infringement of the rights of the exclusive 
licensee as such. 
50 (2) In any proceedings taken by the holder of an exclusive licence 
by virtue of this section the proprietor of the relevant patent shall, 
unless he is joined as plaintiff in the proceedings, be added as defend­
ant; provided that a proprietor added as a defendant in pursuance of Restrictions on 
recovery of damages 
for infringement. 
Relief for 
infringement of 
partially valid 
patent. 
Proceedings for 
infrin~ement by 
exclUSIve licensee. Certificate of 
contested valiJity 
of patent. 
Remedy for 
groundless threats 
of infrin~ement 
proceedings. 
Power of Court to 
make declaration as 
to nOD­
infringement. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 29 
[No. 1.] 
this subsection shall not be liable for any costs unless he enters an 
appearance and takes part in the proceedings. 
52.-(1) If in any proceedings before the Court the validity of a 
patent to any extent is contested and the patent is found by the Court 
to be wholly or partially valid. the Court may certify the finding and 5 
the fact that the validity of the patent was contested. 
(2) Where any certificate has been granted under subsection (1), 
then if, in any subsequent proceedings before the Court for infringe­
ment of the patent or before the Court or the Controller for revocation 
of the patent, a final order or judgment is made or given in favour of 10 
the party relying on the validity of the patent, that party shall, unless 
the Court otherwise directs, be entitled to his costs as between solicitor 
and own client. 
53.-(1) Where any person (whether entitled to or interested in a 
patent or not) by circulars, advertisements or otherwise threatens any 15 
other person with proceedings for infringement of a patent, any 
person aggrieved thereby may bring procee~gs in the Court against 
him for any such relief as is mentioned in subsection (2). 
(2) Unless in any action brought by virtue of this section the 
defendant proves that the acts in respect of which proceedings were 20 
threatened constitute or. if done, would constitute, an infringement 
of a patent, the plaintiff shall be entitled to the following relief, that 
is to say-
(a) a declaration to the effect that the threats complained of 
were unjustifiable; 25 
(b) an injunction against the continuance of the threats; and 
(c) such damages, if any, as have been sustained by him by 
reason of the threats. 
(3) Proceedings may not be brought under this section as regards 
a threat to bring proceedings for an infringement alleged to consist 30 
of making or importing a product for disposal or of using a process. 
(4) For the purposes of this section a notification of the existence 
of a patent or a patent application does not of itself constitute a threat 
of proceedings. 
54.-(1) A declaration that the use by any person of any process, 35 
or the making or use or sale by any person of any product, does not 
and would not constitute an act of infringement of a patent may be 
made by the Court in proceedings between the person and the 
proprietor of the patent or the holder of an exclusive licence under 
the patent, notwithstanding the fact that no assertion to the contrary 40 
has been made by the proprietor or licensee, if it is shown that-
(a) the plaintiff has applied in writing to the proprietor or licensee 
for a written acknowledgement the effect of which, if 
given, would be similar to that of the declaration claimed, 
and has furnished him with full particulars in writing of 45 
the process or product in question; and 
(b) the proprietor or licensee has refused or neglected to give 
such an acknowledgement. IP/N/1/IRL/P/1 
Page 30 
[1992. ] Patents Act, 1992. [No. 1.] 
(2) The costs of all parties in proceedings for a declaration made 
by virtue of this section shall, unless for special reasons the Court 
thinks fit to order otherwise, be paid by the plaintiff. 
(3) The validity of a patent in whole or in part shall not be called 
5 in question in proceedings for a declaration made by virtue of this 
section, and accordingly the making or refusal of such a declaration 
in the case of a patent shall not be deemed to imply that the patent 
is valid. 
55.-(1) Where a patent is granted for an invention, a person who 
10 in the State before the date of filing of the patent application or, if 
priority was claimed, before the date of priority, does in good faith 
an act which would constitute an infringement of the patent if it were 
then in force, or makes in good faith effective and serious preparations 
to do such an act, shall have the rights specified in subsection (2). 
15 (2) The rights referred to in subsection (1) are the following: 
20 
25 (a) the right to continue to do or, as the case may be, to do the 
act referred to in subsection (1), 
(b) if such act was done or preparations had been made to do it 
in the course of a business-
(i) in the case of an individual-
(I) the right to assign the right to do it or to transmit 
such right on death, or 
(lI) the right to authorize the doing of the act by any 
of his partners for the time being in the business 
in the course of which the act was done or prep­
arations had been made to do it; 
(ii) in the case of a body corporate, the right to assign the 
right to do it or to transmit such right on the body's 
dissolution; 
30 and the doing of that act by virtue of this subsection shall not amount 
to an infringement of the patent concerned. 
(3) The rights specified in subsection (2) shall not include the right 
to grant a licence to any person to do an act referred to in subsection 
(1). 
35 (4) Where a product which is the subject of a patent is disposed of 
by any person to another in exercise of a right conferred by subsection 
(2), that other and any person claiming through him shall be entitled 
tu deal with the product in the same way as if it had been disposed 
of by a sole proprietor of the patent. 
40 56.-(1) After a patent has been granted the proprietor may bring 
civil proceedings in the Court for infringement of the patent applica­
tion by any act committed in the period, beginning on the day after 
the date of publication of the application pursuant to section 28 and 
ending on the day before the date of publication of the notice of the 
45 grant of the patent, which he alleges he is entitled by virtue of sections 
44 and 45 to prevent and in such proceedings a claim for damages 
may be made in respect of an alleged infringement. Right to continue 
use begun before 
date of filing or 
priority. 
Action for 
infringement of 
published 
application. Application for 
revocation of 
patent. 
Grounds for 
revocation. [1992. ] Patents Act, 1992. IP IN 11/IRL/P 11 
Page 31 
[No. 1.] 
(2) The provisions of sections 48 to 53 and section 55 relating to 
infringement of a patent shall apply, in so far as they are appropriate, 
to proceedings under this section. 
(3) In considering the amount of any damages to be awarded in 
proceedings under this section, the Court shall consider whether or 5 
not it would have been reasonable to expect, from a consideration of 
the application as published under section 28, that a patent would be 
granted conferring on the proprietor of the patent protection from an 
act of the same description as that found to have infringed those 
rights, and if the Court finds that it would not have been reasonable 10 
so to expect, it shall reduce the damages to such an amount as it 
thinks fit. 
CHAPTER VIII 
REVOCATION 
57.-(1) Subject to the following provisions of this section and 15 
section 58, any person may apply to the Court or the Controller for 
revocation of a patent. 
(2) An application for the revocation of a patent on the ground 
mentioned in section 58 (e) may be made only by a person found by 
the Court pursuant to section 81 (2) to be entitled to be granted that 20 
patent or to be granted a patent for part of the matter covered by the 
patent, or, in case more than one person is found to be so entitled, 
by all those persons. 
(3) An application under this section may be filed even if the patent 
has lapsed. 25 
(4) The application for revocation of a patent shall be made in the 
prescribed manner and it shall not be deemed to have been filed until 
the fee prescribed in relation to such applications has been paid. 
(5) Where proceedings with respect to a patent are pending in the 
Court under any provision of this Act, no application may be made 30 
to the Controller under this section in relation to the patent without 
the leave of the Court. 
(6) Where the Controller has not disposed of an application made 
to him under this section, the applicant may not apply to the Court 
under this section in respect of the patent concerned unless either- 35 
(a) the proprietor of the patent agrees that the applicant may so 
apply, or 
(b) the Controller certifies in writing that it appears to him that 
the question whether the patent should be revoked is one 
which would more properly be determined by the Court. 40 
58.-An application for revocation of a patent may be made only 
on the grounds that-
(a) the subject-matter of the patent is not patentable under this 
Act; 
(b) the specification of the patent does not disclose the invention 45 
in a manner sufficiently clear and complete for it to be 
carried out by a person skilled in the art; IP/NIl/IRL/PI 1 
Page 32 
[1992.] Patents Act, 1992. [No. 1.] 
(c) the matter disclosed in the specification of the patent extends 
beyond that disclosed in the application as filed, or, if the 
patent was granted on an application which by virtue of 
section 24 or 81 is deemed to have been filed on the date 
5 of filing of an earlier application, it extends beyond that 
disclosed in the earlier application as filed; 
(d) the protection conferred by the patent has been extended by 
an amendment of the application or the specification of 
the patent; 
10 (e) the proprietor of the patent is not entitled thereto under 
section 16 (1). 
59.-(1) If the application for revocation of a patent is admissible, Examination of 
the Court or the Controller, as may be appropriate, shall consider application for revocation. whether the grounds for revocation mentioned in section 58 prejudice 
15 the maintenance of the patent. 
(2) If on an application for revocation of a patent the Court or the 
Controller considers that the grounds for revocation mentioned in 
section 58 prejudice the maintenance of the patent, the Court or the 
Controller, as may be appropriate, may by order unconditionally 
20 revoke the patent. 
(3) If on an application for revocation of a patent the Court or the 
Controller considers that the grounds for revocation mentioned in 
section 58 affect the patent only in part, the Court or the Controller, 
as may be appropriate, may make an order for the revocation of the 
25 patent unless within a time specified by the Court or the Controller 
the relevant specification is amended, under section 38, to the satis­
faction of the Court or the Controller. 
60.-(1) If it appears to the Controller that an invention for which 
a patent has been granted formed part of the state of the art by virtue 
30 only of section 11 (3), he may on his own initiative by order revoke 
the patent, but he shall not do so without giving the proprietor of the 
patent an opportunity of making any observations and of amending 
the specification of the patent in accordance with section 38 so as to 
exclude any matter which formed part of the state of the art as 
35 aforesaid. 
(2) If it appears to the Controller that-
(a) a patent under this Part and a European patent designating 
the State have been granted for the same invention, and 
(b) the applications for both patents have the same date as their 
40 date of filing or, where priority was claimed, their date of 
priority, and 
(c) the applications for both patents were filed by the same 
applicant or his successor in title, 
the Controller shall give the proprietor of the patent under this 
45 Part an opportunity of making observations and of amending the 
specification of the patent, and if the proprietor fails to satisfy the 
Controller that there are not two patents in respect of the same 
invention, or to amend the specification so as to prevent there being 
two patents in respect of the same invention, he shall revoke the 
50 patent. Controller's power 
to revoke patents 
on his own 
initiative. Circumstances in 
which Validity of 
pa~ent may be put 
ID lSSue. 
Controller to be 
~en notice of 
urt proceedings. IP IN I l/IRL/P 11 
Page 33 
[1992. ] Patents Act, 1992. [No. 1.] 
(3) The Controller shall not take action under subsection (2) 
before-
(a) the end of the period for filing an opposition to the European 
patent designating the State under the European Patent 
Convention, or 5 
(b) if later, the date on which any opposition proceedings under 
the Convention are finally disposed of; 
and he shall not then take any action if the decision is not to maintain 
the European patent or if it is amended so that there are not two 
patents in respect of the same invention. 10 
61.-(1) Subject to the following provisions of this section, the 
validity of a patent may be put in issue only on a ground which is one 
of the grounds specified in section 58, and, in addition to the foregoing, 
such validity shall be raised only-
(a) by way of defence in proceedings (or infringement under 15 
section 47 or 56, or 
(b) in proceedings under section 53 or 57, or 
(c) pursuant to section 77. 
(2) No determination shall be made in any proceedings mentioned 
in subsection (1) on the validity of a patent which any person puts in 20 
issue on the ground specified in section 58 (e) unless-
(a) it has been determined, either in entitlement proceedings 
commenced by that person or in the proceedings in which 
the validity of the patent is in issue, that the patent should 
have been granted to him and not some other person; and 25 
(b) except where it has been so determined in entitlement pro-
ceedings, 
(i) the proceedings in which the validity of the patent is 
in issue are commenced before the end of the period 
of two years beginning on the date of the grant of tpe 30 
patent, or 
(ii) it is shown that any person registered as a proprietor 
of the patent knew at the time of the grant or of the 
transfer of the patent to him that he was not entitled 
to the patent. 35 
(3) In subsection (2) "entitlement proceedings", in relation to a 
patent, means proceedings, whether by way of a reference under 
section 81 or otherwise, to determine the question whether a patent 
was granted to a person not entitled to it. 
(4) It is hereby declared that, for the purposes of this Act, the 40 
validity of a patent is not put in issue by reason only of the fact that 
the Controller considers its validity in order to decide whether or not 
to revoke it under section 60. 
62.-The Controller shall be given notice in writing by the plaintiff 
or proprietor, as the case may be, of any proceedings for infringement 45 
under section 47 or 56 or of any proceedings before the Court where, IP/NIl/IRL/PI 1 
Page 34 
[1992. ] Patents Act, 1992. [No. 1.] 
under section 61, the validity of a patent is put in issue and of the 
decision of the Court in respect of any such proceedings. 
PART III 
SHORT-TERM PATENTS 
5 63.-(1) An application under this Part may be made for a patent Application for 
the term of which shall be ten years in lieu of the term provided for short-term patent. 
by or under section 36 in respect of a patent granted under Part /l. 
(2) A patent granted on such an application is referred to in this 
Part as a short-term patent. 
10 (3) Part /l shall apply to a short-term patent and an application for 
a short-term patent as it applies to a patent and an application for a 
patent under that Part subject to the necessary modifications and to 
the provisions of this Part. 
(4) An invention shall be patentable under this Part if it is new and 
15 susceptible of industrial application provided it is not clearly lacking 
an inventive step. 
(5) An application for a short-term patent shall be tiled at the 
Office in the prescribed manner and be in the prescribed form. 
(6) Rules made under Part /I in relation to patent applications shall 
20 apply to an application for a short-term patent as they apply to an 
application under that Part except so far as otherwise prescribed, and 
different rules may be made in relation to short-term patents and 
applications for short-term patents. 
(7) An application for a short-term patent shall-
25 (a) contain a request for the grant of a short-term patent; 
30 
35 (b) contain a specification which-
(i) describes the invention and the best method of per­
forming it known to the applicant, 
(ii) incorporates one or more claims, but not exceeding 
five, defining the matter for which protection is 
sought, which claims shall be clear and supported by 
the description, and 
(iii) is accompanied by any drawing referred to in the 
description, claim or claims and an abstract to which 
section 22 shall apply. 
(8) The application shall be accompanied by the prescribed filing 
fee unless the Minister prescribes a later date by which the fee may 
be paid. Patent under Pan 1I 
and a short-term 
patent not to co­
exist for same 
invention. 
Provisions relating 
to short-term 
patents and 
applications 
therefor. 
Actions for 
infringement. 
Special ground for 
revocation of 
short-term patent. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 35 
[No. 1.] 
64.-Where an application for a patent under Part Il and an 
application for a short-term patent have been filed by the same 
applicant in respect of the same invention, then-
(a) the short-term patent, if granted first, shall be deemed void 
upon the grant of a patent under Part I1, 5 
(b) the short-term patent application shall, if pending on the date 
of grant of a patent under Part I I, be deemed abandoned as 
of that date. 
65.-(1) Sections 29, 30 and 35 sh3ll not apply in respect of an 
application for a short-term patent. Sections 44 and 56 shall have 10 
effect in relation to such an application subject to section 66. 
(2) Sections 40 to 43 shall have effect in relation to short-term 
patents subject to section 66. 
(3) If a short-term patent is granted before the expiry of the period 
referred to in section 28 (1), the application shall be published at the 15 
same time as the publication provided for in section 34 (1). 
66.--{l) Civil proceedings for infringement under section 47 or 56 
shall not be instituted against any person by the proprietor of a short­
term patent until he has-
(a) made a request to the Controller, accompanied by the pre-20 
scribed fee, to 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, and 
(b) received from the Controller a copy of the search report and 
furnished a copy to that person. 25 
(2) The Controller shall publish the search report referred to in 
subsection (1). 
(3) In lieu of making the request referred to in subsection (1) (a) 
the applicant may, if an application for a patent for the same invention 
has also been filed in a prescribed foreign state or under the provisions 30 
of any prescribed convention or treaty, submit to the Controller the 
evidence referred to in section 30 (1); and proceedings may not be . 
instituted until after the Controller has published any evidence so 
submitted to him and the proprietor has sent a copy thereof to the 
person concerned. 35 
(4) The proceedings referred to in subsection (1) may be brought 
in the Circuit Court irrespective of the amount of a claim. 
(5) References to the Court in sections 47, 49, 50, 51, 52, 54, 56 
and 62 in relation to an action for infringement of a short-term patent 
shall be construed as including references to the Circuit Court. 40 
(6) The Minister may, by rules, permit any person other than the 
proprietor to make a request to the Contoller to cause a search report 
to be prepared in relation to an invention which is the subject of a 
short-term patent. The rules may specify that such a request shall be 
subject to the payment of any prescribed fee. A search report prepared 45 
under this subsection shall be published by the Controller. 
67.-Section 58 shall, so far as relevant, apply to an application for 
the revocation of a short-term patent: provided, however, that it shall 
also be a ground for revocation of a short-term patent that the claims 
of the specification of the patent are not supported by the description. 50 IP IN 11 IIRL/P 11 
Page 36 
[1992. ] Patents Act, 1992. [No. 1.] 
PART IV 
VOLUNTARY AND COMPULSORY LICENCES 
68.-(1) At any time after the grant of a patent the proprietor of Appli~tion.for 
the patent may apply to the Controller for an entry to be made in the li~cicem rf~~~ that 
5 register to the effect that licences under the patent are to be available availabie~ n are 
as of right, and where such an application is made, the Controller 
shall give notice of the application to any person entered on the 
register as being entitled to an interest in the patent, and if the 
Controller is satisfied that the proprietor of the patent is not precluded 
10 by contract from granting licences under the patent he shall make 
such entry. 
(2) Where an entry is made under this section in the register the 
following provisions shall apply: 
(a) any person shall, at any time thereafter, be entitled as of 
15 right to a licence under the patent upon such terms as 
may, in default of agreement, be settled by the Controller 
on the application of the proprietor or the person requiring 
the licence, . 
(b) the Controller may, on the application of the holder of any 
20 licence granted under the patent before the entry was 
made, order the licence to be exchanged for a licence of 
right upon terms to be settled as aforesaid, 
(c) if in proceedings for infringement of the patent (otherwise 
than by the importation of goods) the defendant under-
25 takes to take a licence upon terms to be settled by the 
Controller as aforesaid, no injunction shall be granted 
against him, and the amount (if any) recoverable against 
him by way of damages shall not exceed double the amount 
which would have been payable by him as licensee if such a 
30 licence had been granted before the earliest infringement, 
(d) the renewal fees payable in respect of the patent after the 
date of entry shall be one half of the renewal fees which 
would be payable if the entry had not been made. 
(3) The licensee under any licence of right granted by virtue of this 
35 section shall (unless, in the case of a licence the terms of which are 
settled by agreement, the licence otherwise expressly provides) be 
entitled to require the proprietor of the patent to take proceedings to 
prevent any infringement of the patent; and if the proprietor refuses 
or neglects to comply with a requirement under this subsection within 
40 two months after being so required, the licensee may institute pro­
ceedings for the infringement in his own name as if he were the 
proprietor, and in case such proceedings are initiated, the proprietor 
of the patent shall be made a defendant; provided that a proprietor 
who is so made a defendant shall not be liable for any costs unless he 
45 enters an appearance and takes part in the proceedings. 
(4) An application for an entry under this section shall contain a 
statement (to be verified in such manner as may be prescribed) that 
the proprietor of the patent to which the application relates is not 
precluded by contract from granting licences under the patent, and 
50 the Controller may require from the proprietor such further evidence 
in this regard as he may think necessary. Cancellation of 
entry. 
Compulsory 
licences. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 37 
[No. 1.] 
(5) All entries in the register under this section shall be published 
in the Journal and in such other manner (if any) as the Controller 
thinks desirable for bringing the entry to the notice of the public. 
69.-(1) At any time after an entry has been made under section 
68, the proprietor of a patent may apply to the Controller for can-5 
cellation of the entry, and where such an application is made and the 
balance paid of all renewal fees which would have been payable if the 
entry had not been made, the Controller may, if satisfied that there 
is no existing licence under the patent, or that all licensees under the 
patent have consented to such cancellation, cancel the entry. 10 
(2) If, within the prescribed period after an entry has been made 
under section 68, any person claims that the proprietor of the patent 
concerned is, and was at the time when the entry was made, by a 
contract in which the claimant is interested precluded from granting 
licences under the patent, he may apply to the Controller for can-15 
cellation of the entry. 
(3) Where the Controller is satisfied, on application made under 
subsection (2), that the proprietor of a patent is and was precluded in 
the manner mentioned in subsection (2), he shall cancel the entry 
referred to in that subsection, and thereupon the proprietor shall be 20 
liable to pay, within such period as may be prescribed, a sum equal 
to the balance of all renewal fees which would have been payable if 
the entry had not been made, and if the sum is not paid within the 
said period the patent shall cease to have effect on the expiration of 
the said period. 25 
(4) Where an entry is cancelled under this section, the rights and 
liabilities of the proprietor of the patent to which the entry relates 
shall thereafter be the same as if the entry had not been made. 
(5) The Controller shall advertise in the prescribed manner any 
application made to him under this section and within the prescribed 30 
period after publication of such advertisement notice of opposition to 
the cancellation sought may be given to the Controller by-
(a) in the case of an application under subsection (1), any person, 
and 
(b) in the case of an application under subsection (2), the pro-35 
prietor of the patent to which the application relates. 
(6) Where a notice of opposition is given under subsection (5), the 
Controller shall notify the applicant before determining the applica­
tion. 
70.-(1) At any time after the expiration of the period of three 40 
years, or such other period as may be prescribed, beginning on the 
date of the publication of notice of grant of a patent any person may 
apply to the Controller for a licence under the patent, or for an entry 
in the register to the effect that licences under the patent are to be 
available as of right, on one or more of the grounds specified in 45 
subsection (2). 
(2) The grounds referred to in subsection (1) are the following: 
(a) that the invention which is the subject of the patent, being 
capable of being commercially worked in the State, is not IP/NIl/IRL/P/l 
Page 38 
[1992.] Patents Act, 1992. [No. 1.] 
being commercially worked therein or is not being so 
worked to the fullest extent that is reasonably practicable; 
(b) that a demand in the State for a product which is protected 
by the patent is not being met. or is not being met on 
5 reasonable terms, or is being met to a substantial extent 
by importation; 
(c) that the commercial working in the State of the invention 
which is the subject of the patent is being prevented or 
hindered by the importation of a product which is pro-
10 tected by the patent; 
15 (d) that by reason of the refusal of the proprietor to grant a 
licence or licences on reasonable terms--
(i) a market for the export of a product which is protected 
by the patent and is manufactured in the State is not 
being supplied; or 
(ii) the working or efficient working in the State of any 
other invention which is the subject of a patent and 
which makes a substantial contribution to the art is 
prevented or hindered; or 
20 (iii) the establishment or development of commercial or 
industrial activities in the State is unfairly prejudiced; 
(e) that by reason of conditions imposed by the proprietor upon 
the grant of licences under the patent, or upon the pur­
chase, hire or use of the product or process which is the 
25 subject of the patent, the manufacture, use or sale of 
materials not protected by the patent or the establishment 
or development of commercial or industrial activities in 
the State is unfairly prejudiced; 
if) that a condition which by virtue of section 83 is null and void 
30 has been included in a contract in relation to the sale or 
lease of, or licence to use or work, any product or process 
protected by the patent. 
(3) Subject as hereinafter provided, the Controller may, on an 
application being made under this section, if satisfied that any of the 
35 grounds specified in subsection (2) are established, make an order in 
accordance with the application, and where the order is for the grant 
of a licence, it may require the licence to be granted upon such terms 
as the Controller thinks fit; provided that-
(a) where the application is made on the grounds that the inven-
40 tion which is the subject of the relevant patent is not being 
commercially worked in the State or is not being worked 
to the fullest extent that is reasonably practicable, and it 
appears to the Controller that the time which has elapsed 
since the grant of the patent has for any reason been 
45 insufficient to enable it to be so worked, he may by order 
adjourn the application for such period as will, in his 
opinion, give sufficient time for the invention to be so 
worked; 
(b) an order shall not be made under this section for an entry in 
50 the register on the ground that a market for the export of 
the product which is protected by the relevant patent is 
not being supplied, and any licence granted under this 
section on that ground shall contain such provisions as [1992. ] Patents Act, 1992. IP 1Nl 1 IIRL/P 11 
Page 39 
[No. 1.] 
appear to the Controller to be expedient for restricting 
the countries in which the product may be sold or used by 
the licensee; 
(c) no order shall be made under this section in respect of a 
patent on the ground that the working or efficient working 5 
in the State of another invention which is the subject of a 
patent is prevented or hindered unless the Controller is 
satisfied that the proprietor of the patent of which the 
other invention is the subject is able and willing to grant 
to the proprietor of the patent and his licensees a licence 10 
in respect of that other invention on reasonable terms; 
(d) any licence granted under this section shall be both non­
exclusive and non-transferable; 
(e) the terms of any licence so granted may be so framed as to 
preclude the licensee from importing into the State any 15 
goods the importation of which the proprietor of the 
patent has the right to prevent, and in case the said terms 
are so framed the proprietor of the patent and all licensees 
under the patent shall be deepled to have mutually coven-
anted against such importation; 20 
if) in settling the terms of any licence granted under this section 
in respect of a patent which relates to food or medicine 
the Controller shall endeavour to secure that food and 
medicine shall be available to the public at the lowest 
prices consistent with the proprietors of patents deriving 25 
reasonable remuneration having regard to the nature of 
the inventions.' 
(4) The Controller shall, in determining whether to make an order 
in pursuance of an application under this section, take account of the 
following matters, that is to say- 30 
(a) the nature of the relevant invention, the time which has 
elapsed since the grant of the patent and the measures 
already taken by the proprietor or any licensee to make 
full use of the invention; 
(b) the ability of any person to whom a licence would be granted 35 
under the order to work the invention to the public advan­
tage; and 
(c) the risks to be undertaken by that person in providing capital 
and working the invention if the application is granted; 
but he shall not be required to take account of matters subsequent to 40 
the making of the application. 
(5) An application under this section may be made by any person 
notwithstanding the fact that he is already the holder of a licence 
under the patent, and no person shall be estopped from alleging any 
of the matters mentioned in subsection (2) by reason of any admission 45 
made by him, whether in such a licence or otherwise, or by reason of 
his having accepted such a licence. 
(6) Section 68 (3) shall apply to a licence granted in pursuance of 
an order under this section as it applies to a licence granted by virtue 
of section 68. 50 IP IN I lIIRL/P 11 
Page 40 
[1992. ] Patents Act, 1992. [No. 1.] 
71.-(1) Where the Controller is satisfied, on application made Provisions as to 
under section 70, that the manufacture, use or sale of materials not ~J'~~ry 
protected by the relevant patent is unfairly prejudiced by reason of 
conditions imposed by the proprietor of the patent upon the grant of 
5 licences under the patent, or upon the purchase, hire or use of the 
product or process which is the subject of the patent, he may, subject 
to the provisions of that section, order the grant of licences under the 
patent to such customers of the applicant as he thinks fit as well as to 
the applicant. 
10 (2) Where an application under section 70 is made by a person 
being the holder of a licence under the relevant patent, the Controller 
may, if he makes an order under section 70 for the grant of a licence 
to the applicant, order the existing licence to be cancelled, or may, if 
he thinks fit, instead of making such an order, order the existing 
15 licence to be amended. 
72.-{1) At any time after the expiration of the period of three 
years beginning on the date of the publication of notice of grant of a 
patent, or such other period as may be prescribed under section 70 
(1), any Minister of the Government may apply to ~he Controller 
20 upon anyone or more of the grounds specified in section 70 for an 
entry in the register to the effect that licences under the patent are to 
be available as of right, or for the grant to any person specified in the 
application of a licence under the patent, and the Controller may, if 
satisfied that any of those grounds are established, make an order in 
25 accordance with the application. 
30 (2) Sections 70 (3) and 71 shall, so far as applicable, apply in 
relation to an application and an order made under this section as 
they apply in relation to an application and an order under 
-section 70. 
73.-(1) Every application under section 70 or 72 shall specify the 
nature of the order sought by the applicant and shall contain a 
statement (to be verified in such manner as may be prescribed) setting 
out the nature of the applicant's interest (if any) and the facts upon 
which the application is based. 
35 (2) Where the Controller is satisfied, upon consideration of any 
application referred to in subsection (1), that a prima facie case has 
been made out for the making of an order, he shall direct the applicant 
to serve copies of the application upon the proprietor of the relevant 
patent and any other persons appearing from the register to be 
40 interested in the patent in respect of which the application is made, 
and shall advertise the application in the Journal. 
(3) The proprietor of the relevant patent or any other person 
desiring to oppose an application referred to in subsection (1) may, 
within such time as may be prescribed, give to the Controller notice 
45 of opposition. 
( 4) A notice of opposition given under this section shall contain a 
statement (to be verified in such manner as may be prescribed) setting 
out the grounds on which the relevant application is opposed. 
(5) Where a notice of opposition is duly given under this section, 
50 the Controller shall notify the applicant and shall, subject to the 
provisions of section 74 with respect to arbitration, determine the 
question. Licences, etc. un 
app~cation of 
Minister of 
Government. 
Procedure on 
applications under 
sections 70 and 72. Appeals and 
references to 
arbitrator. 
Supple men tary 
p'rovisions as to 
licences. [1992.] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 41 
[No. 1.] 
74.-(1) On any appeal from any order made by the Controller in 
pursuance of an application under section 70 or 72 the Attorney 
General shall be entitled to appear and be represented. 
(2) Where an application is opposed and either-
(a) the parties consent; or 
(b) the proceedings require a prolonged examination of docu­
ments or any scientific or local investigation which cannot, 
in the opinion of the Controller, conveniently be made 
before him, 5 
the Controller may at any time order the whole proceedings, or any 10 
question or issue of fact arising therein, to be referred to an arbitrator 
agreed on by the parties, or, in default of agreement, appointed by 
the Controller. 
(3) Where the whole proceedings are referred under this section, 
section 35 of the Arbitration Act, 1954 (which relates to the statement 15 
of cases by arbitrators for the decision of the Court), shall not apply 
to the arbitration; but unless the parties otherwise agree before the 
award of the arbitrator is made, an appeal to the Court shall lie from 
the award. 
(4) Where a question or issue of fact is referred under this section, 20 
the arbitrator shall report his findings to the Controller. 
75.-(1) Any order under this Act for the grant of a licence shall, 
without prejudice to any other method of enforcement, have effect 
as if it were a deed, executed by the proprietor of the patent and all 
other necessary parties, granting a licence in accordance with the 25 
order. 
(2) An order may be made on an application under section 70 or 
72 for an entry in the register to the effect that licences under the 
relevant patent are to be available as of right notwithstanding any 
contract which would have precluded the making of such an entry in 30 
respect of the patent on the application of the proprietor of the patent 
under section 68, and any such order shall for all purposes have the 
same effect as an entry made in pursuance of an application under 
section 68. 
(3) No order shall be made in pursuance of any application under 35 
section 70 or 72 which would be at variance with the Treaty establishing 
the European Economic Community. 
PART V 
USE OF INVENTIONS FOR THE SERVICE OF THE STATE 
~ssi~ment of 76.-(1) Any inventor, or any applicant for or proprietor of a 40 
lDventloD ( . h f . h I bl 'd') k applicatio'n, or patent, may elt er or or WIt out va ua e conSI eratlOn ma e to a 
batent to Minister of Minister of the Government, and such Minister may take on behalf 
overornent. of the State, an assignment of the whole of or any share or interest 
in the benefit of an invention, of a patent application therefor, or of 
any patent obtained or to be obtained therefor, and where a Minister 45 
of the Government takes any such assignment, such Minister may do, IP IN 11/IRL/P 11 
Page 42 
[1992. ] Patents Act, 1992. [No. 1.] 
or, as may be appropriate, join in doing, on behalf of the State, all 
or any of the following things, that is to say-
(a) develop and perfect such invention, 
(b) form or promote an incorporated company or an unin-
5 corporated association of persons to develop and perfect 
such invention, 
(e) sell or lease any such patent application or patent or grant 
licences under any such application or patent on such 
terms as he shall, with the agreement of the Minister for 
10 Finance, think proper, 
(d) form or promote an incorporated company or an unin­
corporated association of persons to work commercially 
any such invention, 
(e) do all such things as may be necessary for the maintenance 
15 or preservation of any such application or patent or be 
otherwise incidental to the ownership ther~of. 
(2) Every Minister of the Government shall, before the 1st day of 
April in every year, lay before each House of the Oireachtas a report 
of every (if any) exercise by him during the year ending on the 
20 previous 31st day of December of the several powers conferred on 
him by paragraph (e) or (d) of subsection (1) and also, if and so far 
as he considers it to be in the public interest, of any or all of the 
powers conferred by paragraph (a), (b) or (e) of subsection (1). 
(3) All expenses incurred by a Minister of the Government under 
2S this section shall, to such extent as may be sanctioned by the Minister 
for Finance, be paid out of moneys provided by the Oireachtas. 
77.--(1) A patent and a patent application shall have to all intents 
the like effect as against the State as it has against an individual; 
provided that any Minister of the Government may, by himself or by 
30 such of his officers, servants or agents as may be authorized in writing 
by him or by any other person acting on his behalf at any time after 
the making of an application for a patent, do for the service of the 
State any of the following acts in the State in relation to an invention 
which is the subject of the application or patent, without the consent 
35 of the applicant for or the proprietor of the patent, that is to say-
(a) where the invention is a product, make, use, import or stock 
the product or dispose of or sell or offer to dispose of or 
sell it to any person; 
(b) where the invention is a process, use it or do in relation to 
40 any product obtained directly by means of the process 
anything mentioned in paragraph (a); 
(c) supply or offer to supply to any person any of the means, 
relating to an essential element of that invention, for 
putting the invention into effect. 
45 (2) Any thing done by virtue of subsection (1) in relation to an 
invention which is the subject of an application or a patent, is sub­
sequently in this section and in section 78 referred to as "use of the 
invention" and the doing of any such thing shall not amount to an 
infringement of the application or patent concerned. Right to use 
inventions for 
service of State. [1992. J Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 43 
[No. I.J 
(3) Use of an invention under this section shall be subject to such 
terms as may, either before or after the use thereof, be agreed on, 
with the approval of the Minister for Finance, by any Minister of the 
Government and the applicant for or the proprietor of the patent 
relating to the invention. or. in default of agreement, as may be 5 
settled in the manner hereinafter provided, and the terms of any 
agreement or licence concluded between such applicant or proprietor 
and any person other than a Minister of the Government shall not 
operate to prevent or regulate the use of the invention for the service 
of the State. 10 
(4) Where an invention which is the subject of any patent or 
application for a patent has. before the date of filing, or, where 
priority is claimed, the priority date of the application, been duly 
recorded in a document by, or been tried by or on behalf of any 
Minister of the Government (such invention not having been com-15 
municated directly or indirectly by the applicant for or the proprietor 
of the relevant patent), any Minister of the Government or such of 
his officers, servants or agents as may be authorized in writing by 
him, may use the invention so recorded or tried for the service of the 
State free of any royalty or other payment to the applicant for or 20 
the proprietor of the patent, notwithstanding the existence of the 
application or patent, and, if in the opinion of such Minister the 
disclosure to the applicant or the proprietor, as the case may be, of 
the document recording the invention or the evidence of the trial 
thereof would be detrimental to the public interest, such disclosure 25 
may be made confidentially to counsel on behalf of such applicant or 
proprietor or to any independent expert mutually agreed upon. 
(5) Where any use of an invention is made by or with the authority 
of a Minister of the Government under this section, then, unless it 
appears to such Minister that it would be contrary to the public 30 
interest so to do, the Minister shall notify the applicant for or the 
proprietor of a patent (if any) relating to the invention as soon as 
practicable after the use is begun and furnish him with such infor­
mation as to the extent of the use as he may from time to time 
reasonably require. 35 
(6) In the case of any dispute as to or in connection with the use 
of an invention under this section or the terms therefor, or as to the 
existence or scope of any record or trial referred to in subsection (4), 
the matter shall be referred to the Court for decision, and the Court 
shall have the power to refer the whole matter or any question or 40 
issue of fact arising there on to be heard by an arbitrator upon such 
conditions as it may direct; the Court or arbitrator in settling the 
dispute shall be entitled to take into consideration any benefit or 
compensation which the applicant for or proprietor of a patent (if 
any) relating to the invention or any other person interested in such 45 
application or in such patent may have received directly or indirectly 
from the State in respect of such application or patent. 
(7) In any proceedings under this section the Minister of the 
Government who is a party to the proceedings may-
(a) put in issue the validity of the relevant patent without apply-50 
ing for its revocation; 
(b) if the proprietor of a patent is a party to the proceedings, 
apply for revocation of the patent upon any ground upon 
which a patent may be revoked under section 58. 
(8) The right to use an invention for the service of the State under 55 
the provisions of this section shall include a power to dispose of or IP/NI1/IRL/PI 1 
Page 44 
[1992. ] Patents Act, 1992. [No. 1.] 
sell, or offer to dispose of or sell, any products made in pursuance of 
such right which are no longer required for the service of the State. 
(9) Any person who acquires products disposed of or sold in the 
exercise of powers conferred by this section and any person claiming 
5 through him shall have power to deal with the products in the same 
manner as if they had been made pursuant to a patent held on behalf 
of the State. 
(10) In this section "service of the State" means a service financed 
out of moneys charged on or advanced out of the Central Fund or 
10 moneys provided by the Oireachtas or by a local authority for the 
purposes of the Local Government Act, 1941. 
78.-(1) During any period when an order under subsection (2) (a) Use of iDventio~ 
is in force the power exercisable in relation to an invention by a pursuant to sechOn 
Mi . f h G h . d b Mi' f 77; su{>plementary fllster 0 t e overnment, or a person aut onze y a mster 0 provislOns. 
