————————
Number 31of2006
————————
PATENTS (AMENDMENT) ACT 2006
————————
ARRANGEMENT OF SECTIONS
Section
1. Definitions.
2. Interpretation (section 2 of Principal Act).3. Patentable inventions (section 9 of Principal Act).4. Exceptions to patentability (section 10 of Principal Act).5. Novelty (section 11 of Principal Act).6. Date of filing application (section 23 of Principal Act).7. Priority right (section 25 of Principal Act).8. Withdrawal of application (section 33 of Principal Act).9. Reinstatement of applications.
10. Restoration of lapsed patents (section 37 of Principal Act).11. Amendment after grant (section 38 of Principal Act).12. Limitation of effect of patent (section 42 of Principal Act).13. Extent of protection (section 45 of Principal Act).14. Relief for infringement of partially valid patent (section 50
of Principal Act).
15. Remedy for groundless threats of infringement proceedings
(section 53 of Principal Act).
16. Grounds for revocation (section 58 of Principal Act).17. Examination of application for revocation (section 59 of
Principal Act).
18. Application for entry in register that licences of right are
available (section 68 of Principal Act).
19. Compulsory licences (section 70 of Principal Act).20. Provisions as to compulsory licences (section 71 of Principal
Act).
12[No. 31.] [2006.] Patents (Amendment) Act 2006 .
21. Procedure on applications under sections 70 and 72 (section
73 of Principal Act).
22. Appeals and references to arbitrator (section 74 of Princi-
pal Act).
23. Supplementary provisions as to licences (section 75 of Princi-
pal Act).
24. Evidence before Controller (section 92 of Principal Act).25. Appeals from decisions of Controller (section 96 of Princi-
pal Act).
26. Correction of errors (section 110 of Principal Act).27. Effect of restoring a withdrawn application under section 110
of the Principal Act.
28. Extension of time limits specified by Controller.29. Effect of European patent (section 119 of Principal Act).
30. Restoration where translation not filed under section 119(6).
31. Effect of filing application for European patent (section 120
of Principal Act).
32. Authentic text of European patents and patent applications
(section 121 of Principal Act).
33. Conversion of European patent application (section 122 of
Principal Act).
34. Transitional provisions (First Schedule to Principal Act).35. Directions referred to in section 45(3) (Second Schedule to
Principal Act).
36. Revocation.37. Interpretation (section 2 of 1996 Act).38. Relative grounds for refusal of registration (section 10 of
1996 Act).
39. Infringement of registered trade mark (section 14 of 1996
Act).
40. Infringing goods, material or articles: powers of seizure and
search (section 25 of 1996 Act).
41. Registration of transactions affecting registered trade mark
(section 29 of 1996 Act).
42. Claim to priority from other relevant overseas application
(section 41 of 1996 Act).
43. The Paris Convention (section 60 of 1996 Act).44. Appeals from the Controller (section 79 of 1996 Act).[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
45. Agreement establishing the World Trade Organisation – con-
sequential amendments to 1996 Act.
46. Transitional provisions (Third Schedule to 1996 Act).47. Costs of Controller in proceedings.48. References of dispute to arbitrator (section 367 of Copyright
and Related Rights Act 2000).
49. Infringement actionable by registered proprietor (section 57
of Industrial Designs Act 2001).
50. Appeals (section 84 of Industrial Designs Act 2001).51. Short title and commencement.
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34[No. 31.] [2006.] Patents (Amendment) Act 2006 .
Acts Referred to
Copyright and Related Rights Act 2000 2000, No. 28
Industrial Designs Act 2001 2001, No. 39Patents Act 1964 1964, No. 12Patents Act 1992 1992, No. 1Trade Marks Act 1996 1996, No. 6————————
Number 31of2006
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PATENTS (AMENDMENT) ACT 2006
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AN ACT TO GIVE EFFECT TO CERTAIN PROVISIONS OF
THE AGREEMENT ON TRADE-RELATED ASPECTS OFINTELLECTUAL PROPERTY RIGHTS ANNEXED TOTHE AGREEMENT ESTABLISHING THE WORLDTRADE ORGANISATION DONE AT MARRAKESH ON15 APRIL 1994; TO GIVE FURTHER EFFECT TO THEEUROPEAN PATENT CONVENTION SIGNED AT MUN-ICH ON 5 OCTOBER 1973; TO GIVE EFFECT TO THEPATENT LAW TREATY ADOPTED AT GENEVA ON 1JUNE 2000; TO MAKE FURTHER PROVISION INRESPECT OF MATTERS RELATING TO INTELLEC-TUAL PROPERTY AND FOR THOSE PURPOSES TOAMEND AND EXTEND THE PATENTS ACT 1992, THETRADE MARKS ACT 1996, THE COPYRIGHT ANDRELATED RIGHTS ACT 2000 AND THE INDUSTRIALDESIGNS ACT 2001 AND TO PROVIDE FOR RELATEDMATTERS.
[11th December , 2006]
BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:
1.—In this Act—
“Principal Act” means the Patents Act 1992;“1996 Act” means the Trade Marks Act 1996.
2.—Section 2 of the Principal Act is amended in subsection (1)—
(a) by inserting the following after the definition of “the Act
of 1964”:
“ ‘Agreement establishing the World Trade Organisation’
means the Agreement establishing the World TradeOrganisation done at Marrakesh on 15 April 1994, asamended or supplemented by any protocol to that Agree-ment which is for the time being in force in the State;”,
(b) by inserting the following after the definition of
“assignee”:
“ ‘Board of Appeal’ means a Board of Appeal referred to
in Article 21 of the European Patent Convention;”,
(c) in paragraph (i) of the definition of “designate”, by
inserting “, and includes a reference to a country being
5Definitions.