15 the Government under section 77, shall include power to use the 
invention for any purpose which appears to such Minister to be 
necessary or expedient-
(a) for the maintenance of supplies and services essential to the 
life of the community; 
20 (b) for securing a sufficiency of supplies and services essential to 
the well-being of the community; 
(c) for promoting the productivity of commerce and industry, 
including agriculture; 
(d) generally for ensuring that the whole resources of the com-
25 munity are available for use and are used, in a manner 
best calculated to serve the interests of the community; 
(e) for assisting the relief of suffering and the restoration and 
distribution of essential supplies and services in any 
country or territory other than the State that is in grave 
30 distress; or 
if) for ensuring the public safety and the preservation of the 
State. 
(2) (a) Where the Government are of opinion that, owing to the 
existence of exceptional circumstances, it is desirable in 
35 the interests of the community that a power conferred by 
subsection (1) shall be available, they may by order declare 
that the power shall be available. 
(b) Where an order under paragraph (a) of this subsection is 
for the time being in force and the Government are of the 
40 opinion that the exceptional circumstances referred to in 
that paragraph no longer exist, they shall by order revoke 
the first-mentioned order. 
45 PART VI 
PROPERTY IN PATENT ApPLICATIONS AND PATENTS 
CONTRACT CONDITIONS 
79.-Subject to section 80, the rules of law applicable to the own-Nature of patent 
ership and devolution of personal property shall apply in relation to ~~r:D~~ioDS and Co-ownership of 
patent applications 
and patents. 
Detennination of 
entitlement to 
patents, etc. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 45 
[No. 1.] 
patent applications and patents as they apply in relation to other 
choses in action. 
80.-(1) Where a patent is applied for by, or is granted to. two or 
more persons, each of those persons shall, unless an agreement to 
the contrary is in force. be entitled to an equal undivided share in 
common in the patent application or patent, as the case may be. 
(2) Subject to the provisions of this section where two or more 
persons are entered in the register as applicants for or proprietors of 
a patent, then, unless an agreement to the contrary is in force, each 5 
of those persons shall be entitled, by himself or his agents, to do 10 
in respect of the invention concerned for his own benefit without 
accounting to the others any act which would, apart from this sub­
section, amount to an infringement of the patent application or patent 
concerned. 
(3) Subject to any agreement for the time being in force, a licence 15 
under a patent or a published patent application shall not be granted, 
and a share in a patent or in any such application shall not be assigned, 
except with the consent of all persons, other than the licensor or 
assignor, who are entered in the register as applicants for or pro-
prietors of the patent. 20 
(4) Subject to the provisions of this section, where two or more 
persons are entered in the register as applicants for or proprietors of 
a patent, any other person may supply one of those persons with 
means, relating to an essential element of the relevant invention, for 
putting the invention into effect, and the supply of those means by 25 
virtue of this section shall not amount to an infringement of the patent 
application or patent. 
(5) Where a product is sold by one of two or more persons who 
are entered in the register as applicants for or proprietors of a patent 
in respect of the product, the purchaser and any person claiming 30 
through him shall be entitled to deal with it in the same manner as if 
the product had been sold by a sole applicant for or sole proprietor 
of a patent relating to the product. 
(6) Nothing in subsection (1) or (2) shall affect the mutual rights 
or obligations of trustees or of the personal representatives of a 35 
deceased person, or their rights or obligations as such. 
81.-( 1) Any person may refer to the Court the question whether, 
by operation of law or otherwise, he is entitled (alone or jointly with 
any other person) to any patent granted or to be granted in the State 
for an invention, and the Court may make such order (including an 40 
order of apportionment) for giving effect to its decision as it considers 
expedient. 
(2) The Court on a reference under this section, or in the exercise 
of any declaratory or other jurisdiction, shall not determine a question 
whether a patent was granted to a person not entitled to be granted 45 
the patent if the reference was made or the action was commenced 
after the end of the period of two years beginning on the date of the 
grant, unless it is shown that any person registered as a proprietor of 
the patent knew at the time of the grant or, as the case may be, of 
the transfer or assignment of the patent to him, that he was not 50 
entitled to the patent. IP/N/lIIRL/P/l 
Page 46 
[1992.] Patents Act, 1992. [No. 1.] 
(3) An order under this section shall not be made so as to affect 
the mutual rights or obligations of trustees or of the personal represen­
tatives of a deceased person, or their rights or obligations as such. 
(4) When the Court finds on a reference under this section, or in 
5 the exercise of any declaratory or other jurisdiction, that a patent was 
granted to a person who was not entitled to be granted that patent 
(whether alone or with other persons) and on an application made 
under section 57 the Court or Controller makes an order by reason of 
the persons not being so entitled for the conditional or unconditional 
10 revocation of the patent, the Court or Controller may order that the 
person by whom the application was made or his successor in title 
may make a new patent application-
(a) in the case of unconditional revocation, for the whole of the 
matter comprised in the specification of that patent, and 
15 (b) in the case of conditional revocation, for the matter which 
in the opinion of the Court or the Controller should 
be excluded from the specification by amendment under 
section 38, 
and when such a new application is made, it shall be treated as having 
20 been filed on the date of filing of the application for the patent to 
which the reference or other proceedings relate and shall have the 
benefit of any right to priority. 
(5) A new patent application shall not be allowed to be filed under 
subsection (4) in respect of subject-matter which extends beyond the 
25 content of the original patent application. 
82.-(1) Where there is a complete change of proprietorship of a Effect of change of 
patent as a result of an order of the Court transferring the patent to proprietorship. 
one or more persons none of whom immediately before the transfer 
had a proprietary interest in the patent (on the ground that the patent 
30 was granted to a person who was not entitled to be granted the 
patent), then, subject to subsection (2), licences and other rights 
which, as regards the relevant patent, were in force immediately 
before such transfer shall lapse upon the entry in the register of the 
name of the person or persons entitled to the patent. 
35 (2) Where an order referred to in subsection (1) is made, the 
Controller shall notify the person or persons registered as proprietor 
or proprietors of the relevant patent and their licensees (if any) of 
whom he is aware, of the making of the order, and where the 
proprietor or proprietors or such a licensee acting in good faith has, 
40 before the commencement of the proceedings in which the order is 
made, used the invention within the State or made effective and 
serious preparations to do so, he may continue such use if, but only 
if, he requests, within the period prescribed, a non-exclusive licence 
under the patent from the new proprietor whose name is entered in 
45 the register. 
50 (3) A licence granted under subsection (2) shall be for a reasonable 
period and upon reasonable terms and failing agreement between the 
parties concerned the terms of the licence shall be determined by the 
Controller. 
83.-(1) It shall not be lawful to include in any contract in relation Avoidance of 
h ce~~~ to t e sale or lease of, or licence to use or work, any product or in contracts. [1992.] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 47 
[No. 1.] 
process which is the subject of a patent application or patent a 
condition which, directly or indirectly, would-
(a) prevent or restrict a party to the contract from using any 
product or process, whether or not the subject of a patent 
application or patent, which in either case is supplied or 5 
owned by any person other than a party to the contract 
or his nominee; 
(b) require any such party to acquire from any other such party, 
or his nominee, any product which is not the subject of a 
patent application or a patent; 10 
and any such condition, if so included, shall be null and void; provided 
that this subsection shall not apply if-
(i) the party seeking to rely on the condition proves that 
at the time the contract was entered into the party 
which the condition purports to bind had the option 15 
of purchasing the relevant product or obtaining a 
lease or licence in relation' thereto on reasonable 
terms, without the conditions described in paragraphs 
(a) and (b) of this subsection; and 
(ii) the contract entitles the party to the contract which 20 
the condition purports to bind to relieve himself of 
his liability to observe the condition on giving to the 
other party three months notice in writing and on the 
payment of compensation for such relief, in the case 
of a purchase, of such sum, or in the case of a lease 25 
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. 
(2) In any proceedings under this Act no person shall be estopped 
from applying for or obtaining relief by reason only of any admission 30 
made by him as to the reasonableness of the terms offered to him 
under paragraph (i) of the proviso to subsection (1). 
(3) Any contract for or relating to a lease of or a licence to use or 
work any product or process which, at the time when the contract is 
made, is the subject of one or more patent applications or one or 35 
more patents may, at any time after the patent or all of the patents, 
as may be appropriate, by which the product or process was protected 
or the patent or patents, as may be appropriate, resulting from such 
application or applications, has or have ceased to be in force, be 
determined by either party to the contract on giving three months 40 
notice in writing to the other party to the contract notwithstanding 
anything to the contrary contained in that or in any other contract. 
(4) The inclusion by the proprietor of or applicant for a patent in 
a contract of any condition which by virtue of this section is null and 
void shall be available as a defence to an action for infringement of 45 
the patent or application to which the contract relates brought while 
that contract is in force. 
(5) Nothing in this section shall-
(a) affect any condition in a contract whereby a person is pro­
hibited from selling any goods other than those of a 50 
particular person; or IP IN 11 IIRL/P 11 
Page 48 
[1992. ] Patents Act, 1992. [No. 1.1 
(b) be construed as validating any contract which would, apart 
from this section, be invalid; or 
(c) affect any right of determining a contract or conditions in a 
contract exercisable independently of this section; or 
5 (d) affect any condition in a contract for the lease of or licence 
to use a product which is the subject of a patent application 
or patent, whereby a party to the contract reserves to 
himself or his nominees the right to supply such new parts 
of the product as may be required to put or keep it in 
10 repair. 
PART VII 
REGISTER OF PATENTS; EVIDENCE OF REGISTER, DOCUMENTS, ETC. 
84.-{ 1) There shall continue to be kept at the Office a register to Register of patents. 
be known as the Register of Patents in which there shall be entered 
15 particulars of published patent applications, of patents in force, of 
assignments and transmissions of, and of licences under, patents and 
published applications, and notice of all matters which are required 
by or under this Act to be entered in the register and of such 
other matters affecting the validity or proprietorship of published 
20 applications and patents as the Controller thinks fit. 
(2) Rules under this section may make provision for the register, 
or entries or reproductions of entries in it, to be open to inspection 
by the public at all convenient times and for copies of any entry in 
the register to be given to any person requiring them on payment of 
25 the prescribed fee. 
(3) Rules under this section may make provision for the register, 
entries therein and reproductions thereof to be made and kept in any 
form whether by means of writing, printing, lithography, pho­
tography. electromagnetism or any electronic or other mode of retain-
30 ing, storing or reproducing information. 
(4) The register shall be prima facie evidence of any matters 
required or authorized by or under this Act to be entered therein. 
(5) No notice of any trust, whether express, implied or constructive, 
shall be entered in the register, and the Controller shall not be affected 
35 by any such notice. 
85.-(1) Where a person becomes entitled by assignment or trans­
mission, operation of law or any other mode of transfer to an interest 
in a published patent application or a patent, or to a share in such an 
application or patent, or becomes entitled as mortgagee, licensee or 
40 otherwise to any other interest in such an application or patent 
he shall apply to the Controller in the prescribed manner for the 
registration of his title as applicant or co-applicant, proprietor or co­
proprietor, or, as the case may be, of notice of his interest, in the 
register. 
45 (2) An application for the registration in the register of the title of 
any person becoming entitled by assignment to a published patent 
application or a patent, or a share in such an application or patent, 
or becoming entitled by virtue of a mortgage, licence or other instru­
ment to any other interest in such an application or patent, may be Assignment, etc. of 
patent applications 
and patents. [1992. ] Patents Act, 1992. IP IN I l/IRL/P 11 
Page 49 
[No. 1.] 
made in the prescribed manner by the assignor. mortgagor, licensor 
or other party to the instrument by which the assignment is made. 
(3) Where application is made under subsection (1) or (2) for the 
registration of the title of any person, the Controller shall, upon proof 
of title to his satisfaction- 5 
(a) that the person is entitled to an interest in a published patent 
application or a patent, or a share in such an application 
or patent, register him in the register as applicant or co­
applicant for the patent, or proprietor or co-proprietor of 
the patent, and enter in the register particulars of the 10 
instrument or event by which he derives title; or 
(b) that the person is entitled to any other interest in the applica­
tion or patent, enter in the register notice of his interest, 
with particulars of the instrument (if any) creating it. 
(4) An entry in the register that a person has an interest in a 15 
published patent application, or in a patent by virtue of a mortgage, 
licence or other instrument, may be cancelled by the Controller if he 
is satisfied, upon an application's being made in the prescribed manner 
by the person registered as applicant for the patent or proprietor of 
the patent, that such interest has ceased, and in case the Controller 20 
is so satisfied he shall note in the register the cancellation of such 
entry. 
(5) Subject to the provisions of this Act relating to co-ownership 
of patent applications and co-ownership of patents, and subject also 
to any rights vested in any other person of which notice is entered in 25 
the register, the person registered as applicant for a patent or pro­
prietor of a patent shall have power to assign, grant licences under, 
or otherwise deal with the application or patent, and to give effectual 
receipts for any consideration for any such assignment, licence or 
dealings; provided that any equities in respect of the application or 30 
patent may be enforced in like manner as equities arising in respect 
of any other personal property. 
(6) Rules under this Act may require the supply for the purposes 
of this section to the Controller for filing at the Office of copies of 
such deeds, licences and other documents as may be prescribed. 35 
(7) Except for the purposes of an application to amend the register 
under section 86, a document in respect of which no entry has been 
made in the register under subsection (3) shall only be admitted in 
any court as evidence of the title of any person to a patent application 
or patent or share of or interest in a patent application or patent if 40 
the court so directs. 
(8) If the Controller is satisfied, on a claim made in the prescribed 
manner at any time before a patent is granted, that, by virtue of 
any assignment or agreement made by the applicant or one of the 
applicants. or by a decision under section 81, the claimant would, if 45 
the patent were then granted, be entitled thereto or to the interest of 
the applicant therein, or to an undivided share of the patent or of 
that interest, the Controller shall direct that the application shall 
proceed in the name of the claimant or in the names of the claimant 
and the applicant or each of the other such applicants, according as 50 
the case may require; provided that no such direction as aforesaid 
shall be given by virtue of any assignment or agreement made by one 
of two or more joint patent applicants except with the consent of the 
other joint applicant or each of the other such applicants. IP/NI1 IIRL/PI1 
Page 50 
[1992.] Patents Act, 1992. [No. 1.] 
86.-( 1) Subject to subsection (7), the Court may, on the applica- Power of Court to 
tion in the prescribed manner of any person aggrieved by the non-amend register. 
insertion in, or omission from, the register of any entry, or by any 
entry made in the register without sufficient cause, or by any entry 
5 wrongly remaining in the register, or by an error or defect in any 
entry in the register, make such order for making, expunging, or 
varying such entry as it may think fit. 
(2) The Court may in any proceedings under this section decide 
any question that it may be necessary or expedient to decide in 
10 connection with the amendment of the register. 
(3) The prescribed notice of any application under this section shall 
be given to the Controller, who shall have the right to appear and be 
heard thereon, and shall appear if so directed by the Court. 
(4) Unless otherwise directed by the Court, the Controller may, in 
15 lieu of appearing and being heard, submit to the Court a statement 
in writing, signed by him, giving particulars of the proceedings before 
him in relation to the matter in issue, or of the grounds of any decision 
given by him affecting the same, or of the practice of the Office in 
like cases, or of such matters relevant to the issues, and within his 
20 knowledge as Controller, as he shall think fit, and such statement 
shall be deemed to form part of the evidence in the proceedings. 
(5) In the case of fraud in the registration or transmission of a 
patent application or a patent, the Controller may apply on his own 
motion to the Court under this section. 
25 (6) Any order of the Court for the amendment of the register shall 
provide for service of notice of the amendment on the Controller in 
the prescribed manner and on receipt of any such notice the Controller 
shall amend the register in accordance with the terms of the order to 
which the notice relates. 
30 (7) Any application under this section (other than an application 
by the Controller) may, at the option of the applicant, be made in 
the first instance to the Controller, and in such case the Controller 
shall have all the powers of the Court under this section to decide the 
matter. 
35 87.-( 1) A certificate purporting to be under the hand of the 
Controller as to any entry, matter, or thing which he is authorized by 
this Act to do, or by any rules made thereunder, to make or do. shall 
be prima facie evidence of the entry having been made. and of the 
contents thereof, or, as may be appropriate, of the matter's or thing's 
40 having been done or left undone. 
(2) Copies or extracts, purporting to be certified by the Controller 
or an officer of the Controller and sealed with the seal of the Con­
troller, and purporting to be of or from applications for patents, 
patents, or other documents or books in the Office, or of or from 
45 registers kept there shall be admitted in any legal proceedings as 
prima facie evidence without further proof or production of the 
originals. Certificate of 
ControUer and 
certified copies of 
documents to be 
evidence. 
88.--{1) After publication of a patent application under section 28 Information about 
the Controller shall, on a request's being made in the prescribed ~~e~=:ti~~ 
50 manner and on payment of the prescribed fee, give the person making and patents. 
the request such information as may be prescribed and permit him to [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 51 
[No. 1.] 
inspect such documents, relating to the application or to any patent 
granted in pursuance of the application, as may be specified in the 
request subject, however, to any prescribed restrictions. 
(2) Subject to subsection (3), until a patent application is published 
under section 28, documents or information constituting or relating 5 
to the application shall not, without the consent of the applicant, be 
published or communicated to any person by the Controller. 
(3) Subsection (2) shall not prevent the Controller from-
(a) sending the European Patent Office information which it is 
his duty to send that office under the European Patent 10 
Convention; or 
(b) publishing or communicating any prescribed bibliographic 
information about an uapublished patent application; or 
(c) giving information as to whether an unpublished patent 
application has been either withdrawn or is deemed to be 15 
withdrawn. ' 
Request for search. 89.-The Controller may, on a request being made to him in the 
prescribed manner by any person, and on payment of the prescribed 
fee, cause a search to be made as regards any product, process or 
apparatus specified by the person making the request and amongst 20 
such categories of documents as are so specified, being categories of 
documents which for the tiine being stand prescribed for the purposes 
Exercise of 
discretionary power 
by Controller. 
Costs and security 
for costs. of this section and cause to be furnished the results of such search to 
the person. 
PART VIII 25 
PROCEEDINGS BEFORE THE CONTROLLER OR THE COURT 
90.-Where any discretionary power is by or under this Act given 
to the Controller, he shall not exercise that power adversely to any 
applicant for or proprietor of a patent or to any party in any proceeding 
before him without giving that applicant, proprietor or party an 30 
opportunity of being heard as regards such exercise. 
91.--{l) The Controller may, in any proceeding before him under 
this Act, order the payment to any party of such costs (if any) as he 
may consider reasonable, and direct how and by what parties they 
are to be paid, and any such order may be made a rule of court. 35 
(2) If any party by whom notice of any opposition is given to the 
Controller under this Act or by whom an application is made to the 
Controller for the revocation of a patent or for the grant of a licence 
under a patent, or by whom notice of appeal is given from any decision 
of the Controller under this Act, neither resides nor carries on 40 
business in the State or in such other states as may be prescribed, the 
Controller, or, in the case of an appeal, the Court, may require the 
party to give security for the costs of the proceedings and in default 
of a requirement under this subsection being complied with the 
Controller or the Court, as may be appropriate, may treat the oppos- 45 
ition, application or appeal as abandoned. IP IN 11 IIRL/P 11 
Page 52 
5 [1992.] Patents Act, 1992. [No. 1.] 
92.-(1) In any proceeding under this or any other enactment 
before the Controller, evidence shall be given by statutory declaration 
in the absence of directions to the contrary; but in any case in which 
the Controller thinks it right so to do he may take evidence viva voce 
in lieu of or in addition to evidence by such declaration. 
(2) Any such statutory declaration in pursuance of subsection (1) 
may in the case of an appeal be used in lieu of evidence on affidavit, 
but if so used shall have all the incidents and consequences of evidence 
on affidavit. 
10 (3) The Controller may for the purposes of any of the functions 
assigned to him by this Act do all or any of the following things-
(a) summon witnesses to attend before him; 
(b) examine on oath or affirmation (which he is hereby autho­
rized to administer) or permit the examination on oath or 
15 affirmation of the witnesses attending before him; 
(c) require any such witness to produce to him any document 
relevant to the proceedings and which is within his power 
to produce; 
(cl) permit evidence to be given on affidavit or other sworn 
20 testimony instead of, or in addition to, evidence given by 
statutory declaration, or orally. 
(4) A witness summons under this section shall be signed by the 
Controller. 
(5) A witness before the Controller shall be entitled to the same 
25 immunities and privileges as if he were a witness before the Court. 
(6) If any person-
(a) on being duly summoned as a witness before the Controller 
makes default in attending, or 
(b) being in attendance as witness refuses to take an oath or 
30 affirmation duly required by the Controller to be taken, 
or to produce any document which is within his power to 
produce and which is duly required by the Controller to 
be produced by him, or to answer any question to which 
the Controller may properly require an answer, 
35 he shall be guilty of an offence and shall be liable on summary 
conviction to a fine not exceeding £1,000. 
93.-Any party to a proceeding before the Controller under this 
Act may be represented by counsel or a solicitor, or by a patent agent 
who is for the time being registered in the register within the meaning 
40 of Pan X, or may appear before the Controller in person or be 
represented by any other person, whom he desires to represent him, 
being a person to whom section 106 (3) applies. 
94.-(1) A communication to which this section applies shall be 
privileged from disclosure in any proceeding (including a proceeding 
45 before the Controller or competent authority under the European 
Patent Convention or the Treaty) to the same extent as a com­
munication between client and solicitor is privileged in any proceeding 
before a court in the State. Evidence before 
ControUer. 
Right of audieDce 
belore CoDtroller. 
Privileged 
communicatioDs. Assessors. 
Ap~als from 
deCIsions of 
Controller. [1992. ] Patents Act, 1992. 
(2) This section applies to a communication-IP IN 11 IIRL/P 11 
Page 53 
[No. 1.] 
(a) between a person. or person acting on his behalf and a 
solicitor or patent agent, or person acting on his behalf, 
or 
(b) for the purpose of obtaining, or in response to a request for, 5 
information which a person is seeking for the purpose of 
instructing a solicitor or patent agent 
in relation to any matter concerning the protection of an invention, 
patent, design or technical information or any matter involving passing 
off. 10 
(3) In this section "patent agent" means a person registered as a 
patent agent in the register of patent agents, a company or partnership 
lawfully practising as a patent agent in the State or a person or 
partnership who satisfies the condition mentioned in subsection (1) or 
(3) of section 125. 15 
9S.-{1) In an action or proceedings for infringement or revocation 
of a patent, or other proceedings under this Act, 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 in the opinion of the 
Court, and try the case wholly or partially with his assistance. 20 
(2) The Supreme Court may, if it thinks fit, in any proceedings 
before it relating to a patent application or a patent call in the aid of 
an assessor as aforesaid. 
(3) The remuneration, if any, to be paid to an assessor under this 
section shall be determined by the Court or the Supreme Court, as 25 
may be appropriate, and be paid as part of the expenses incurred by 
the Minister in the administration of this Act. 
96.-{1) An appeal to the Court shall lie from any decision or 
order of the Controller other than a decision under section 22 (2) or 
section 28 (5). 30 
(2) Any appeal under this Act which concerns a patent application 
which has not been published shall be heard in private. 
(3) In any appeal under this Act the Controller shall be entitled to 
appear or be represented and be heard in support of his decision and 
shall appear if so directed by the Court. 35 
(4) In any appeal under this Act the Court may exercise any power 
which could have been exercised by the Controller in the proceedings 
from which the appeal is brought. 
(5) Rules of court for the conduct of appeals under this Act may 
include provisions for the appointment of scientific advisers to assist 40 
the Court, and for regulating the functions of such advisers; and the 
remuneration of any such scientific adviser shall be defrayed out of 
moneys provided by the Oireachtas. 
(6) Save where otherwise provided in this Act, an appeal, except 
by leave of the Court, from an order or decision of the Controller 45 
shall not be entertained unless notice to the Court is given within the 
period of three months beginning on the date of the order or decision 
appealed against. 
(7) An appeal to the Supreme Court from a decision of the Court 
under this section shall lie only on a question of law. 50 IP/N 11/IRL/P 11 
Page 54 
[1992. ] Patents Act, 1992. [No. 1.] 
(8) In an appeal under this Act the Controller shall not be awarded 
or be ordered to pay costs. 
PART IX 
THE CONTROLLER: SUPPLEMENTARY PROVISIONS 
5 97.-(1) (a) The Government shall appoint as occasion arises a fit Appointment of 
person to the office of Controller who shall hold office Controller. 
on such terms and conditions as the Government 
shall, at the time the appointment is made, determine. 
(b) The person holding the office of Controller immedi-
10 ately before the commencement of this section shall 
continue to hold that office on the same terms and 
conditions, including conditions as to superannuation 
or other allowance or gratuity, as those on which he 
held the office theretofore. 
15 (2) The Controller shall receive such remuneration as the Minister 
for Finance shall determine. 
(3) The Controller shall be a civil servant in the Civil Service of 
the State. 
(4) Whenever the Controller is temporarily unable to attend to his 
20 duties or his office is vacant, the Minister may appoint a person to 
perform the duties of the Controller during such inability or vacancy, 
and every person so appointed shall for as long as the appointment 
remains in force have all the powers of the Controller under this 
Act and as otherwise determined by law and shall receive such 
25 remuneration as the Minister shall, with the sanction of the Minister 
for Finance, direct. 
(5) The Controller may authorize any of his officers to exercise any 
of his functions under this Act or any other enactment and any such 
function shall, when exercised for the purpose of such enactment, be 
30 deemed to have been exercised by the Controller. 
(6) An-authorization under subsection (5)-
(a) may be made subject to such directions as the Controller 
may specify, 
(b) shalL while in force, not prevent the discharge by the Con-
35 troller of the functions thereby delegated, and 
(c) may at any time be modified or revoked by the Controller. 
98.-( 1) The officers of the Controller shall be appointed by the 
Minister and there shall be such number of officers as the Minister, 
with the sanction of the Minister for Finance, may consider necessary 
40 and those persons shall hold office upon such terms and be remuner­
ated at such rates and in such manner as the Minister for Finance may 
sanction. 
(2) The salaries or remuneration of the Controller and his officers 
and such other expenses of carrying this Act into effect' as may be 
45 sanctioned by the Minister for Finance shall be paid out of moneys 
provided by the Oireachtas. 
(3) Persons who immediately before the commencement of this 
section were officers of the Controller shall continue to hold office Appointment of 
officers of 
Controller. Fees. 
Official J OUInal and 
publication of 
information. 
Certain reports to 
be privileged. 
Controller may 
apply to Attorney 
General for advice. 
Annual report. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 55 
[No. 1.] 
under this Act on the same terms and conditions (subject to the 
provisions of this Act) as theretofore. 
99.-( 1) There shall be charged by the Controller and paid in 
respect of matters relating to applications for and the grant and 
renewal of patents or other matters determined by law as coming 5 
within the functions of the Controller, such fees as may from time to 
time be prescribed by the Minister with the sanction of the Minister 
for Finance. 
(2) All fees charged by the Controller under this section shall be 
collected and accounted for in such manner as shall be determined 10 
by the Minister with the consent of the Minister for Finance. 
(3) The Public Offices Fees Act, 1879, shall not apply in respect of 
any fees payable under this section. 
100.-(1) The Controller shall issue periodically a journal to be 
known as the Patents Office Journal (which is referred to in this Act 15 
as "the Journal") in which he shall include all matters which he is 
directed by this Act or otherwise by law to publish in the Journal and 
also such matters and information as appear to him to be useful or 
important in relation to patents or applications for patents and other 
matters for which he is responsible under this Act or otherwise by 20 
law and references in any enactment to the Official Journal of Indus­
trial and Commercial Property shall each be construed as including a 
reference to the Journal. 
(2) The Controller may prepare for publication and publish such 
matters, records and information as appear to him to be useful or 25 
important in relation to inventions, designs, patents, trade marks, 
copyright and patent and trade mark applications whether the matters, 
records or information originate within the State or elsewhere. 
(3) The Controller shall make provision for the sale of copies of 
all documents which he is, by law, directed to issue or publish and 30 
may make such provision as he deems expedient for· the sale of 
copies of other documents, information or records which he is by law 
authorized to publish. 
101.-Except as provided by this Act or as prescribed by the 
Minister, reports of the Controller and officers of the Controller made 35 
under this Act or under any other enactment for the administration 
of which the Controller is responsible shall not be published or be 
open to public inspection and shall not be liable to production or 
inspection in any legal proceedings unless the Court or any officer 
having power to order discovery in such proceedings certifies that 40 
such production or inspection is desirable in the interests of justice 
and ought to be allowed. 
102.-The Controller may, in any case of doubt or difficulty arising 
in the administration of any of the provisions of this Act or of any 
other enactment for the administration of which he is responsible, 45 
apply to the Attorney General for advice in the matter. 
103.-The Controller shall prepare a report in respect of eac~ year 
ending 31st December respecting the execution ~~ or ll:llderhim. of 
this Act and of any other enactment for the administratIon of which IP IN 11 IIRL/P 11 
Page 56 
[1992. ] Patents Act, 1992. [No. 1.] 
he is responsible and he shall cause the report to be laid before each 
House of the Oireachtas within 6 months following the end of the 
year to which it relates. The report shall include, in respect of the 
year to which it relates, particulars of all rules made in that year under 
5 or for the purposes of the said Act or enactments and an account of 
all fees, salaries and allowances, and other money received and paid 
under the Act or enactments. 
104.-( 1) Rules made by the Minister under section 114 may specify Hours of business 
the hour at which the Office shall be deemed to be closed on any day and excluded days. 
10 for the purpose of the transaction by the public of business under this 
Act or such other business as may by law be made a function of the 
Controller or of any class of such business, and may specify days as 
excluded days for any such purposes. 
(2) Any business done under this Act on any day after the hour 
15 specified as aforesaid or on a day which is an excluded day, in relation 
to business of that class, shall be deemed to have been done on the 
next following day not being an excluded day; and where the time for 
doing anything under this Act expires on an excluded day, the time 
shall be extended to the next following day not being an excluded 
20 day. 
PART X 
PATENT AGENTS 
105.-(1) SUbject to rules under section 109 (2) or 114, whenever Authorized agent 
under this Act any act has to be done by or to any person in connection may act. 
25 with a patent or any procedure relating to a patent or the obtaining 
thereof, the act may be done by or to an agent (in this Act referred 
to as a "patent agent") of such person duly authorized in the pre­
scribed manner. 
(2) A person duly authorized by another person under subsection 
30 (1) to act as his patent agent may (subject to any provision to the 
contrary in any agreement between the patent agent and that person) 
on giving notice to the Controller and the other person, cease to act 
as patent agent for the other person. 
106.-(1) The register which, immediately before the com-Llnauthorized claim 
35 mencement of this section, was known as the register of patent agents to be patent agent. 
shall continue to be known as such and to be maintained by the 
Controller (which register is in this Part referred to as "the register"). 
(2) Subject to the subsequent provisions of this section-
(a) a person acting for gain shall not, either alone or in part-
40 nership with any other person, practise, describe himself 
or hold himself out as a patent agent, or permit himself 
to be so described or held out, unless he is for the time 
being registered as a patent agent in the register, or, in 
case he is a member of a partnership holding itself out 
45 as patent agents, unless he and all his partners are so 
registered; 
(b) a company acting for gain shall not practise, describe itself 
or hold itself out or permit itself to be described or held 
out as aforesaid unless every director of the company and, Entitlement to be 
registered as patent 
agent. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 57 
[No. 1.] 
if the company has a manager who is not a director, that 
manager, is registered as aforesaid. 
(3) The Minister may, at his discretion, permit any person not 
registered as aforesaid, upon application made by that person, to act 
on behalf of others for the purpose of obtaining patents subject to 5 
any conditions he considers appropriate. 
(4) The legal personal representative of a deceased patent agent 
may carry on the business or practice of the deceased patent agent 
for a period not exceeding three years from the death of the patent 
agent, or for such further period (if any) as the Court allows, if he is 10 
authorized by the Court to manage the business or practice or employs 
another person who is so authorized to manage the business or 
practice on his behalf. 
(5) Any person who contravenes any provision of this section shall 
be guilty of an offence and shall be liable on summary conviction to 15 
a fine not exceeding £500 in the case of a first offence, and in the case 
of a second or subsequent offence, £1,000. 
(6) Notwithstanding section 10 (4) of the Petty Sessions (Ireland) 
Act, 1851, proceedings for an offence under this section may be begun 
at any time within twelve months from the date of the offence. 20 
(7) Nothing in this Act shall be construed as prohibiting solicitors 
from taking such part in proceedings under this Act as has heretofore 
been taken by solicitors in connection with a patent or any procedure 
relating to a patent or the obtaining thereof. 
(8) A patent agent shall not be guilty of an offence under section 25 
58 of the Solicitors Act, 1954 (which prohibits the preparation for 
reward of certain instruments by persons not legally qualified), by 
reason only of the preparation by him of a deed assigning the right 
to make an application for a patent, or the property in a patent 
application or a patent, or any document (not being a deed) for use 30 
in proceedings under this Act before the Controller or the Court. 
107.-(1) Any person who-
(a) resides in the State or in such other state as may be prescribed, 
(b) has a place of business in the State, 
(c) possesses the prescribed educational and professional qual-35 
ifications, and 
(d) complies with the prescribed conditions, 
shall be eligible to be registered in the register and a partnership shall 
be so eligible if every partner thereof is registered in accordance with 
the provisions of this section and a person or partnership so eligible 40 
shall on application in the prescribed form and manner and on 
payment of the prescribed fee be so registered. 
(2) Persons and partnerships whose names were entered in the 
register under the Act of 1964 immediately before the commencement 
of this Act shall be deemed to be registered in the register. 45 IP/NIlIIRL/PI 1 
Page 58 
[1992. ] Patents Act, 1992. [No. 1.] 
108.-( 1) Any person registered in the register who applies to the 
Controller to be removed from the register may be removed by the 
Controller. 
(2) Where. in the opinion of the Controller. a person registered in 
5 the register ceases to be eligible to be registered or has been gUilty of 
conduct disgraceful to that person in his capacity as a patent agent 
the Controller may decide that the name of that person should be 
erased from the register or that during a period of specified duration 
registration of his name in the register should not have effect. but no 
10 such decision shall be made without giving that person an opportunity 
of being heard. 
(3) On making a decision under subsection (2), the Controller shall 
forthwith send by post to the person to whom the decision relates, at 
his address as stated in the register, a notice in writing stating the 
15 decision, the date thereof and the reason therefor. 
(4) On giving notice to the Controller in the prescribed manner, a 
person to whom a decision under this section relates may, within the 
period of 21 days. beginning on the date of the decision, apply to the 
Court for cancellation of the decision and if he so applies--
20 (a) the Court, on hearing the application. may either-
25 (i) cancel the decision, or 
(ii) declare that it was proper for the Controller to make 
a decision under this section in relation to such person 
and either (as the Court may consider proper) direct 
the Controller to erase his name from the register or 
direct that during a specified period (beginning not 
earlier than 7 days after the decision of the Court) 
registration of his name in the register shall not have 
effect. 
30 (b) If at any time the Controller satisfies the Court that such 
person has delayed unduly in proceeding with the appli­
cation. the Court shall, unless it sees good reason to the 
contrary, declare that it was proper for the Controller to 
make a decision under this section in relation to such 
35 person and either (as the Court may consider proper) 
direct the Controller to erase his name from the register 
or direct that during a specified period (beginning not 
earlier than 7 days after the decision of the Court) regis­
tration of his name in the register shall not have effect. 
40 (5) The Controller shall not be awarded or be ordered to pay costs 
on an application under this section. 
(6) Where a person to whom a decision of the Controller under 
this section relates does not, within the period of 21 days beginning 
on the date of the decision, apply to the Court for cancellation of 
45 the decision, the Controller may apply ex parte to the Court for 
confirmation of the decision and, if the Controller so applies, the 
Court on the hearing of the application shall, unless it sees good 
reason to the contrary, declare accordingly and either (as the Court 
may consider proper) direct the Controller to erase the name of such 
50 person from the register or direct that during a specified period 
(beginning not earlier than 7 days after the decision of the Court) 
registration of his name in ,the register shall not have effect. Removal from 
register or 
suspension of 
regIstration of 
patent agents. Rules relating to 
patent agents. 
Correction of 
errors. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 59 
[No. 1.] 
(7) The decision of the Court on an application under this section 
shall be final, save that, by leave of the Court or the Supreme Court, 
an appeal, by the Controller or the person concerned, from the 
decision shall lie to the Supreme Court on a specified question of law. 
(8) (a) On erasing the name of a person from the register the 5 
Controller shall forthwith send by pre-paid post to such 
person, at his address as stated in the register, notice in 
writing of the erasure. 
(b) Where a direction is given under this section that during a 
specified period registration of the name of a person in 10 
the register shall not have effect, the Controller shall, 
before the commencement of that period, send by pre­
paid post to such person, at his address as stated in the 
register, notice in writing of such direction. 
(9) The name of any person which has been erased from the register 15 
may at any time be restored to the register by direction of the 
Controller but not otherwise, and when a person's name is so restored 
to the register, the Controller may attach to the restoration such 
conditions (including the payment of a fee not exceeding the fee which 
would be payable by such person for registration if he was then being 20 
registered for the first time) as he thinks fit. 
(10) Where the registration of a person in the register has ceased 
to have effect under this section for a period of specified duration, 
the Controller may, if he so thinks fit, on application made to him by 
such person, by direction terminate the suspension. 25 
109.-{1) The Minister may make rules for the management of the 
register and may by such rules prescribe any matter or thing referred 
to in section 107 or 108 as prescribed, and in particular may so prescribe 
the educational and professional qualifications and the conditions 
(including conditions relating to nationality or citizenship) for eligi-30 
bility for registration in the register, and the maximum fees which 
may be charged by any person registered in the register for such 
services in connection with the obtaining of patents as may be specified 
in such rules. 
(2) Rules under this section may authorize the Controller to refuse 35 
to recognise as agent in respect of any business under this Act any 
person who does not satisfy the requirements of section 106. 