Interpretation
(section 2 ofPrincipal Act).S.2
Patentable
inventions (section9 of Principal Act).
Exceptions to
patentability(section 10 ofPrincipal Act).
6[No. 31.] [2006.] Patents (Amendment) Act 2006 .
treated as designated in pursuance of the European Pat-
ent Convention or the Treaty” after “invention”,
(d) by inserting the following after the definition of “divi-
sional application”:
“ ‘Enlarged Board of Appeal’ means the Enlarged Board
of Appeal referred to in Article 22 of the European Pat-ent Convention;”,
(e) in the definition of “European Patent Convention”, by
inserting “, as amended for the time being” after “1973”,
(f) by inserting the following after the definition of “the
Journal”:
“ ‘member of the World Trade Organisation’ means a
party to the Agreement establishing the World TradeOrganisation;”,
and
(g) by inserting the following after the definition of “the
Treaty”:
“ ‘TRIPs Agreement’ means the Agreement on Trade-
Related Aspects of Intellectual Property Rights annexedto the Agreement establishing the World TradeOrganisation;”.
3.—Section 9 of the Principal Act is amended—
(a) in subsection (1), by inserting “, in all fields of tech-
nology,” after “An invention”, and
(b) by deleting subsections (4) and (5).
4.—Section 10 of the Principal Act is amended—
(a) in paragraph ( a), by substituting “commercial exploi-
tation” for “publication or exploitation”,
(b) in paragraph ( b), by substituting “thereof;” for “thereof.”,
(c) by inserting the following after paragraph ( b):
“(c) a method for treatment of the human or animal
body by surgery or therapy and a diagnosticmethod practised on the human or animalbody.”,
(d) by renumbering the existing provision as subsection (1) of
that section, and
(e) by inserting the following:
“(2) Subsection (1)( c) shall not apply to products, in
particular substances or compositions, for use in any suchmethod.”.[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
5.—Section 11 of the Principal Act is amended by substituting the
following for subsection (4):
“(4) The provisions of subsections (2) and (3) shall not
exclude the patentability of any substance or composition, com-prised in the state of the art, for use in a method referred to insection 10(1)( c) provided that its use for any such method is not
comprised in the state of the art.
(5) The provisions of subsections (2) and (3) shall also not
exclude the patentability of any substance or compositionreferred to in subsection (4) for any specific use in any methodreferred to in section 10(1)( c), provided that such use is not
comprised in the state of the art.”.
6.—Section 23 of the Principal Act is amended by substituting the
following for that section:
“Date of filing
application.23.—(1) The date of filing of a patent appli-
cation shall be taken to be the earliest date onwhich the applicant paid the filing fee and fileddocuments which contain—
(a) an indication that a patent is sought,
(b) information identifying the applicant or
information sufficient to enable thatperson to be contacted by the Office,and
(c) (i) a description of the invention for
which a patent is sought evenwhere the description does notcomply with other requirementsof this Act or with any require-ments that may be prescribed, or
(ii) a reference, complying with any
relevant requirements that may beprescribed, to a previously filedapplication made by the applicantor the applicant’s predecessor intitle.
(2) It is immaterial for the purposes of subsec-
tion (1)( c)(i) whether the description of the inven-
tion concerned is in, or is accompanied by a trans-lation into, a language accepted by the Office inaccordance with any requirements that may beprescribed.
(3) If the Minister prescribes a later date for
payment of the filing fee under section 18(3), thedate of filing referred to in subsection (1) shall bethe date on which the documents referred to insubsection (1) are filed.
(4) Where documents filed at the Office do not
satisfy all of the conditions specified in subsection(1), the Controller shall as soon as practicable
7Novelty (section 11
of Principal Act).
Date of filing
application (section23 of PrincipalAct).S.6
8[No. 31.] [2006.] Patents (Amendment) Act 2006 .
after the filing of those documents notify the appli-
cant of the further documents required to be filedin order for the application to have a date of filing.
(5) Where documents filed at the Office satisfy
all the conditions specified in subsection (1), theController shall as soon as practicable after thefiling of the last of those documents notify theapplicant of—
(a) the date of filing the application, and
(b) the requirements that must be complied
with, and the periods within which theyare required by this Act or rules madeunder this Act to be complied with, ifthe application is not to be treated ashaving been withdrawn.
(6) If any drawing or a part of a description
referred to in the application is filed later than thedate of filing accorded to the application by virtueof subsection (1), the Controller shall give theapplicant an opportunity of requesting, within theprescribed period, that the date on which thedrawing or that part of the description was filedshall be treated as being, for the purposes of thisAct, the date of filing the application, and—
(a) if the applicant makes any such request,
the date of filing the drawing or thatpart of the description shall be sotreated,
(b) if the request is not made, any reference
to the drawing or that part of thedescription in the application shall bedeemed to be deleted.
(7) If any drawing or part of a description
referred to in the application has not been filed,the Controller shall invite the applicant to file thedrawing or that part of the description within theprescribed period, and—
(a) if the drawing or part of the description
is subsequently filed within the pre-scribed period, the date on which it isfiled shall be treated for the purposesof this Act as the date of filing theapplication,
(b) if the drawing or part of the description
is not so filed, any reference to thedrawing or part of the description inthe application shall be deemed to bedeleted.
(8) Where the applicant, subsequent to the date
of filing under subsection (1), files a missing partof the description or a missing drawing, subsection(6)(a) or (7)( a) shall not apply where—[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
(a) on or before the date which is the date
of filing the application under subsec-tion (1) a declaration is made undersection 26(1) in, or in connection with,the application, and
(b) the applicant makes a request for sub-
section (6)( a) or (7)( a), as the case may
be, not to apply and that request com-plies with the prescribed requirementsand is made within the prescribedperiod.