(3) Rules under this section may authorize the Controller to refuse 
to recognise as agent in respect of any business under this Act a 
company or firm of which any director or manager or any partner (as 40 
the case may be) is an individual whom the Controller could refuse 
to reC<?gnise as an agent. 
PART XI 
MISCELLANEOUS 
110.-{1) (a) The Controller may, in accordance with the pro-45 
visions of this section, correct any linguistic error, 
error of transcription, clerical error or mistake in any 
specification of a patent, any application for a patent, 
or any document filed in pursuance of such an appli-
cation, or any error in the register. 50 IP/N/I/IRL/P/I 
Page 60 
[1992.] Patents Act, 1992. [No. 1.] 
(b) The power conferred on the Controller by paragraph 
(a) of this subsection is in addition to the powers 
conferred on him by section 86 (7). 
(2) A correction may be made in pursuance of this section either 
5 upon a request made in the prescribed manner by any person 
interested and accompanied by the prescribed fee, or without such a 
request. 
(3) Where the Controller proposes, or a request is made, to make 
a correction referred to in subsection (1), he shall before determining 
10 the matter give notice of the proposal or the request to the proprietor 
of or applicant for the patent, as the case may be, and to any person, 
other than the person by whom a request is made, who appears to 
him to be concerned. 
111.-If any person makes or causes to be made a false entry in Falsification of 
15 any register kept under this Act, or a writing falsely purporting to be register, etc. 
a copy of an entry in any such register, or produces or tenders or 
causes to be produced Qr tendered in evidence. any such writing, 
knowing the entry or writing to be false, he shall be guilty of an 
offence and shall be liable on summary conviction to a fine not 
20 exceeding £1,000, or, at the discretion of the court, to imprisonment 
for any term not exceeding six months or to both such fine and such 
imprisonment. 
112.-(1) If any person falsely represents that any product sold by Unauthorized claim 
him is patented, he shall be guilty of an offence and shall be liable on of patent rights. 
25 summary conviction to a fine not exceeding £1,000. 
(2) For the purpose of this section a person who sells a product 
having stamped, engraved or impressed thereon, or otherwise applied 
thereto, the word "patent" or "patented", or any word expressing or 
implying that the product is patented, shall be deemed to represent 
30 that the product is patented. 
113.-If any person uses on his place of business, or on any F~ suggestio~ of 
document issued by him, or otherwise, any words suggesting that his ~tb~ffi'~ection 
place of business is officially connected with, or is, the Office, he shall . 
be guilty of an offence and shall be liable on summary conviction 
35 thereof to a fine not exceeding £500. 
114.-( 1) The Minister may make such rules (except in relation to Power of Minister 
any matter appropriate to be provided for by rules of court) and do to make rules. 
such things as he thinks expedient, subject to the provisions of this 
Act-
40 (a) for prescribing the form and contents of applications for 
patents and other documents which may be filed at the 
Office, and for requiring copies to be furnished of any 
such documents; 
(b) for regulating the procedure to be followed in connection 
45 with any proceedings or other matter before the Controller 
and for authorizing the rectification of irregularities of 
procedure; 
(c) for requiring fees to be paid in connection with any such 
proceedings or matter or in connection with the provision Service of notice, 
etc. by post. 
Articles forfeited 
under law. 
Extent of territorial 
protection. [1992. ] Patents Act, 1992. IP IN 11/IRL/P 11 
Page 61 
[No. 1.] 
of any service by the Office and providing for the remission 
of fees in prescribed circumstances; 
(d) for prescribing the circumstances under which a person is 
required to be represented by a patent agent who is for 
the time being registered in the register within the meaning 5 
of Part X and act through him in proceedings under this 
Act; 
(e) for prescribing time limits for doing anything required to be 
done in connection with any such proceedings by or under 
this Act and providing for the alteration of any period of 10 
time specified in or under this Act; 
(j) for prescribing how periods of time are to be calculated; 
(g) for regulating the publication, sale and contents of anything 
which the Controller is by this Act required or authorized 
to publish; 15 
(h) for regulating the presentation of copies of publications made 
under this Act to applicants for and J1I'oprietors of patents 
and to public authorities, bodies and institutions (whether 
in or outside the State); 
(i) for regulating the maintenance and keeping of the Register 20 
of Patents and the register referred to in paragraph (d); 
U) for prescribing any matter or thing referred to in this Act as 
prescribed; 
(k) for doing anything which is either by Article 9 of the First 
Schedule or otherwise by this Act authorized or required 25 
to be done or is in this Act referred to as being, or to be 
done, by rules under this Act; 
(l) generally for regulating the business of the Office and any­
thing which by this Act is placed under the direction or 
control of the Controller. 30 
(2) Without prejudice to subsection (1), the Controller may adopt 
such procedures for giving effect to this Act as appear to him to be 
appropriate. 
115.-Any notice required or authorized to be given by or under 
this Act, and any application or other document so required or 35 
authorized to be made or filed, may be given, made or filed by post 
or by any other prescribed means. 
116.-Nothing in this Act shall affect the right of the State, or of 
any person deriving title directly or indirectly from the State, to sell or 
use any products forfeited under the Customs Acts or any enactment 40 
relating to the excise. 
117.-For the avoidance of doubt, it is hereby declared that this 
Act applies to the following waters, namely, the waters in the portion 
of the sea which comprises the territorial seas of the State, the waters 
in all the areas of the sea to which the internal or inland waters of the 45 
State are extended by section 5 of the Maritime Jurisdiction Act, 
1959, and the waters in any area which is for the time being a IP/NIlIIRL/PI 1 
Page 62 
[1992. ] Patents Act, 1992. [No. 1.] 
designated area within the meaning of section 1 of the Continental 
Shelf Act, 1968. 
118.-Neither the Minister, the Controller nor any officer of the Immunity of 
Minister or Controller shall- ~~~~U~r and 
officers as regards 
5 (a) be taken to warrant the validity of any patent granted under official acts. 
this Act or any treaty or international convention to which 
the State is a party; or 
Cb) incur any liability by reason of or in connection with any 
search. examination or investigation carried out under the 
10 provisions of this Act or any such treaty or convention or 
any report, communication or proceeding consequent on 
any such search, examination or investigation. 
PART XII 
PROVISIONS REGARDING INTERNATIONAL CONVENTIONS 
15 119.-(1) Subject to the provisions of this Act, a European patent Effect of European 
designating the State shall, as from the publication of the mention of patent. 
its grant in the European Patent Bulletin, be treated for the purposes 
of this Act as if it were a patent under this Act granted in pursuance 
of an application made under Part II and as if notice of the grant of 
20 the patent had, on the date of the publication, been published under 
section 34 in the Journal, and in addition to the foregoing the following 
shall apply: 
(a) the proprietor of a European patent designating the State 
shall, accordingly, as respects the State have the same 
25 rights and remedies and be subject to the same conditions, 
as the proprietor of a patent granted under this Act; 
(b) references in this Act to a patent shall be construed accord­
ingly; and 
(c) any statement made and any certificate filed for the purposes 
30 of the provision of the European Patent Convention cor­
responding to section 12 (1) (b) shall be treated respect­
ively as a statement made and certificate filed for the 
purposes of section 12 (1) (b). 
(2) Subsection (1) shall not affect the operation in relation to a 
35 European patent designating the State of any provisions of the Euro­
pean Patent Convention relating to the amendment or revocation of 
such a patent in proceedings before the European Patent Office. 
(3) Where, after proceedings for the infringement of a European 
patent designating the State have been commenced before the Court 
40 but have not been finally disposed of, it is established in proceedings 
before the European Patent Office that the patent is only valid in 
part, section 50 shall, without prejudice to the jurisdiction of the 
Court concerning the validity of the European patent insofar as it 
designates the State, apply in relation to such patent in the same 
45 manner as it applies to proceedings in which the validity of a patent 
granted under this Act is put in issue and in which it is found that the 
patent so granted is only valid in part. 
Dl_Subject to subsection (6), where a European patent designating Effect of filing 
application for 
European patent. [1992. ] Patents Act, 1992. IP IN 11/IRL/P 11 
Page 63 
[No. 1.] 
the State is amended or revoked in accordance with the European 
Patent Convention, the amendment shall be treated for the purposes 
of this Act as if it had been made, or where appropriate, the patent 
shall be treated for those purposes as having been revoked, under 
this Act. 5 
(5) Where-
(a) under the European Patent Convention a European patent 
designating the State is revoked for failure to observe a 
time limit and is subsequently restored; and 
(b) between the revocation and publication of the fact that it has 10 
been restored a person begins in good faith to do an 
act which would, apart from section 77, constitute an 
infringement of the patent or makes in good faith effective 
and serious preparations to do such an act; 
he shall have the same protection as if an order had been made under 15 
section 37 (7). 
(6) (a) Subsection (1) shall not apply to a European patent desig­
nating the State and whose specification was published in 
French or German, unless a translation in English of the 
specification is filed at the Office and the prescribed fee is 20 
paid before the end of the prescribed period. 
(b) Subsection (4) shall not apply to an amendment made in 
French or German unless a translation in English of the 
specification as amended is filed at the Office and the 
prescribed fee is paid before the end of the prescribed 25 
period. 
(7) Where such a translation is not filed in accordance with sub­
section (6), the patent shall be treated as always having been void. 
(8) The Controller shall publish any translation filed at the Office 
under subsection (6). 30 
120.-(1) (a) An application for a European patent designating the 
State and having a date of filing under the European 
Patent Convention shall be treated for the purposes 
of the provisions of this Act specified in subsection 
(2) as an application for a patent under this Act having 35 
the said date as its date of filing under this Act. 
(b) This Act shall apply to an application described 
in paragraph (a) of this subsection subject to the 
modifications specified in subsection (3). 
(2) The provisions of this Act referred to in subsection (1) are 40 
sections 11 (3), 25, 26, 27, 44, 45, 46, 55, 56, 62, 76, 77, 78, 79, 80, 
83, 84 and 85 together with section 17 (3) in so far, and only in so far, 
as it provides for the making of a request to and a finding by the 
Controller and section 22 in so far as it restricts the application of 
section 11 (3). 45 
(3) The modifications referred to in subsection (1) are the following: 
(a) any declaration of priority made in connection with the 
application under the European Patent Convention shall 
be treated for the purposes of this Act as a declaration of 
priority under section 26 (1); 50 IP IN I1/IRL/P 11 
Page 64 
[1992. ] Patents Act, 1992. [No. 1.] 
(b) where a period of time relevant to priority is extended under 
the said convention, the reference in section 25 (1) shall 
in relation to the application be regarded as being a 
reference to a period equal to the period as so extended; 
5 (c) where the date of filing an application is re-dated under that 
convention to a later date, that date shall be so treated as 
the date of filing the application; 
(d) the application, if published in accordance with the said 
convention, shall, subject to subsection (6), be treated as 
10 having been so published under section 28; 
(e) any designation of the inventor under the said convention or 
any statement under it indicating the origin of the right to 
a European patent shall be treated for the purposes of 
section 17 (3) as a statement filed under section 17 (2); 
15 if) registration of the application in the Register of European 
Patents shall be treated as registration in the register; 
(g) the provisions of section 35 shall not apply to suc::h an applica- • 
tion. 
(4) Subsections (1), (2) and (3) shall cease to apply to an application 
20 for a European patent designating the State when the application is 
refused or withdrawn or deemed to be withdrawn, or the designation 
of the State in the application is withdrawn or deemed to be with­
drawn, but if the rights of the applicant are re-established under the 
European Patent Convention, subsections (1), (2) and (3) shall, as 
25 from the re-establishment of those rights, again apply to the appli­
cation; provided, however, that the occurrence of an event of with­
drawal or refusal referred to shall not affect the continued operation 
of section 11 (3) in relation to matter contained in an application for 
a European patent designating the State which by virtue of that 
30 provision has become part of the state of the art as regards other 
inventions. 
(5) Where between the cesser. by virtue of subsection (4), of 
subsections (1), (2) and (3) as regards an application for a European 
patent and the re-establishment of the rights of the applicant, a person 
35 begins in good faith to do an act which WOUld, apart from section 77. 
constitute an infringement of the application if subsections (1), (2) 
and (3) then applied. or makes in good faith effective and serious 
preparations to do such an act, he shall have the same protection as 
if an order had been made under section 37 (7). 
40 (6) An application for a European patent designating the State 
published by the European Patent Office under the European Patent 
Convention in French or German shall be treated for the purposes of 
section 56 as published under section 28 when a translation in English 
of the claims of the application has been filed at and published by the 
45" Office and the prescribed fee has been paid, but an applicant may 
bring proceedings by virtue of section 56 in respect of an act mentioned 
in that section which is done before publication of that translation if, 
but only if t before ~ doing of that act he has sent by post or delivered 
to the person alleged to have done the act, a translation in English of 
50 the laid ~ -
' .. :..'i Authentic text of 
European patents 
and patent 
applications. 
Conversion of 
European patent 
application. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 65 
[No. 1.] 
European divisional application under the European Patent Con­
vention. 
121.-(1) Subject to subsection (2), the text of a European patent 
or application for such a patent in the language of the proceedings, 
that is to say the language in which proceedings relating to the patent 5 
or the application are to be conducted before the European Patent 
Office, shall be the authentic text for the purposes of any proceedings 
under this Act before the Controller or the Court. 
(2) Where the language of the proceedings referred to in subsection 
(1) is French or German, a translation in English of the specification 10 
of the patent under section 119, or of the claims of the application 
under section 120, shall be treated as the authentic text for the purpose 
of any proceedings under this Act, other than proceedings for the 
revocation of the patent, if the patent or application, as translated, 
confers protection which is narrower than that conferred by it in 15 
French or German. 
(3) If any such translation referred to in subsection (2) results in a 
European patent or application conferring a narrbwer protection than 
that conferred by the language of the proceedings referred to in 
subsection (1), the proprietor of or applicant for the patent may file 20 
a corrected translation with the Office and, if he pays the prescribed 
fee within the prescribed period, the Office shall publish it; provided 
that the proprietor of the patent or the applicant shall not be entitled 
to bring proceedings in respect of an act which infringed the patent 
or application as correctly translated, but not as originally translated, 25 
unless before the doing of the act the corrected translation has been 
published by the Office or the proprietor or applicant has sent the 
corrected translation by post or delivered it to the person alleged to 
have done that act. 
( 4) Where a correction of a translation is published under sub-30 
section (3) and before it is so published a person begins in good faith 
to do an act which would not constitute an infringement of the patent 
or application, as originally translated, but would (apart from section 
77) constitute an infringement of it under the amended translation, 
or makes in good faith effective and serious preparations to do such 35 
an act, he shall have the same protection as if an order had been 
made under section 37 (7). . 
122.--{l) Where under the European Patent Convention an 
application for a European patent designating the State is deemed to 
have been withdrawn because it has not, within the period required 40 
by the said convention,been received by the European Patent Office, 
the Controller may direct that, on compliance with the conditions 
mentioned in subsection (2), the application shall be treated as a 
patent application under Part II. 
(2) The conditions referred to in subsection (1) are that- 45 
(a) the applicant within the prescribed period shall pay the filing 
fee, and, if the application is in French or German, file 
a translation in English of the application and of any 
amendments previously made in accordance with the 
European Patent Convention; and 50 
(b) (i) the applicant shall request the Controller within the 
prescribed period (where the application was filed IP/NIlIIRL/P 11 
Page 66 
5 
10 
15 
20 
25 . [1992.] Patents Act, 1992 . [No. 1.1 
with the Office) to give a direction under this section; 
or 
(ii) the central industrial property office of a country which 
is party to the said convention, other than the State, 
with which the application was filed shall transmit 
within the prescribed period a request that the 
application be converted into an application under 
Part Il, together with a copy of the said application 
as so filed. 
(3) Where an application for a European patent falls to be treated 
as a patent application (within the meaning of this Act) by virtue of 
a direction under this section-
(a) the date which is the date of filing the application under the 
European Patent Convention shall be treated as its date 
of filing for the purposes of this Act, but if that date is re­
dated under the European Patent Convention to a later 
date, then that later date shall be treated for those pur­
poses as the date of filing the application; 
(b) if the application satisfies a requirement imposed by virtue 
of a provision of the said convention it shall be treated as 
satisfying the requirements for a patent application under 
this Act; 
(c) any document filed with the European Patent Office under 
any provision of the European Patent Convention cor­
responding to any of the following provisions of this Act, 
that is to say, sections 12 (1) (b), 17 (2), 18 (2) or 26 (1) 
or any rule made for the purposes of any of those pro­
visions, shall be treated as filed with the Office under that 
provision or rule. 
30 123.-(1) The Court shall determine a question to which this sec-Determination by 
tion applies in accordance with the following provisions of this section. Court of questions as to right to 
European patent. 
(2) This section applies to a question arising before the grant of a 
European patent as to whether or not a person has a right to be 
granted a European patent, or a share in any such patent, and in 
·35 this section "employer-employee question" means any such question 
. between an employer and an employee, or either or both of their 
successors in title, arising out of an application for a European patent 
for an invention made by the employee. 
. (3) Subject to subsection (5), the Court shall consider and deter-
40 mine a question to which this section applies, other than an employer­
employee question, if, and only if, the following conditions are satis­
fied: 
45 
50 (a) there is neither an agreement in writing whereby, nor other 
written evidence establishing that, the parties have agreed 
to submit to the jurisdiction of a court or other competent 
authority which under the law of a relevant contracting 
state other than the State has jurisdiction to decide the 
question, and 
(b) (i) the applicant ordinarily resides in or has his principal 
place of business in the State, or 
(ii) the other party claims that the patent should be granted [1992. ] Patents Act, 1992. IP 1Nl 1 IIRL/P 11 
Page 67 
[No. 1.] 
to him and he ordinarily resides in or has his principal 
place of business in the State, and the applicant does 
not have his residence or principal place of business 
in any of the relevant contracting states. 
(4) Subject to subsection (5), the Court shall consider and deter- 5 
mine an employer-employee question if, and only if, the following 
conditions are satisfied: 
(a) (i) the employee is wholly or mainly employed in the State, 
or 
(ii) the employee is neither wholly nor mainly employed in 10 
a particular state or territory, or 
(ill) the place at which the employee is mainly employed 
cannot be determined but the employer has in the 
State a place of business to which the employee is 
attached (whether or not he is also attached else-15 
where); 
and 
(b) there is not written evidence that the parties have agreed to 
submit to the jurisdiction of a court or other competent 
authority which under the law of a relevant contracting 20 
state other than the State has jurisdiction to decide the 
question, or, where there is such evidence of such an 
agreement, the proper law of the contract of employment 
does not recognise the validity of the agreement. 
(5) The Court may consider and determine any question to which 25 
this section applies if there is written evidence that the parties have 
agreed to submit to the jurisdiction of the Court and, in the case of 
an employer-employee question, the proper law of the contract of 
employment recognises the validity of the agreement. 
(6) If, after proceedings to determine a question to which this 30 
section applies have been brought before a court or other competent 
authority which under the law of a relevant contracting state other 
fhan the State has juriSdiction to decide the question, proceedings are 
begun before the Court, the Court shall stay the proceedings before 
it until the following conditions are satisfied: 35 
(a) such authority either-
(i) declines jurisdiction, or 
(ii) makes a determination which the Court refuses to 
recognise under section 124, and 
(b) where an appeal lies from the decision of such authority, 40 
either an appeal has been taken and has been determined 
or withdrawn or, in case such an appeal is not taken, the 
time·for appealing has expired. 
(7) References in this section to the determination of a question 
include references to- 45 
(a) the making of a declaration with respect to the question; and 
(b) the making of such order as the Court deems appropriate in 
relation to the question. IP IN 11 IIRL/P 11 
Page 68 
[1992. ] Patents Act, 1992. [No. 1.] 
(8) In this section and section 124 "relevant contracting state" 
means a state which is a party to the European Patent Convention 
and has not exercised its right under the said convention to exclude 
the application of the protocol to the said convention therein referred 
5 to and known as the Protocol on Recognition. 
(9) This section and section 124-apply to a question arising before 
the grant of a European patent whether the relevant European patent 
application designates the State or not. 
124.-(1) Subject to subsection (2), a determination of a question 
10 to which section 123 applies by a court or other competent authority 
which under the law of a relevant contracting state other than the 
State has jurisdiction to decide the question shall, if no appeal lies 
from the determination or if the time for appealing has expired 
without an appeal having been taken, be recognised in the State as if 
15 it had been made by the Court. 
(2) The Court may refuse to recognise any determination referred 
to in subsection (1) that the applicant for a European patent had no 
right to be granted the patent, or any share of it, if eith~r-
Ca) the applicant did not contest the proceedings to which the 
20 determination relates because he was not notified of them 
either at all or in the proper manner or was not notified 
of them in time for him to contest such proceedings; or 
Cb) the determination conflicts with the determination of a court 
or other competent authority which under the law of any 
25 other relevant contracting state has jurisdiction to decide 
the question in proceedings instituted earlier between the 
same parties as those to the proceedings under this Act 
and relating to the same question. 
125.-(1) A person acting for gain shall not, either alone or in 
30 partnership with any other person, practise, describe himself or hold 
himself out as being, or as carrying on the business of agent or other 
representatf've of other persons for the purpose of applying for or 
obtaining European patents or for the purpose of conducting pro­
ceedings in connection with such patents before the European Patent 
35 Office, unless he satisfies the condition that his name and that of each 
of his partners appears on the European list. 
(2) Subsection (1) shall not be construed as prohibiting a barrister 
or solicitor from appearing or taking part in proceedings before the 
European Patent Office which correspond to proceedings in which by 
40 virtue of section 93 or 106 he is entitled to appear or take part. 
(3) A company acting for gain shall not practise, describe itself or 
hold itself out or permit itself to be described or held out as agent or 
other representative of other persons for any purpose mentioned in 
subsection (1) unless permitted to do so under the European Patent 
45 Convention. 
(4) Any person who contravenes subsection (1) or (3) shall be 
guilty of an offence and shall be liable on summary conviction to a 
fine not exceeding £500 in the case of a first offence, and in the case 
of a second or SUbsequent offence, £1,000. 
50 (5) A person who does any act mentioned in subsection (1) but 
satisfies the condition mentioned in that subsection shall not be treated Effect of patent 
decisions of 
competent 
authorities of other 
states. 
Patent agents and 
other 
representatives. European patent 
attorneys. 
International 
applications for 
patents. 
Orders to give 
effect to 
international 
agreements relating 
to patents. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 69 
[No. 1.] 
as coritravening section 106 so long as he does not without qualification 
describe himself as a patent agent and does not hold himself out. or 
permit himself to be held out, as carrying on any business other than 
the one mentioned in that subsection. 
(6) The Controller may refuse to recognise as agent or other 5 
representative for the purposes of applying for European patents any 
person who does not satisfy the conditions mentioned in subsection 
(1) and does not fall within the exception in subsection (2). 
126.-(1) For the avoidance of doubt, it is hereby declared that 
any person whose name appears on the European list shall not be 10 
guilty of an offence under section 56 of the Solicitors Act, 1954, by 
reason only of his describing himself as a European patent attorney. 
(2) A person whose name appears on the European list shall not 
be guilty of an offence under the Solicitors Acts, 1954 to 1960, by 
reason only of the preparation by him of any document (other than 15 
a deed) for use in proceedings before the Controller under this Act 
in relation to a European patent or an application for such a patent. 
127.-(1) An international application for a patent designating the 
State shall be deemed to be an application for a European patent 
designating the State. 20 
(2) The Office may, without prejudice to Article 151 of the Euro­
pean Patent Convention. act as a receiving office within the meaning 
of Article 2 (xv) of the Treaty for persons making international 
applications, provided such applications are in English. 
(3) Applications filed at the Office, as receiving office, shall be . 25 
accompanied by the prescribed transmittal fee. 
(4) The Minister may by rules make provisions with respect to 
international applications consequent upon the Office acting as a 
receiving office for applicants making such applications. 
(5) Any application referred to in subsection (1) which is published 3D 
under the Treaty shall be treated for the purposes of section 11 (3) as 
published when, and only when, a copy of the application has been 
supplied to the European Patent Office in English, French or German 
and the relevant fee has been paid under the European Patent 35 
Convention. 
(6) Any application referred to in subsection (1) which is published 
under the Treaty in a language other than English, French or German 
shall be treated for the purposes of section 56 as published when. and 
only when, it is re-published in English. French or German by the 
European Patent Office under the European Patent Convention. 40 
128.-(1) The Minister may by order make such provision as 
appears to him to be necessary or expedient to enable effect to be 
given to, or to any particular provision of, any amendment of the 
European Patent Convention or the Treaty or to any international 
treaty, convention or agreement (or protocol thereto) relating to 45 
patents to which the State is or proposes to become a party. 
(2) The Minister may by order revoke or amend an order under 
this section. IP/NI1 IIRL/PI1 
Page 70 
[1992.] Patents Act, 1992. [No. 1.J 
129.-( 1) Judicial notice and notice by the Controller shall be Evidence of . h' conventions and taken of the followmg. t at IS to say- instruments under 
(a) the European Patent Convention. the Treaty and any other 
convention or any protocol or other agreement to which 
5 an order under section 128 applies. 
(b) any bulletin. journal or gazette published or issued under 
the European Patent Convention and the Treaty and the 
register of European patents kept under the European 
Patent Convention. and 
10 (c) any decision of. or expression of opinion pursuant to the 
European Patent Convention by, a competent authority 
on any question arising under or in connection with that 
convention. 
(2) Any document mentioned in subsection (1) (b) which purports 
15 to state the contents or provisions, or part of the contents or pro­
visions, of any instrument made or any act done by any institution of 
the European Patent Convention or the Treaty shall be admissible 
under this Act as prima fade evidence of such contents, provisions or 
part. ' 
20 (3) Prima facie evidence of any instrument made under the Euro-
pean Patent Convention or the Treaty by any institution referred to 
in subsection (2), including any judgment or order so made by a 
competent authority of the European Patent Convention, or of any 
record or other document in the custody of any such institution, or 
25 any part of. entry in or extract from, such a record or other document, 
may be given in any legal proceedings by the production of a copy 
certified as a true copy by an officer of that institution; and any 
document purporting to be such a copy shall be received in evidence 
without proof of the official position or handwriting of the person 
30 signing the certificate or of his authority to do so. 
(4) Evidence of any instrument or order referred to in subsection 
(3) may also be given in any proceedings whether under this Act or 
otherwise-
(a) by the production of a copy purporting to be officially printed 
35 on behalf of the institution by whom it was issued or made, 
(b) where the instrument is in the custody of a government 
department. by the production of a copy certified as being 
a true copy by an officer of the department duly authorized 
in that behalf, 
40 and any document purporting to be a copy mentioned in paragraph 
(b) shall be received in evidence without proof of the official position 
or handwriting of the person signing the certificate, or of his authority 
to do so, or of the document's being in the custody of the department. 
130.-(1) The Foreign Tribunals' Evidence Act, 1856 (in this 
45 section subsequently referred to as "the Act of 1856"), shall apply in 
relation to any competent authority constituted under the European 
Patent Convention as it applies in relation to any court or tribunal 
of competent jurisdiction in a foreign country and accordingly the 
reference in section 1 of that Act to a court or tribunal of competent 
50 jurisdiction in a foreign country shall be construed as including a 
reference to a competent authority so constituted .. conventions. 
Obtaining evidence 
for proceedings 
under European 
Patent 
Convention. Communication of 
information to 
European Patent 
Office. etc. 
Financial 
provisions. 
Section 5. [1992. ] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 71 
[No. 1.] 
(2) In the application of the Act of 1856. the Court may order the 
examination upon oath of any witness before the Controller. 
(3) Any person who, being examined on oath before the Controller 
pursuant to the Act of 1856. as extended by this section, wilfully gives 
false evidence shall be liable to the penalties of perjury. 5 
131.-No enactment. whether passed before or after the passing of 
this Act, shall be construed as making it unlawful to communicate 
the following information in pursuance of the European Patent Con­
vention to the European Patent Office or the authority competent 
to receive such information in any country which is party to that 10 
convention, that is to say-
(a) information in the files of the Court which, in accordance 
with rules of court, the Court authorizes to be so com­
municated, 
(b) information in the files of the Office which, in accordance 15 
with rules made under this Act in that behalf, the Con­
troller .authorizes to be so communtcated. 
132.-( 1) There shall be paid out of moneys provided by the 
Oireachtas any sums, as may be sanctioned by the Minister for 
Finance, required to meet any financial obligation of the State under 20 
the European Patent Convention or the Patent Co-operation Treaty. 
(2) Any sums received in pursuance of the convention or treaty 
referred to in subsection (1) shall be paid into such fund and accounted 
for in such manner as shall be determined by the Minister with the 
consent ef the Minister for Finance. 25 
FIRST SCHEDULE 
TRANsmoNAL PROVISIONS 
1. Subject to the provisions of this Schedule, any order, regulation, 
rule, patent, requirement, certilk'ate, notice, decision, direction, 30 
authorization, consent, application, request or thing made, granted, 
issued, given or done under any enactment repealed by this Act shall. 
if in force immediately before the commencement of this Act, and 
insofar as it could have been made, granted, issued. given or done 
under this Act. continue in force and have effect as if made, granted, 35 
issued, given or done under the corresponding provision of this Act. 
A patent of addition granted under the Act of 1964 shall remain in 
force only for so long as the patent for the main invention remains in 
force. 
2. (1) The term of any patent granted under the Act of 1964 and 40 
in force at the commencement of this Act shall be extended to 20 
years, subject to the payment of the prescribed renewal fees, within 
the period prescribed, in respect of each year of the additional term. 
(2) This paragraph does not apply to a patent the term of which 
was extended, prior to the commencement of this Act, following 45 
presentation of a petition under section 27 of the Act of 1964. 
(3) No petition for an extension of the term of any patent granted IP/NIl/IRL/PI 1 
Page 72 
(1992. ] Patents Act, 1992. [No. 1.1 
under the Act of 1964 shall be presented under section 27 of that Act 
after the commencement of this Act. 
3. (1) Where a patent expired before the commencement of this 
Act and a petition under the Act of 1964 for the extension of its term 
5 was pending immediately before such commencement, the following 
provisions shall apply: 
(a) if no notice of objection to the extension has been given 
within the time prescribed in that behalf by rules under 
the Act of 1964 or by rules of court (as the case may be) 
10 or if. having been so gIven. such notice has been withdrawn 
the proprietor of the patent may withdraw the petition 
and the term of the patent shall thereupon stand extended 
for a period of 4 years from the date of its expiry; 
(b) if notice as aforesaid has been given within the time pre-
15 scribed and has not been withdrawn or if the petition is 
not withdrawn the provisions of the Act of 1964 shall 
continue to apply in respect of that petition. 
(2) Where, immediatelv before the commencement of this Act, an 
appeal was pending against a decision on a petition presented under 
20 section 27 of the Act of 1964, the provisions of that Act shall continue 
to apply in respect of that appeal until the appeal is determined. 
4. In the case of a patent the term of which has been extended 
under paragraph 2 (1) or 3 (1) of this Schedule. proceedings for 
infringement of such a patent may not be instituted against a person 
25 who, during the final 2 years of the term of that patent, as extended 
under those provisions, makes any such preparations (other than the 
importation or placing on the market of a product protected by such 
patent) as would enable that person to put the invention into effect 
commercially after the term of the patent expires. 
30 5. Applications for restoration of lapsed patents which were pend-
ing at the commencement of this Act shall be decided under the 
provisions of the Act of 1964. 
6. Where, before the commencement of this Act, a complete 
specification had been filed under the Act of 1964 but had not been 
35 accepted. the provisions of Part // of this Act shall apply to the 
application to which such specification relates and to any patent 
granted on the application as they apply to applications under that 
Part, subject to the modifications specified in paragraph 7 of this 
Schedule. 
40 7. The modifications referred to in paragraph 6 of this Schedule 
are as follows: 
(a) the date of filing of the application shall be the date on which 
the complete specification was filed and references in 
Part 11 to the description, claims and drawings shall be 
45 construed as referring to this complete specification, 
(b) sections 18 (2) (c), 19 (2) and 35 shall not have effect as 
regards the application, and sections 29 (1) and 30 (1) shall 
not have effect except as specified in subparagraph (k), 
(c) any provisional specification filed shall give rise to the same 
50 right of priority for the application as if a valid claim to 
priority had been made under section 26 to the extent, [1992.] Patents Act, 1992. IP IN 11 IIRL/P 11 
Page 73 
[No. 1.] 
and only to the extent. that the matter disclosed in the 
provisio'nal specification forms a fair basis for the invention 
the subject of the complete specification, 
(d) where the application was made as a Convention application 
within the meaning of the Act of 196.t, then, provided 5 
the requirements for Convention applications within such 
meaning are met, the application shall enjoy the same 
right of priority as if a valid claim to priority had been 
made under section 26. 
(e) where a complete specification was laid open to public inspec- 10 
tion under section 69 of the Act of 1964 before the com­
mencement of this Act, the laying open to public 
inspection shall be regarded as being publication under 
section 28 and the date on which it was so laid open shall 
be regarded as being the date of such publication; other 15 
documents accompanying the application (including any 
provisional specification filed in relation to the appli­
cation) shall be laid open to public inspection as soon as 
practicable 'after the commencement o~ this Act, 
(f) a declaration as to inventorship made in respect of an appli-20 
cation filed or deemed to have been filed before the 
commencement of this Act shall be deemed to satisfy the 
requirements of section 17 (2), . 
(g) the time limit for doing any act or filing any document 
under this Act shall not expire before the expiry of the 25 
corresponding time limit under the Act of 1964, 
(h) an application under section 11 (5) of the Act of 1964 shall 
be treated as a divisional application within the meaning 
of section 24, 
(i) an application for a patent of addition under section 28 of the 30 
Act of 1964 shall be considered as being an application 
for an independent patent, 
U) notwithstanding anything contained in this Act, an appli­
cation may proceed in the name of a person who was 
entitled to apply under the Act of 1964, 35 
(k) an applicant who furnishes the evidence specified under 
section 8 (6) (a) or (b) of the Act of 1964 within the time 
prescribed in the Patents Rules, 1965 for so doing shall be 
deemed to have satisfied the requirements of section 30 
(1) of this Act; where such evidence is furnished after the 40 
commencement of this Act, it shall be accompanied by 
the fee prescribed for the purpose of section 30 (3); and 
where, in the case of any application, the evidence is not 
furnished within the time prescribed by the said Rules, 
the application shall be deemed to have been withdrawn 45 
unless the applicant complies with the provisions of section 
29 (1) or 30 (1), as appropriate, 
(l) any amendments to an application submitted before the com­
mencement of this Act which correspond to amendments 
which could be submitted under the provisions of section 50 
29 (4), 30 (4) or 30 (5) as appropriate shall be deemed to 
have been submitted under these provisions provided they IPINIlIIRL/P/l 
Page 74 
[1992. ] Patents Act, 1992. [No. 1.] 
have been submitted by a duly authorized patent agent 
where such an agent acts on behalf of the applicant, 
(m) in the case of any application in respect of which the appli­
cant had been notified of any requirements under the Act 
5 of 1964 (or the Rules made thereunder) with which he 
was required to comply and the applicant had not. before 
the commencement of this Act. complied with these 
requirements or satisfied the Controller that the require­
ments were complied with. the provisions of the Act 
10 of 1964 (and the relevant Rules made thereunder) shall 
continue to apply until the matters at issue are finally 
decided. 
8. (1) In the case of any application the acceptance of the complete 
specification of which had been advertised under section 18 of the 
15 Act of 1964 and in respect of which the period specified in subsection 
(1) of section 19 of that Act had not expired at the commencement 
of this Act, a patent shall not be granted under this Act on such 
application before the .expiry of that period or, where opposition 
is notified during that period, before the relevant 'proceedings are 
20 concluded under the provisions of the Act of 1964 and a determination 
that a patent may be granted has been made. 
(2) In any case in which opposition to the grant of a patent had 
been notified under section 19 of the Act of 1964 and the case had 
not been decided before the commencement of this Act, a patent 
25 shall not be granted under this Act before the relevant proceedings 
have been concluded under the Act of 1964 and a determination that 
a patent may be granted has been made. 
9. The power to make rules under section 114 shall include power 
to make rules for any purpose mentioned in section 96 of the Act of 
30 1964. 
10. A patent application (the original application) which is made 
before the commencement of this Act, but in respect of which a 
complete specification is not filed before such commencement, shall 
be taken to have been abandoned immediately before that com-
35 mencement but. notwithstanding anything in subsection (1) or (4) of 
section 25. the original application may nevertheless serve to establish 
a claim to priority under section 26 in relation to a later patent 
application under this Act if the date of filing of the original application 
falls within the period of fifteen months ending on the day immediately 
40 preceding the date of filing of the later application. and in relation to 
such later application the following provisions shall apply. namely: 
(a) publication of the application, which shall take place as soon 
as practicable after the expiry of a period of eighteen 
months beginning on the date of filing of the original 
45 application, shall include the provisional specification 
which accompanied the original application. and 
(b) where for a purpose of this Act a period is prescribed as 
being twelve months from the date of priority of an appli­
cation, then such period shall for such purpose in relation 
50 to such later application be taken to be a period of fifteen 
months beginning on the date of filing of the original 
application. 
11. Where there is in any document a reference to an enactment Section 45. IP IN 11 IIRL/P 11 
Page 75 
[1992.] Patents Act, 1992. [No. 1.] 
repealed by this Act. the reference shall be construed as a reference 
to the provision of this Act which corresponds to such enactment. 
12. A patent granted under the Act of 1964 to which paragraph 1, 
2 or 3 of this Schedule applies shall be revocable only in accordance 
with the provisions of that Act. 5 
13. Any application for a licence under section 42 of the Act of 
1964 which was pending at the commencement of this Act shall be 
decided under the provisions of the Act of 1964. 