(9) An application which has a date of filing
under this section or is deemed to have a date offiling accorded to it by virtue of section 24 or 81shall be treated as withdrawn where any of thefollowing applies:
(a) the filing fee has not been paid within
the prescribed period;
(b) one or more claims or the abstract has
not been filed within the relevant pre-scribed period;
(c) where a reference to a previously filed
application has been filed as referredto in subsection (1)( c)(ii), the applicant
fails to file at the Office—
(i) a description of the invention for
which a patent is sought, beforethe end of the prescribed period,
(ii) a copy of the application referred
to, complying with the relevantprescribed requirements, beforethe end of the prescribed period.
(10) This section applies to patent applications
filed on or after the coming into operation of thissection.”.
7.—Section 25 of the Principal Act is amended—
(a) in subsection (1), by the insertion after “the Paris Conven-
tion for the Protection of Industrial Property” of “or tothe Agreement establishing the World TradeOrganisation”,
(b) in subsection (5), by the insertion after “the Paris Conven-
tion for the Protection of Industrial Property” of “orwhich is not a party to the Agreement establishing theWorld Trade Organisation”, and
(c) after subsection (5), by the insertion of the following:
“(6) In this section a ‘state party to the Agreement
establishing the World Trade Organisation’ means amember of the World Trade Organisation and, for the pur-poses of subsection (5), every country or territory shall be
9S.6
Priority right
(section 25 ofPrincipal Act).S.7
Withdrawal of
application (section33 of PrincipalAct).
Reinstatement of
applications.
10[No. 31.] [2006.] Patents (Amendment) Act 2006 .
taken to be a state in the case of which an order may be
made under that subsection.”.
8.—Section 33 of the Principal Act is amended by inserting the
following after subsection (1):
“(1A) Subsection (1) does not affect the power of the Con-
troller under section 110 to correct an error or mistake in thewithdrawal of an application.”.
9.—Part II of the Principal Act is amended by inserting the follow-
ing sections after section 35 but in Chapter IV of that Part:
“Reinstatement
of applications.35A.—(1) This section shall not apply to a pat-
ent application which has lapsed by reason of thefailure to pay any renewal fee and section 35(3)shall continue to apply to any such application.
(2) Where an application for a patent is refused
or is treated as having been withdrawn, as a directconsequence of a failure by the applicant to com-ply with a requirement of this Act or rules madethereunder within a period which is prescribed orspecified by the Controller, subject to subsection(3), the Controller shall reinstate the applicationonly if—
(a) the applicant requests the Controller to
do so,
(b) the request complies with the prescribed
requirements, and
(c) the Controller is satisfied that the said
failure to comply occurred despitereasonable care having been taken toso comply.
(3) The Controller shall not reinstate the appli-
cation if the period referred to in subsection (2) isprescribed or specified by the Controller—
(a) in relation to any proceedings before
the Controller pursuant to Part VIII,
(b) for the purposes of section 25(1), or
(c) for the purposes of a request under this
section or section 118A.
(4) Where the application for a patent was
made by 2 or more persons jointly, a request undersubsection (2) may, with the leave of the Control-ler, be made by one or more of them without join-ing the others.
(5) Where the application has been published
under section 28 and it appears to the Controllerthat reasonable care was taken to comply with therequirement within the prescribed period or, as[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
the case may be, the period specified by the Con-
troller, the Controller shall publish notice of arequest under subsection (2) in the Journal andwithin the prescribed period any person may givenotice to the Controller of opposition thereto.
(6) If notice of opposition is duly given under
this section, the Controller shall notify the appli-cant and determine the question.
(7) Where an application is reinstated under
this section the applicant shall comply with therequirement referred to in subsection (2) withinthe further period specified by the Controller inmaking the order to reinstate the application,which further period shall not be less than 2months.
(8) Where the applicant fails to comply with
subsection (7) the application shall be treated ashaving been withdrawn on the expiration of theperiod referred to in that subsection.
Effect of
reinstatement.35B.—(1) Where an application is reinstated
under section 35A—
(a) anything done under or in relation to
the application during the periodbetween termination and reinstate-ment shall be treated as valid,
(b) in a case where the application has been
published under section 28 before itstermination, anything done during theperiod referred to in paragraph ( a),
which would have constituted aninfringement of the rights conferred bypublication of the application if thetermination had not occurred, shall betreated as an infringement of thoserights if it was a continuation or rep-etition of an earlier act infringingthose rights,
(c) in a case where the application has been
published under section 28 before itstermination and, after the terminationand before publication of a notice ofrequest for its reinstatement, aperson—
(i) began in good faith to do an act
which would have constituted aninfringement of the rights con-ferred by publication of the appli-cation if the termination had nottaken place, or
(ii) made, in good faith, effective and
serious preparations to do suchan act,
11S.9S.9
Restoration of
lapsed patents(section 37 ofPrincipal Act).
12[No. 31.] [2006.] Patents (Amendment) Act 2006 .
the person shall have the right to con-
tinue to do the act concerned or, as thecase may be, to do that act, notwith-standing the reinstatement of theapplication and the grant of the patent.
(2) Paragraph ( c) of subsection (1) does not
extend to granting a licence to any person to doan act referred to in that paragraph.
(3) If the act referred to in paragraph ( c)o f
subsection (1) was done, or the preparations weremade to do it, in the course of a business, the per-son entitled to the right conferred by the said para-graph ( c) may—
(a) authorise that act to be done by any
partner of that person for the timebeing in that business, and
(b) assign the right, or transmit that right on
death (or in the case of a body corpor-ate on its dissolution), to any personwho acquires that part of the businessin the course of which the act was doneor preparations had been made to doit.
(4) Where a product is disposed of by any per-
son to another person in exercise of a right con-ferred by paragraph ( c) of subsection (1) or by
subsection (3), that other person and any personclaiming through that other person shall beentitled to deal with the product in the same wayas if it had been disposed of by the applicant.
(5) In this section ‘termination’, in relation to
an application, means—
(a) the refusal of the application, or
(b) the application is treated as having
been withdrawn.”.
10.—The Principal Act is amended in section 37—
(a) by substituting the following for subsection (7):
“(7) An order under this section for the restoration of
a patent may be made subject to such conditions as theController thinks fit, including, in particular, a conditionrequiring the entry in the register of any matter in respectof which the provisions of this Act as to entries in theregister is not complied with and if any condition to whichan order under this section is subject is not complied withby the proprietor of the patent, the Controller may revokethe order and give such directions consequential on therevocation as he thinks fit.”,
and
(b) by inserting the following after subsection (7):[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
“(8) An order under this section for the restoration of
a patent shall have the following effect:
(a) anything done under or in relation to the patent
during the period beginning on the date onwhich the patent lapsed and ending on the dateof an order under this section shall be treatedas valid;
(b) anything done during the period referred to in
paragraph ( a) which would have constituted an
infringement if the patent had not lapsed shallbe treated as an infringement—
(i) if it was done at a time when it was possible
for the patent to be renewed during theperiod of extension specified for the pur-pose of section 36(3), or
(ii) if it was a continuation or repetition of an
earlier infringing act;
(c) where, after the expiration of the period of
extension specified for the purpose of section36(3) and before the date of publication of theapplication for restoration of the patent in theJournal under subsection (4), a person—
(i) began in good faith to do an act which
would constitute an infringement of thepatent if it had not lapsed, or
(ii) made in good faith effective and serious
preparations to do such an act,
the person shall have the right to continue to
do the act concerned or, as the case may be, todo that act, notwithstanding the restoration ofthe patent.
(9) Paragraph ( c) of subsection (8) does not extend to
granting a licence to any person to do an act referred toin that paragraph.
(10) If the act referred to in paragraph ( c) of subsection
(8) was done, or the preparations were made to do it, inthe course of a business, the person entitled to the rightconferred by the said paragraph (c) may—
(a) authorise that act to be done by any partner of
that person for the time being in that busi-ness, and
(b) assign the right, or transmit that right on death
(or in the case of a body corporate on itsdissolution), to any person who acquires thatpart of the business in the course of which theact was done or preparations had been madeto do it.
(11) Where a product is disposed of by any person to
another person in exercise of a right conferred by para-graph ( c) of subsection (8) or by subsection (10), that other
13S.10S.10
Amendment after
grant (section 38 ofPrincipal Act).
Limitation of effect
of patent (section42 of PrincipalAct).
Extent of protection
(section 45 ofPrincipal Act).
Relief for
infringement ofpartially validpatent (section 50of Principal Act).
Remedy for
groundless threatsof infringementproceedings(section 53 ofPrincipal Act).
Grounds for
revocation (section58 of PrincipalAct).
14[No. 31.] [2006.] Patents (Amendment) Act 2006 .
person and any person claiming through that other person
shall be entitled to deal with the product in the same wayas if it had been disposed of by the registered proprietorof the patent.”.
11.—Section 38 of the Principal Act is amended by inserting the
following after subsection (6):
“(7) In considering whether or not to allow an amendment
proposed under this section the Court or the Controller shallhave regard to any relevant principles applicable under theEuropean Patent Convention.”.
12.—Section 42 of the Principal Act is amended—
(a) in paragraph ( d), by the insertion after “the Union of Paris
for the Protection of Industrial Property” of “or in anyof the members of the World Trade Organisation”, and
(b) in paragraph ( e), by the insertion after “the Union of Paris
for the Protection of Industrial Property” of “or ofmembers of the World Trade Organisation”.
13.—Section 45 of the Principal Act is amended in subsections (1)
and (2) by deleting “the terms of” in each place where it occurs.
14.—Section 50 of the Principal Act is amended by inserting the
following after subsection (3):
“(4) The Court may also grant relief under this section in the
case of a European patent designating the State on conditionthat the claims are limited to the Court’s satisfaction by theEuropean Patent Office at the request of the proprietor.”.
15.—Section 53 of the Principal Act is amended by substituting
the following for subsection (3):
“(3) Proceedings may not be brought under this section as
regards—
(a) a threat to bring proceedings for an infringement
alleged to consist of making or importing a productfor disposal or of using a process, or
(b) a threat, made to a person who made or imported
a product for disposal or used a process, to bringproceedings for an infringement alleged to consist ofdoing anything else in relation to that product orprocess.”.
16.—Section 58 of the Principal Act is amended by the substitution
for paragraph ( d) of the following:
“(d) the protection conferred by the patent has been
extended by an amendment which should not havebeen allowed;”.[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
17.—Section 59 of the Principal Act is amended—
(a) in subsection (3), by deleting “, under section 38,”, and
(b) by inserting the following after subsection (3):
“(4) For the purposes of subsection (3), the reference
to the specification being amended is to its being amendedunder section 38 and also, in the case of a European patentdesignating the State, to its being amended under any pro-vision of the European Patent Convention under whichthe claims of the patent may be limited by amendment atthe request of the proprietor.”.
18.—Section 68 of the Principal Act is amended in paragraph ( c)
of subsection (2) by the substitution for “(otherwise than by theimportation of goods)” of “(otherwise than by the importation ofgoods from a country which is not a member of the World TradeOrganisation)”.