SECOND SCHEDULE 
DlRECrIONS REFERRED TO IN section 45 (3) 
Section 45 should not be interpreted in the sense that the extent of 
the protection conferred by a patent is to be understood as that 
defined by the strict. literal meaning of the wording used in the claims, 10 
the description and drawings being employed only for the purpose of 15 
resolving an ambiguity found in the claims. Neither should it be 
interpreted in the sense that the claims serve only as a guideline and 
that the actual protection conferred may extend to what. from a 
consideration of the description and drawings by a person skilled in 
the art, the patentee has contemplated. On the contrary, it is to be 20 
interpreted as defining a position between these extremes which 
combines a fair protection for the patentee with a reasonable degree 
of certainty for third parties. 
Wt. P29451IAl3. 2.750. 3192. Cahill. (A25319). G.16. IP/N/I/IRLlPll 
Page 76 
STATUTORY INSTRUMENTS. 
S.I. No. 181 of 1992. 
PATENTS ACT, 1992 (COMMENCEMENT) ORDER, 
1992. 
(PI. 9005) 2 [181] 
S.1. No. 181 of 1992. 
PATENTS ACf, 1992 (COMMENCEMENT) ORDER, 
1992. 
It DESMOND O'MALLEY, Minister for Industry and 
Commerce. in exercise of the powers conferred on me by 
section 1 of the Patents Act, 1992 (No. 1 of 1992) hereby 
order as follows: 
1. This Order may be cited as the Patents Act, 1992 (Com­
mencement) Order, 1992. 
2. The 1st day of August, 1992, is hereby appointed as the 
day on which the Patents Act, 1992 (No. 1 of 1992), shall 
come into operation. 
(0 GIVEN under my Official Seal, this 17th day of 
1.. S. June, 1992. 
DESMOND Q'MALLEY, 
Minister for Industry and Commerce. 
EXPLANATORY NOTE. 
(This note is not part of the Instrument and does not purport 
to be a legal interpretation.) 
This Order appoints the 1st August, 1992 as the date on 
which the Patents Act, 1992 comes into operation. The Pat­
ents Rules, 1992 and the Register of Patent Agents Rules, 
1992 come into operation on the same date. 
Notice of the making of this Statutory Instrument was pub­
lished in "Iris Oijigiziil" of 28th July, 1992. 
DUBLIN: 
PUBLISHED BY TIlE STATIONERY ornCE. 
To be plIldlased through any BoobeUcr. or dinctly from the 
GOVERNMENT PUBLICATIONS SALE OrnCE. 
SUN ALLIANCE HOUSE. MOLESWORTH STREET. DUBLIN 2. 
30p 
Wt. 0153. 785. 1193. CarnU. (Bl4468). G.16. IP IN 11 IIRL/P 11 
Page 77 IPINIllIRL/PI 1 
Page 78 
Section. ,.~.::~ 
:~"" ,·7,. 
'.I 
Number 12 o/l!>G4 
PATEl\-rs ACT, J964 
ARHANGE~~"'T 01" SEarIONS 
PART I. 
P.RELDdINA..RY AND GZN'ElU.L. 
1. Short titlE' and commencement. 
2. Interpretation. 
3. Orders and rules. 
,. Expenses. 
6. Transitional provisions and repeals. 
PART lI. 
ApPIJCATIO~, INVESTIGATION, OPPOsmoll', F.TtJ. 
6. Pel'8Ons entitled to a.pply for patent. 
7. Application for patent. 
S. Complete and pro"'i~on&l specification!'. 
9. Contents of specifica.tion. 
10. Priority datc:3 in rela.tion t.o specifications. 
11. Examination of application. 
1~. Search for anticip~tion by lll'Oviou. .. pub~tion. 
13. Further search fo4' anticipatioll. 
a. Reference in caso of potcnt.iaJ bfdngcment. 
15. Refusal of app1i'" tiClll in ccrt:l !1\ cases. 
16. Supplomentary prodaiGus as to S<:MCl1e-s, etc. 
17. Time for lJut.tiug lI.ppiication in on1er for a.cceptan~. 
18. Acoeptanoo nna pl!Llication of complet.e specification. 
10. Opposjtio~ to graJj~ of p3tcnt. 
----.------- . DAlLE AT3..' CLllTH: 
ARNA rnOTLSlO AO OIFIG AN T90UrnAIR. 
Le ncan:l~h t1irc.lCh &1 
OlFlQ nfOLTA FOILSF .... \CH . .(l>i RTALT.U9, .\X S'IU.\JU • ..uw.OIFIO A..~ PUOIBT. 
BAILl:; Al'HA CLt~TH. 1. 
IW torS .on c!Jc,l~ir leAbbAr. 
DL"'HLlN : 
l'UBLISllI::D OY THJ!! 81'Al'IO~'"EKY OFfiCE. IP IN I l/IRL/P 11 
Page 79 
[1004.] Patent.! Ad, 1004. 
Section. 
to. Refusal of pAtent without. opposit.ion. 
%1. Mention of inventor as such in patent. 
H. Substitution of appliC&llt.s, etc. 
PART m. 
GB..A},,,, RESTORATION, REVOCATION AND 
SUlUlESDER. ETC., 01' PATENT. 
ta. Grant and 8e8ling of pateoi.. r No. 12.] 
U. Amendment of patent gro.cted to deceased applicant. 
26. Effect and form of patent. 
26. Date and term of p&teo t. 
1:7. Erleo.sion of term of pat.eoL.. 
!S. Patents of addition. 
%9. Restoration of lapsed pateuta. 
30. Restoration of lapsed applications for patent.!. 
31.' Amendment of speci.6c-atioll with leave of Controller. 
32. Amendment of specificat.ioo with leave of tho Court. 
33. Supplementary proVlSlOOS as to amendment of 
speci.fi ca.ti on. 
U. Revocation of patent by Oonrt. 
36. Revocation of patent by C'ootroUor. 
36. Su.rrendor of patent. 
PART IV. 
VOLUln'A.l1Y .cm CollPtLSOay ENDORSEMENT, 
A.lrrICIPATIO~, AND PBonsroNs AS TO RIGHTS 
IN lNvlaTIONS. 
37. Endorsement of pa.tent "lieence8 of right". 
38. Cancellatiou of endorsemem. 
39. Compulsory endorsement or licence. 
4 O. Provision! a.a to li cen oes. 
41. Endorsement, eto., on ap~tion of & Minister of State. 
42. InventiOn! relating to food or medicine. 
43. Revocation of patent aft.c:c grant of licenoo. 
«. Procedure on applications under uclU:m8 39 to IJ. 
~. Appoal and references to acbitrat..or. 
46. Supplementary provisions L! to licenoea. 
47. Previous publication. 
48. Previous communication. display or working. 
49. Use and publication a.!R:r provisional specitica.tion or 
foreign application. 
50. Priority d.'\te in case of obtaining. 
:51. Co-ownel'3b.ip of pate:::lts. 
62. Power of Controller to gin! directioll' to co-ownera. 
63. Disput.cg as to inventioru m.a.de by employees. 
:5t. Avojd&n~ of oert:lin cooditjon~ attached to the salc, et.c., 
of patellted articles. IP/NIlIIRL/P/1 
Page 80 
[1964.] Paknls Ad, lOOL 
PART V. [No. 12.] 
PB~EDIN08 FOR INYRINQEl(D'f 01' PJ.TUTS. 
Section. 
66. Restrictions on recovery of da.m~ for infringement. 
66. Order for &Ccount in action for infringoment. 
67. Counterclaim for revocation in adion for infringement. 
58. Relief for infringement of p&rtial1y valid specification. 
69. Prooeedings for infringement by exclusive licensee. 
60. Certificate of contested validity of specification. 
61. Remedy for groundless throata of infringement pro­
oeed.ings. 
62. Power of Court to make declaration u to non­
infringement. 
PART VI. 
RJt01STXR 01' P J.TX!I'TS. 
e3. Register of patents. 
M. Registration oC e.s,sjgnments, ete. 
65. Power of Court to amend register. 
66. Power to correct clerical errors, etc. 
67. Certificate of Controller and sealed copies of documents 
in Office to be evidence. 
68. Requesta for information a.s to p:t.tent or p&t.ent applica­
tion. 
69. Restriction upon publica.tion or specifications, etc. 
70. Losa or destruction oC patents. 
PART vn. 
PRocEEDINOS BEFORE Tln CoNTROLLU OR 
TIn!: Coumo. 
71. Exercise of discretionary power' by Controller. 
72. Costa and security for costs. 
73. Evidonce before Controller. 
74. Hea.ring by CoUI~ with assessor. 
76. Appeals from decisions of Contl'OUer. 
76. Costa of Controller in Court proceedings. 
PART vm. 
Tla OFFICI: J.l{D TJIK CoNTBOLLo. 
77. Patent.6 Office. 
78. Cont.roller of Patents, Designs and Trade Mark .. 
79. Appointment of offioers of Controller. 
80. Fees.. 
81. Official journal. 
82. Report.! to be privileged. 
83. Controller may ~onsult Attorne-y Gene-raJ. 
84-. Annual report. 
85. Hours of busil'css amI exclUded cbys. IP/N/l/IRL/P/l 
Page 81 
[1964.] Palof.tI J4d, 1964. [No. 12 .. ] 
PART IX. 
HJ:scKLL.UJCO os. 
Section. 
so. Patent agents. 
87. F&laification of register, etc. 
88. Unauthorisod cla.im of patent righu. 
89. Fal&c suggestion of official connection with the Office. 
90. Inventions relating to instruments or Dlunitions of war. 
D!. A88ignment of invention or patent to a Minister of State. 
92. Use of pa.tented in~ntionA (or the service of tho State. 
93. Government ordors u to coDvention countnet . 
. 0"'. Supplementary provisions u to convention r.pplication .. 
96. Special provisiona &8 to Te8!ls, aircr&ft nnd lalld vebicltw. 
~. Power of Min.i!ter to malte rules. 
97. Power of Minister to delepte his duties under this Act. 
98. Service of noticea, etc., by poet. 
99. Saving for articles forfeited under l.&ws relating to t.he 
customs or exciae.. 
FIRST SCHEDULE. 
SECOND SCHEDULE. 
',l'RANsmolUL P&oVISIO-K5. 1PINI11IRL/P/1 
Page 82 
5 
10 
15 Number 12 0/ 1964 
.·ATENTS AL., 1964 
AN ACT TO MAKE NEW PROVISION IN RESPECT OF 
PATENTS AND RE LA TED )1A TTERS IN SUBSTITU­
TION FOR THE PROVISIONS OF THE INDUSTRIAL 
AND COMMERCIAL PROPERTY (PROTECTION) ACT, 
1927, RELATING TO PATENTS A-,\'D OF OTHER ENACT­
MENTS RELATING TO PAT El\"TS. AND TO PROVIDE 
FOR OTHER 11A 1'TERS CON~~CTED WITH THE 
MATTERS AFORESAID. [24'''' Ju:tt.t, 1964.] 
DE IT ENACTED BY THE OIREACllTAS AS FOLLOWS:-
PART I. 
PBELll4INARY AND GENEIUL. 
1.-(1) This Act may be cited as the Patents Act, 1964. 
(2) This Act shall come into operation on sueh day as the 
Minister may by order appoint. 
2.-In this Act, unless the context otherwise rcquirts-Short liUe and 
eorm ... :ooemenL, 
20 11 the Act of 1927" means the Industrial and Commercial Property 1"1, No. 15 
(Protcetion) Act, 1927; 
Cl applicant": in relation to an applie:llion, means the person 
making the appli('ation and' includes a person in whose favour a 
direction has been given under sectiD. 22 of this Act, and the 
25 pCrsClnal representative of a deceased applicant; . 
" article" includes any substance or m.atcria~ and any plant, 
machinery or apparatus, whether aftixed to land or not; 
Cl a.c;signee" ·ineladcs the personal representative of " deceued 
assignee, and rcfcren('cs to the a.cmgnee of any person include 
30 references to the assignee of the personal representative or assignee 
of that penonj 
tI commereially 'worked " mcans the manufacture ot the arUde or 
the ea.rrying on of the process dcscrilx-d and eJaimed in Do speeifiea. 
tion for a patent in or by mc~ns of a dclinite and sabstantial 
35 establishment or organisation, and on n scale ,,"hich is adequate and 
l"Casonablc in all the cireumstances; 
11 the Controller" means the ControUer of Patent.., Designs and 
'l'rade Marks appointed under this .A~t; 
"coJl\"Cntioa application" has the lD<'aniDg' ~jgned to it by 
40 Itlbseciion (3) of lCetiot, 6 of this Act; [1964.] PClkn.U Ad, 1964. IP IN I l/IRL/P 11 
Page 83 
[No. 12.] 
If eonvcntion country" has the meaning assigned to it by "u,. 
"ctio" (1) of ,~aio1s 93 of this Act; 
" the Court " means t,he High Com; 
.. date oC tiling", in rclation to a1I1 document filed under this 
Act, means the date on which the doeumcnt is filed or, where it is 5 
deemed by virtne of any pronsion 01 this Act or of rules made 
thereunder to ha\'e been filed on any ditferent date, means the date 
on which it is deemed to he filed; 
" e.xeluaive licence If means a licence from a patentee whieh eonlera 
on the licensee, or on the licensee &.Dd persons authorised by him, 10 
to the exclusion of all other pel'SOll' (including the patentee), any 
right in respect of the inventioa, &.od 11 excltllive liccD&ee" ahall 
be aonatrued accordingly; 
.. invention" means any new and usetal art, process, machine, 
ma.nufaeture or composition of matter, or any new and l:.!eful 15 
improvement in any art, proetSS, maehin~ manufacture or com· 
position of matter, and includes an alleged invention and also any 
new method or process of testing applieablc to the improvement or 
control of IIWlulaeture; 
If the Journal" means the journal _cd by the Controller pur. 20 
lUaut to uctio-ft 81 of this Ad; 
If the lfinister " means the Minister for Industry and Commercej 
Cl the Office" me3M thc Patents Offite established by the Aet of 
1927 and continued in being by ~aiot 77 of this Act; 
" patent "means letters patent for a.n invention; 
" patent of addition" means a pateat granted in aeoordanee with ,taw,. 28 of this Act; 
" patentee" mean. the pel'3Oll or persons for the time being 
entered on the register of patents u grantee or proprietor of the 25 
~~; ~ 
" preseribed " mcaIl8, in the ease of proceedings before the Court, 
preseribed by rules of court, and, in any other ease, prescribed by 
rules made under this Act; 
" priority date" has thc meaning assigned to it by ltaiOft 10 of 
this Act; 35 
U published" mean. ma8e anilable to the public by the Wl'itten 
or apoken word or by pubJic use, or ill ey other way. 
Ordel"l and rule&. 3.-(1) Where a power to make orders or rules iI conferred by 
any proTision of this .Act, such orders or rules may be made either 
&8 respoeta all, or &8 respects any ODe or more, of the matters to 4:0 
which .the pro\ision re]al.es ; and diIruent provisions may be made 
by any such ordcrs or rules as ~peetI different cla,sse, of eases to 
which the orders or rules apply. 
(2) Every order or rule made undu this Act shall be laid before 
each HoWle of the Oir~chtas as soon as may be after it i! made and ~ 
if & resolution annulling the orucr or rul~ is passed by either such 
House within the next snbseqoent hrrnty-one days ou which that 
House has sat after the order or rule i'i biu before it, the order or 
rule sh&Il be annulled accordingly but without prejudice to the 
validity of anything previously done thl'l'cunder. 50 
(3) B'\"'ery order or rule made undu th~ Act shall be advertised 
twice in the Journal. IP/NIl/IRL/PI 1 
Page 84 
[1964.] PaltnU Ad, 1964. [No. 12.] 
4.-Thc expenses incurred by the lfiniJter in the administration Ez~. 
of this Act .ha)), to such extent as JIlAy be aanclioned by the 
Minister for Finance, be paid out of monc)"s provided by the 
OircachLu. 
6 6.-(1) The transitional provlSlODS eontained in the Sccorul T~iuonal 
ScAtduZt to this Act ahall have e1£ect !or the purposes of this Act proviaiOc. and repe&la. 
10 (2) Subject to the said transitiorul provision&, the enactmenta 
specified in the Fird Sclt.edtdt to this Act are hereby repealed to 
the extent specified in the third column of that Scbedule. 
PABT n. 
APPt.ICA.'l'ION, INVESTla.A~ OPPoSITION, J:TC. 
6.-(1) An application for a patent may be made by any person PertlODa en"i~Je..l 
."ho claims- So appl, Cor 
~'" 
(0) to be the true and first invenior of the invention to which 
15 the application relates, or 
(b) that ·the true and first inventor of the invention to which 
the application relates hu ass:igncd to him the right to 
make the application, 
and may be made either alone or joinUy with another pe~n. 
20 (2) Notwithstanding the provisiooa of M!telio" (1) of this 
section, application for a patent may be made by a person ..... ho has 
applied in a convention country for prolcet.ion for the invention 
to wbich the application for the patent rel:1tes or by a person to 
whom such person has assigned the right to DUke the appli'!ation 
25 for the patent. 
(3) An application for a patent under IUbuclion (2) of this 
aeetion (in this Act re1erred to as a eonvention application) allall 
be In4de during such period (noL being lCS'J tlu..n twelve months) 
u may be prescribed eommcneing on the date of the relevant 
80 application for protection or, in the ease of more than ODe applica­
tion, the date of the first such applieation. 
(4) An application for' a patent aay be made by the personal 
representative of a person who, immediately before his d~th was 
entitled to make such an application. 
85 7.-(1) An application for a patent ah~ll be made in the pre-Application for 
ec.ribcd form and shall be filed at the Office in the prescribed pa.&oeos.. 
DlAllDer. 
(2) If the application (not being & eonvenUon application) ia 
made by virtue of an assignment ol a right to apply for a patent, 
(() there shall be furnished with the applieation or within sueh period 
after the ruing of the application as JUy be prescribed a deeluation 
aisncd by the pcrron cl.3iLlillg to be the tru~ and first inventor or by 
the personal reprcscntativc of Stl~ pt'rson statin(: that be a.sst>nl.s 
to tbd making of the applicati<ln. 
-t5 (3) An application (other th.a.n a a:.nvention ap~il!t1tioD) sh:lll 
atate thl\t the applicant is in ~n of the invention and shall 
namo the person claimiu:; to he the true end first inventor, nnd 
where the per:-:ou so claiming is not the a pplic.a..nt or one of the 
applic.ants, the appli~3tion ti!~l ecntain :l d~l:lr:ltion that the 
50 Applicant believes hiltl t..:> be tllc true And first inventor. Complete and 
provllion.a.\ 
lpOCifieatiooa. [1964.] Patent.! Act, 19G4. IP IN I l/IRL/P 11 
Page 85 
(No. 12.] 
(4) A convention application shallspccify the dale on which and 
the convention country in whkh the application for protection for 
the invention to which the collvention application rrlates, or the 
Bm application for protection W:l3 made, and shall st.llc that no 
application for protection !Ins ~n made in a convention country 5 
in respect of that im'entioll heforc that datc by thc applicant or 
Ally person from whom he dcrives title. 
(5) Where npplication:i for protection have been made in one or 
more convention countric!! in I'('spect of two or more inventionll 
that are eogn<ltc or of which one is a modification ol another, Do 10 
Jingle convention application may, subject to the provliions of 
leclwn 9 of this Act, be made iu rc.s~ct of those invcntions at any 
time within the period prescribed under JubJection (3) of lection 6 
of t.his Aet commencing on the date of the first of the &aid applica-
tions for protection: 15 
Provided that the fee payable on the making of any such appli­
ation aha.ll be the same as if separate applicalioD.:l haJ been made 
in respect of each of the saiJ invcntions, and the requirement.!! of 
the hst foregoing subsection shall in the C:LSe of any such applica­
tion apply separately to the applications for protection in respect 20 
of e.aeh of the said invcntions. 
(6) .Wlthoat prejudice to the provisions of subjection (4) of this 
seetion, every application for a patent shall give such information 
u may be prescribed. 
8.-(1) Every application for a patent (other than a convention 2S 
application) shall be accompanied by either a rompletc spccific:ltion 
or a provisional specification; :md every ronvention application 
&hall be a.ecompnnied by a complete specification. 
(2) Where an applica.tion for a patent is accompanied by a 
provisional specification, a complete specification shall be filed 30 
within twelve month~ from the date of filing of the applic:ltion nnu 
if the complete sped.fic.ation is not so filed thc application shall be 
deemed to be abandoned : 
Provided that the complete spceifieation may be filed at any tinle 
after twelve montlu but within fifteen month::! from the date :uore-35 
sajd jf a requcst to that effect i'l maue to the ControJlcr and the 
prescribed fee paid on or before thc date on which the specification 
is tiled. 
(3) Where two or more applications accompanied by provisional 
q>eemcalioDs have been filed in respect of inventions which are 40 
eognat.c or of which one is a modification of anothcr, a single 
eomplete specification mo,y, 8ubj~t to the provisions of this and the 
next following section, be med in pursuance of those applications, 
or, if more th:m one complete specification has ~n filed, may with 
the leave oC the Contl·oller ~ proceeded with in respect of those (5 
applications.. 
(4) Where an application for a patent (not being :i convention 
applieation) is accompanied by a specification purporting to be a 
complete specification, the ConlroUcr may, if the appl.icnnt. 10 
requests at any time before the acccpt.a.nce of the specification, 50 
direct tlat it shall be treated for the purposes of this Act u a 
provisional specification, and proceed with the applieation 
aecordingly. 
(5) Wbere a complcte spcei.£c.a.tion has becn ftlcd in pursn:mec of 
an appli('s.tion for a patent accompanied by a provisioDo.) spE:Cifica- 55 
tion or by a specification trcat.cd by virtue of a dir~tiou uudcr the 
last forreoing suh~tion as a provisional s~i6cation, th<! COll­
troller m~y, if the appli~:mt so reqncsts at any timc hero!: the 
acecplanee of tho complete speei.6cation, cancel t.he pronuonlll 
spccificati<.'n and post·date the appli('.atiou to thc date or filing of 00 
thc complete spcciGcation. lP/N/1/IRLIP/l 
Page 86 
[1964.] Palen.Ls Ad, 19G4. , .. ~ [No. 12.] 
(6) Wbere a complete specmalion i.! filed in pUl"SlWlce of an 
application for a p:ltcnt, the apptiea.nt shall furnish, within the 
time prescribed, such eviucncc a.a may be prescriW 01-
(0) the result of any invcstiption made for the purpose of 
6 ascertaming whether ~ invention 80 far u claimed in 
any claim ol the OOII1plete specification has beeD. 
puhliJbcd bdore the date of filing of tho complete 
apeemcation in & spc<;iSe:ation filed in &Dy oll1lch patent 
offices outsidc the Stale as may be prescribed, or 
10 (b) the acceptance by any of Inch patent offices ontside the 
State as may be prela'ibed of an Ilpplication for & 
patent for the inventiaD aforesaid, 
9.-(1) Every spccific.:uion, 1r'\d.hcr complete or provisional, Coa~~ 
ahall describe the invcntion, and sbll begin with a tiUe indiea.ting spec 
15 the subject 10 which the invention rd.atea. 
(2) Snbjeet to any rules mAde &,. the Minister under this Aet, 
drawings may, and shall if the Coatroller 80 requires, be I1lpplied 
for the purposes of any specific:a.tion. whether complete or pro­
visio~ and any drawings so supplied shall, unless the Controller 
20 otheM!iae di~ts, be decmed to fo,.. part of the spceifieation, &Dd 
referenoes in this Act to a speei:fieation ahall be construed 
aeeordingly. 
(3) Enry ?Omplete specification-
(a) &ball particularly describe the invention llnd the mc.thod 
25 by which it is to be performed, 
(b) shall disclose the best metAod of performing the invention 
which is blown to the applicant and for which he is 
entitled to claim protection, and 
(c) ahall end with a claim or daim.s defining the scope of the 
SO invention claimed. 
(4) The claim or C~IIl3 of a ecmpJet.c spceifie.ation must relate 
to a .ingle invention, must be dear and succinct, and muat bo 
fairly based on the matter disclosed in the specification. 
(5) Rales made by the Minister tmder this Act m:ly require that 
35 in such eases as may be prescribed by the ruJ~, a dedaration as 
10 the invcntorship of the inVtotiaa, in such form as may be 80 
prescribed, shall be furnished mtA the complete spedfieation or 
within sueh period as may be 80 praeribed after the filing oC that 
spccifieat.ion.. 
.0 (6) Subject to the forcgoing prorisions ol this scetion, :I. eam­
plete speei:ficalion filed after a provisiorW speeifie.atioD, or filed with 
& convention applieation, may indDde ehims in respect of develop­
ments of or additions to the invention which wa.a described in the 
provisional specification or, :l.S the eue may be, the invention in 
(5 respect of which the application for proteetion wu made in a con­
vention eountry, bcing developments or additions in. respect of 
which the appliC:lnt would be enti1kd under the provisiona of 
,ecti!m.6 of t.hU Act 10 make Il. scp~ application for a patent •. 
I 
(7) Where a complct.c spcdficatiOll ehinlS a new substance, the 
50 claim shall be eorutrucd as not enm<iing to th:lt subst.:Lnce v.-hen 
found in n.a ture. 
10.-(1) 
65 (a) Rvcry claim of a eoaplelc apecifiea!.ion 3hall have 
effect from Ute d:ltc proTioed for by tH'I ~tion in 
rclatiou to that cJ.1im and in this Act a ~Cerence to 
a priority dale is, unless the context otherwise 
require'!, a rcfcrencl! to sueh date, 
(b) A patent ~ltnlJ not Le mnlidatcd b,\' l'C:l.<;l)n only oC 
the publil':llion or u..~ of 1.ltC ill'h'ltlion, so far n.s 
cJaiurcd ill :llly cl:!:tIl oC the cvl1Jplctc sI,ecific.'ltion, Priority dAl.{', 
in re.tion to 
apeeifieAlio .... E:l&mina~ioQ or 
application. [1964.) Pal~nl8 Ad, iDG-!. JP IN I I/JRL/P 11 
Page 87 
[No. 12.] 
on or after the priority date of that claim, or by 
t.he grant of anothcr patent upon a specification 
claiming the same invention in Do claim oC the sa.mc 
or later priority date. 
(2) Where the complete specification i3 filed in pnnruanee of a 5 
single application accompanied by a provisional specification or 
by a specification which is treated by ,,-irtue of a direction under 
I'Ub.sedion (4) of .section 8 o( th..is .Act as a pro .. ;sional specificatioD, 
and t.he claim is fairly based on the matter disclo5ed in that specifi­
cation, the priority date of tlu.1 claim shall be the dale of filing ot 10 
t.he application. 
(3) Where t.he complete speci.fication is filed or p~ded with in 
pursuance of two or more appootions accompanied by such .-peeifi­
catioIl! as are mentioned in the last foregoing subsection, and tile 
claim. is fairly based on the mAtter disclosed in onc of those rpeei.fl.-15 
cations, the priority date of th.1.t claim shall be the date of filing ot 
the application accompanied by that specification. 
(4) Where the complete specification is filed in pursuanee of a 
convention appliCJltion and the elaim is fairly based on the matter 
disclosed in the application for protectioD in a convention eountry 20 
or, where the convention application is founded upon more than 
one 8uch application for prot.ection, in one of those applieationa, 
the priority date of that cUlm shall be the date of the relevant 
appIiCJltion for protection. 
(5) Where, uuder the foregoing provisions of thu section, any 25 
claim of a complete ~cification would, but for thil provision, have 
two or more priority dates, the priority date of that claim .hall 00 
the earlier or earliest of those d&tes.. 
(6) In any case to which nb,eclwn..s (2) to (5) of this section do 
not apply, the priority date of a claim shall be the date of filing of 30 
the complete speeification. 
(7) The priority date of any matter disclosed in the deseriptive 
part of a. specification shall be the date on which that matter was 
first disclosed in pur-suance oC the application for a. patent of which 
the specmc:ltioll forms a p.al1 or (in the c.l!Ie of a convention 35 
application) was first disclosed in the releyant appliCJltion for 
protection in a. conycntion country. 
11.-(1) When the complete specification has ~en filed in 
respect of an application for a patent, the application and specifica· 
tion or spedfications slWI be referred by the Controller to an 40 
officer of the Controller (in this Act referred to as an examincr) 
for uaminatioll . ~ether with any information furnished under 
nW,e~~ (6) of ,lClion 7 of this Act and any evidence furniahed 
under rub,lCIio" (6) ol ~ 8 of this Act. 
(2) Il the e.x.a.minc.r reporb that the application or any speeifiea- 45 
tion filed in pUI'3uanee thereof does Dot comply with the require­
ments of this Act or of any ru1~ made by the Minister thereunder, 
or that there is lawful gT01IDd ot objection to the grant of a patent 
in pursuance of the application, the Controller may either-
(0) refuse to proceed 1rith the appliCJltion, or 60 
(b) require the applieatlon or any such specification as &.fore­
said to be ameOOed before he proceeda with the 
applieation. 
(3) At any time after LD appliCJllion has been filed under this 
Act and ~fore acc(:pt.anee of the complete specification, the 55 
Controller may, nt the request of the appliCJlnt and upon payment 
of the prcscribed fC(!, di.rcet that t.he application shall be post-dated 
to such dnte u m~y be speeified in the request: 
Provided that, 
(0) no application shall 00 post-d:lled ulldcr this subsection to 60 
a dale later than six months fro:n the date on which it 
was actuaUy m~e or would, but for this subsection be 
deemed to bS'ie been made, and IP IN 11 IIRL/P 11 
Page 88 
[1964.] PaknU • ..f.d, 1004. [No. 12..] 
(b) a convention applicatioo alaIl not be ~atcd under this 
rubsection to & date latu than the last date on which, 
under thc 1'o~soi~ proTiaions oC t.hia Act, the applica­
tion could have bttn made. 
5 (4) Wbere an application or rpecm~tion filed under this Act is 
amended before acceptance of the complete apeeific.ation, the 
Controller may direct that th~ applieation or ~ification shall be 
post.dated to the date on whieh it is amended or, if it has been 
returned to the applkant, to ~ date on which it is rcftled. 
10 (5) Rules made by the :\rmist.eT ur:der this Act may mnke 
provision for securing ilia t wb~rc. at any time after an application 
or sp~ification has been filed a:nder this Act and before acceptance 
oC the complete speruir.ation, a fres.h application or specification is 
filed in respeet of any part of the rubject IMtter ol the first. 
15 mentioned application or specification. the Controllcr may direct 
that the fresh application or s:p«ifieation shall be ante-dated to a 
date not earlier than the da.te of 6.ling of the first-mentioned 
application or 8p~i£cation. 
(6) An appeal shall lie Crom ally deei!lion of the Controller under 
20 ,ul,,~elUm (.3) or .ntblectio" (I) 01 this BeetioD. 
12.-(1) Subject to the proruioos of the last foregoing seetion 8e&:c!' rO.r 
of this Act, an e~amincr to nom ~ app.lica!ion for a patent is ;:.~:ru:lon by 
referred under thIS Act sha.ll mili mvcsllphon for the put'J>O'l! pablica~ioD. 
of a.scerta.ining whether the invention, so far as elaimed in any 
25 claim of the CQmpletc specifie:1tion, has ~n published before the 
date of filing of thc applicrult's eomplete spel!ifiCltion in any specifi­
eation filed in pursuance of an application for a patent maue in 
the State. 
(2) The examincr shalJ, in addition, make sueh investigation lA 
30 the Controller may direct for the purpose of ascertaining whether 
the invention, so far as cl:limcd in any claim of the complete 
specifiration, has been published in the State before the date of 
filing of the applicant's complete specification in any other 
document. 
85 (3) The examiner shall, iu addition, consider any inlormation 
furnished in pursuance of rubstctic7& (6) of uctUm 7 of this Act 
and any evidcnce furnished in pursuance of subsection (6) of 
l~ctio7\ 8 of this Act. 
(4) If it ap~ars to the Controller that the invention, 80 far as 
.ro elaimed in any claim of the eomplete S"pctiiic.ltion, has been pub­
lUlled as dcserib<:d in subsulio" (1) or rubsecti01'l (.2) of this 
aeetion, or i1 he is not 5<\tisfi<-d by thc inforrD:llion IUld cvidence 
referred to in $ubscction (3) of t.h.is section that the inventiou ., 
el&imed has not been published before \.he date of thc complete .s specification in any specification filoo in an office presenbcd under 
paragropJt (0) of suuurtirm (6) of uctio ... 8 of this Aet, he may 
ref~ to accept the complc1e lIpt."emcatioll unlen the applieant 
either-
(0) shows to the satisfaction of the Controller that the priority 
50 date of the claim at his eompletc specification is not leta' 
than the date on rlieh any relcVAnt docnment or pre­
aeribed s~illcation, a.s the case may be, was publbsh~ 
(b) fprnishe.s further cvidcn~ to the satisfaction of the Con­
troller in pursuanee of nWseclio" (6) of lutitm 8 of 
65 this Ad, or 
(c) amends his complcl.(' sp<'('meation to t.hi: satisfactioll of the 
Con troller. 
(5) .An appeal shall lie from any decision of the COlllroller under 
thia sec tion. FanlMr_1'CIh 
rew &a'ioip-lion. 
Rererence iG .... oC 
poWltial 
inl'ri/liCmeot.. [1964.J PaknU A cJ, lO()4. IP/N/lIIRL/P/1 
Page 89 
[No. 12.] 
13.-(1) In addition to the in.e:stigation required by the lut. 
foregoing acotiOD, the cuminer shall make investigation tor the 
purpose of aaecrtaining whether the invcotion, so far a.s cWmcd in 
any claim ol the compl~le specification, u claimed in, or ineluded 
in matter disclosed in the dC3enpti.c pArt oC, any other JpCeifica. 5 
tion published on or aft.cr the datc of filin~ of the applieant'1 com. 
plete apecitieation, beiog I ipecifieation filcd-
(4) in punroanee of an application for a patent made in the 
State anddat.ed before that date, or 
(b) in pnnroan.ee of a convention application founded upon an 10 
applie&tion for protcelion made in a convention country 
before that date. 
(2) U it appean to the Controller Uat the said inTention is 
claimed in, or included in matter di.selosed in the descriptin part 
ot, any luch other rpeci.fieatiou a.s aloresaicl, he may, subject to the 15 
provisions of this aeetion, direct that & reicren~ to that other 
specification shall be inserted by way of noti~ to the puhlie in the 
applicant'. complete speei.6eation unless within lOch time as may 
be prescribed either-
(Cl) the applicant aboWl to the sat.i&faetion of the CootroUer 20 
·that the priority date ollW cla.im is Dot later than the 
priority date of tbe claim or the matter discloacd in the 
deseriptive part of the said other spcei.6catio~ or 
(b) the complete rpee.ifieation is amended to the satis!.action of 
the Controller. 25 
(3) If in eon.sequenee of the investigation under leelioa lJ of 
this Aet or otherwise it appe&l'8 to the Controller-
(4) that the invention., .cl far D.S claimed in any caim of the 
applica.nt's eomplete specification, has been claimed in, 
or included in nattrr disclosed in the descriptive part 30 
or, any such spceiJication as is mentioned in ",b­
udio" (1) oC that section. and 
(b) that the other speciaeation wu published on or after the 
priority date of the applicant'. claim, 
then unless it hu been shown to the satisfaction of the Controller 35 
under that section Utat the priority date of the applicant'. claim is 
not later than the priority dnte of the relevant claim of, or the 
matter di.'iCloscd in the dcseripliYC part oC, that other spcc:ifieation, 
the provisions of I1tbsu.Jio" (2) of this section shall apply u 
they apply in relation to a specification published on or after the 4.0 
date of filing of the applicant'. complete ~ificalion. 
(4) An ap[l('al· shall lie mm nny clirection of the CootroJler 
under this aection. 
14.-(1) Il, in eonscquenec of the invt'Stigations required by the 
foregoing provisions of this Act or oC proeccding3 undcr #di<m 19 45 
or lectio1\ 35 of this Ad, it apPt'ar's 10 the Controller that an in-. 
vention in respect of whieh appliCAtion for a patent has been made 
cannot be performed without substantinl risk of in!ring~ of a 
cl:din ot any other patent, he may dircet that n rcferenroe to that 
other patent shall be inscrtOO in the appli<'8nt'8 romplctc specifica- 50 
tion by way of notice la the public unless within such time D.S may 
be prescribed eithcr-
(a) the applicant shows to the s:ltis!action of the Controller 
that there are reasonable SI'ounds for contesting the 
validity of the said claim \)( the othcr patent, or 
(b) the complete ~ifi('.alion is amcndt."<i to the satisfattioll of 
the ControUcr. IP/~/l/~fP/l 
Page 90 
[1964.] PatenU Act, 1964. [No. 12.] 
(2) Where, after a refcrence to another paunt hu been inserted 
in a completc .pceifieation in pursuance of a direction. under the 
forqoing IUbscction-
(0) that other patent iJ revoked or otherwilc ce&SeI to be in 
6 force, 
(b) the specification. of that other patent is amended by the 
deletion ot the relevant claim, or 
(c) it is found, in proceedings before the Court or the Con­
troller, that the relevant claim of that other patent u 
lO invalid or is not inCringro by an)' working of the 
applicant's inYention, 
the Controller may, on the application of the applicant, delete the 
reference to that other patent. 
(3) An appeal shall lie from any deeilion or direction of the 
15 Controller under this scetion. 
15.-(1) If it appears to the Controller in the ease of any Rer~ ~t . 
application for a patent- ~:=: 
20 
25 
80 
35 (0) that it elaims as an invt'ntion anything obviously contrary 
to well-established n41turall&W1, 
(b) that the use of the invention in rcspcet oC which the 
applicatiou is made would be contrary to public ordcr 
or morality, or 
(c) that it claims as an invention a substance capable of being 
used as food or medicine which is a mi."ttIJ:"C oi known 
ingrtdient.s possl!ssing only t.~e a:;gnogate oI the known 
prop<'rtics or the ingreJicnts, \ir tha! it claims :lS an 
invention :& process producing ~u,.h !. substance by mere 
admh:turc. 
he may refuse the appJication. 