19.—Section 70 of the Principal Act is amended by the substitution
for that section of the following:
“Compulsory
licences.70.—(1) At any time after the expiration of the
period of three years, or such other period as maybe prescribed, beginning on the date of the publi-cation of notice of grant of a patent any personmay apply to the Controller for a licence underthe patent, or for an entry in the register to the
effect that licences under the patent are to beavailable as of right, on any or all of the follow-ing grounds:
(a) that—
(i) a demand in the State for the sub-
ject matter of the patent is notbeing met or is not being met onreasonable terms, or
(ii) a demand in the State for a product
which is protected by the patentis being met by importation otherthan from a member of the WorldTrade Organisation;
(b) that the establishment or development
of commercial or industrial activities inthe State is unfairly prejudiced.
(2) If an invention protected by a patent (in this
section referred to as ‘the second patent’) cannotbe exploited in the State without infringing rightsderiving from another patent (in this sectionreferred to as ‘the first patent’) the proprietor ofthe second patent may apply to the Controller fora licence under the first patent to the extent neces-sary for the exploitation of the invention con-cerned, provided that such invention involves an
15Examination of
application forrevocation (section59 of PrincipalAct).
Application for
entry in registerthat licences ofright are available(section 68 ofPrincipal Act).
Compulsory
licences (section 70of Principal Act).S.19
16[No. 31.] [2006.] Patents (Amendment) Act 2006 .
important technical advance of considerable econ-
omic significance in relation to the inventionclaimed in the first patent.
(3) Where an application is made under this
section, if the Controller is satisfied—
(a) that any of the grounds specified in sub-
section (1) are established, or
(b) that an invention protected by a patent
cannot be exploited without infringingrights deriving from the first patent asreferred to in subsection (2),
the Controller may make an order in accordance
with the application and, where the order is forthe grant of a licence, the order may require thelicence to be granted upon such terms as the Con-troller thinks fit, provided that:
(i) any licence granted shall be non-
exclusive;
(ii) any licence granted shall be predomi-
nantly for the supply of the market inthe State;
(iii) any licence granted may only be
assigned with the prior authorisation ofthe Controller and with that part of theenterprise or goodwill which uses thepatented invention and, in the case ofa licence granted on an applicationunder subsection (2) in respect of thefirst patent, the licence may only beassigned by the proprietor of thesecond patent in conjunction with theassignment of the second patent;
(iv) a licence shall only be granted subject
to the payment to the proprietor of thepatent of adequate remuneration inthe circumstances of the case, takinginto account the economic value ofthe licence;
(v) the scope and duration of the licence
shall be limited to the purpose forwhich it is granted;
(vi) any licence granted on an application
under subsection (1) in respect of apatent which relates to semi-conductortechnology shall only be for publicnon-commercial use;
(vii) no order shall be made on an appli-
cation under subsection (2) unless theproprietor of the second patent is ableand willing to grant the proprietor ofthe first patent and the licensee of that[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
proprietor a cross-licence, on reason-
able terms, to use the inventionclaimed in the second patent.
(4) The Controller shall, in determining
whether to make an order pursuant to an appli-cation under this section, take account of the fol-lowing matters, namely—
(a) the nature of the relevant invention, the
time which has elapsed since the grantof the patent and the measures alreadytaken by the proprietor or any licenseeto make full use of the invention,
(b) the ability of any person to whom a
licence would be granted under theorder to exploit the patent to thepublic advantage, and
(c) the risks to be undertaken by that per-
son in providing capital and exploitingthe patent if the application is granted.
(5) Section 68(3) shall apply to a licence
granted pursuant to an order under this section asit applies to a licence granted by virtue of section68.”.
20.—Section 71 of the Principal Act is amended by the substitution
for that section of the following section:
“Provisions as
to compulsorylicences.71.—(1) Where an order for the grant of a
licence or for an entry in the register has beenmade pursuant to an application under section 70,any person may apply to the Controller to amendor cancel the order on the grounds that the circum-stances which led to the order have changed orhave ceased to exist and are unlikely to recur.
(2) Where the Controller is satisfied that the
circumstances referred to in subsection (1) havechanged or have ceased to exist and are unlikelyto recur, the Controller may order the amendmentor cancellation of the existing order upon suchterms as the Controller thinks fit, including, inparticular, terms which provide for the protectionof the interests of the licensee concerned.
(3) Section 73 shall, in so far as it is applicable,
apply in relation to an application under subsec-tion (1).
(4) Where, following an application under sub-
section (1), an order is amended, subsections (1),(2) and (3) shall, in so far as they are applicable,apply in relation to the order so amended.”.
17S.19
Provisions as to
compulsory licences(section 71 ofPrincipal Act).Procedure on
applications undersections 70 and 72(section 73 ofPrincipal Act).
Appeals and
references toarbitrator (section74 of PrincipalAct).
Supplementary
provisions as tolicences (section 75of Principal Act).
Evidence before
Controller (section92 of PrincipalAct).
Appeals from
decisions ofController (section96 of PrincipalAct).
18[No. 31.] [2006.] Patents (Amendment) Act 2006 .
21.—Section 73 of the Principal Act is amended—
(a) in subsection (1), by the insertion after “upon which the
application is based” of “and shall be accompanied byevidence indicating that the applicant sought to obtain alicence from the proprietor of the patent but has beenunable to obtain such a licence on reasonable terms andwithin a reasonable time”, and
(b) after subsection (1), by the insertion of the following:
“(1A) The Controller may, when so requested by the
applicant, dispense with the evidence referred to in subsec-tion (1)—
(a) where there exists a national emergency or
other circumstances of extreme urgency, or
(b) in the case of an application for a licence for
public non-commercial use:
Provided that the proprietor of the relevant patent has
been informed as soon as reasonably practicable of theintention of the applicant to apply to the Controller for alicence under the patent.”.