(2) U it nppcars to the Controller that any invention in respect 
of which an application for a patent is made might be used in any 
manner contrary to law, he may insert in the complete specifiention 
iuch disclaimer in respeet of that we of the invention, or such 
other reference to the illcg:llity thereof, a3 hc thinla fit. 
(3) An appeal shall lie from any decision of thc Controller nnder 
th is section. 
16.-(1) The powers of the Controller under Jeaio" 13 or "clw. 14 of this Act may be exercised either before or after the 
complete apecifieation has been accepted or & pa1.(!ntgnnted to the 
40 applicant, and reference:! in those aectioDa to the applicant shall 
accordingly be construed as includiI!g rde.rencca to the patentee. 
(2) Where a complete specifiC4llion is amended undu_ the fore­
gomg provisions of this .Act before it has been aeceptcd, the 
amended specification shall be examined and investigated in like 
4S manner as the original specification. 
(3) The examination and in\"esUgatiCDS required by the fore­
gomg provisions of this Act I'bl\U not be deemed to warrant the 
validity of nny pntent, and no liability shall be incurred by the 
Minister or Controller or any officer of the ~li.nisier or Controllcr 
50 by 1'('a"on of or in connection with any mch ellDlwtion or investi­
gation or any report or other proceedings co~uent thereon. 8uppJemea....". 
proviaiooa .. &0 
~beI.do. Time for pu&'&'iD, 
applica&.ion in 
oni.r (or 
.ooepk.noe. 
A_~.nd 
pablioa.&.ioo or 
;:~iioo. [1964.) PaLe~ Ad, 1004. IP/NI 1I1RL/P 11 
Page 91 
[No. 12.J 
17.-{l) An application for a patent ahall be ,"oid unlca within 
such period, h<'ginniDS' with the date oC filing of the complete 
rpecifieatioD, a.a may be pl'C3cribed, or within lUeh IOD~r period 
as may be aUo\n'd under the (olJ~;n~ pro ... ·isioTU oC thi::l section or 
under rules made under this Aet.. the applicant has eomplied with 5 
all requirements impo.,ed on him by or under thi:!J Act, whether in 
connection with the complete spccifiC.1tion or otherwise in relation 
to the applie:ltion. and where the appJic3tion or any spceification 
or, in the ease of a convention application. any document filed !." 
part of the application, has been retarned to the applicant by the 10 
Controller in the course of the proeccdings, the applicant shall not 
be deemed to have complied with the said requirements unless and 
nntH he has refiled it. 
(2) Tbe period allowed by S'Ubudion (1) of this section &hall be 
extended to web period, ending not later than three month. alter 15 
t.he date on which the period .UOlred under that suhsection or that 
period Aa extended under lubltciiM (3) ol this section or under 
rules made under this Act would otherwise have e~pired, u may 
00 specified in a notice given by ~ appHCI\nt to the Controller, if 
the Dotice is given and the prcseribed fee paid before the expira-20 
tion of the period 80 apeci.ded. 
(3) It'&t the expiration of the period allowed undcr the fore­
goinS' provisions of this section an appeal is pending under any of 
the provisions of this Act in resped of the applieation (or, in the 
case of an application for a p3tent of addition, either ill respect of 25 
that application or in respect of the application for the patent for 
the main invention) or the time within which such an appeal could 
be brought (apart from any futnre extension of time thcreunder) 
has not expired, then-
(4) where Illch an appeal is pendinS'. or is brought within the 30 
time aforesaid or h-efore L~e e~pirntion of any eIicnsion 
of that time granted (in the case of a first extension) on 
an application made within that time or (in the e.a.so ol 
a subsequent extension) on t1n application made before 
the expiration of the last prcviOU3 extension, the said 35 
period &hall be extended until such date as the Court 
may determine, 
(b) where no such appeal is pending or is so brought, the said 
period sh:!.ll continue until the end of the time aforesaid, 
or if any extension of that time is grantl'd &.3 aforesaid, 40 
until the expiration oC the extension or last extension so 
gn.nted. 
18.-(1} Snbject to the provisions ol the ]&5t foregoing ~Uon, 
the complete specific:ltion filed in panuanee of an applka~ for a 
patent nay be accepted by the Cootrollcr at any time after the .(.5 
applicant haa complied with the l'Mluircmenta mentioned in tub­
.eaitm {I} of that sectiou, and if not 80 accepted lrithin the period 
allowed under that section for eompliance with those requirementa, 
shall be a.eeeptcd as soon as may be ~rea1ter : 
Provided that the applicant may give notice to the Controller 50 
requesting bim to postpone a~'Cpta.nee until such date, not beinS' 
later than lil~n months from the date of filing of the complete 
specification. as may be sp(:cmcd in the notice; and if such notice is 
given and, 'Where thc notice requests a ~tJXinement to a d~te Inter 
than twelve months from the date &!orcsaid, the prescribed fee is 55 
p.lid, the Controller may postponc a~pLADcc accordingly. 
(2) On the accept:mce of a comple~ Sp<'eifiro1tioD the Controller 
t;hall give notice to thc applicant, &I1d ~hdll ad\"l~rli<;e in the Journal 
the fact that the f:pccifi~tion bas been acccpted and the date on IP/N/lIIRLlP1l 
Page 92 
[1964.] Pale'nU Ad, 1964. [No.t!.1 
which the applicl1tion and the spccifleation or speciflcl1tion. tiled .. 
par1uancc thcreof will be open to pahlic in~pcction. 
(3) Any rcCcrence in this Act to the date of the publication 01 & 
complcte 'pecification shall be eorutroed u a reference to the date 
6 advertised u aforesaid. 
(4) After thc date of the publiC4tion of a complete IpCcmcatiaa 
and until the scaling of a patent in re;pcct thereof, the applieam 
shall have the like privileges &.Dd rights as i1 a patent for the 
invention had been sealed on the date of the publication of tbe 
10 complete 'pecification : 
Provided that an applicant shall DOt be entitled to institnte any 
proeeedingj for infringement until the patent has been .ealed. 
19.-(1) At any time within three months from the date of tM Oppoti~ ~'­
pUblication of a complete speeification under this Ad, any penaa eran
' 0 P-
15 interested may give notice to the C4ntroller of opposition to the 
gn.nt of the patent on any of the following grounds-
(Cl) that the applicant for the p&tent, or the person deseribed 
in the application as the bue and first invcntor,..obtained 
the invention or any part thereof from him, or from a 
20 person of whom he is the personal representative, 
25 
30 
35 
50 
65 (b) that the invention, so far as claimed in any claim of the 
complete specification, has been published in the S~ 
before the priority date of the cJaim.-
(i) in any specification filed in pursuance of an app&. 
ea.tion for a patent made in the Slate, 
(ii) in any other document, 
(c) that the invention, 80 far IS claimed in any claim of the 
complete specificatiun, is elaiml..-d in, or included in 
matter disclosed in the deow:ripti\'c part oC, anolhtt 
'peeification published OD or after the priority ~te 0{ 
the applicant's cl:Um. and med in punuanc.! of &.Il 
application for a patent in the State, the priority date 
of the relevant claim or the matter disclosed in the 
descriptive part of the other specification being earlier 
than that of the I1ppli('.a.ot'~ claim, 
(d) that the invention, so far u elaimed in any claim of the 
complete .pecificatio~ W3I used in the State before the 
priority date of that c.la.im., 
(,) that the invention. so far u claimed in any claim of the 
complete specification, is obvious and clearly d~ not 
involve any inventive step having regard to any matter 
published in the manner ~i1jcd in paro!]NJph (b) of 
this BubseetioD. &."IY matter claimed or diJ.elosed in the 
manner apeeified in p4NJfraph (c) of this subsection Gr' 
what was used in 1.he State before the priority date 01 
the applicant'. claim, 
(f) that the subject of any elaim of the complete lpecificatioa 
is not an invention within the meaning of thia Aet, 
(D) that the complete specmeatioa does not sufficiently and 
fairly describe the inTention or the method by which it 
is to be pc:!ormed, 
(A) that, in the ease of a convention application, the applica­
tion was not made within the period prescribed under 
IVbleetioft (3) of secJUm 6 of this Act from the date of 
the first application for protection for the inventioa 
made in a convention country by the applicant or a 
person from whom he derivcs title, 
but 011 no other ground. RoIuaal oC pat.en5 
wi&bou' 
oppoai\.ion. 
1feo~ioD oC 
mnnc.or .. IUch 
iD p-t.en,. IP/~/l/~f.P/l 
Page 93 
[J964.] PaJenl.s Act, 1964. [No. 12.] 
(2) Where any IUch notice i. given. the Controller aball give 
notice oC the opposition to the applicant, and shall give to the 
applicant and the opponent an opportanity to be beard bcCore he 
decides on the eaao. 
(3) For the purposes of paragr(Jph (d) or partlgrapA (d) of 6 
,ub,ection. (1) of this section, no account Ihall be taken of any 
secret use. 
(4) An appeal 8hall lie from any decision oC the Controller under 
thia section. 
20.-(1) If at any time after the aeeeptanee of the complete 10 
specification filed in pursuance of an application for a patent and 
before the grant of a patent thereon it comes to the notiee of the 
Controller, othcrwise than in consequence of proceedings in opposi. 
tion to the grant under the last foreGOing section, that the inven. 
tion, so far as claimed in any claim of the complete specification, 15 
hu been published in the State before the priority date of the 
claim-
(0) in ·any specification tiled in pursuance of an application 
for a patent in the State, or 
(b) in any other document, 
the Controller ma.y refuse to gr:mt the patent unless within such 
time as may be presel'ibed the complete spccilication is amended to 
his satisfaction. 
(2) An appeal shall lie from any decision of the Controller under 20 
this section. 25 
21.-(1) If the Controller is satisfied, upon a request or claim 
made in accordance with the provisions of this aeetion-
(0) that the person in respect of or by whom the request or 
claim is made is the inventor of an invention in respeet 
of which application for a patent has ~ made, or ~ 
of a substantial part of that invention, and 
(b) that the application for the patent t" a direct consequence 
of his being the im·entor, 
the Controller shall, subject to the provisions of this section, cause 
him to be mentionc.d :I.S invelltor in a.ny patent granted in pur· 35 
Illanee of the npp1i~tjon, in the complete specifi~tion, and in the 
register of patents: 
Provided that the mention of any pel'Q1 u inTeDtor under this 
~tion shall not eonfer or derogate from any righta under the 
patent. 40 
(2) For the purposes of this section the l1etW denser of an 
invention or a part of an invention aha.ll be deemed to be the 
inventor, notwithstanding that any other person is for any of the 
other purposes of this Act treated as the true and first illvcntor, 
and no person shall be deemed to be .the inventor of an invention 4-5 
or a part of an invention by reason only that it W3S imported by 
him into the State. 
(3) A request that any person shall be mentioned as a.!orcsaid 
may be made in the prescribed manner by the applicant for the 
patent or (where the pe~on alleged to be the wventor isn0t the 50 
applicant or one of the applicants) by the applicaut and that 
person. IP/NI 1 IIRL/PI 1 
Page 94 
[1964.] Pahnt.! Act, 1964. [No. 12.] 
(4) If any person (other than a person • respect ot whom I 
request in relation to thc application in qwstion hu been made 
uDder the last foregoing subsection) desires 1.0 ~ mentioned &I 
afores:lid, he mny make & claim in the pre-:ribed manner in that 
6 behall. 
(5) A request or claim under the fortgoiDc provisions of this 
aeelion mwt be made not later than two ~ after the date of 
the publication of the complete spceifiCBtiOn, ac within such further 
period (not exceeding one month) as the Ccmtroller may, on an 
10 application made to him in that behalf be10re the expiration of the 
aaid period of two months lmd subject to pa".wt of the prescribed 
fee, allow. 
(6) No request or claim under the foregooilrag provisions of this 
section shall be enterWned if it appears to ~ Conh'Oller that the 
15 request or claim is based upon bets which, if proved in the ease of 
an opposition under the provisions of p4rGg711po\ (a) of ltIh"ctio-n 
(1) of Itcti(;'A 19 of t.h.is Act by the person in zapcct of or by whom 
the request or claim is made, would have eatitled him to relief 
under that section. 
20 (7) Subject to the plOvisiollS of the l.&st foregoing subsectioD, 
where a claim is made under rubstclion (I) of this section, the 
Controller shall give notice of the cbim to ~ applicant for the 
patent (not being the claimant) and to any oCl.er person whom the 
Controller may consider to be interested, and before dceiding upon 
25 any request or claim made under rub3tclioA (l) or I'Ub3tctio7\ (4) of 
th.iJ section, the Controller shall, if required, hear the person in 
respect ot or by whom the request or claim is IIlAde, and in the case 
of a claim under the said Jubsectiou (4), any person to whom notice 
of the claim has hccn given as aforesaid.. 
30 (8) Where aDy person has been mentioned as inventor in pur-
1tWlC8 ot this section, any other persou who alleges that he ought 
not to have been so mentioned may at &:lI:'f time apply to the 
Controller for a certificate to that effect, and the Controller may, 
alter hearing, if rt!quired, any person whom J.e may consider to be 
as illterested, issue such a certificate, and if he does so, he shall rectify 
the IpeCmcation and the register accordingl,._ 
(9) An appeal &haUlie from any decision 01 the Controller under 
this section. 
22.-(1) If the Controller is satis1ied, on a elaim made in the SuhUlaAioD 0' 
4D prescribed manner at any time bc!ore a p&1cRt has been granted, ~ etc.. 
that by virtue of any assignment or ngrcemeat made by the appJ.i. 
cant or one of the applicants for the patent, Gr' by operation of laW', 
the claimant would, if the patent were thes crantoo, be entitled 
thereto or to the interest of the applic:ul therein, or to an 
4,5 undivided shalO of the patent or of that imuest, the Controller 
may, subject to the provisions of this aeetiaa, dircct that the 
Ipplication shall proceed in the name of tM e1aimant or in the 
JWDe8 of the claimant and the applicant or die other joint appli­
ea.nt or applicanta, according u the case may require. 
10 (2) No lUeh direction as aforesaid shall be ci't'cn by virtue of 1Jl,. 
assignment or agreement made by one of two or more joint 
applicants for a patent except with the consest of the other joint 
applicant or applicant&. 
(3) No such direction as aforesaid shall be cinn by virtue ot any 
65 assignment or agreement for the ~igument .f the benefit of an 
inTention unless eitber-
(Cl) the invention is idcntmcd therein 1ty reference to the 
number ol the applieation for the petent, . 
(b) there is produced to the Controller a acknowledgment by 
60 the person by whom the assisnmCS21 or agreemcnt "'"as [19G4.] Patenl3 Ad, 1964. [No. 12.] 
made that the assignlDmt or agreement relates to the 
invention in rcspecL of which that application is made, 
or 
(c) the right.. of the claimant in rcapect of the invelltion have 
been finally established by a decision of any court or by 5 
& determination of the Controller under the following 
proviaions of this Aet.. 
(4) Where ono of two or mo:e joint Ilpplicnnts for a patent dies 
at any time before the patent. has been gra..oted, the Controller m.1y. 
upon a request in that behalf made by the survivor or survivors. 10 
Ind with the ca~nt of the pcrsonal representativo of the deceased, 
direct that the application shall proceed in the name of the survivor 
or .urvivors alone. 
(5) U any dispute arises between joint applicant.. for a patent u 
to whether or the manner in mch the application should be pro-15 
eeeded with, the Controller DU,., upon appli('~tion made to him in 
the prescribed manner by &Oy of the parties, and alter giving to all 
parties concerned an opportunity to be heard. give such directions 
u he thinks fit for enabling t.M application to proceed in the name 
of one or more of the parties alone or for rcgulat·ing the manner in 20 
which it shall be proceeded with, or for both those purposes, 
according as the ease may reqnire. 
(6) An appeal abaHlie from any decision of the Controller under 
thia aection. 
PART In. 
Ga.u."T, RESTORATION, REVC>C.lTIO!'{ ."~I> SURRo.1>ER~ ETC., or PATENT. 
GRn' and -tiDe 23.-(1) Subject to thc provi'lions of this Aet with respeei to 
of p6t.eac.. opposition, and to any other power of the Controller to refuse tht 
grant, a patent scaled with the official seal of the Controller shall, 25 
if the prescribed r«}u~t is made within the time allowed under thilj 30 
section, be granted to the :applicant or applicants within that time 
or as soon as may be thczu!tcr; and the date on which the patent 
is sealed shall be entered in the register of patents. 
(2) Subject to the following provisions of this Act with rc:speet 
to patent.. of addition, a ~uest under this section for the .!('aling 35 
ol & patent sball be mad< not mlcr than the e.:s:piration of four 
months from the date of the publication of the complete specifica­
tion: 
Provided that-
(4) where tot the expiration of the said four months any pro. ,(0 
eeeding in rd.ation to the applieation for the patent is 
pending in an,. court or bclore the Controller, the 
request may be made within the prescribed period &iter 
the final dclamin&tion of that proceeding; 
(b) whcre the applie.ant or onc of the appliea.nta has died 45 
before the expira.tion of the time within whieh under 
the provisioas of this subsection the request could other­
~ be m.:lde, the !t8id request may be made at &Oy time 
within t\Vel~ mO!lths alter the date ol the de&th or at 
such later ~c :1.'1 the Controllcr may allow. 50 
(3) The period within which under the last foregoing subsection a 
request for the scaling o! 11 pawH may ~ made may from time to 
time be extended by L~~ Controller to such longer period as may 
be speeified in an &ppli:':ltioli ma.de to him in thnt behalf, i! the 
npplication is made and the pr.!Scribcd f~ paid within that longer 55 
period : 
Provided that the firsl-mentioned period shall not be extended 
under this subsection bv more than six mouths or su<.'h shorter 
period as m~y be· pre:sc~ib.~d. IP/N/lIIRL/P/l 
Page 95 IP/N/I/IRL/P/l 
Page 96 
[1964.J PalcJ.U Ad, 1064. [No. 12.] 
(4) For the purposes ot thts seetion a proccrding shall be deemed 
\0 be pending so long &os the time for any .~al therein (apart 
from any future extension of tha.t time) h.as not expired, nnd a 
proceeding shall be deemed to be finally determined when the time 
5 for any appeal therein (:\part from any such atension) has e.~pired 
withont the appeal being brought 
24.-Where at any t.ime ~ter a patent has been sealed in pur­
'Dance of an application under this Act, the Controller is satisfied 
that the person to whom the patent was granted had died. or (in 
10 the casc of a body corporate) had cea.'!cd to exist. ~Core the patent 
was sealed, he may amend the patent by suils!ituting for the name 
of that person the name of the person to ... Itom the pa.tent ought 
to have been granted; and the patent shall hue effcct, and shall be 
deemed always to have had effect, accordin.cfy. 
15 25.-(1) Subjeet to the provisioIl.! ot uu. Act. every patent 
granted under thil Ad and se&1ed with tile official seal of the 
Controller shall operate and have e1fed &Dd ahall be expressed to 
operate and have e1rec:t-
(0) to confer on the penon \0 whom the same is granted, his 
20 exeeutors, ad.ministratoMl and ISSigns (in this sub­
.eetion collectively referred to as the gnntee) the full, 
eole, and exclusive right, power znd authority by him­
self, his agents or licensees at an times so long II.S the 
patent remaiIl.! in foree to make., use. c.Icrcisc, and vend 
25 in the State the im-cntion in rcspcet ol which the patent 
b granted; 
(b) to confer on the grantee the sole ~t to have and enjoy 
the whole profit and advantace from time to time 
aeeming by reason ol the said invention ouring such 
30 period as the patent remains in force; 
(e) to prohibit all persons wh!ltsoc-rer in the Slate while the 
patent remain.! in fo~ from mz.king u.<;e of or putting 
in practice the said invention or any part thereof, or in 
anywise imitating the !tame or in anywise representing 
35 or pretending themselves to be the inventors of the said 
invention or of the said invCIltion with &ny nddition 
thereto or subtraction thercfrom without the con~nt. 
licence or agreement of the p-antee in writing under 
his hand and senl; 
40 (d) to make all persons who, while the p3tcnt remains in foree, 
&ball in the S~te in anywisc infringe Ilny risht, pov.·er, 
or authority e:tpr~ in tM patent to be thereby 
conferred on the rrrant.cc or do any act. mnttcr, or thing 
the doing of wllich is cxp~ in the patcnt °to be 
45 thereby prohibite<1. answerablt accordins to l:l\v to the 
grantee for such infringement or the doing of such act, 
matter, or trung. 
(2) Every patent shall be in the prescribed form and shall be 
granted for onc invention only. but the lpI!eifieation may contain 
50 more than one claim; and it shall not be competent for any person 
in an action or other proceeding to take any objection to a patent 
on the ground that it has been granted for more than one 
inTention. AmondmeaL or 
patcn~ gT1U)Led 
todeeoa.d 
&pplie&Dt.. 
26.-(1) Every pa.tent shall be dated with the date of filing of Date aocI lerm 
65 the complete spceifi.eation : or 1*-'-
Provided that no p~ding sll:111 be taken in respect of an 
infringl!mcnt committed before the dale ol the publication of the 
eomplete specification. 
(2) The date of e'"ery patent &11&11 be tntered in the register of 
60 pa\eut.s. 
(3) Execpt as otht'nvi.se c.l:prc§ly provided by thilf Act, fht 
k!nn of evcry patent shall be sixteen Stars fl'l .. m the date of the 
pnfeut. Pa&eot. oC 
AcSdiUoa. [1964.] PakaId Ad, 19M. IP/N/l/lRLIPIl 
Page 97 
[No. 12.] 
(f) A palent .hall eeue 10 have ded, notwith3landinr anything 
therein or in this Ad, OD the expiration ol the pt!riod prescribed 
for the payment ol any rsewal fee if that f~ is not paid within 
the preseribed period or Yith.in that period aa extended UDder this 
aection. 5 
(6) The period presc.ri1led for the payment of any m2e1fal fee 
shall be extended to such paiod, not being more than m m()nth! 
longer than the prescribed poeriod, as may be speciBcd in a request 
made to the Controller i1 the ~uest is made and the l"e'De1f&l fee 
and tho prescribed additir:aa.l fee paid before the expiration of Lhe 10 
period 10 specified. 
27.-(1) A patentee may, after advertising in manner provided 
by rules of court his intstion to do 10, present a petition to the 
Court or the Controller paying that his patent may be extended 
for a further term. 15 
(2) A petition under cm. .eetion shall be presented at lust six 
montha before the time liEted. for the expiration of the patent: 
Provided that the peD.d within which a petition UDder this 
eection may be presented "T, at the discretion of the Court or the 
Conttroller, be extended b,-the Com or the Controller, u the c:uc 20 
maybe. 
(3) AI1y person may Pe notice to the Court or the Controller, 
as the ease may 00, of objection to the e:s:tcnsion. 
(4) On the hearing of -r petition under t.h.is seetion the paten.tee 
and any penon who has ,"en notice of objection slWl be made 25 
parties to the proeced~ and. if the petition is presented to th~ 
Court, the Controller sha!l be entitled to appear and be beard, and 
shall appear if 80 dil"Cctcd by the Court. 
(5) The Court or the Caotrollcr, in making a decision, shall ha\'c 
rcgnrd to the nature and merit.., of the invention in rctation to the 30 
puhlic, to the profits :mad.! by the patentee u such, and to all the 
circumstances of the ea3t-
(6) If it app~rs to the Coort or the Controller that the patcntee 
has been inadequalely ramnerated by his patent, the Comt or the 
Controller, a, the l'a~c azy be, may by order c:s:tcnd the tenn of 35 
tho patent for a furthc-term not exceeding five ,.tan or, in 
exceptional l'~, ten ~ or may order the grant of I new 
patent fllr such trrm a. .. ~r be ~ified in the order aDd eontain­
ing any restriction, <."OnoCitioru, and pro\ision.s the Coorl or the 
Controller, as the case JCY be, may think fil ~ 
(7) The Controller ma,., at any s1a~ oC the procoedinCl! before 
him. under .this section, mer the IX'tition to the Court and there­
upon the p<'tition shall J.e decmed to have been presented to the 
Court by the patrntt"C .t the invention to which it refers under 
lUb!ectio71 (1) of this seetion. (5 
(8) An ap~l shall lit from any decision of the Controller under 
this section. 
28.-(1) Subject to u.e provisions of this section, wbtre appli('..a­
tion is made for a pabt in respect of any improvement in or 
modification of an in.eation (in this Act refcrred. to as the main 50 
invention) and the ap~t also applies or has applied for a 
patent for that inycntiolt or is the patentee in ~t thtrool, the 
Controller may, if the applicant 60 requests, grant the patent for 
the improvement or m0di6eation as a patent of additioD. 
(2) Subject to the prorisioru of this scetion, wherc IQ" invention, 55 
being an impro\"(;ment iI. or modification of Mother invention, is 
the subject of an indeperlcot puteDt and the patentee in respcct of 
that patent is also the pdtentec in respC<'t of the patent for the 
main invention the Controller may, if the patentee so rrquests, by 
order re\'oke the p3tcntfor thc improvement or modu.'Cation nnd 130 
grant to the pa~ntce a patent of aodition in l'CSf'<Xt thereof, 
bearing the same dale as the date of the patent so revoked. IP/N/llIRLlP1l 
Page 98 
[1964.] PaU:n.U Act, 1964. [No. 12.] 
(3) A patent shall not be gr&nted .. a pat.ent of addition unlea 
the date of filing of the comp)c~ speciAeation wu the WIle u or 
later than the date of filing of the COIIlpk~ lpeci.6cation in respect 
of the maiD invention. 
6 (4) A patent of addition shall not be .wed bdore the eealing of 
the patent for the main invention i &Dd if the period within which, 
but for this provision, a request tor the sealing of a patent of 
addition could be made under uelio7\ 1.3 of this Act e.."tpires before 
the period within which a request for the scaling of the pe.unt for 
10 the main invention may be so made, tJI,e request for the ~ling of 
the patent of addition may be made at any time within the lut­
mentioned period. 
(5) A patent of addition shall be granted for .. term equal to 
that of the patent for the main invention, or so mach thereof as is 
15 unexpired, and shall remain in force during that term or until the 
previoUl eeae.r of the patent for the ma.i:a inventioo and no longer: 
25 Provided that-
(0) if the term of the patent fDr the main invention is 
extended under the last forqoing aection of this Act, 
the term of the patent of addition may Wo be extended 
&CeOrding}yj &nd 
(b) jf the patent for the main in'ftDtion is rnoked under this 
Act, the Court or ControDa-, as the caae may be, may 
order that the patent of addition thall become an 
independent patent for the mnainde.r of thc term of the 
patent for the main in'ftlltion, and thereupon the 
patent shall continue in foree at an independent patent 
aceordiDgly. 
(6) No renewal fees shall be payable in respeet of a patent of 
30 additionj but, if nny such paunt becomes an io<kpendcnt patent 
by virtue of an order nnder the la.st foregoing subsection, the same 
fees shall thereafter be payable, upon the same datcs, as if the 
patent had been originally granted as Ul independent patent. 
(7) An appenl shall lie from any decision of the Controller 
16 under this section. 
29.-(1) Whrre a patent has cea.scd to have effect by reason of u. Re.tor.t.ion or 
failurc to pay any rencwal fcc within the prescribed period or 18J*d p&WD&.I. 
within that pcriod as c.:ttendcd under uclion 26 of this Act, and the 
Controller is satisfied. upon appliC.ltWc made within three years 
40 from the d3te on which the paunt cc.:&Rd to ban dcet, that the 
failure was unintentional ;md that uo lIDdue dcLt,. h.a.s occurred in 
the making or prosecution of the applieation, he ahalJ by order 
restore the patent and 3.Dy patent of addition specified in the appli­
cation which has c~scd to have ef1cet _ the eeaer of that patent. 
a (2) An application under this sectioa aay be ~ by the perlOn 
who 'Wu the paten fee or by his personal represe.cb.tlve; and where 
the patent was held by two or more pci"SIIlS jointly, the application 
may, with the leave of the Controller, be made by one or more ot 
them without joining the others. 
50 (3) An application undcr this 3eCtioD &hall contain a ltatemcnt 
(to be verilied in such mallncr u may be prescribed) fully setting 
out the circumstances which led to the failure to pay the renewal 
feej and the Controller may require from the applicant mch 
furthcr evidence IlS he may think nece.s:1ry. 
55 (4) U alter hcarin~ the applicant rd the app1i'e&nt so requires 
or the Controller thinko; fit) tl\C Contro!}er is sati.c:fi«l that A prima 
f(1ci~ case hAS been nl:lde out (or an ordcr under this Sl!etion, he 
shall advertise the applic:ll.ion in the Joamalj a.nd lVithin the pre-RostoraUon or 
Jap.ed 
.ppliea~iona fcw 
pa\en&a. [1964.) P~enll Ad, 1964. IP/N/lIIRL/PIl 
Page 99 
[No. 12.) 
aeribed period any penon may gh'e notiee to the Controller of 
opposition thereto on either or both of the following grounds, that 
ia to say:-
(0) that the failure to pay the reneYIl fee wu not uninten· 
tional; or 6 
(b) that there has been undue delay in the making of the appli. 
cation. 
(5) If notiee of opposition is given within the period aforesaid, 
the Controller shall notify the applicant, and shall give to him and 
to the opponent an opportunity to be heard before he decide" the 10 
ease. 
(6) If no notice of opposition is given within the period &!ore· 
said or il, in the ease of opposition, the decision of the Controller 
is in favour of the applicant, thc Control1cr shall, upon payment 01 
any unpaid renewal fee and such additional fee as may be pre-15 
leribcd, make the order in aeeoroanee with the application. 
(7) An order under this aee:tion for the restoration of a patent-
(0) may be made 8ubject to such cooditioIl& u the Controller 
thinks fit, including in p4rti~ a condition requiring 
the registration in the register of patents of any matter 20 
in respect of which the prorisions of this Act as to 
entries in that rqister have not been complied with; 
and 
(b) shall be subject to such provision as may be prescribed for 
the protection ol persons who may have begun to avail 25 
theIIl!elves of the p:l.tcnt..ed inTention between the date 
when the patent eea.sed to hue effect and the date of 
the application under this seetionj 
and if any condition of an order under this section ia not complied 
with by the patentee, the Controller may, after giving to the 30 
patentee an opportunity to be heard, revoke the order and give such 
directions consequential on the revocation &l he thinks fit. 
(8) An appeal ahalllie from any decision of the COntroller under 
t.hia section. 
30.-(1) Where & patent has not been sealed by reason only that 3$ 
the prescribed request was not made within the time al10wed for 
that purpose by or under Itaic" ~ of this Act, then if the Con· 
troller is satisfied, upon application made within six months &!ter 
the expiration of that time by the npplieant for the patent, that the 
failure to make the request was un in tentional, he may order the 4D 
~tcnt to be sealed notwithstanding that the prescribed request lfU 
not made as &foresaid. 
(2) An application under this seetion shall contain & statement 
(to be verified in such manner as may be preseribed) fully letting 
out the eireumstances which led to the failure to make the 4.5 
prescribed request; and the Controller may require from the 
applicant such further evidence as he may think neeessary. 
(3) 11 after hearing the applicant (if the applicant 10 requires 
or the Controller thinks fit) the Controller is satisfied that a primG 
facie ease bas been made out for ILD order under this section, he 50 
wall advertise the application in the Journal; and 'within the 
prescribed period any person may give notice to the Controller of 
opposition thereto on the ground tha.l the failure to make the 
prescribed request wu not unint.tntioDal. 
(4) If notice of oppositicn is given within the period aforesl\id, 55 
the Controller shall notify the applicant and shaH give to him aDd 
to the opponent an opportunity to be hnrd before be dcddcs the 
case. IP/NI 1 IIRL/PI 1 
Page 100 
[1964.] Paknu Act, 1964. [No. 12.] 
(5) If no notice of opposition is given within the period afore­
aaid, ur if in the cue of opposition the deeitiou of the Controller ia 
in favour of the applicant, the ControUer .hall, upon payment of 
the fee prescribed in respect of the making of the request for 
5 sealing and of such additional fee as may be pre3Cribed, make the 
order in accordance with the application. 
(6) An order under tbi" section for the acaling of a patent shall 
be subject to such provision as may be pl"e!Cribcd for the protection 
of persons who may have begun to avail themselves of the invention 
10 between the date when the time allowed by or under stction 23 of 
thia Act for making the prescribed request expired and the date of 
the application under thia section. 
(7) .An appeal shall lie from any decision of the Control1er under 
this section. 
15 31.-(1) Subject to the provisions of uaioft. 33 of this Act, the 
o,ntroller may. upon application m~ under this section by a 
patentee, or by an applicant for a patent at any time after tho 
acceptance of the complete lPeeificatio~ allow the complcte spceifi­
eation to be amended subject to sueh eondiliona, if any, u the 
20 Controller thinks fit : 
Provided that the Controller shall not allow a rpecification to be 
amended under this section upon an application made while any 
action before the Court for infringem.etlt of the patent or any 
proceeding before the Collrt for the rnoeation of the patent is 
25 pending. . 
(2) Every application for leave to amend a rpceification under 
this seetion shall state the nature of theproposcd amendment :lDd 
.hall give full p3rticulars of the reasoDS for which the application 
is made. 
30 (3) Any applics.tion for leave to amend a specificalion under 
th.is section, and the nature of the proposed amendment, shall be 
advertised in the prescribed manner: 
Provided that where applicalion is made before the publication 
of the complete sper-malion, the Controller may, if he thinks fit, 
M dtc;pense with advertisement under this mbsection or direct that 
advertisement shall be postponed until the complote specification is 
pllblished. 
(4) Within the prescn"bcd period after the advert.isement of an 
application under this section, any pencn may giTe notice to the 
40 Controller of opposition thereto; and "here weB a notiee is given 
within the period aforesaid, the ControDer shall notify the pel'lOn 
by whom the application under this seetion is made &Dd shall give 
to that person &Dd to the opponent an opportunity to be heard 
before he decides the cue. 
(5 (5) An appeal shall lie from any deei.lion of the Con troll er under 
this section. 
(6) This scetion shall Dot apply in relation to any &mendment of 
& Ipccifieation effected in proceedings in opposition to the grant 
of a patent or in pursuance of any provision of this ..Act anthorising 
60 the Controller to direct a reCerenoe to another specification or 
patent to be inserted, or to refuse to grant & ~tent, or to revoke a 
patent, unless the specification is amended to his satisfaction. 
32.-(1) In any action for infringement of a patent or any 
proceromg before the Court for the revocation of :L p3tent the 
65 Court may, subject to the provisions of the next following section, 
by order allow the patelltee 10 amend his complete specification in 
5Uc)l mlllluer, and subjcet to auch terDlS a.s to cost.!, advertisements A.mendmon' or 
-recifiea1Jonwi~ 
IeaMol 
Cont.to, .... 
A.Jn.ndment or 
~i6ca\ioa 
with leave oC 
UM Court. Bupplemeo"ry 
proyiaiorll .. &0 
ameadment. oC 
tpeoillca.t.ioo. 
Reyoca&lOD of 
patea, by Court., [1964.] PaknU Ad, 1964. IP/N/1/IRL/P/1 
Page 101 
[No. 12.] 
or otherwise, u the Court may think tit; &Dd it in any such pro­
ceedings for revocation the Court decides that the patent is invalid, 
the Court may allow the .pccmeation to be amended under this 
IeCtion instead of revokicg the pat.ent 
(2) Where an application for an order under this section is made 5 
to the Court, the applicant shall giVt notiee ol the application to 
the Controllcr, and the Controller shall be entitled to appear and 
be heard, and shall appear i1 so directed by the Court 
33.-(1) After the acceptance of I eomplcle specification, no 
amendment thereof shall be e.tTetted except by way of disclaimer, la 
correction or explanation, and no amendment thereof &ball 
be allowed the effect of which would be that the specification u 
amended would claim or describe maUu not in substanee di"closcd 
in the specification before the amendment, or that any claim of the 
tpeCifieation u amended woold not fall wholly within the scope of 15 
a elaim of the specification before the amendment. 
(2) Where, &fter the date of the pnblkation of a eomplete sped-
4eation, any amendment of the sptci1ieation ia allowed or approved 
by the Controller or the Court under t.hls Act, the right of the 
patentee or applicant to make the amendment shall not be ealled 20 
in question eicept on the ground of !nnd; and the amendment 
ahall in all courts and for all purposes be deemed to form put of 
the apeeifieatwn: 
Provided that in construing the .pee.i1ieation as amended refe-
rence may be made to the spceifieation as originally published. 2S 
(3) Where, &fter the date of the publication of a complete speei. 
fiea.tion, any amendment oC the specilieatioD is allowed or approved 
u aforesaid, the fact that the lpec:iliealioo hu been amended shall 
be advertised in the Journal. 
34.-(1) Subject to the provisions of this Act, a patent may, on 30 
the petition of the Attorney General or any person authorised by 
him, or of any person interested, be reTOked by the Court on any 
of the followinc grounds, th.at is to ay-
(Cl) that the invention, so far u daimcd in any claim of the 
complete specification, "'"u elaimed in, or included in 3S 
matter d.iaclosed in the descriptive part of, another 
specification published OD or aCter the priority date of 
the claim and filed in pursuanee of an application for & 
patent in the Statc. the priority date of the relevant 
claim or of the matter di!lelceed in the descriptive part .a 
of the other "peeifieation being earlier than that of the 
claim; . 
(b) that the patent wu granted OIl the application of a person 
DOt entitled under the prvTi:aion.a of thi.a Act to apply 
therdor; 45 
(c) that the patent wu obtained in contravention of the righu 
of the petitioner or any pel30D under or through whom 
he elaima; 
(d) that the subjeet of any ela.im of the complete apeeifieation 
11 not an invention wit.h.b1 the meaning of this Actj 50 
(.,) that the invention, so far &I eWmed in any claim of the 
complete 8J)\.'Cifieation, is DOl new having resard to what 
was publi.!.hcd before the priorily date of the claim; 
(f) that the inYention, 10 far as claimed in any claim of the 
complete spl"CifieaLion, is obvious and does not im'olve 65 
any in\"enti\'t step ba.ing regard to any matter claimed 
or disclosed in the nunner sIX-ci...6ed in paragraph (.) 
of this !uhscctiC'ln or to My matter puLlishcd iD tho 
manner 6p<lcmed in p-J:-ugraph (e) of this subsection; 
(g) that the invention, l'.o far ~ elaiOled in any claim of the 60 
C'Ompkte sp.:cifieation, is not useful; IP/NI1/IRLIPI 1 
Page 102 
[1964.] Pateni8 Ad, 1964. (No. 12.] 