22.—Section 74 of the Principal Act is amended in subsection (1)
by the substitution for “section 70 or 72” of “section 70, 71 or 72”.
23.—Section 75 of the Principal Act is amended—
(a) in subsections (2) and (3), by the substitution for “section
70 or 72” of “section 70, 71 or 72” in each place itoccurs, and
(b) in subsection (3), by the insertion after “European Econ-
omic Community” of “or with the TRIPs Agreement”.
24.—Section 92 of the Principal Act is amended in subsection (3)
by inserting “or by any other enactment” after “by this Act”.
25.—Section 96 of the Principal Act is amended in subsection (6)—
(a) by renumbering that subsection as paragraph ( a) of that
subsection,
(b) by inserting “and subject to paragraph ( b)” after “this
Act”, and
(c) by inserting the following paragraph:
“(b) Where a written statement of the grounds of the
order or decision of the Controller, in the exer-cise of his discretionary power, has beenrequested in the prescribed manner and withinthe prescribed period by a party to the pro-ceedings, the period of three months shallbegin on the date on which the written state-ment is furnished to the party requesting it.”.[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
26.—Section 110 of the Principal Act is amended—
(a) by inserting the following after subsection (2):
“(2A) Where the Controller is requested to correct an
error or mistake in a withdrawal of an application for apatent, which application was published under section 28and details of the withdrawal were published by the Con-troller, the Controller shall publish notice of the requestin the Journal.
(2B) Where the Controller has published a notice in
accordance with subsection (2A) any person may within aprescribed period give notice to the Controller of oppo-sition to the request.
(2C) If notice of opposition is given under subsection
(2B), the Controller shall notify the person who made therequest and shall determine the matter.
(2D) Where the Controller decides to allow a request
under this section to correct an error or mistake in a with-drawal of an application for a patent and notice of therequest was published in the Journal under subsection(2A), the Controller shall make an order restoring theapplication and publish notice of the restoration in theJournal.”,
and
(b) in subsection (3), by inserting “other than a request to cor-
rect an error or mistake in a withdrawal of an applicationfor a patent referred to in subsection (2A),” after “sub-section (1),”.
27.—The Principal Act is amended by inserting the following
section after section 110:
“Effect of
restoring awithdrawnapplicationunder section110.110A.—(1) Where—
(a) the Controller is requested to correct an
error or mistake in a withdrawal of anapplication for a patent, and
(b) an application for a patent has been
restored in accordance with thatrequest,
the following provisions apply:
(i) anything done under or in relation to
the application during the periodbetween the application being with-drawn and its restoration shall betreated as valid;
(ii) where the Controller has published
notice of the request referred to insection 110(2A), anything done duringthe period referred to in subparagraph(i) which would have constituted aninfringement of the rights conferred by
19Correction of errors
(section 110 ofPrincipal Act).
Effect of restoring a
withdrawnapplication undersection 110 of thePrincipal Act.S.27
20[No. 31.] [2006.] Patents (Amendment) Act 2006 .
publication of the application if the
application had not been withdrawnshall be treated as an infringement ofthose rights if it was a continuation orrepetition of an earlier act infringingthose rights;
(iii) where the Controller has published
notice of the request referred to insection 110(2A) and, after the with-drawal of the application and beforepublication of the notice, a person—
(I) began in good faith to do an act
which would have constituted aninfringement of the rights con-ferred by publication of the appli-cation if the withdrawal had nottaken place, or
(II) made, in good faith, effective and
serious preparations to do suchan act,
the person shall have the rights con-
ferred by subsection (2).
(2) The person referred to in subsection (1)(iii)
shall have the right to continue to do the act con-cerned or, as the case may be, to do that act, not-withstanding the restoration of the application andthe grant of the patent.
(3) Subsection (2) does not extend to granting
a licence to any person to do an act referred to insubsection (1)(iii).
(4) If the act referred to in subsection (1)(iii)
was done, or the preparations were made to do it,in the course of a business, the person entitled tothe right conferred by subsection (2) may—
(a) authorise that act to be done by any
partner of that person for the timebeing in that business, and
(b) assign the right, or transmit that right on
death (or in the case of a body corpor-ate on its dissolution), to any personwho acquires that part of the businessin the course of which the act was doneor preparations had been made to doit.
(5) Where a product is disposed of by any per-
son to another person in exercise of a right con-ferred by subsection (2) or (4) that other personand any person claiming through that other personshall be entitled to deal with the product in thesame way as if it had been disposed of by theapplicant.”.[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
28.—The Principal Act is amended by inserting the following
section after section 118 but in Part XI:
“Extension of
time limitsspecified byController.118A.—(1) If an applicant for, or proprietor of,
a patent fails to observe any time limit specifiedby the Controller the applicant or proprietor mayrequest an extension of time in accordance withthe prescribed requirements.
(2) Subject to subsections (5) and (6), the Con-
troller shall grant the request, provided that theprescribed requirements are complied with.
(3) An extension of a time limit granted under
subsection (2) shall expire at the end of the periodprescribed for the purposes of this section.
(4) If the request for an extension of time is
granted, the legal consequences of the failure toobserve the time limit specified by the Controllershall be deemed not to have ensued.
(5) Where a time limit has been extended
under subsection (2) any further request for anextension of time may be granted by the Control-ler subject to the conditions that the Controllersees fit.
(6) This section does not apply to proceedings
before the Controller pursuant to Part VIII.”.