(h) that the complete specification doea not lufileiently and 
fairly describe the invention and the method by which 
it is to be performed, or does not dise10se the best 
method of performing it which wo.s known to the appli-
6 cant for the patent, and for which he was entitled. to 
claim protection; 
(,) that the scope of any claim oC the complete apceification is 
not sufficiently &Dd clearly defmed or th:lt any elaim ol 
the complete specification is not fairly based on the 
10 matter disclosed in the specification; 
(J) that the patent was obtained on a false suggestion or 
representation; 
(ok) that the primary or intended use or exercise of the inven­
tion is contrary to public order or morality. 
15 (2) Without prejudice to the pro\-isions of IUbltcti~ (t) of this 
aeetion, a patent may be revoked by the Court on the petition of 
IllY Minister of State if the Court is .tisfied that the patentee hu 
without reasonable cause failed to comply with the request of the 
lfinister to make, use, exercise or vend the patented invention for 
20 .the service of the State upon reasonable terrus. 
(3) Every ground on which a patent may be revoked shall be 
available as a ground of defence in any proceeding for the in1ringc­
ment of the patent. 
35.-(1) At any time within twelve months after the sealing of 
25 a patent, any person interested who did not oppose the gr;mt of 
the patent may apply to the Controller for an order revoking the 
patent on anyone or more of the grounds upon which the grant of 
the patent could have been opposed: 
Provided that when an action for inJringcment, or proceedings 
30 for the revoea.tion, of a patent are pending in any court, an :lppli­
eation to the Controller under thL~ l'CCtion .shall not be maue urept 
with the leave of the court. 
(2) Where an application is made UDder this section, the Con­
troller shan notify the patentee and shall give to the applicant and 
35 the patentee an opportuuhy to be heard before deciding the ease. 
(3) U on an application under this acetion the Controller is 
satisfied tha.t any of the grounds aforesaid are established, he may 
by order direet that the patent shall be revoked either uneond,i.. 
tionaIJy or unless within such time u may be specified in the order 
40 the complete specification is amended to his aatiafaetioa : 
Provided that the Controller shan not make an order for the 
unconditional revoc:ltion of a patent under this section unless the 
eireumstaneca nrc such !I.S would have justified him in refusing to 
crant the patent in proceedings under stc1ion 19 of this Aet. 
45 (4) An appeal shall lie from any decision of the Controller under 
this section. l\evocaLi(.lQ of 
pAt.eft\ by 
CoD h'ol Ier. 
36.-(1) A patentee tnay at any time by notice given to the 8arTomder of 
Controller offer to surrender his pate.nL p-Un&. 
(2) 'There rueh nn offer is made t.he Controller shall adverli.'IC 
50 the offer in the prescribed m:lnncr; :lno within the prescribed EIldo,.,men&' oC 
pa ton.. "Ji()8llAloM 
oCriab ..... [1004.] PattnU Ad, 19G4. IP/NI1/IRLIPI 1 
Page 103 
[No. 12.1 
period after J'tlch advertisement &Dy pencn interested may cne 
notice to the Controller of oppoGtion to the rurrender. 
(3) Where &Dy such notice of opposition is duly given the Con· 
troller shall notify the patentee.. 
(.) It the Controller is satis5ed. after hearing the patentee &Dd 5 
any opponent, if desirous ol being heard, that the patent may 
properly be J'tlrrendered, he may accept the od'er and by order 
revoke the patent. 
(5) .An appeal ahall lie fro. &IJ.y decision of the Controller 
under this Jeetion.. 10 
PAKT IV. 
VOLUNT.1BY .lND ColO'ULSOBY EMx>asJOaN't', ANTlCIP.A.TION, .A.MD 
PaoVISIONS AS TO IbGHTS IN INvENrJONS. 
37.-(1) At any time after the aealing of a patent the patentee 
may apply to the Controller for the patent to be endorsed with the 15 
words" lieenees of right"; and where such an application is made, 
the Controller aball notify the application to any person entered on 
the register as entitled to an in~t in the patent, and if satisfied, 
after giving any sueh person III opportunity to be heard, that the 
patentee is not preeluded by eoutract from granting licences under 20 
the patent, cause the patent to be endorsed accordingly, 
. (2) Wl:ere a patent is endorsed under this seetion-
(0) any person ahall, at a:J!q time thereafter, be entitled as of 
right to & liecnee UDder the patent upon such terms L. 
may, in default of ~ement, be settled by the Control· 25 
la on the appliC&tion of the patentee or the person 
requiring the 1kence; 
(b) the Controller may, on the application of the bolder of a.ny 
lieenoe gn..nted u.nder the patent before the endorse­
ment, order the liemce to be exchanged for a licence to 30 
be granted by Yirtne of the endorsement upon tel'lDl to 
be 1ett1~ uaforeaid; 
(c) if in proceedings for iafringement of the patent (otherwise 
than by the importation of goods) the defendant under­
takes to take & lioea:e upon terma to be setUed by the 35 
Controller u aforeaid, no injunction ab&! be granted 
againR him, and tM amotmt (if 1ll7) recoven.ble 
against him by way of dam.a.ges shall not exceed doable 
the amount whkh woald bave been payable by him u 
lioensee if roch a licence bad been gran led before the 40 
earUe.t infringem.s1j 
(d) the renewal f~ ~yUlc in respect of tile patent alter the 
date of the endol'SleDent shall be one half of the re~W"&l 
fees which would loe payable if the patent were not JO 
endo~ 45 
(3) In settlinC the terms of any such licence the Controller­
(a) alall endC'avour to 9CtUl"e the ~dest po!'l.'lible user of the 
invention in the 3tatc consistent with U\e pateD~JII 
deriying a ~a .... oru..ble ad,'ant."bt from his patent richls, IP/NllIIRL/P/1 
Page 104 
[1964.] PaJtnl4 Act, 1004. [No. t~.] 
(b) mall endeavour to aceure to the patentee the maximum 
advantage eorui,tent with the invcntion being worked 
by the licensee at & reasonable profit in the State, 
(c) shall endenvour to secure equility of Advan~e among the 
6 levenl liccruecs, and for this purpose may, on due 
cause being shown, reduce the royalties or other pay­
ments accruing to the p&Untee under &ny licence 
previously granted, 
(d) may so frame the t.erID3 as to preclude the licensee from 
10 importing into the State any goods the importation ot 
wh ich, if made by persons othcr than the paten~ or 
those claiming uDdcr him, 1I"oold be an infringement of 
the patent, and in such a eue the patentee and all 
licensees under the patent shall be deemed to have 
15 mntu&lly covc.nanted against lOch importation. 
(4) The licensee undcr any lkenee rranted by virtue of the 
endorsement oC a patent under this seetion sha.ll (unless. in the cue 
of a lieenoo the terms of which are settled by agreement, the lieenee 
otherwise expressly provides) be entiUed. to eaU upon the patentee 
20 to take proceedings to prevent any infringement of the patent; 
and if the patentee refuses or neglects to do so within two montha 
after being 10 called upon, the lieensee may institute proeecdinga 
for the infringement in his own name as if he were patentee, 
making the patentee a defendAnt: 
25 Provided that a patentee so added as defendant shall not be 
liable for any costs unle33 he enters an appearance and takes part 
in the proeeedinp. 
(5) An application for the endorsement of a. patent under this 
section shall contain a statement (to be Terificd in S'Uch manner as 
ao may be prescrikd) that the patentec is not pree1udcd by contract 
from granting licences under the paieDt; and the Controller may 
require from the applicant such further evidence as he may think 
necessary. 
(6) An application made under this section for the endorse-
35 ment of a patent ot addition shall be b'nted as an appliC3tion for 
the endorsement of the patcnt for the main invention also, and III 
application made under this section for the endorsement of a pntent 
in respect of which a patent oC addition i.; in force shall be treated 
as an application for thc endorsement of the patcnt of addition 
40 also; and where a patent of ad<lition is granted in respect ot a 
patent already endorsed under this scd.ion, the pa.tent oC addition 
.hall a.lao be 80 endorsed. 
(7) All endorsements o( pa.tents UDder this section shall be 
entered in the register of patents and &hall be published in the 
45 Journal and in such other manner as the Controller thinks desirnble 
for bringing the endorsement to the notice of manufaeturers. 
(8) An app~al shall lie from an,. decision of the Controller under 
this aeotion. 
38.-(1) At any time after a patent Us been endorsed under the c.-u.&ioG 0( 
&0 last foregoing scetion, the patentee may apply to the Co:ltroller for eMorIlYPM'. 
eancellation of the endorsement; and whue such an application is 
made and the balance paid of all re~ f~ which would have 
been payable i! the patent had not been endorred, the Controller 
may, ill>atisfied that there is no e.ristiDg licence lmder the patent 
65 or that all licensees under the poltcnt c:onsent to the application, 
caned the endorsement accordingly. 
(2) Within the pre'3("ribcd period afler a patent bu been {'no 
don:ed aI' aCorcs.,id, nny p<'I"50n who c!aims that the p:ltellt~ is, :md 
wu at the time oi the endorsement, Pl'CCludcd by a eontract in [1964.] Paknt8 Act, 1964. IP/N IlIIRL/P/1 
Page 105 
[No. 12.] 
whieb the claimant is inul'elted from granting licen~ ander 
the pat.cnt may apply to the Controller for ea.nceJlatioD of the 
endorsement. 
(3) Where the Controller is satisfied, on appJication made under 
the lut foregoing subsection. lhllt the patentee is and wu pre· & 
eluded u aforesaid, he sh411 eancel tbe endorsement; and tbenupon 
the patentee shall be liable to pay, within such period as mar be 
prescribed, a sum equAl to the b31ance of al1 renewal f~ which 
would have ooen payable if the patent had not been endorRd., and 
if tbat sum is not paid within that p~riod the patent &hall ceuc 10 
to have d'ect at the expiration of tbat period. 
(4) Wbere the endorsement of a patent is cancelled under this 
teetion, the righta and liabilities of the patentee shall thereafter be 
the same as it the endoncment had not been made. 
(5) The Controllel' shall adnni.se in the prescribed manner' any 15 
application made to him uuder this section; and within the prcl­
enDed period after sueh adTenisement-
(0) in the cue of an applieation under nUJlectUm (1) of this 
leCtion, &DY perIOD interested; and 
(~) in the eue of an applieation under I1lbseclUm (J) of lbw 20 
leCtion, the patentee, 
may give notice to the Coutroller of opposition to the caneeIhtion. 
(6) Wbere any Itleh notiee of opposition is eiven, the ControUcr 
~hal1 notify the applicant, and shall give to thc npplicant and the 
opponent an opportunity to be heard before deciding thc cue. 25 
(7) An application made undcr this section for thc canecIlation 
of the endorsement of a ~tcnt of addition shall be trcated as an 
application for the cancellation of the endorsemcnt of the patent 
for the main invention also, and an application m3de under this 
section for the cancellation of the endorsement of a paLeDt in 30 
respect of whieh a patent of addition i", in force ~hall be trea~ 3S 
an appli~tion for thc cancellation of the endorsemcnt of the p'tcnt 
of addition also. 
(8) An appeal shaUlic from any decL,ion of the C(lntrollcr UDder 35 
this aeetion. 
39.-(1) At any time a.ftcr the expiration of four years from the 
date of npplication for a patent or three years from the date of 
aealing the patent, whit'hever is the later, any penon inte.rested 
may apply to the Controller for a licence under the patent or for 40 
the endorsement of the patent with the words 11 licences of richt " 
on the ground that there haa been III abuse of the monopoly rich'­
under the patent. 
(2) The grounds, deemed to eonstitute an abase of mooopoly 
rights, upon which application rrL3y be made for an order UDder (6 
this section arc as foUo..., that is to say: 
(0) that the patented inTcotion, being capable of hein, eom­
mercially worked in the State, is not being commcrciall.T 
worked therein or ia not being so worked to the fullest 
extent that is rea.aonably practicable; 
(b) that 1\ demand for the patented article in the State is not 50 
being ~ct on rc:s.'>cable terms, or is being rod to a 
5ubst.:\DtiaI extent by importation; 
{c} Ihat the commcrewworking of tlle invention in the State 
is being prC!Vent~ or hindered by tbe importation of 
the patented article; 55 
(d) thnt by reason CIf the rclnsal ol the pnlcntee to grant a 
licence or liCCtlCCCi on reasonable tcrlDs-IP/NIlIIRLIPI 1 
Page 106 
[1064.] PaknU Act, 1964. [No. 12.] 
10 
16 
20 (i) & market for the uport of the patented article 
manufactured in thc Stale it not being rupplicd; or 
(U) the working or efficient working in thc State ot any 
other patented invention which makes a rubstantial 
contn'bution to the ut is prtvented or hindered; or 
(Ui) the establishment or development ot commercial or 
industrial activities in the State is unfairly 
prejudiced i 
(.) that by reason of caDditioN imposed by the patentee upon 
the grant of licences under the patent, or upon the 
purehase, hire or U3C of the patented article or process, 
the manufacture, tl3e or sale of materials not protected 
by the patent, or the establishment or development of 
eommereial or industrial activities in the State is 
unfairly prejudiced; 
(f) that a eondition "hieh by virtue of aectio-A 54 of this 
Act is null and void has been in.U!rted in a can tract made 
alter the commcncement ot this Act in relation to the 
sale or leaae of, or licence to use or work, &Dy article 
or process protected by the patmt: 
Provided-that, for the purpoee ot 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 ncw inventions shall ao far 
25 as possible be commercially worked in the St.\te without undue 
delay. 
(3) Subjcct as hereinafter provided, the Controller may, if 
satisfied that any of the grounds afort'Slid are established, make 
an ordcr in aeeordrulce with the application; and where the order 
30 is for the grant oC a licence, it m!lY require the licence to ~ gr1U1ted 
upon ruch terms as the Controller thinks tit: 
35 
40 
50 
55 
EO Provided that-
(11) whcre the applicat.ion is made on the ground that the 
patented invention is not being commercially worked in 
the State or is not being worked to the fullest extent 
that is reasonably pT:lcticablc &Dd it appears to the 
Controller that the time wbieh has elapsed since the 
sealing of the p:ltenl h:lS for any I"C!l.SOn been insufficicnt 
to enable it to be so worked, bc may by order adjourn 
the z-ppJic:ltion for such periOO as will in his opinion 
gin sufficient lim~ for the invention to be so worked; 
(6) an order shall not be made under this seetion for the 
endorsement of a' patent on the ground that a market 
for the export of the patented artiele is not being 
IUpplied, and &Dylioence granted under this section on 
that ground shall contain rueh provisions as appear to 
the Controller to be expedient for restricting the 
countries in "hich the patented article DUly be sold or 
used by the Ucensee; 
(c) no order shall be made under t1:Jis ICetion in respeet of & 
pat.ent on the ground th&t the working or elIlcie.nt work­
ing in the StAte of anotber patented inventioD is pre. 
vented or hindered unless the Controller is satisfied that 
the patentee in respect of that other inTention i., able 
and willing to gnnt to the patI-..ntee and his licensees & 
licence in rcs~t of that otMr invcntion on reasonable 
tcrms; 
(d) any licence granted shall be Dou-uclu.sive and non .. 
traDSfer:lbl~ i 
(,> the terms of auy li('cn~ grantt'd may ~ so framed as to 
preclude the liccll."« from importing into the St.a.1A [19~.] PaknJ, Act, 1964. IP/NIl/IRL/PI1 
Page 107 
(No. 19.] 
&.Dy goods the importation ol which, if e~ceted by 
persons other than the palcntee or those claiming under 
him, would be an inrr~ent ol the patent, and in 
IUch case the patentee and a.lllicenJeCS and er the patent 
.hall be deemed to have mutually eovenanted ag&in.st r; 
.uch importation. 
(4) The Controller shall, in detc:nnining whether to make an 
order in pursuancc of any such application, take account of the 
following matters, that is to 8&y:-
(G) the nature of the inventioa, the time which hu elapsed 10 
.ince the scaling of the patent and t!le mea.sDl"eS already 
taken by the patentee or my lieenaee to make full use 
of the invention; 
(b) the ability of any person to whom & licenee would be 
granted under the order to work the invention to the 15 
public advantage; and 
(c) \he risks to be undertakea by tha.t person in providing 
capital and working the iaTention if the application it 
granted; 
btl~ .hall not be required to take aeeoant ol matters aubsequent to 20 
the making of the application. 
(5) An application under thi., section may be made by any person 
notwithstanding that he is already the holder of a licence under 
the patent; and no pc~n shall be estopped from alleging any of 
the matters specified in nzbseaio1. (1) of this seetion by reason of 25 
any admission made by him, whether in such & licence or otherwise, 
or by reason of his having accepted saeh A licenee. 
(6) In this section 11 patented artide " ineludes any article made 
by a patented process. 
Pro...uiOM .. ~ 40.-(1) Where the Controller is .tlsfted, on application made 30 
1i00DCM. under the last foregoing soction of tki:s Aet, that the manufacture, 
U8C or sale of materials not protedtd by the patent is unfairly 
prejudiced by reason of conditions imposed by the patentee upon 
the grant of licences under the patt'llt, or upon the purchase, hire 
or use of the patented article or process, he may, subject to the 35 
provisions of that sectioD, ordCl' the grant of licences under the 
patent to such cUBtomers of the applittnt as he t.hi.nD fit as well u 
to the applicant 
(2) Where aD application undu the la.at foregoing section ia 
made by a person being the holder of a liemce under the patent, 40 
the Controller may, if he makes an order for the grant of a lieenee 
to the applicant, order the e:tisting l:ieence to be eancellcd, or may, 
if he thinks fit, instead of making an order for the gnnt of a licence 
to the applicant, order the existing 1ieeDce to be amended. 
(3) Where on an application undtt the last foregoing ICCtion the 45 
Controller orders the grant of a licrnee, he may direct that the 
licence shall operate-
(a) to deprive the patentee of ey right which he may }ave u 
patentee to make, u.se., atftise or Tend the invention or 
to grant licc.nces under tlae patent; ~ 
(b) to revoke all existing liceJ)(B in respect of the invention. 
(4) 8ub3eel1tm (4) of ,eefio1. 37 fit this Act shall apply to a 
licenco granted in punmancc oC an ord~r undrr the-la. .. t forego~ 
SC'etion of this Act as it appliC3 to a lieenec granted by virtue of Ule 
said ,ection 37. 55 IP IN 11 IIRL/P 11 
Page 108 
[1964.] PaU1U4 Ad, 1004. [No. 12.] 
41.-(1) At any time .Ctu the expiration of four ye&1'l &iter the EodoIWmen&. 
date of ~pplic.ttioD tor a pat~nt or o~ three years from ~c .date of ~=&ion of. 
tbe IC8hng of a patent, whlchcver 11 the later, &Oy Mmilter of Kma&er of State. 
State nay apply to the Controller upon Anyone or mo~ of the 
5 grounds lpecificd in ,ection 39 of this Aet for the endorsement of 
the patent with the words 11 licences of right" or for the grant to 
&I1y perlOn rpeeificd in the application of a licence ander the 
patent; And the Controller mAY, it satisfied that AnY of those 
grounda are established, make an order in accordance with the 
10 application. . 
(2) S"l"ecli<nu (3) and (6) of Ie~"'" 39 of thia .Aet &Dd uclio" 
40 ot this .Aet shall, so far as appliea.ble, apply in relation to an 
application and an order under the !ut foregoing subsection as 
they apply in relation to an application and an order under the 
15 laid .eaiMa 39. 
42.-(1) Without prejudice to the foregoing provWon. of this u...a.iou 
Act, whe~ & patent is in force in respect of- ~ ~ 
(0) a rubst.a.nce capable of being uad as food or medicine or ........ 
in the production of food or medioine; or 
~ (b) • process for producing such a substance AI aforesUd; or 
(c) any invention c.tpable of being used u, or aa part of a 
mediea1, lurgical or other remedial deviee, 
the Controller shall, on applicntion made to him by any perIOn 
interested, order the grant to the applieant of 11 lieenee under the 
25 patent on lueh terms as he thinks fit, unless it appears to him t.h4t, 
having regard to the desirnbility of encouragwg inYentors and the 
growth and development of industry &Dd to such other matters as 
be considera relevant, there are good reasons for refusing the 
application. 
30 (2) In settling the terms of liecnees under this section the 
Controller shall endeavour to secure that f~ medicines and 
medical, aurgieal and other remedial devices shall be available to the 
public at the lowest prices consistent with the patentees' deriving 
a reasonable advantage from their patent rights. 
35 (3) A. licenee gra..nted under this acction ahill entitle the li~ 
to make, use, e.xereise and vend the invention as a food or medicine, 
or for the purposes of the production of food or medieine or as, or 
as part of, a medical, IUl"gical or otllcr lOledial deTi~ bot for DD 
oLher purpoeea. 
40 43.-(1) Where an order for the grant of a lieence under a Rnoea&JoooC 
patent has been made in pursuanee of an applie&tion under lediotl ~~!'t ~ (1'1" 
39 of this Aet, any pe~n intcrc.st.ed may, at UJ.T time after the • 
expiration of two years from the date of tha.t order, apply to the 
Controller for the revocation of the patent upon UJ.T of the grounda 
'5 speci1ied in M'ecl~ (2) of the said ud~ 39; and if upon &D7 
lOch applieation the Controller is IatWied-
(0) that any of the said grounds are established; and 
(b) that the purposes for wbich an order may be made in 
pnl'l1W1oe of an application under the ,sajd uetin 39 
60 eould not be achieved by the making of any sueh order 
u is Authorised to be made in purwanoe of IUch aD 
t.ppllea.tion, 
he may order the patent to be revoked.. 
(2) .An order for the re,ocation of & patent under this aeetion 
5S may be m3de so as to take effect either uneoDditionaUy, or b the 
event of fa.ilure to comply, within sueh tCllSOMble period as may 
be specitic.:d in the order, with 5Ueh cooditiolU as may be imposed 
by the ordcr with & view to achieving the purposes &iores.aid; and 
the Controll~r may, on rcasonable callSC shown in any ease, by 
60 aub:tequcnt order extend any pcriod so spcei.ticd. ProoedW"e OD 
.pplic.~ioru 
Qnd.r ledionl Jt 
to IJ. 
Appeal-.nd 
reloroocce '-0 
ubllntor. 
IOM. No. tll. 
BuppJemontuy 
provision. u 
tol~ [1964.] PaJem" Ad, 19')4. IP/NIl/IRLIRIl 
Page 109 
[No. 12.] 
44.-(1} Every application under Mldi.o1u 39 to 43 ol this Act 
ahall specify the nature ot the order ~ht by the applic:mt and 
ab all contain a stal('mcnt (to be veri..6ed in such manner a.s may be 
prescribed) setting out the ~ture ol tU applicant'. interest (if 
an),,) and the facts upon which the app!ieation is based. & 
(2) Where the Controller is aatis&d, a-pon coDJideration ot any 
IUch application, that a pn'T7\4 fGcU eaa ha.s ~n made out for the 
making of an order, he ahall direct the rpplicant to S('rve copies of 
the applieation upon the pat..entee and'my other persons appearing 
from the register of patents to be intenst.ed in the patent in resped 10 
of which the application is made, and Jiu.l.l advertise the applica­
tion in the Journal. 
(3) The patentee or any other pc:%Dl desiring to oppose the 
application may, within mch time as aay be prescribed or within 
lOch further time a.s the Cootroller -.ay on application (made 15: 
either before or after the expiration 01. the preseribed time) allow, 
give to the Controller notice of oppositilL 
(4) Any wch notice of opposition shall eonbin a statement (to be 
Terifledin .uch manner u IIL&7 be ,rescribed) setting out the 
grounda on which the application is oppoeed.. 20 
(5) Where any .ueh notice of opposition is duly given, the 
Controller shall n.otify the applicant, and &hall, subject to the 
provision.. of the next following seetioc lrith l'CSpeet to arbitration, 
give to the applicant and the opponcnl an opportunity to be heard 
before deeidingthe case. 25 
45.-(1) An app~:1l shall lie from ay order mAde by the Con­
troller in. pursuance of a.n applicatlo. ander lec.lions 39 to 43 of 
this Act. 
(2) On any appeal under this seet.im. the Attorney General or 
such other counsel as he may appoint shall be entitled to appear 10 
and be heard. 
(3) Where any such applie:ation is ~posed in accordance with 
the lut foregoing section, and either-
(G) the parties consent; or 
(b) the proceedinp require a pnllenged examination of docu .. 15 
menta or an)" sdenti5e c local investigation which 
eannot in. the opinion of t}& Controller eonnniently be 
made before him:, 
the Controller may at any time order De whole proceedings, or an)" 
question or issue of faet arid.ng ~ to be referred to an. 40 
arbitrator agreed on by the partica, .. , in default of :lgreemen.ty 
appointed by the Controller. 
(4) Where the whole proeeed~ &re merred as aforesaid, 
section 35 of the Arbitration Aet, l~ (whieh re14tes 10 the state­
ment of ~ by arbitrators for tM Oeeision of the High Court) 46. 
ahall not apply to the arbitration; btzt unlesa the parties otherwise 
agree before the award of the arbitnW is made, an appeal ahalllie 
from the a ward. 
(5) Where 11. question or issue of !ad is re!erred a.s aforesaid, the 
arbitrator ahall report hi" fiDdings to the Controller. &O.i 
46.-(1) Any order under this Ad for the grant of a licenee 
shall, without prejudice to any other method of enforcement, have 
effect as if it werc a deed, exeeutcO "" the patentee and all other 
n~cssary parties, grantin!; a licence Z l1ccord .. nce with the order. IP/N/lIIRL/PIl 
Page 110 
[1964.] Patents Ad. 1004. [No. 12.] 
(2) An orUcr may be made Oil :lD .pplic~tion und<r "clioN 39 
to 41 of this Act for the cndorsement of a patent .ith the words 
.. licences of right" notwith~landiog anY' contract whieh would 
have precluded the endorllcmcnt of the patent on the application of 
5 the patentee under Jtction 37 of this Act; and any IUch order 
&ball for all purposes hnve the same effect u an endor3ement mllde 
in pUl"3uance of an application under thc said .tcticm 37. 
(3) No order shall be m:1tle in pursuance of I.llj applic.ntioll under 
.tCti01U 39 to 43 ot this Aet which would be ::It vnriAnce with any 
10 treaty, convention, arrangemcnt or engagement applying to the 
State and 4I1y convention country. 
41.-(1) Subject as hereinafter pro>ided. an in\"ention claimed Previoua 
in • complete speeification shall not be deemed to have been antici- pabUet.&ioa. 
patcd by reason only that the invention waa published before the 
15 priority date of the relevant cbim of thc specifiution, if the 
,?atenlee or applicant lor the patent pro\'es-
(Cl) that the IDAtter published was obl:lined from him or (where 
he is not himself the true and first inventor) from any 
pel"lOn from whom be derives title, and was published 
20 without bis consent or the eonsent of any sueh personj 
and 
(11) that the application for a pak.~t or (in the ea!IC of :l con­
vention application) the application for protection in 
a eonvention country was made not more th:m six 
2!i months after the date of such publication: 
Provided that this subsection shall not apply if the invention 
was before the priority date of the cl.:Um commercially worked in 
the Slate, otherwise th::ln for the purpoSe of r1!:1sonable trial, t:ither 
by the patentee or applic:l1~t for the patent or any person from 
30 whom he derives titlc 01' by nny other pe~n with the coruJent of 
the p:ltentee or applicant for the patent or nny person from whom 
he derives title. 
(2) Where a complete specification is filed in pUl'!(tWlce or an 
application for a patent made by a PCl'300 being the true and fi~t 
35 iDventor or deriving title from him, a.n invention claimed in that 
specmention lihall not be deemed 10 have ~n antieipatl..ad by 
reason only of any other application Cor a pat.c.nt in respect of the 
same invention, made in contravention of the rignu of that ~l':U'ln. 
or by reason only that aftcr the date of ruing of thnt other appliea-
(0 lion the invention 11':1.8 used or publi3.hod, without the COU3ellt of that 
per8OD, by the I1pplie:lDt in respcct of that other :JppHC:ltion, or by 
&DT other person in coo sequence of any disclosure oC the invention 
by that applicant if the first·mentioned application was made not 
more than six months aftel' any such u."C or pUblication. 
45 (3) Not\vitNtnnding anythwg in this Aet, the Controller .ball 
50 not refuse to acccpt a complete lIpccifi.:ation or to gr:lJlt a patent, 
and a patent shall not be revoked or invalidated, by l'CaSOn only of 
any eirewnst.ances which, by virtue of this section, do not con­
stitnte an anticipation oC the im'cn~iQQ claimeu in the s1Jecifit·nlion. 
48.-(1) .An invention claimeJ in a e-omplete spccifica.tion IIhall 
Dot be decmrd to have been aoticip:lled by rt'~son only of thc 
communication of tho iuvcntion to a Minister of St::.te or to tlny 
peeron nutllO:'iscd by such a Miolsta to inv(,stigate the invention 
or its :ncrits. FreviotlS 
eOP'lrouniea\ion, 
disp/:syor 
workinc· u .. &Dd 
~bliCA'ioQ aJ\cr 
proriliooal 
tpeciBO&&.iOD 
er roreip 
~icWoa. 
Priority daM in _of 
ob~ [1964,] Palmi., A cl, 1004, IP/N/lIIRLlP1l 
Page 111 
[No. 12.] 
(2) The exhibition oC an invcntiou III an international e.1hibition, 
certified DS such by the ~lillistcr, 01' the publication of Qnr descrip­
tion of the invcntion durin~ the pcriod oC the holding of the 
e.xhibition, or the use of the invention for the purpose of the 
exhibition in the plnce whcre the cxhibition is held, or the use of f, 
the invention during the period of the holding of the exhibition by 
any person else ..... here, ..... ithout the privity or consent of the 
inventor, shall not be deemed to be an anticipation olthe invention: 
Provided that-
(a) the exhibitor, before exhibiting the invention, or permit. 111 
ting such publication, glVC3 the Controller the prc­
acribcd notice of his intention 10 do SO; and 
(b) the application for a patcnt is made before or within six 
months Uter the date of the o~ing of the exhibition. 
(3) Nolhwithstanding anything in this Act, the Controller shall 15 
not refuse to accept 11 complete specification or to grant a patent, 
and a patent shall not be revoked or invalidated, by reason only of 
any circumstances which, by virtue of this section, do not constitute 
an anticipation of the invention claimed in thc specification. 
49.-(1) Where :l complete specification is filed or proeecdcd 20 
with in pursuance of an :l.pplication which 'Was accompanied by a 
provisional specification or by a specification treated by virtue of & 
dir~~ion under $ubsection (4) of section 8 of this Act as a pro­
visional specification, then, not,,;thstanding anything in this Act, 
the Controller Mall not refuse to grunt the patent, and tllc patent 25 
shall not be revoked or invalidated by reason only thnt Dny m:1tter 
described in the provi: .. iollal specification or in the specification 
treated as ll·fore~:lid as a provisiollll.l specification. l\Oas used or 
published at any timc alter lh~ d:l.~ of filing ol that specifiea.1ion. 
(2) Where a completc specification is filed in pursuan~e of & 30 
eonventinu application, then, notwithstanding a.nything in this 
Act, thc Controller shall not refuse to grant the patent, and the 
pa.tent shall not be revoked or invalidatcd by rtason only that :lDY 
matter disclosed in any application for protection in a coO\oelllion 
eountry upon which the convention application is founded W:lS u.scci 35 
or published at any timc after the datc of that application for 
protection. 
SO.-Where an application is made for a patent for an invention 
which has been claimed in a complete specific.ation tiled in pur-
suance of any other such 3pplicatioD, then il- ~ 
(0) tho Controller has refused to grant & patent in pursuanee 
of that other application on Lhe ground spceificd in 
poragraph (a) of subsedio-n (1) <If secti"" 19 of this 
Aetj or 
(b) a patent granted in pursuance ol that other application 45 
hu been re\'oked by the Court or the Controller on the 
ground specified in paragraph «(I) of lubsection (1) 01 
lection 19 or paragraph (c) of sllb,ecl~ (1) of lectUm 
3,1 of this Act; or 
(c) the complete specification filed in plJrsu:!D~ o! thc said 50 
other applie.ation ha...'l, in proccedings under $e~i01\ 19, 
lection 34 01' $tction 35 of Lhis Act, been amended by 
the e .. .',<:dusion oC the claim r(,):lting to the said illventil.ln 
in consequence of a finding by the Controller or the 
Court that lh(; inventil.ln was obtained by the aplllica.nt 55 
or patcntN! from :lDy other person, IP/~/1/IFULfP/1 
Page 112 
[1964.] Paknl.! Ael, 1964. [No. 12.] 
the Controller m.!y dil"('ct that the Iinrt·mentionOO application and 
anYlpCCiliealion tiled in PUl':fUAllce thereoC ,hall be deemed, for the 
purposes oC the provisioD~ oC thL, Act relating to the priority date 
of e1.ims of complete 8p<!citi('ations, to have been filed on the date 
5 OD which the corresponding document W'u or WII.S deemed to have 
been filed in the proceedings upon the said other application. 
51.-(1) Where alter the eommencement 01 thit Act a patent is Co-otl"Mfthip of 
granted to two or morc persons, chCh ot those persons shall, unless p61.eD". 
an agreement to the contrary is in foree, be entitled to an equal 
10 undivided share in the patent. 
(2) Subject to the provisioll.'l of this and the next fo11owing 
seetion, where two or more persons are registered la grantee or 
proprietor of a patent, then, unless an a.greement to the eontnlry 
is in foree, each of those persons shall 00 entitled, by himJelf or his 
15 agent&, to make, use, exereise and vend the pa.tented. invention tOT 
his own bcnetit without a.eeoo.nLiDg to the other or others. 
(3) Subject to the provisions of the next following scetion, and 
to any agreement for the time being in force, a liecnec under a 
patent Ih.alI not be granted., and a share in a patent shall not be 
20 ASSigned, except with the eoru.ent of all persons, other thlLD the 
liecnJor or usignor, who are registered as grantee or proprietor of 
the paLmt. 
(") Where an ArUcle is 80ld by one of two or more persona 
registered nos gran.tee or proprietor of 11 patent, the purchaser and 
25 any person claiming through him shall be entitled to deal with it 
in the wne manner u if the article had been sold by a .ote 
patentee. 
(5) Subject to the provisiolU of this section, the rnles of law 
appUea.blc to the ownership and devolution of personal property 
30 generally shall apply in rela.tion to patents ll.S they apply in relation 
to other choscs in action; and nothing in subsutio" (1) or I'Ubstclitm 
(02) of. this section &hall affeet the mutual rights or obJiptioos of 
trustees or of the pcrson.u reprcscntativC3 of a decc:l!Cd person, or 
their righta or obligations as sueh. 
35 52.-(1) Where nvo or more persons are registered as gnntce ~ of 
or proprietor of & patent.. the C-ontroller may, upon application ~J:1Jer 
made to him in the prcse~ibcd manner by any of those perIODS, giTe ~ooa to 
such directions in aecord:mce with the application.., to the sale 01' ~ 
lease of the patent or anr interest therein, the grant of JiC(!DeeI 
~ under the patent.. or the e.l.ercise of any right under the last lore. 
going section in relation thereto, &8 he thinb tiL 
(2) If any person ~red u grantee or proprietor of the 
patent fa.ils to e:!CCllte any instrument or to do any other thing 
required for the carrying out of any direction given under thil 
-45 acetion within foorteen days after being rcquart.cd in writing 80 
to do by any of the other persons so registered, the ControlJer may. 
upon applieat.ion made u, him in the prescribed manner by any 
lIlleh other person, give di.ret-tions empowering any pcrsou. to 
execute that instrument or to do that thing in the name and on 
50 behalf of the person in default. 
(3) Before giving directions in pursuance of an application 
under this section, the ControJ1cr shall give an opportunity to be 
heard-
(Cl) in the case of an Application \Jnder sllbstction (1) of this 
55 section, to thc other person or persona l'ecistercd Aa 
rzrantce or proprietor of the patent; Di.putH u to 
inven'iool made 
by .mpIoYML 
A.,oidancot or 
oertaioooodiwOM 
.&&ached t.o UIe 
aaJe, Mc., 01 
pa&oakld a.rliolea. [1964.J Pcdcnl& Act, lOG l. IP/N/lIIRL/P/1 
Page 113 
[No, 12.] . 
(6) in the cue 01 'In applie&tion 1linder lUb"ctioft (2) of thia 
acetiOD, to the person in delault. 
(4) An appeal shall lie {rom any dC('ision or direction of the 
Controller nnder ~hi.l.ection. 
(5) No direction shall be given under thhl section 10 IU to .fl'ect 5 
the mutual rightl or obligi\lions of trustees or of the personal 
rtpre8cntativC8 of a deceased penon, or their riShtl or obligatioDJ 
U IUch. 
53.-(1) Where & dirpute ariles between an cmployt'r and a 
perlOn who ia or wu at the material time his employee ns to the 10 
rightl of the partics in respect of an invention made by the 
employee either alone or jointly with other employees or in respect 
of any pAtent granted or to be granted in respect thereof, the 
Controller may, upon application made to him in the prcs:ribed 
manner by either of the parties, and alter giving to eaeh of them 15 
an opportunity to be heard, determine the matter in dispute, and 
may make moh ordcn for giTing effect to his decision .. he 
eonaidcn expedient: 
Provided that if it appeal'l to the Controller npon any appJiea· 
tion under this seetion that the matter in dispute involves queortions 20 
which would morc properly be determined by the Court, he may 
deeline to dca.l therewith. 
(2) In proceedings before the Court between an employer and a 
person who is or ."u at the material time hiS employcc, or upon an 
application made to the Controller ander lVbua~ (1) of this 25 
ICCtion, the Court or Controller nuy, unless satisfied that one or 
other of the parties is entitled, to the exclusion of the other, to Ule 
benefit of an invention made by the employee, by order provide tor 
the apportionment between them of the benefit of the invention, 
and of any patent granted. or to be granted in respcet thereof, in 30 
web manner aa the Court or Controller considers juat. 
(3) A decision of the Controller under this scetion shall have &he 
same effect as between the parties and persons claiming under them 
u a decision of the Court. 
(4) An appeal ahalllie from an)' decision of the Controller un~r 35 
this section. 
54.-(1) It shan not·be la"tal in any eonlract in relation to the 
I:llc or lease of, or lil!Cllcc to use or work, any article or proeesa 
protected by a patent to inaert & eoodition which, diroctly or 
indirectly, will- 40 
(0) prevent or restriet the purcha.scr, 'l~ or liecmee f.nxn 
using Ill1 article or ela.ss of artiek:s, whether patented 
or not, or any patented process, I'Opplied or oWDcd by 
any pcn;on other than the seller, ksaor, or liee.nsor or 45 
his nominees; or 
(b) require the purehaser, lessee, or lioenRC to acquire from 
the seller, lessor, licensor, or his nominees, any article or 
cla.ss of articles not protected by the patent; 
and any such condition shall be null and void: 
Provided that this subsection shall Dot apply if- 50 
(i) the sell<.'r, lessor, Ilr liC'Cosor proves thnt at the time 
the contract was enlered into the pllreha.scr, lcssee, 
or licensee had the option oC purchasing the article 
or obl.'\ining a I(:as!l or liccn<"C on reasonllule kr~",· 
without !;uch conditions all aCorrsaid; anJ 55 IP IN I llIRLIP 11 
Page 114 
[1964.] Pcd~ Ar.l, lOO!. [No. 12.J 
(ii) the contract entitles the purehuer, leace, or 
licensee la relieve bim:cclf or hL, liability to ob!e"e 
An1 such condition on giving the other party three 
month. notice in writing and on payment in corn· 
5 penaation for IUch relief, in the ease ot a purchuc, 
of auch ·sum, or in the C4.!IC of a I~ or licence, of 
auch rent or roY:1lty for the residue of the term of 
the eontract, as may be fixed by an arbitrator 
appointed by the M~i.rter. \ 
10 (2) In any action, applicatioD, or proceedings under this Act no 
pcrson shall be cstopped from applying for or obtaining relief by 
reuon of Any admission made by him u to the J't.UOnablene81 ol 
the terms offered to him under porogropA (,) of the proviao to the 
foregoing subsection. 
15 (3) Any contract relating to the lCA.!e at or lioenee to DIO or work 
an,. patentcci article or patented proecss JDJly at &Dy time after the 
patent or all the patent. b1 which the article or prooea was 
proteeted at the time of the making of the conlnd hu or have 
ceucd to be in force, and notwithstanding anything in the IIJDC ur 
20 in any other oontraet to the oontrary, be detmnined by either 
party on riving three months notice in writing to the other party. 
(4) The insertion by the patentee in a contract of &I1y eondiUon 
which by virtue of this seetion is nu11 and void shall be available 
u a defence to an action for infringement of the patent to which 
25 the contract. relat.ca brought while that contract is in loree. 
(5) Nothing in this section shall-
(Cl) afleet any condition in a contract wllercby a person is 
prohibited from selling any goods other than those of a 
particular person; or 
30 (b) be construed ,,~ validatinl; any ~ntra.et which would, 
apart from lh is section, be inycid; or 
Cc) Affect any right of determining a contract or condition in a 
eontraet e.'tcrcis:lble independently of this section; or 
(d) aflect any conditi'lII in a contract for the le~ of or licence 
35 to we a patented article, when!by the ICS"Or or licensor 
reserves to himself or his nominees the right to I1lpply 
auch new parts of the patented article u may be reqoircd 
to put or keep it in repair. 
PART V. 
55.-(1) In proeeedings for the infringement of a patent ~ oa 
damages shall not be awarded against a defendant ... ho proVCl that reoover,ol . 
at the date of the infringcment be wu not aware, and bad no i!:=,­
reasonabJe ground for supposing, that the pa.tent Wsted; and a 
f5 person shall not be dec!mcd to have been aware or to have bad 
reasonAble groandJl for supposing as nforesa.id by reason ou1y at the 
application to an article of the word" p3t.ent ", " patenW ", or 
any word or words exprcs .. ing or implying that a patcot ha.. been 
obtained in the Slate for the article, WJ]ess ~hc number of the 
50 patent accompanied the ,,·ord or words in question. 
(2) In any proceeding for infringement oC a patent the Court 
may, if it think.. fil, rtiusc to award auy damages in respeet of any 
infringemcnt oommitlro after a {ailure to pay Ut,. rencwal {ee 
within the pn'l'Cribcd ~riod and ~fot"C any uleuslon of that 
55 period. Order (or aooouut. 
ID~oDror 
iDt~ 
00an1enJaba "for 
n-'iOll iD 
utw.lor 
~&.. 
Reliellor 
lDlriDp:ncnt. of 
puWaUy valid 
.peoi6cat.lOG. [1964.] Pale.nl8 Ad, 1964. IP IN 11/IRL/P 11 
Page 115 
[No. 12.] 
(3) Where AD amendment oC a rpecifiealioD by way ot disclaimer, 
correction or explanation has been .. Howed under this Aet after 
the publication of the specification, DO damases shall be awarded in 
any proceedings in respect of the use of the invention before the 
date of the decision allowing \.he amendment, unless the Court ia 5 
satia1led that the specification u originally published WaJ framed 
in good faith and with reasonable skill and knowledge. 
(4) Nothing in this section sho.ll aft'cc:t the power or the Court 
to grant an injunction in any proceedings for infringement of a 
paUnl In 
56.-1n an action for inCringement of a patent the plainti! 
&hall be entitled, at his option, to an account of profita in lieu of 
damages. 
51.-A. defendant in an aelion for infrinsement of a patent may, 
without presenting a petition, apply in aceordanee with rules of 15 
eonrt by way of eounterelaim in the &etion for revocation of the 
patent: 
58.-(1) If in proceedings tor inIrinsemc.nt of 11 patent it iJ 
found that any claim of the apeeifiealion, being a claim in respeet 
of which infringement is alleged, is valid, bnt that nny other elaim 20 
is invalid, the Court may grant relief in respect of any v:uid 
claim which is infrinsed : 
Provided that the Court shall not grant relief by W::J.Y of damages 
or costa except in the eircwruwCC4 mentioned in the next tollowing 
IU bseetion. 25 
(2) Where the plaintiff prov('S that the invalid elaim ~':lS framed 
in good faith and with reasonable skill and kn01fledge, the Court 
&hall grant relief in respect of any valid wim which is infringed 
aubjcet to the discretion of the Court as to costs and u.s to the date 
from which d8lIL\ges should be reekoned. 30 
(3) AA a condition of relief under n.bllaicm (1) or IUbJed~ (2) 
of this acetion the Court may d.ireet that the specmC4tion shaH be 
amended to its satisfaction upon an application made for that 
purpose under ,ea ion 32 of this Act, and IUch an application may 
be made aeeordingJy whether or not all other is3ues in the pro-35 
eeedinp ha Ye been determined. 
59.-(1) Subject to the pl'OTisiom of this seetion, the holder of 
&n exclusive licence under & patent ah.in have the like right as the 
patentee to take proceedings in respect of an infrinsement of the 
patent eommitted after the date of the licence, and in awarding 4Q 
damages or granting any other relief in Any such proeeedings. the 
Court shall take into consideration any loa aWrered or likely to he 
suffered by the exclusive licensee aa aueh or, as the ease may be, the 
profits earnoo by means oC the infringement so far as it eonstitutes 
an inlrinsement of the righu of the aclusive licensee a.s such. 45 
(2) In any proceeding! taken by the holder of an exclusive 
licence by virtue of this section, the patentee shnU, unless he is 
joined as plaintiff in the proceedini;1 be added as dc!endant : 
Provided that a patentee so added as defcndant shall not be 
liable for any e~ts unless be enter.! an appearance and takes part 50 
in the proeccdinSS. IP/N/I/IRLlPll 
Page 116 
[1964.] PaknU Ad, 1004. [No. 12.] 
60.-(1) It in any proeecJings before thc Court the validity of ~eat. oC 
aDY claim of a specification is contested, aDd that claim is found by OOQw.~ validity 
the Court to be valid, the Court may eertily that the validity 01 oC 'P8Oi1lcalion. 
that claim was contested in those proeeedings. 
5 (2) Where any such certificate hu been granted, then if, in any 
IUbsequent proeeedings before the Coart for infringement of the 
patent or for rcvoeation of the patent, a final order or judgment is 
made or given in favour of the party nlyiDg on the validity of th<: 
patent, that party shall, unless the Court otherwise directa, be 
10 entitled to bis costa as bctween IOlieitor and client 80 far as 
concerns the claim in respect of which the certificate was granted: 
Provided that this subsection ah.all DOt apply to the costa of Ul1 
appeal in any such proceedings as aforesaid. 
61.-(1) Where any person (whether entiUed to or interested in 
15 a patent or an application for a patent or not) by eireulars, 
advertiRCmenta or otherwise threatms any other peMlOn with 
proceedings for infriDgemc.nt oC • patent, any person aggrieved 
thereby may bring an action against him for any such relief as is 
mentioned in the next following subsection. 
20 (2) Unless in any action brought by virtue of this section the 
defendant proves that the acta in rerpcct of which proceedings 
were threatened constitute or, if done, would constitute, an 
infringement of a patent or of rights arising from the publication 
of a complete specification in respect of a claim of thc specification 
25 not shown by the .plaintiff to beinnlid, the plaintiff shall be 
entitled to the following relief, that ia to 83y-
(a) a declaration to the effect that the threats are unjllstifiable; 
(b) an injunction against the eontinuance of the thrcats; MU 
(c) IUch damages, U nny, as he had IllStained thereby. 
80 (3) For tbe avoidancc of doubt it is bereby declared that a mere 
notification of the uistencc of a patent does not constitute a threat 
of proceedings within the meaning of this acction. 
62.-(1) A deelaration that the asc by any person oC l111y proecss, Pcrnr oC Coun 
or the making or use or sale by any penon of Ilny Rrticl~, does not ~~ 
35 or would not eoruotitule an infringement of 3. claim of a p3tcnt may &0 DOG.'·OQ aa 
be made by the Court in proceedings bct,,"ccn that pcr:;on and the iDtriDcement. 
patentee or .the holder of an exe1usil'e lieence under the patent, not­
withsta.nding thnt no asscr,ion to the contrary has been made by 
the patentee or licensee, if j.t is shown-
40 (a) that the plaintiff has applied iD wriLing to the patentee or 
liceWICC for a l't'l'it.ten aekno.-ledgment to the effect of 
the declaration claimed, and haa furnished him with 
full particulars in 't\7iting of the proeess or article in 
qu~tion; "and 
45 (b) that the paten tee or liecnsee Iw refased or neglected to 
give web an ackno'\\-lcdgmen1. 
(2) The eosu of all parties in proeeedinp tor a declaration 
brought by virtue of this section ahall, unl~ for.peeial rCASOns the 
Court thinks fit to order othcrwise, be paid by the plainti1l. 
60 (3) The validity of a elnim of the lIpCtifi('.ation of :I. patent dlill 
not. be called in question in proceedings for a declaration brought 
by virtu of this section, and accordingly the making or refusal of 
sueb a declaration in the ea.sc of a pal.eot shall not be deemed to 
imply that the patent is vaUd. 
55 (4) Proceedings for a declaration mar be brought by virtue' of 
tbia section at any time after the date of the publiC.llion of the 
eomplete apceilicatil)n in pursuance of :a.n application Cor a patent, 
and reference in this 5eetion to the patentee shill be ronstrued 
aceordingly. [1964.] PcUent.f Ad, 1964. 
PART VL 
R&QtsTD 01' PAnNT8. IP/N/lIIRLIPIl 
Page 117 
[No. 12.] 
63.-(1) There shall continue to be kept at the Omce a regillter 
of patents, in which there shall be entered pnrtieul:lr3 of patents in 
foree, of a.'lSignment& and Lr":I.Dsmissioas of patents and ol licences 6 
under patents, and notice ol aU matten which are required by or 
under this Act to be entered in the register and ol such other 
matters alf'ecting the nlidity or proprietorship of patents :1.. the 
Controller thinks fit. 
(2) Subject to the provisions oC this Aet and to auy rules made 10 
by' the Minister. the register of patents shaU, at all convenient 
time.l, be open to inspeetion by the public; and certUied copies, 
sealed with thc seal of the Controllu,of any entry in the register 
shall be given to any person n:quirinr them on payment of the 
preaeribed fee. 15 
(3) The register of paLcnll shall be prima faci~ evidenee of any 
Dl&Uen required or authorised by or under this Act to be entered 
therein. 
(4) No notice of any t.ru.rt, whether txpresscd, implicx! or con­
structive, shall be entered in the register of patents. and the Con-20 
troller shall not be aJf'ected by any sueh notice. 
64.-(1) Where a person beeo~ entitled by assignment or 
transmission, operation of J:1W or anT other mode 'of transfer to a 
patent or to a share in a patent, or becomes entitled as mort.gl1gcc, 
licensee or otherwise to any other iDtcrest in a patent, he shall 2S 
apply to the Controller in the preseribcd manner for the regilstra­
lion of his title as proprietor or eo-proprietor, or, as the ease may 
be, ol notice oC his interest, in the ~tcr of patents. 
(2) Without prejudice to the proruions of the foregoing sub­
section, an appli~tion for the registration ot the title ol ILDY person 30 
beeoming entitled by assignment to a patent or a share in a p:1tent, 
or becoming entitled by virtue of a mortgage, Jice.nec or other 
instrument to any other interest in a patent, may be made in the 
prescribed manner by tlle a.~"Tlor, mortgagor, licensor or other 
party to that instrument, as the case may be. 35 
(3) Where application is made under this seetion for the regis­
tration of the title of any pencn' I.be Controller shall, upon proof 
of title to his antirlaction-
(a) where that perscn is entitled to a p:ltcnt or a share in & 
patent, register him in the ~istcr of pateuts as pro-40 
prietor or eo-proprietor of the patent, and enter in that 
register particnlAn of the instrument or event by which 
he derives title; or 
(1)) where that ~n is entitled to any other intend in the 
patent, enter in Utat register notiee of bis intucst, with 45 
particulars of the inslruJJwlt (if any) e.rcating it 
(') Subject to the prov.isions of t.hi:s Act relating to eo-ownenhip 
of patents, nnd subject also 10 any rights vested in any other 
person ol which noti~ is (,Dtem:! in the register of patents, the 
person or persons rcgistc.rOO as grantee or proprietor of a patent 5() 
shall have power to usign, gr.mt Ikcnces under, or otherwise deal . 
with the p:l.tcnt, and to give effectual re<:eipts for aDY eonsidera­
tion tor any sueh assignmcn~ JiCCllee or dealing: 
Provided Hut :lny equities in respcd or the patent may be 
enforced in like ma.nllcr a.s in respect of any other ~N>n.al 55 
property. IP/N/lIIRL/P/1 
Page 118 
[l96!.) Paknl8 Acl, 196i. [No. 12.] 
(5) Rules made by the Minister UDder this Act may require tho 
.upply to the Controller fOl' filing at tAe Office ol copies ol such 
deeds, licences a.ud other documents u -.ay be prcaeribed. 
(6) Except for the purpos~ ot an application to rectify the 
(; register under the following pro\'isiolll of this Aet, a document in 
rcs~et of whieh no entry has bC<'n made in the r~gister ol patenta 
under rubseclion (3) of this section Ihall not be admitted in any 
court as evidence of the title of any pe10n to a patent or share of 
or interest in n patent unless the court otherwise directs. 
10 65.-(1) Subject to the provisions of this Act, the Court may on Pow., or Court 
the appliation in the prescribed In.3.D.DCr of any person aggrieved &0 ~nd 
by the non-insertion in or omission fmn the register of any entry repter. 
or by Iny entry made in the register 1I"i1hout sufficient eawe, or by 
&Dy entry wrongly remaining in the register, or by :10 error or 
15 defect in any entry in the register, make such order for making, 
expunging, or varying such entry a.s it mny think fit. 
(2) The Court may in any proeeediag under this section decide 
any question that it may be necessazy or expedient to decide in 
connection with the rectification of the register. 
20 (3) The prescribed notice of any application under this section 
shall be given to the Controller, ""bo Ihll have the right to appcnr 
and be heard thereon, and shall appear it so directed by the Coart. 
Unless otherwise directed by the Court, the Controller in lieu of 
appearing &Dd being heard may sabmi1 to the Court a statemcnt in 
25 writing signed by him, givillg p:l.rtieolars of the proeccdings before 
him in relation to the malter in issue or of the grounds of any 
decision givcn by him aff{'cling the mne or of the practice of the 
Office in like cascs, or of such other -.alters relevant to the issues, 
and within his knowlcdg\! as Controller, :LS he shall think fit, nnd 
30 lUeh statement shall be dccmed to form part of the evidence in the 
proceeding. 
(4) ID. the eaae of fraud in the recis1ration or transmission of a 
patent. the Controller may himself apply to the Coort under the 
provisions of this section. 
35 (5) Any order of the Court rceti:fying the register ahall d.i.red 
that notice of the rectmcation be scr"Rd on the ControUer in the 
prescribed manner, who shall upe. the reeeipt of such notice 
rectify the register accordingly. 
(S) Any application under this aeetion (other than an Application 
40 by the Controller) may, at the optic. ot the applie:mt., be made iD 
the first instance to the Controller, ad in such ease the Controller 
Ihall have all the powers of the Covt under this aeetion, but his 
decision .hall be subjeet to appeal 
66.-(1) The Controller may. in 8CCOrdance with the provisiOIll Po..... . 
45 of this seotion, correct any e1erieal error in any patent, any applj. ::::: :it:eJ. 
ea.tion for a patent, or nny uocnmeDt filed in pursuance of lUeh an 
appJieation, or, without prejudice to ,.b,eclih. (6) of the last fore-
going section, any error in the register 01 patent.. 
(2) A corrcetion may be made in pursuance of this section either 
50 upon a request in writing made ~1 &Dy person interested and 
accompanied by the prescribed f~ Of' witho,ut su{'h a request. 
(3) Where the Control1cr propo!ilel 10 make any such correction 
as aCorcsaid otherwise than in parsunee of a request made ander 
this section, he shall gi.,c notice of the proposal to the patentee or 
55 tbe applicant for the patcnt, :lS t.h.e ease may be, and to I\ny other 
person who appc.nrs to him to be ~cd, and shl\ll give lhcm an 
opportunity 10 be heard before making the eorrecLion, Cer&i6c.t.. oC 
ConLroJlor &od ... J.d copice oC 
doeumolu .. iD 
Ollioe &0 t>. 
.ncs.a~ 
RequeaW Cor 
inIorm&uoo ... &0 
p&ten~ or peua, 
appl~ 
R..t.cicUoa upon 
pob1ie&&ioll oC 
.peeifica~ioDl, ok. 
Loa or 
dedNdiooor 
pe&eat.&. 
EUl"CilIe or 
dilcnluonary 
po .... erby 
ConLroUer. [1964.] PaknJ3 Ad, IOC,..t. IP/N/1/IRL/PIl 
Page 119 
(No. 12.] 
67.-(1) A eerl.ificate purportiug to be under the band oC tho 
Controller &I to any enLry, mnLter, or thing which he iI aut.horiled 
by this Act, or _ny general rulC3 made thereunder, to make or do, 
shall be prim4 facie evidence oC the entry having been made, &Dd of 
the content. thereof, or ot the matter or thing having been done 5 
or left undone. 
(2) Printed or written copics or extracts, purporting ta be eerti­
fied by the (:()ntroller or an officer of the Controller and aealed with 
the aeal of the Cootroller, of or from patents, specifications, &Dd 
other doeument.s or books in t.he Office, and of or from registers 10 
kept there, ahall be admitted in evidenee in all courta and in all 
legal proceedings without further proof or prodQetlon of the 
origin&la. 
68.-The Controller shall, on request made to him in the pre­
scribed manner by any person and on payment of the p~ 15 
fee, furnish the person making the request with such information 
relating to any patent or application for a patent u may be spec~ 
fied in the request, being information in respect of any lUeb matW's 
u may be prt:lCribed. 
69.-An application for a patent, and any speeifieation filed in 2(. 
pursuance thereof, shall not, except with the consent of the appli­
cant, be published by the Controller or be open to public inspection 
at any time before the date advertised in the Jou.rnal in PUl'lOAllce 
of IUbJeclio-A (2) of uctW1t. 18 of this Act: 
Provided that the lfinister may prescribe a time within which 25 
any complete spceifi\!3tion filed at the Office in pumlance of an 
application for a patent shall be laid open to public inspectioa.. 
70.-U a patent ia lost or destroyed, or its non·produetion is 
accounted for to the satisfnction of the Controller, the (:()ot.roller 
Dl4y at any time seal a duplicate thereof. ao 
PART VII. 
PaocEmINGS BEFORE TIIIC CoNTKOLLER oa Tm CooIrr. 
71.-Where any diserctionary power is by or under thlI Ad 
given to the Controller, he shall not uereisc tha.t power adnnely 
to the applicant for a patent or for amendment of & .pecifieation 85 
or the registered proprietor of a patent without (if so required 
within the prescribed time by the applicant or registered proprie­
tor) giving the applieant or registered proprietor an opportunity of 
being heard. 
72.-(1) The Controller maT, in any proceedings befOf'e him 40 
under this .Aet, by order award to a.ny party sueh costs as be may 
conaider reasonable, and direct hoW' and by what parties they Ilre 
to be paid; and any such order may be made a rule of Court. 
(2) If any party by whom nObee of any opposition is given under 
this Act or by whom application is 1D.3de to the Controller for the 45 
revoeation of a patent or for the grant of a licence under & patent 
or for the determination of a dispute as to an invention under 
Itclio-n 53 of this Act, or by whom notice of ap~ is given from 
any decision of the Controller nnder this Act, neither resides nor 
tArries on bQSincss in the Stale, the Controller, or in the cue of 50 
ap~l, the Court, may require him to gi\-e SCCllritr for the eosts 
of the proceedings or appenl, and in default of such security being 
given may treat the oppcosition, applieatio[} or appuJ as abandoned_ IP IN I llIRL/P 11 
Page 120 
[1964.] PaknU Ad, 1004. [No. 12.] 
73r-(1) In any procc<'ding under this or any other enaetmcnt Eridotno. bJore 
before the Controller, the evidcnce aball be given by statutory OonW'oIJer. 
declaration in the absence of dircetiom to the eontr:l.ryj but in any 
CASe in which the ConlroUer think. it right 10 to do, he may take 
5 evidence viva voe4 in lieu of or in addition to cvidence by declAra. 
tion. 
(2) Any IUch statutory declaratiaa may in the case of appeal 
bo used in lieu of evidence by affid.nit. bat if so u!Cd shall ha\'c all 
the incidents IUld consequences of eridcnee by affidavit. 
10 (3) The Controller may for the pa::rpoeea of his funetioDl do all 
or any of the following things:- . 
(a) summon witnesses to attend before him, 
(b) examine on oath (which lie is hereby authorised to 
administer), or permit the aamination on oath of, the 
15 witnesses attending before 1Um, 
(e) require any such witnes! to prodace to him any document 
in his power or control. 
(4) A summons shall be tigned by the Controller. 
(5) A witnea before the Controller thall be entitled to the same 
20 immun\ties and priviJegt'S as if be W'eft a witnca before the.Court. 
(6) If any penon-
(a) on being duly summoned as & witness before the Controllcr 
makes default in attcndiuc. or 
(b) being in at-tcndance IS a witDeIs refuses to take an oath 
25 legally required by the C4IOtroller to be taken, or to 
produce any document i. n. pol\'cr or control lcgally 
required by the Controller to be produced by him, or to 
an.~er any question to which the Controller may 
legally require an answer, .. 
30 (e) does any other thing which wwld, if the Controller were 
a court oC justice, having power to commit for conlcmpt 
of court, be contempt of saeh eourt, 
the Controller may eertify the ofl'e.e of that 'pcrson under hi, 
official seal to t.he Court and the c.c.n may, &fur sueh inquiry 
35 as it thinks proper to make, ponish or take steps Cor the punishment 
of that person in like manncr IS if be 1wi been guilty of contempt 
of the Court. . 
74.-(1) In an action or proeecdiD: for infringement or revoea· BeariD, by 
tion of a pate.nt, or other proceeding -.ier this Act, the Court may, Coan wit.b 
40 if it thinb fit, and ahall, OD the reqwst of aD parties to the pro-.-r. 
eetd.ings, call in the aid of an ~ apeeially qualifted, and try 
the case wholly or partially with his ..istanee, iD which event tlle 
action sh&ll be tried without a jUl7 alell the Court otherwise 
direeta. . 
46 (2) The Supreme Court m&1. if it 6inb fit, in any proceeding 
before them call in the aid of an --.n' U aforea&id. 
(3) The remuneration, if any, to be pD:l to an a.s:aesaor under thil 
section shall be determined by the o.ut or the Supreme Court, 
SO Aa the case may be, and be paid as part of the e:tpenses of the 
execution of thia Act. 
75.-(1) Any appeal from the Controller under th'ia Act shall be Appeal. from 
to tho Court and shall 00 heard by ODe judge of the Court "nd the d«iaioll.l o( 
rresidcnt oC the High Court shall Crea timc 10 time m3kc arrange. Coatrol~r. 
mcnls tor securing that all aPP<'8t .. Ddtr thi" section shall, so far 
as praclicable, be heard by the SAme j1adge. [1964.] Paknl8 Ad, 1004. IP 1Nl 1 IIRLIP 11 
Page 121 
[No. 12.] 
(2) A~ IUch appeal which eonoerns a patent specification whieh 
h .. not become open to public in.peelion shall be heard in priTlu. 
(3) In any such AppcJlI the Contl'tlller shall be entitled to appal' 
or be represented in support of his dceision and shall appe&r it 10 
dirccted by the Court. 6 
(4) In any such appral the Court may c~crct,e any powcr which 
oould have been el:crci~d by the Controller in the proceedings 
from which the appW ia brought. 
(5) Rules for the conduct of proeecdings undcr this section may 
include provision for thc appointment of scientific adviser! to asaist 10 
the Court, and for rrgulating the {unctions of such advisers. The 
remuneration of a scientific advi~ appointed in accordance with 
such rules shall be defrayed out of moneys provided by the 
Oircachtaa. 
(6) lheept by leave of the Coort, no appeal from an order or 15 
decision of the Controller shall be entertained of whieh noUce to 
the Court is not given within ODe month from the date of the 
order or deeision appealed against or within such further period 
not exceeding three months aa the Controller may allow (apon 
request rcecived before the c.xpintion of the said period of one 20 
mon~). 
(7) An appeal to the Supreme Court on a spceiflcd question of 
law shan lie from Ule dedsion oC the Court on an appeal to it 
under this Act (other than an appeal under $ectio" 11, 13, 13, U, 
19, ~, '1, n, 28, 30 or 31 of this Act). 25 
76.-1n all procC<'dillgll before the Court under thL'I or any othu 
eD:lctlncnt the Controller &ball neither be awarded nor ordered 10 
pay costa. 
PART VIlL 
77.-(1) There shnll continue to bc, for the pllrpOSCS of W. .Ad 
and for such other purposes u have been or nuy, from time to 
time, be assigned to it by the Oireadltas, an offiee fortho registra­
tion of patents, desi~ and trade marks which shall be known .. 30 
the Patents Office and refercnces in any enactment to the IndUBtrial 35 
and Commereial Property Regiatntion Office esabliahed under the 
Act of 1927 ahAll be construed .. references to the Office. 
(2) The Office shall be under ~e immediate control of the CoD­
troller who shan aet under the geoeral 81lperintendence and direc-
tion of the Minister. - 40 
78.-(1) The office of Controller of Industrial and Commc.rda1 
Property shall continue in bcin« u a corporation 801e with per­
petual aueeession and an official seal (imp~ions of which sJWl 
be judieially noticed and admitted in evidcnc<') and sball be known . 
as the Controller of P:1t('nt&, Desjgn& and Trade Marks and the 45 
Controller may sne nnd be suro in that name and rde~nC'eS in any 
enaelment to the Controller of Industrial and Commercial Property 
appointed uuo<'r the Act of 1927 sIall be construed u references to 
the Controller. IP/~/I/~fP/l 
Page 122 
[1964.] Pcdtnl.! Ad, 1964. [No. 12.] 
(2) (ta) Tho Government .hall appoint A.3 oce.uion ame. I fit 
penon to the office of Controller who ahall hold office 
tor IUch time and on luch tcrma u the Government 
ahall appoint. 
5 (b) Tho person holding offire immediately before the com· 
mencement of this .Act &.11 Controller of Indllltrial and 
Commercial Property shaU be deemed tor the porpoeee 
ot thi! Act to have bN-n appointed to the office ot Con· 
troller under thL'I 8et'tion on the s.a.me terms and &t the 
10 lame remuneration as he held the fint-ment.ioned offiee. 
(3) Every person appointed to be Controller under thiJ .Act stall 
reeeive such remuneration as the Minister !C1l' Finance &hall 
determine. 
(") Subjeet to his being in good health at the time of appoint-
15 ment and notwilhsumding that he is appointed without a certifiratc 
from the Civil Service Commissioners, the Controller shall, if 
appointed permanently, be deemed to be employed in the perm.&nent 
Civil Serviee of the State and there may be granted to him on 
retirement or to his legal personal representAtive on dea.th aueh 
20 I1lpennnuation or other allowance or gratnity u might nnder the 
Superannnation .Aets for the time being in force have been granted 
had he been in the perma.ncnt Civil Service of the State. 
(5) .Any &et or thing directed to be done by or to the Controller 
may be done by or to any officer authorised by the Minister. 
25 (6) Whenever the Controller is temporarily unable to nttcnd to 
h~ duties, or his offiee is vaeant, the Minister may appoint a fit 
person to perform the duties of the Controller daring weh ina· 
bility or vacancy, and every person 10 appointed sh.:lll darinS' his 
appointment have all the powers of the Controller under this Act 
SO and u otherwise determined by law and shall receive such remune­
ration, out of moneys provided by the Oirenrhta.s, as the lliniJter 
.hall, with the S<lllction of the ~linistcr for FirulUCC dircet. 
79.-(1) The offieers of the Controner shall be appointed by the AppoiDbDea& oC 
Minister and there shall be such number of officers u the Hinia1.cr =u: 
35 with the sanction of the Minisler for Finance, may consider neccs- • 
aary for the purposC8 of this Act and for such other funetions u 
the Controller may be charged with, and those persons &hall hoM 
office upon sueh terms and be remunerated at such rates and in 
.uch manner as the Minister for Finance mny sanction. 
40 (2) The salAries or rt'muncntion of the Controller and his 
ofticen and such other expenses of carrying this Act into effect sa 
may be anetioned by the Minister for Fina.nee alu111 be paid out 
01 moneya provided by the' Oircaeht.u. 
(3) Persona holding offi~ immediately before the commencement 
45 of thw Act u officers of the ControUu of Indumial and Commer. 
eial Property shall be deemed for the pnl'p03Cl of this .Aet to lave 
been appointed officen of the Controller under thiJ Ad on the 
same term., and at the same remuneration u the,' held lUeh fi..Nt.. 
men tioned oftices. . 
50 80.-(1) There shall be ebarged by the Controller and paid jn Y' ... 
reaped of matters relating to the grant of patents under this .Act 
or other matters determined by bw as eoming within the dnties of 
the Controller, such fees ns may from time to time be prescribed 
by the lfinister with the sa.nction of the Minister for Finance... 
65 (2) All fee. charged by the Controller under thia section shall be 
colleeted and accounted for in such manner as shall be preseribed 
by the Minister with the sanction of the Minister for Finance... 
(3) The Public Offi('cs Fct'S .~et, 1879, shall not apply in t"elIpeci U79. c. 68. 
of any fees p:lyable under thiJ section. [1964.] PalenU Ad, 1004. IP/NIlIIRL/P/l 
Page 123 
[No. 12.] 
OlBoial JoumaL 81.-(1) The Controller shall illS1le pcriodi('&lIy a journal (which 
CooLtoUer may 
consul' AUorDeY GeneraJ. 
Roan of 
boam-and 
ncluded da)"lo is referred to in th~ Act as the Journal) in which he shall publiRh 
all matters which he is directed by this Aet or otherwise by law ~o 
publish, and also such matters and information a.s appear to him 
to be UlCful or important in relation to patented inventionJ anti 5 
other matters for which'he ia responsibk under this .Act or other­
wi!e by la,... 
(2) The ControlJer may issue periodically either in or as a 
lupplement to the Journal or a.s a aepanu publication reports ol-
(0) eases relating to patent.'!. de:!igns., trade mark3 or copyright 10 
decided in the State. and 
(b) sneh eases relating to patenls. designs, trade maru, or 
eopyrigbt decided outside the State u the Controller 
may eonsider to be useful or Un portant. 
(3) 'nle Controller may prepare and publish indexes, abridg- 15 
menu of apeeifieations. catalogues and other worla relating to 
inventions, patents, designs, and trade marks. 
(4) The Controller shall make provision for the sale of eopies of 
all doc:uments which he is by th~ section, or otherwise by la.w, 
directed or authorised to ~e or publish, and also of all complete 2JJ 
speeifiea.tions (together with any a.ecompanying drawings) of 
patt'nt. in force under thia Act. 
82.-Exeept u prescribed by the lfmistcr. report.! of examiners 
and other officers made under this Act or under any other Act for 
the administration of which the Controller is responsible sh:lll not t.5 
be published or be open to publie inspection and shall not be linhle 
to prodaetion or inspection in any legal proceeding unless the court 
or officer having power to order disco\"ery in such l<'g'al proeeedin::;, 
eertifica thnt such production or inspcoetion is desirable in the 
intcresta of justice a.nd ought to be ano..ed. 30 
83_Tbe Controller may, in any ease of doubt or difficulty 
arising in the administration of any of the provisions of this Aet 
or of any otber .Act for thc admillistratioo of which he is responsible 
apply to the .Attorney General for direetioos in the matter. 
M_The Controller shall, belore the 1st day of September in 35 
every year, eaa.se a report respecting' the uecntion by or under him 
of this Act and of any other Act for the administration of which 
be is responaible during the year end~ on tbe previous 31st day 
of lfareh to be laid before each Rouse of the Oirenchtas, and therein 
.hall inelade for the year to whieh the report relates all general .0 
rules made in that year under or for the purposes of the said Ads 
and an aeeotlnt of all fees., salaries, and allowances, &Dd other 
money received and paid under the a..id Aeta. 
8S.-(1) Rules made by the Mlniste.r unoer this Act may specify 
the hoar at which the Office shall be deemed to be dosed on any 45 
day for purpose! of the transaction by the pnblic of bn.,iness under 
this Act or such other business as may by law be made a function 
of the Controller or the Officc or of an,-class of sucb buainess., and 
may specify days as excluded days for any such purposes.. 
(2) Any busine-ss done under this At:! On any day &fter the hour 50 
spe.ciflOO a.s aforesaid or on a day v;hieh is an e.'Ce1udcd day, in 
relation to bU5incss of thnt elus. shall be deemed to have been done 
on the nen follo,ving day not being u e:tcludcd day; and where 
the time for doing :lnything under this .Aet c-'Cpires on an excluded 
day, that time shall be e.'ttended to the ~t following day not being 55 
an exeluded day. IP 1Nl lIIRL/P 11 
Page 124 
[1964.] Patent.! Act, 1964. (No. 12.] 
PART Ix.. 
86.-(1) Subjcet to such exccption! a.a may be presen1>cd or &.S, Paten' arDLa• 
in any particular case, the Controller may direct, whenever under 
5 this Act any act. has to be done by or to any person in conncetioll 
with a patent or any procedure relating to a patent or the obtain. 
ing thereof, the act may under and in aeeordancc with rulcs made 
under this seetion be done by or to an &.gent (in this Act referred 
to a.s a patent agent) of such pCl'3OD duly authorUcd in the 
10 prescribed manner. 
(2) There shall continue to be kept at the Office a register called 
the register of patent agents and a person acting for gain ahall 
not, either aJODC or in partnership with any other person, practise, 
describe himself or hold himself ont AI & patcnt agent, or permit 
15 himself to be so described or held oat, unless he is registertcl a.s a 
patent agent in the register of patent agents or, as the ease may 
be, unless he and all his partners are 80 registered; and a eompllDY 
acting for gain shall not practise, dcserihe itself or hold itsell out 
or permit itself .to be described or held out as aforesaid unlea 
20 every director of the company and, if the company h~ a manager 
who is not 8. director, that manager, is rqistered as aforesaid: 
Provided tht if in any eirc:um.stanoes he thinks it right so to do 
the Mini,ter Dlay authorise any person whom he considers suitable 
to act as & patent agent in & partkula.r case or at a particular 
25 time: 
Provided further that it shall not be an offence under thil seetion 
it the legal personAl representative of a deeeased patent ngcnt 
earries on the business or practiec of that deecased patent a.ge.nt for 
a period not exceeding three yc.'\rs from the dc~th of the patent 
30 agent, or for such further period (if any) u the Court Allows, and 
is himself registered as a patent :lgent or employs a registered 
patent agent or a person authorised under this section to ad u a 
patent agent to manage the business or practice on h.i.s bclu.lt. 