29.—Section 119 of the Principal Act is amended—
(a) in subsection (2), by inserting “, limitation” after
“amendment”,
(b) in subsection (4)—
(i) by inserting “, limited” after “amended” and
(ii) by inserting “or limitation” after “amendment”,
(c) in subsection (5)—
(i) by substituting the following for paragraph ( a):
“(a) under the European Patent Convention a
European patent designating the State—
(i) is revoked for failure to observe a time
limit and is subsequently restored, or
(ii) is revoked by the Board of Appeal and
is subsequently restored by theEnlarged Board of Appeal,
and”,
and
(ii) by substituting “the person shall have the rights con-
ferred by subsections (8)( c) and (10) of section 37
21Extension of time
limits specified byController.
Effect of European
patent (section 119of Principal Act).S.29
Restoration where
translation not filedunder section119(6).
22[No. 31.] [2006.] Patents (Amendment) Act 2006 .
and subsections (9) and (11) of that section shall
apply accordingly.” for “he shall have the same pro-tection as if an order had been made under section37(7).”,
and
(d) in subsection (6)( b)—
(i) by inserting “or a limitation” after “amendment”, and
(ii) by inserting “or limited” after “amended”.
30.—The Principal Act is amended by inserting the following
section after section 119:
“Restoration
wheretranslation notfiled undersection 119(6).119A.—(1) Where a translation of the specifi-
cation concerned is not filed within the period pre-scribed under section 119(6), an application maybe made to the Controller to restore the effect ofsection 119(1).
(2) An application under this section shall con-
tain a statement (to be verified in the manner thatmay be prescribed) setting out the circumstances
which led to the failure to file the translationreferred to in subsection (1), and the Controllermay require from the applicant any further evi-dence that he considers necessary.
(3) An application under this section shall be
accompanied by the translation together with theprescribed fee.
(4) An application under this section shall be
made within the prescribed period and shall beaccompanied by the prescribed application fee.
(5) Where the Controller is satisfied that
reasonable care was taken to ensure that the trans-lation was filed within the period prescribed undersection 119(6), the Controller shall advertise theapplication in the Journal, and within the pre-scribed period any person may give notice to theController of opposition thereto.
(6) Where notice of opposition is duly given
under this section, the Controller shall notify theapplicant and determine the issue.
(7) Where the Controller decides to allow an
application under this section, he shall make a res-toration order and publish notice of the resto-ration in the Journal.
(8) Where, in the period between the expir-
ation of the prescribed period under section 119(6)for filing a translation and the date on which theapplication under this section was published in theJournal, a person—[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
(a) began in good faith to do an act which
would have constituted an infringe-ment of the rights conferred by thepatent had it been in force, or
(b) made, in good faith, effective and
serious preparations to do such an act,
subsections (8A) to (8D) shall apply.
(8A) The person referred to in subsection (8)
shall have the right to continue to do the act con-cerned or, as the case may be, to do that act, not-withstanding the restoration of the effect ofsection 119(1).
(8B) Subsection (8A) does not extend to grant-
ing a licence to any person to do an act referredto in subsection (8).
(8C) If the act referred to in subsection (8) was
done, or the preparations were made to do it, inthe course of a business, the person entitled to theright conferred by subsection (8A) may—
(a) authorise that act to be done by any
partner of that person for the timebeing in that business, and
(b) assign the right, or transmit that right on
death (or in the case of a body corpor-ate on its dissolution), to any personwho acquires that part of the businessin the course of which the act was doneor preparations had been made to doit.
(8D) Where a product is disposed of by any
person to another person in exercise of a right con-ferred by subsection (8A) or (8C) that other per-son and any person claiming through that otherperson shall be entitled to deal with the productin the same way as if it had been disposed of bythe registered proprietor of the patent.
(9) Where the Controller refuses an application
under this section, the patent shall be treated asalways having been void.
(10) Where a restoration order is made by the
Controller, a translation filed under subsection (3)shall be published.”.
31.—Section 120 of the Principal Act is amended—
(a) by substituting the following for subsection (4):
“(4) Subsections (1), (2) and (3) shall cease to apply to
an application for a European patent designating theState, except as provided for in subsection (4A), if—
23S.30
Effect of filing
application forEuropean patent(section 120 ofPrincipal Act).S.31
24[No. 31.] [2006.] Patents (Amendment) Act 2006 .
(a) the application is refused or withdrawn or
deemed to be withdrawn, or
(b) the designation of the State in the application is
withdrawn or deemed to be withdrawn,
but shall apply again if the rights of the applicant are re-
established under the European Patent Convention, asfrom the re-establishment of those rights.”,
(b) by inserting the following after subsection (4):
“(4A) ( a) The occurrence of any of the events referred
to in subsection (4)( a)o r( b) shall not affect
the continued operation of section 11(3) inrelation to matter contained in an applicationfor a European patent designating the Statewhich by virtue of that provision has becomepart of the state of the art as regards otherinventions.
(b) The occurrence of any of the events mentioned
in subsection (4)( b) shall not prevent matter
contained in the application for a Europeanpatent designating the State becoming part ofthe state of the art by virtue of section 11(3) asregards other inventions, where the eventoccurs before the publication of thatapplication.
(c) Paragraph ( b) shall apply only to European pat-
ents and European patent applications filedafter the coming into operation of thatparagraph.”,
(c) by substituting the following for subsection (5):
“(5) Where between the cesser, by virtue of subsection
(4), of subsections (1), (2) and (3) as regards an applicationfor a European patent and the re-establishment of therights of the applicant, a person begins in good faith to doan act which would, apart from section 77, constitute aninfringement of the rights conferred by publication of theapplication if subsections (1), (2) and (3) then applied, ormakes in good faith effective and serious preparations todo such an act, subsections (5A) to (5D) shall apply.