(3) Any ~rson who-
85 (0) resides in the State, 
(b) has a place of business in the St.a.te, 
(c) possesses the prescribed educational and professional quali­
fications., and 
(d) complies with the prescribed conditiorul, 
40 abaJl be eligible to be registered in the register of patent agents, 
and a putncrship shall be so eligible it every partner of the firm is 
registered in accordancc with the provisiorul of thi, sectiou, and a 
person or firm 80 eligible shaH on ~ppliC4tion in the prescribed 
form and manner and on payment of the prescribed fee be 10 
~ ~tered. . . 
(4) AIJy person who eonlravenea the provisions of this ~tion 
shall be guilty of an offence and shall be liable on summary eC>n­
vielion to a fine not exceeding, in the ease of a first offencc, L,,'entT 
pounds, and in the ease of a seeoDd or ,ubsequent olIenee, olle 
50 hundred pounds. 
(5) Notwithstanding subsection (4) of ~tion 10 of the Petty 
Sessions (Ireland) Act, 1851, proceedi.ng:s for an offence under this 1861, o. H. 
uction may be begun at any time within twelve months from the 
date of the offence. 
55 (6) Nothing in this section shall be eonstrued as prohibiting 
eolic:itors from taking such part in proceedings under this .Act Alf 
has heretofore been taken by solicitors in connection \t ith 3 patent 
or anr procedure relating to & patent or the obtaiuing thereof. lt64. No. K. (1964.J Paknld Ad, 1964. IP IN I llIRL/P 11 
Page 125 
[No. 12.) 
(7) A patent agent shall Dot be guilt1 o( an oae.nee under acction 
58 of the Solicitors Act, 1!>54, (whie.b prohibits the preparA. 
tion for reward of certain instrum.enu by persoIlJ not legally 
qualified) by reason only of the preparation by him of a deed 
Uligning the right to make an appli'2tion for a patent, & deed 5 
uaigning from the patent Rgent & puenl grnnted to him or any 
other document (not being tl deed) for use in PI'O<.'CeJings under t.bill 
Ad before the Controller or the Court. 
(8) A person (in this subsection rd.ured to &.8 an agent) duly 
authorised by any penon under I1lbudio-n. (1) of this seetion to 10 
&cl as his agent may (subject to any provision to the contrary in 
any agreement between the agent and thnt penon), on givin~ 
notice to the Controller and that penOD, cease to act u agent for 
that person. 
(9) There shall continue to be kept at the Office & register called 15 
the register of clerb and the M.ini.stu may make rules for the 
managcnlent of the register and may by Inch rule! prescribe the 
qualifications and conditions for eligibility for and the fees to be 
. paid on registration in such register. 
(10) Any person regi3tered in the rtPter of patent agents 1r~ 20 
(0) ceases to be eligible to be ao registered, or 
(b) applies to be removed from o.e register, 
may be removed by the Controller !nJm the register of paunt 
agcnts. but no person shall be so lUIOved (except on his own 
application) without being given an opportunity of being heard. 25 
(11) (a) Where a person registered in the ~ler of patent 
agents is found by the Controller, aIt.cr due inquiry 
by the Controller (includ.iDc the hearing by the Con­
troller of representations, if any, by the person), to have 
been guilty of conduct disgnee.ful to that ~rson in e 30 
professional respect, the CoDtroller may, i! he sees fit, 
decide that the rwne of that person should be erased 
from the register of patent agent&. 
(b) On makiug a decision under tla.is subsection, the Control. 
ler ah.all forthwith send by post to the person to whom 35 
the decision relntes, at his address as stated in the 
register of patent agents, a notice in writing rtating 
the decision, the date thereof &nd the reason therefore 
(c) A pel'8On to whom a decision at the Controller under this 
aubseetion relates may, witiin the period of fourteen 40 
da1l beginning on the date of the decision, on giving 
notice to the Controller in o.e prescribed manner, apply 
to the Court for eancellatioa of the decision, and if he 
10 applie.-
(i) the Court, on the hean.c of the appliC41tion, maT 45 
either-
(I) cancel the deeisioo, .. 
(11) eontinn the deeiaioa. &.Dd direct the Controller 
to erase the name of rueh perIOn from the 
register of patent agentl, 50 
(ll) if at anT time the Controller satisfies the Court that 
such person has delayed ll1lduJy in proceeding with 
the application, the Court shall, unless it eees good 
reason to the contrary. ecmfinn the deeision and 
direct the Conlroller to erase the name of such 55 
person from the register, 
(Ui) the Court may, subjeet to ,ecticm 76 of this Act, 
direct how the costs of the application are to be 
borne. 
(cl) Where a person to whom a decision of the Controller 00 
under this subsl~tioll relates does llot, within the ~riod 
ot fourteen day:, ~ginniDg 00 the date of the dC'Cision, 
apply to the Court for cnnffila.tion of the decision, the 
Controller may apply tX r-r/' to the Court for con· IP 1Nl 1/IRL/P 11 
Page 126 
5 [1964.] PatenU Ad, 1964. [No. 12.] 
tirmation of the deei:sion .od, if the Controller 10 
appliCft, the Court, on the bearing crl the application, 
shall unlCS3 it sees good reaon to the e<:lntrary, condrm 
the decision and direet the Controller to ern.se the name 
of IUch person trom the ~r ot patent &genta. 
C.) Tho decuion o! the Coart 011 an appliCAtion under th1a 
subsection shall be final, san that, by lCA~e ot the Court, 
an ap~al, by the Controller or the penon concerned, 
from the decision ~ lie to the Supreme Court on a 
10 lJ>eCified qUe.:>tion of law. 
(f) On erasing the name of a person from the rcgUter of 
patent agents under this sw.eetion, the Controller shall 
forthwith send by post to saeh person, at his address u 
stated in the regUlcr of patmt age.nta, notice in writing 
15 t,)f the erasure. 
(g) A penon whose name has be= erased from the regiater 
of patent agents under th.ia sabseetion may at any time 
be restored to the register by special dirtetion of the 
Controller but not othuwiR., and when a pencn is 10 
20 restored to the register, the Controller may attach to the 
restoration such conditions (including the payment of 
a fee not exceeding the fee whieh would be payable by 
such person if he Wa.! then bein g registered for the first 
time) u the Controller thinb fit. 
25 (12) The Minister may make rules l« the m.an.a(eDlent of the 
register of patent &genta, and may br meh rules prescribe any 
m.at~r or thing referred to in this 3edion a.! prescribed, and in 
particular may 80 prescribe the edueaticcal and proCessional quali­
~tions and the conditions (iDeludiDg conditions relating to 
30 nationality or citizenship) for eligibility for registration in that 
register, and the ma.'(imum fees which may be ebarged by any 
person registered in the register of p&1aIt ~rrents for Stleh services 
iD eonneetion with the obta.ining oC patmta u may be ipeCified in 
IUCh rule&. 
35 (13) Rules under this section may .u.thoriae the Controller to 
refuse to recognise as a.gent in respeet of any busincsa under tJu. 
Act any person whose name, having beaa. entered in the register of 
patent agents under this .Act, has been ranoved the.refrom. 
(U) Rules under this section may allthorise the Controller to 
~ refuse to recognise as agent in re.speet at. any business under th.b 
.Act a comp.a.ny or firm of which any director or manager or 1111 
partner (a.! the ease may be) is an ind.iridn.al whom the Controller 
could refuse to recognise as an &gall. 
87...-U any person blakes or eanses to he made ~ false e..ntq iD 1" m '" el 
4S Il17 register kept under this Ad, or & writing falae.ly purporting ....... Me. 
to be a eoP1 of an ent.ry in any such rqister, or produces or ten-
~ or eatlllES to be produced or teDdcnd in evidence &Dyltleh 
writing. knowing the entry or writing to be fWe, he shall be guilty 
of an o1fenee and &hall be liable OQ IUID1ar'1 eonvietion to a fine 
50 not exceeding one hundred pounds or, at the diJcrction of tM 
court, to imprisonment for any term not aeeeding three montha or 
to both lOeh fine and web imprisonmeaL 
88.-I! any person falsely repre3e.llts t.h&t any article BOld by U...t.borieed 
him is patented, be shall be guilty of III otrcnce and sh.all be liable =.01 p&&eG' 
M on summuy COD,;ction to a fine not e:t.cftding twenty pounds; and 
for the purposes of this provi~ion a person wbo aclls an 3rticle 
having stamped, engraved or impressed thereon or otherwise 
applied thereto the word /I patent" or It patented ", or any other 
word expressing or implying Lhat the &.rtide is pntented, &hill be 
60 deemed to repre.~t tllat the art.ide is patented.. bna\ioQl 
nl&Unc &0 
1Det.nuDe.a w or 
lIIani~iona of war. [1964.] PahnU Act, lOOt. IP/N/1/1RL1P11 
Page 127 
[No.1i.] 
89.-It any ~l'IOn UJeI on his place of buaine., or on 1111' 
docnment issued by him, or other-wise, 1ll1words auggesting that his 
place of business is officially connccted with, or is, the Oft!ee, he 
&hall be guilty of an offence and shall be liable on IUmmuy coDvic-
tion thereof to a fine not uceediDg twenty pounds. 6 
90.-(1) The inventor of any impronment in instrument. or 
munitions of war may (either for or without valuable considera­
tien) a.ssign to the Uiniswr for Defenee on bcbt.lf of the State all 
the benefit of the invention a.nd of An1 patent obtained or to be 
obtAined for the invention. 10 
(2) The assignment ahall ~eetually Tat the benefit of the inven­
tion and patent in the Minister for De!moe on behalf of the State, 
and all covenAnts and agreements therein eontained for keeping the 
invention seent a.nd otherwise shall be nlid &Dd e1rectual (not­
witJutanding any want of valtlAb]c cr.xWderation), and may be 15 
enforced aecordingly by the Mini.!ter far Defence. 
(3) Where any such assignment u aforesaid hu been made, the 
H.inister tor Defence may at any time bdore the publication of the 
complete specification certify to the Cootroller tb.&t, in the interest 
of the publie ser\;ce, the particulars or the invention llnd of the 20 
manner in which it is to be performed &bould be kept secret. 
(4) I! the Minister for Defence 10 c:ertifics, the application and 
tpeeifications, with the drawings (if any) and any amendment of 
the complete speeification, and any copies ol sueh documents and 
drawings shall, instead of being left in the ordin.a..ry manner at the 25 
Office, be delivered to lbe COlltroller in a packet sealed by authority 
of the Minister for Defence. 
(5) The packet &fores&id shall, until the expiration at the tum 
during which a patent for the invention may be in force, be kept 
Ie8lcd by the Controller and s.h&ll DIIOt be opened laTe under the 30 
authority of an order of the lIinister for Defence or of the 
Attorney ~eral. 
(6) The sealed packet a!orcWd shall be delivered at any time 
during the continuance of the patem to any person authorised by 
the Mi.n.i.ster for Defence to receive it, &nd sb.al.l, if returned to the SS 
Controller, be &gain kept sealed by him. 
(7) On the uplration of the term at the patent, the Iealed paeket 
ahaIl be delivered to the Minister far DeI eIlQe. 
(8) Where the Minister for DefeDee certifteI &I afOresaid alter 
an application for a patent h.u heal left at the ome., but before 40 
the publication of the complete speci:fteatJon, the appHeatiOD. and 
apeci.6caUon.a, wi th th e drawings (if ally), ahaIl be forthwith pl&oed 
in a packet !leAled by authorit;r of the Con~,' and the 
packet ahall be aubjeet to the forqoing provislou nspee.ting a 
pa.eket tealed by authority of the 1Cmister for Defenee. 46 
(9) No p~ing by petition or otherwiae shaIllie for revoeaUoa 
of a patent granted for an inveation in relation to which lUeh & 
ce.rti&ata u aiores&id has been g:hoen by the lfiniater for Defenec. 
(10) No copy of any spceifleatioa. or other doeume.nt or dr&win~ 
by thia section required to be placed in a sealed paeket aha.1l in any 50 
manner whatever be published or opened to the in.speetion of the 
public, but, &a\'e &8 in this section ia Otherw!IC directed, the pro­
visiolU of this Act shall apply in respeet of any such invention 
and patent a.a aIores.aid. IP/N/1IIRL/PIl 
Page 128 
[1964.] PalmU Act, 19M. [No. 11.] 
(11) The Minister for Defence may at &111 time wai1'O the ben~t 
of this section with respect to Any partieular invention, &Dd there­
upon the spceiacatiolls. document." and drawings relating to that 
invention shaH thenceiorth be kept and dealt with in the ordWI7 
6 way. 
(12) Rules may be made under this teetioo by the Minister, after 
eoI1lUltation with the Minl!lter for Dcfmee, for the Purpole of 
ensuring secreey with respect to pateD1:l to whIch this section 
applies, and those rules may modify &DY of the provisions of this 
10 Act in their application to such patenta as aIorcaaid so fAr a.a may 
appear necessAl'1 for the purpose aiorcsOd. 
91.-(1) Without prcjudiee to the prvrisionl of the laat fore-~ 0( 
going section, any inventor or patentee JaY (either for or without m=.u: or 
valuable consideration) make to • Minister of State on behalf of the ~iIW; 
16 State., and aueh Minister may take on meh beh&1f, an assignment sw.. 
of the whole of or any share or interest in the benefit of an invention 
and 01. any patent obtained or to be obtained for sua inTention, 
and where a lfinirter of State hu tabu IDT lOch assignment, lOCh 
Minister may (as the ease may be) do w join in doing on behaJ1 
20 of the State &11 or any of the following dIinp, that it to 1&1 :-
(II) develop and perfect such inveDtiaa., 
(b) fonn or promote an incorporated eomp&ny or an un1neor­
panted association of penaIII to develop and perfect 
IUch invention, 
25 (e) take an assignment' of any pat.eBt or of a share et' interett 
in any patent theretofore or iMreafter obtained for mob 
invention, 
(d) sell or lease any aueh patent or rrant lieenees under any 
such patent on such tCl'J'TUl as lI.e shall, witb the anetion 
ao of the ~nnister for Finance, 1lUnk proper, 
(.) form or promote an incorporated eompany or an unmeor­
ponted a.ssoeiation of }lCrsoDI to work eommereially any 
GM patent, 
(f) do allauch things as may be neeeB.'ll"1 for the maintenaDee as or preservation of any sada patent or be othenriee 
ineidental to the ownership tlIertof. 
(2) Every Minister of State shan, before the 1st day of A.prilin 
"cry year, 1ay before each House of the Oireaebw a report of 
every (if any) exercise by him in the aext preeed1ng year of the 
40 several powers conferred by parcgrapJu (4) and (e) of ",blfClicm (1) 
of tbia aeetion and aiso, if and 10 far as he eonsiders it apedient 
in tbe public interest, of the several po"rers eonferred .by porlS­
grGpM (a), (b), (c) and (f) of the said IIlbscetion. 
(8) All expeD5ea incurred by a lliaistu of State under this 
45 .ection &hall, to such extent as may be anetioned b7 the lIfiDiIter 
for Finance, be paid out of mon~ prorided by the Oiluchtu. 
92.-(1) A. patent shall have to an intents the lib e«ect u u.. of,.a-W 
against the State &.I it has ~in.st a eimen: =~&be 
Provided that any Mhuster of State lILIy, by hi.m.Ielf or by lOch 
50 of his agents, contractors., or others as aay be authorlJed in writing 
by him at My time after the applie:ation for a petent. make, use, 
exercise or 'Vend the invention for the serviee of the State on such 
te.nns as m"y, f'ither before or :uter o.e use thereof, be agreed on 
with Ule appl'oval of the llinister for Fina.n~ by such lIinister and .... [1964.] PtlknlI .A. cl, 1964. IP/N/lIIRL/PIl 
Page 129 
{No. 11.] 
the appUea.nt or proprietor, or, in dda.aJt ot agT"eement, u may be 
aettledin the manner be~int.fte.r proTidtd, and the tcl"Dll of any 
agreement or licence concludcJ between tne "pplicant or proprietor 
and &ny perlOn other than a Minister of StAte shall be inoperative 
to prevent or regulate tbe making, u.ae, exercise or vending of the 6 
invenUon for the aerviee of the State: 
Provided further that, "here an inTention which is the aubjeet 
of any patent or application for a patent has., ~fore the priority 
date of the relevant elaim of thC', compirlt 'pcciflca.tion, been tiuly 
recorded in a document by, or been tried by or on behalf of any la 
lUeh Mini.ter (such inTention not h.aTi..ng been communica.ted 
di.reetly or indirectly by the applicant or the proprietor), any Mini· 
.te!' of State or such of his agents, contnetora, or others AI may ~ 
authoriaed in writing by him, may m.a..kz, we, e..xcrcise or vend the 
invention 10 recorded or tried for the Je1"'fice of the State free of 15 
any royalty or other payment to the applicant or proprietor, not­
withatanding the existence of the application or patent, and if in 
the opinion ot such Minister the disclOAre to the applicant or the 
proprietor, u the ca..'Ie may be, of tJ.e document recording the 
inTelltion or the evidence of the trial thenof would be detrimental 20 
, to the publle interest, sueb diselosure ..,. be made eontldcntially 
to ecrnn.el on behalf of the applicant or proprietor or to &Il1 
independen~ expert mutually agreed upe. 
(2) Where any nae of an invention is made by or with the 
authority of a Minister of State under this aeetioIl, then, unlea it 25 
appea.ra to lUeh Minister tha.t it would be contrary to the publio 
interest 10 to do, the Min.i.ster sha.l.l notify the applieant or propri&-
tor U lOOn as practienble after the use • begun, and furniah him. 
with w.ch information as to the extent of the use u he may from 
time to time require, 30' 
(3) In ease of allY dispute &.'1 to or in oonneetion with the making, 
use, exercise or vending of an invention., under thia section, or the 
terma therefor, or as to the existence or seope of any record or trial 
u aforesa.id, the matter shaIl be referred to the Court for decision, 
and the Court shall have the POWel' to rder the whole matter or 35 
any question or issue of fad arisiog thereon to be tried before an 
arbitra.t.or upon such eonditions as it may direct. The Court or 
arbitnltor in se~tling the teTma as afore.-;aid ahall be entitled to take 
into consideration any benefit or eompensation which the applicant 
or proprietor or any other person interested in the application or 40 
patent may have received directly or ~tly from the State or 
from any Minister or any Government Dcpart.ment in respect of 
lOch appliea.tion or patent.. 
(4) In any proceedings under this section ~ which a lfin.i.Jter of 
State 11 & party, such MinisteZ' may- 46 
(.) if the patentee la & party to the proeeedinp, &pp}y' for 
reTOeation of the patent upon &ll1' ground upon whJeh 
& patent may be reYobd under ~ 34 of thlJ Act; 
(b) in. any e&Ie, pnt in issue the validity of the patent without 
applying for iU l'e'Toea tion. ISO 
(5) ~ right to tlJe an m-rmtion for the aervioe of the State 
under the provisiOIll of thia 8eeDon shall iDdude the power to 8ell 
Ally artieles made in pursuanee of Illeh right which are no longer 
required for the servioe of the State. 
(6) The purcha.acr of any articles sold fa the exercise of powers 55 
eonferred by thi.! section, and '.uy person cle.iming through him, 
ahall have power to deal with them in the same mann~r as if they 
'Were made pursuant to & pal.e.nt held OD behalf of the State. IP/N/I/IRLlPll 
Page 130 
[1964.] PaUnU Act, 19M. [No. 12.] 
(7) Duri.ng any period wben an ordeT' under poragr(JpA (0) of 
,vblleli01l (8) ot tbis ICCtion is in force the powcr uerdsahle in 
relation to an invention by a Mini.ster ot State, or & pel'lOn 
authorised by a M.inister of State under IUb"ct~ (1) of thil 
5 section, shall includc power to make, Use, exereise and vend the 
invention for any pUl'pOI8 which appean to luch Miniater nee. 
Ary or uptdie.n t-. 
10 
30 
85 
40 (0) for the maintenance of supplic:a and aemcee csae.ntial to 
the life of the community; 
(b) for securing a auffieiency of rupplics &Ild SCrvlcea essential 
to the well.being of the community; 
(c) for promoting the productivity of industry, commerce and 
agriculture j 
(cl) for foltering and directing exPON and reducing imports., 
or imports ot any classes, !ram all or Any countries and 
for redressing the balance at trade; 
C.) generally for enauring that the whole resources of the 
CCJmmUllity are available for u,e, and are uaed, in a 
manner best ealculated to sun the interests of the 
community; 
(f) for Ulilting the relief of suft'ering and the restoration and 
distribution of essential- rupplies and aervices in any 
foreign countries that are in grne distress as tho ~tl1t 
of war; or 
(9) for enauring the public alety and the preservation of the 
State; 
and any reference in this section to the scrnees of the State shall 
be construed as including a reference to the purposes &!orcsaid. 
(S) Co) Whenever the Government are of opinion that, in the 
interest. of the community, owinc to the c.x.istence of 
exceptional eireum.stanees, it ia dcsirnble that the 
powel'l conferred by IUbJeclio. (7) of this section 
ahould be available, they may by order decllU'C that the 
powers aloresaid shall be available.. 
(b) Whenever an order under parGgrGpl (Cl) of this subsection 
is in force and the Government are of opinion that the 
eJ:eeptional circumst~nees referred to in the said para· 
grapA (Cl) no longer exist, they ah&D by order revoke the 
order Ullder the Aid para.grGpA C.). 
(9) In thia IeCtion "JUVice of the State" meana a Ier'Vice 
baDced out of money! eha.rged qn or advanced out of the Central 
J'Dnd or moneya proTided by the Oireachtu fit'" & 10eal authority. 
83--(1) The Government may, with a view to the tulfUment of OoftlDlDeDi 
&Il7 treaty, convention, a.rrangement or enpgement with the orden~ &0 
45 Government of. a foreign country concerning the proteetion ol :a~ 
mventiolll, by order declare that any country specified in the 
Older ja & convention country for the purposes of this Act, and that 
eounby shall be a convention country for the po:rpoees of thia .Ad 
while the order remaiIl8 in force with respeet to that eountry: , 
ao Provided that a declaration may be made as aforesaid for the 
purp0se3 either of all or of some only of the prorlsions of thia Act, 
&.Dd a country in the ea.se of 'l'hieh a declaration made for the. 
purposes of some only of the pro..-isi\Jns oC this Act is in force abllU 
be deemed to be Il convention country for the purposes of those 
61 provisiona only. [1964.] PaknU Aa, 19M. IP/N/IIIRL/P/l 
Page 131 
[No. 12.] 
(2) Without prejudica to the provUion. of "ctitm 96 ol this Aet 
the Minister may, for the purposes of c:oDnntion applieations, make 
rules-
(cs) prescribing particular time limita for doing anything 
required by thi3 Act to be done in connection with sach 5 
applicatiotll ; 
(b) for regulating the proccdure3 to be observed in conneetion 
with making and prosecuting IUch applications. 
(3) The Government may, by order, moke or amend an order 
under this aeetion including nn order under thia Itlbeeetion. 10 
<') In tru. aeetion U !o~ign country" ineludes anT territory far 
the foreign relatioIl3 of which any state (being a ata.te whieh iI a 
party to any international agreement for the mutual protection of 
inventioDl to which the State is & party) eoDJidera itself respoIllible. 
94.-(1) Where a person haa applied for protection for an 15 
invention py an application which-
(cs) in accordanee ""'ith the terms of I trcaty aubri8ting between 
any two or more convention countries, is equivalent to 
an application d.uly made in anyone of those convention 
eotm tries, or 20 
(b) in accordance with the law of any convention country, is 
equivalent to an application duly made in that eon­
vention conntry, 
he shan be deemed for the purposes of this .Aet to have applied in 
that convention country. 2& 
(2) For the purpose of this Act, matter shall be deemed to have 
been disclosed in an applic:ltion for protection in a conYCntioll 
country it it was claimed 01' disclosed (othCl"Wisc than by way of 
di.selaimer or acknowled:;-cmcnt ol prior :u1) in that application or 
in documents submitted by the applicant tor proteetion in support 30 
of and at the same time as that application; but no 3eCOunt shall be 
taken ot nny disclosure cJ{'ected by any lOch doeument unless a eopy 
of the document is filed ::.t the Office with the convention application 
or within such period as may be prescnDcd after the filing of that 
application. 35 
95.-(1) Where a ves3Cl or airera!t registered in a foreign ,-tale 
or a land vehicle owned by a person ordinaril7 resident in a 
foreign state eomes into the State tempon.ri1y or aecidentally only, 
the rights conferred by a patent for an inTention shall not be 
deemed to be infringed by the use of the invention- 40 
(G) in the body of the vessel or in the m.aehinery, tackle, 
apparatns or other accessories thereof, !IO far as the 
invention is used. on board the Tesse} and for its aetaal 
needa only; or 
(b) in the eoDstruction or working of the aircraft or land 4:5 
vehicle or of the ac.cessoriea thereof, 
as the ease may be. 
(2) This seetion sha.ll not extend to yesscls, aircraft or land 
vehicles of any f<?reign statc ol which the laws do not roofer 
corresponding rights with respect to the use of inventions in 50 
vessels, aircraft and land vchidcs oC the State while in that foreign 
state. IP/N/I/IRL/P/I 
Page 132 
10 [1964.) PatenU Act, 19M. [No. 12.] 
96.-Tbe Minister may m&kc such general rules (except in Poww 01 
relation to any matter appropriate to be provided for by rules of ::..~ 
court) and do luch things as he thin.ks expedient, IUbjeet to the 
provisiooa of this Act-
(0) fqr prescribing the form of application! for patents and 
of &Il1 5peeifications, drawinp or other documenta 
which may be filed at the ~ce, and for requiring 
copiea to be furnished of any I'tlch documents; 
(b) for regulating the procedure to be followed in connection 
with ey application or requ.e:at to the Controller or in 
connection with any prooeedi:ng before ~e Controller 
and for authorising the recti:6eation of irregularities of 
proeedure; 
(c) for regulating the publication and sale of patent specifica­
tions, of indexes to and abridgcments of patent ~­
fications, ed of the JounW and other documents 
which the Controller is by this Act required or 
authorised to publish, and far regulating the content.e 
of the said Journal and other doeumenta; 
(d) for nrwating the preaentatioa of copies of publieations 
made under this Act to patentees and to public 
authorities, bodies, and m.titutiona at home and 
abroad; 
(.) for regulating the keeping of the register of patents to be 
kept pursuant to this Act; 
(f) for prescribing any matter Or thing referred to in thla 
Act as prescribed or to be prescribed; 
(g) for doing anything which ia by this Aet authorised or 
required to be done, or is in thia Act rclerred to Aa 
10 being or to be done, by genual rules made under th.ia 
Act; 
(1) generally for regulatingtbe ba.s.inc.ss of tlleOffice, and all 
things by this Act placed under the direction or control 
ot the Controller, or of the Minister. 
86 91.-All thinp required ~r authorised under this Aet to be done PowwotKiDMter 
by, to, or before the lIinister may be done by, to, or before the to cWep-hi. 
Secretary of the Department at Industry and Commerte or anT ~".A.o&. GDder 
penon authorised in that behaIl bT the Ministel'. 
98.-Any notiec required or authorised to be ciTen bT or under s.ma. ot 
4D this Act, and any application or other document 10 required or DOUc.. ... 
authorised to be made or filed, maT be given, made or dled b)" poet. b7 ~ 
99.-Nothing in this .Act shalt a6eet the right of the State, or s.' r. &rik .. 
of any person derivin~ title directly or indi.reetly from the State, to ro~orund.r 
aell or use any articl~s forfeited under the tan relating to the 1& .. ...win, to 
-'S custoID8 or exei.ae. ::... ~ or [1964.] 
Nambcr and 
Year 
No.leof 1921. 
No. UoI18J~. 
No. 130l 1957. 
No. Sl of 1858. IP IN / lIIRLIP /1 
Page 133 
PatcaU Act, 1964. [No. t!.] 
FIRST SCHEDULE. 
ENJ.CTllENT8 Ra-uLm. 
Short Title btaat of R.tpo&l 
Indllst::rUl aod Com-Sctioo a (In 10 tu la it relatel to 
mercial Property (Pro- pateoU) : leCaoDa 6 to 13: 
teetiOD) Act: 1827. 1tCU0Dol 114 &.Dd 12& [lA 10 far U *1 rdat.e to rateDts); . .ctlo1l ut: IeCtioU 17 to 1S1 (la 10 iu .. they rdate to ptrtellta); 
leCtioll ue: IeCtioDol U"7'UClI31 
ID 10 far .. th.er rdatll to 
pat.aJta): eoet:iOILt UI ad 140: 
iIIctIoll 141 (iD 10 tu .. it relate. 
;:rteota) i 1eCtiQ1l1(J:-=tio1l (iIllOfuuit ..... to 
~): IIICtio1Il": ~ to 1110 (la 10 far .. they 
ala te to pateata): IeCt:loa 161 ; 
-=tiou 152 aDd lU (ba 10 far .. 
tIaer rel&te to patella). 
lAda.strial aDd Com-Sectio. J to T. 
DW:rd&l Property (Pr0-
tection) (AmeodmeDt) 
Act. 1 Ott. 
lAd UIt:riaJ and Com· Scd:loas 2 to 4: 1CCti01l T [Ill 10 far 
mercia1 Property (Pro-.. it rdatee to patellta). 
tectiOD) (Amendmaat) 
Act. 1067. 
IDdu.strial and Com· Sectioll , (in 10 far la it nlatla to 
merci.al Property (Pro-
tectiOD) (Ameodmaat) pateob). 
Act. IN&. 
SECOND SCHBDULE. 
1. Sabjcet to the provisions of thia Sehedule, an,. order, 5 
regulation, rule, patent, requirement, eertifieate, notice, deeiaion, 
direction, authorisation, eonsent, application, request. or thing 
made, granted, issued, givcn or done UDder any enaetment repealed 
bl this Aet shall, if in force at the COIIUDe.Dce:ment of this Aet, and 
10 far u it eould have been made, grated, issued, given or. done 10 
under this Act, COlltinue in force ad have elleet u if made, 
granted, issued, given or done under u.e COmwpoDdini enactment 
of thia .Act. 
2. Sedic1\ 10 of·thla Aet shall apply in relation to & eompJete 
apcciftcation filed before the eommenoement of uu. .Act u it applies 11 
to & complete Jpecifteation filed after the commencement of thiI 
Act. 
3. Notwithstanding anything in nNca~ (1) of udi3 8 of 
this .Aet, a complete speeiftcation shall not be 1Ued in pUl"lU&llOl 
of an application which, by virtue of section 16 of the Aet of 1927, 3) 
was deemed to be abandoned at anl time before the eommeneemmt 
of this Act. 
•• Where a complete spceifleatlon (other than & speei!catlou 
relating to an invention referred to in section 55 of the Ad of 
1927) has been filed before the comme:neemcnt of this Aet but h:LI • 
not been accepted, then. in relation to matters arising before the 
acceptC\nce or rdusal of aco:cptanC!.C oC the complf.te s~ifieation. 
the provisions of this Act sh:lll not apply, but the provisioDl of the 
Act of 1927 shall continue to apply DOlwilhslauding the repeal of 
tho.e provisioDs of that Aet: 10 IP/N/lIIRL/P/l 
Page 134 
[19M.] Palent8 Ad, 1964. (No. 12.] 
Provided that the provisions of thi.! Act .hall applr iD &DYIUCll 
ease in which ('virirn('r unrirr ~('('tion 19 oi the uid Act of 1927 iI 
not furni5hec.J within three mODt.h~ After the date 01 the commene&­
ment of th w Act. 
6 6. The provisions of Jection.! 19, 34 wd 95 of this Act relatmg 
to the grouuds on which the grant 01 & patent may be opposed or 
on which a patent may be revoked shall not apply in &Jly cue 
where the complete specification was aecepted before the com­
mencement of this Act, but the provisions of the Act of 1927 
10 relating to those matters shall eoutinue tll apply in any such ease 
notwithstanding the repeat of those provisions of thnt Act. 
6. Where a specification 61ed btfore the commeneement of thil 
Act has become open to public inspection it aha.ll continue to be 
open to public inspection notwithstanding anything in uclitm 69 
16 ot this Act.. 
'1. Where two or more persons arc registered ... grantee or pro­
prietor in respect of Do patent which was granted or for which 
application was made before the commencement of this Act, the 
right of each of those persons to lS.'lign the whole or part of bis 
20 interest in the patent shaH not be restricted by rea,.-.on only of the 
proTisiona of "clion 51 of thia Act. 
8. 8\&blectioM (1) and (3) of stctio" 20 of this Act ahall not 
apply to any patent granted before the commencement of this Act. 
9. Stctwn 29 of this Act shall have ('treet, in relation to a patent 
25 which has cca'S(..'<i to have effect bc!ore the commeDCt:ment of this 
Act, as it for the reference to .~ectjon 26 of this Act there were IUb­
IItituted a refercllce to section 33 of the ~ct of 1927. 
10. Where the time allowed under sectioD 25 of the Act of 1927 
for the scaling of a patent h:1S expired before the commencement of 
ao this Act and the p:1tcnt h!lS not been scaled, secticm. 30 of this Act 
&hall have effect in relation to the npplieatioll fur the P:1lent as if 
for the reference to sectio" 23 of this Act there wel'e 8l1bstitnted 
• reference to section 25 of the Act of 1927. 
1L In rela.tion to any proee<ldings pending at the eomme:nce-
86 ment of this Act the provisillllS of ItctioN 32 and 58 of thia Act 
ahall not Apply but the proyisions of sections 38 and 50 ot the Act 
of 1927, ahall continue to apply. notwithstanding the repce.l of lhOlO 
eeetiona ot that Act. 
12. AJly doenment referring to &Ily cn.aetment rcpca.led br this 
40 Act ahall be construcU as referring to the correapooding enactment 
of thia .Act. 
13. The provisions of 'taitm 75 of this Act shaD not appl,.. to anr appeal from D. decision of the Controller under any provision 
ot the Act of 1927, which is pending at the commE:llcement of thia 
4& Act but the pro"ision of the Act of 1927 shall continue to app),.. to 
the appeal notwithstanding the repeal of that provision of that Aet. 
WL -. 4J6J6/F/6. J,S$O. 6/64. C.A:Co. (4557). G.16. IP IN I 1/IRL/P 11 
Page 135 
STATUTORY INSTRUMENTS. 
8.1. Ho. 91 of 1966. 
PATENTS ACT, 1964 (COMMENCEMENT) ORDER, 1966. 
DUBLIN: 
PUBLISHED BY THE STA.TIONERY OFFIOE. 
To be -ourchaMd from the 
GOVERNME..'iT PUBLICA.TIONS SALE OFFIOE. G.P.O. A.BCADE. DUBLIN 1 
(r thrOUR:h any BookHller. 
Price: F ourpence. 
(pr. 8835.) 2 [91] 
~~" 
I.R Uimh. 91 de 1966. 
AN TORDO UM AellT NA nPAITINN f, 1964 (TOSACH FEIDHME), 
1066. 
I bhfeidlunhi na gcumbacbta( a thugtar dam le halt 1 d'Acht na 
bPaitinni, 1964 (Uimh. 12 de 19(4), ordahnse, pAORAIG S. 0 
nIRIGHILE, Aire Tionscail agus Tnkbt:Ua. leis seo mar a leanas: 
I. An tOrd,i urn Aellt na bPaitinnf, 1964 (Tosach Feidhme), 1966, is 
teidcal don Ordti seo. 
2. Socra(tear leis seo gurb 6 an lti 1;i. d'Itiil, 1966, an l~ a thiocfaidh 
Acht na bPaitinni, Hl64 (Uimh. 12 de 10M), i ngn(omh. 
(0 ARNA THABHAIRT faoi mo SMala Oifigitiil, an 
2ti hi seo de Bhealtainc, 1966. 
pADRAIG S. 0 HIRIGHILE, 
Aire Tionscail agus Tr~chtcila. 
NOTA MfNIOCHAIN. 
(NI cuid den ionsiraim atl nota seo "d nl ceart a mheas gur mini" 
dUthiuil "irthi e). 
Socraftear leis an Ordu seo gurb 6 an 1 JuiI, 1966, an 1:i a thiocfaidh 
Acht na bPaitinnS, 1964 (Uimh. 12 de 1964), i ngnfomh. De bhua Riail 
3 de Rialacha na bPaitinnf, 1961i, is ~ an 1 luil, 1966, data thosach 
fcidhme na Rialacha sin freisin. 
Foilslodh fagra san "1,is OiJigitiiZ" an 10 Bealtaine, 1966. d ,4 go 
ndearnadh an lonst,aim Reachl,.il sea. [91] 3 
S.I. No. 91 of 1966. 
PATENTS ACT, 19M (COMMENCEMENT) onDER, 1966. 
I. PADRAIG S. 0 HIRIGHILE. Minister for Industry and Com­
merce, in exercise of the powers conferred on me by section 1 of the 
Patents Act, 1964 (No. ]2 of 1964), hereby order as follows : 
1. This Order may he cited as the Patents Act, 1964 (Commence­
ment) Order, 1966. 
2. The 1st day of July, 1966, is hereby appointed as the day on 
which the Patents Act, HIM (No. 12 of 19(4), shall come into operation. 
(0 GIVEN under my Official Seal, this 2nd day of May. 
1966. 
PADRAIG S. 0 IIIRIGHILE. 
Minister for Industry and Commerce. 
EXl'LANATORY NOTE. 
(This noie is not part of the instrument and does not pllrport 10 be a legal 
interpretation ). 
This Order appoints the 1st July, 1966, as the date on which the 
Patents Act, 1964 (No. 12 of 1964) comes into operation. By virtue of 
Rule 3 of the Patents Rules, 1965, the date of commencement of those 
Hules is also the 1st July, 1966. 
Nolice of the makinq of Ihis Slatfltmy Insl"",.~n' was published in 
H]"S OiftgifiiZ" of 101h May, 1966. 
The version of this Statutory In.'1trument in the Irish laaguage, officially 
prepared, is printed on the opposite page. 
Wt.-. 7468. 660. 6/67. C.ctCo. (8242). G.16. ~I-I 
~ "tj 
O'Q ........ 
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~~ 
.....