(5A) The person referred to in subsection (5) shall have
the right to continue to do the act concerned or, as thecase may be, to do that act, notwithstanding subsections(1) to (3) applying again and notwithstanding the grant ofthe patent.
(5B) Subsection (5A) does not extend to granting a
licence to any person to do an act referred to in subsec-tion (5).
(5C) If the act referred to in subsection (5) was done,
or the preparations were made to do it, in the course ofa business, the person entitled to the right conferred bysubsection (5A) may—[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
(a) authorise that act to be done by any partner of
that person for the time being in that busi-ness, and
(b) assign the right, or transmit that right on death
(or in the case of a body corporate on itsdissolution), to any person who acquires thatpart of the business in the course of which theact was done or preparations had been madeto do it.
(5D) Where a product is disposed of by any person to
another person in exercise of a right conferred by subsec-tion (5A) or (5C) that other person and any person claim-ing through that other person shall be entitled to deal withthe product in the same way as if it had been disposed ofby the applicant.”,
and
(d) by substituting the following for subsection (7):
“(7) ( a) An application for a European patent may be
filed at the Office. The Office shall forward anapplication to the European Patent Officewithin the time specified in the ImplementingRegulations to the European PatentConvention.
(b) This provision shall not apply in respect of an
application which is a European divisionalapplication under the European PatentConvention.”.
32.—Section 121 of the Principal Act is amended—
(a) in subsection (4), by substituting “subsections (5) to (8)
shall apply.” for “he shall have the same protection as ifan order had been made under section 37(7).”,
(b) by inserting the following subsections after subsection (4):
“(5) The person referred to in subsection (4) shall have
the right to continue to do the act concerned or, as the casemay be, to do that act, notwithstanding the publication ofthe corrected translation and notwithstanding the grant ofthe patent.
(6) Subsection (5) does not extend to granting a licence
to any person to do an act referred to in subsection (4).
(7) If the act referred to in subsection (4) was done, or
the preparations were made to do it, in the course of abusiness, the person entitled to the right conferred by sub-section (5) may—
(a) authorise that act to be done by any partner of
that person for the time being in that busi-ness, and
(b) assign the right, or transmit that right on death
(or in the case of a body corporate on its
25S.31
Authentic text of
European patentsand patentapplications(section 121 ofPrincipal Act).S.32
Conversion of
European patentapplication (section122 of PrincipalAct).
Transitional
provisions (FirstSchedule toPrincipal Act).
Directions referred
to in section 45(3)(Second Scheduleto Principal Act).
26[No. 31.] [2006.] Patents (Amendment) Act 2006 .
dissolution), to any person who acquires that
part of the business in the course of which theact was done or preparations had been madeto do it.
(8) Where a product is disposed of by any person to
another person in exercise of a right conferred by subsec-tion (5) or (7) that other person and any person claimingthrough that other person shall be entitled to deal with theproduct in the same way as if it had been disposed of bythe registered proprietor of the patent or the applicant, asthe case may be.”.
33.—Section 122 of the Principal Act is amended in subsection (1)
by substituting “Where an application designating the State isdeemed withdrawn under the provisions of the European PatentConvention because it has not been forwarded to the European Pat-ent Office in due time,” for “Where under the European Patent Con-vention an application for a European Patent designating the Stateis deemed to have been withdrawn because it has, not within theperiod required by the said Convention, been received by the Euro-pean Patent Office,”.
34.—The First Schedule to the Principal Act is amended by the
repeal of paragraph 4.
35.—The Principal Act is amended by substituting the following
for the Second Schedule:
“SECOND SCHEDULE
Directions referred to in section 45(3)
General principles
Section 45 should not be interpreted in the sense that the
extent of the protection conferred by a patent is to beunderstood as that defined by the strict, literal meaning ofthe wording used in the claims, the description and draw-ings being employed only for the purpose of resolving anambiguity found in the claims. Neither should it be inter-preted in the sense that the claims serve only as a guidelineand that the actual protection conferred may extend towhat, from a consideration of the description and drawingsby a person skilled in the art, the patent proprietor hascontemplated. On the contrary, it is to be interpreted asdefining a position between these extremes which com-bines a fair protection for the patent proprietor with areasonable degree of certainty for third parties.
Equivalents
For the purpose of determining the extent of protection
conferred by a patent, due account shall be taken of anyelement which is equivalent to an element specified inthe claims.”.[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
36.—The Patents (International Arrangements) Order, 1996 (S.I.
No. 38 of 1996), and the Patents Act 1964 (Section 93) (DeclarationOrder), 1976 (S.I. No. 314 of 1976), are revoked.
37.—Section 2 of the 1996 Act is amended in subsection (1) by
inserting the following after the definition of “the Act of 1963”:
“ ‘Agreement establishing the World Trade Organisation’ has
the meaning assigned by section 60;”.
38.—Section 10 of the 1996 Act is amended by substituting the
following for subsection (3):
“(3) A trade mark which is identical with or similar to an
earlier trade mark shall not be registered if, or to the extentthat, the earlier trade mark has a reputation in the State (or, inthe case of a Community trade mark, in the Community) andthe use of the later trade mark without due cause would takeunfair advantage of, or be detrimental to, the distinctive charac-ter or reputation of the earlier trade mark.”.
39.—Section 14 of the 1996 Act is amended by substituting the
following for subsection (3):
“(3) A person shall infringe a registered trade mark if that
person uses in the course of trade in relation to goods or servicesa sign which is identical with or similar to the trade mark wherethe trade mark has a reputation in the State and the use of thesign, being without due cause, takes unfair advantage of, or isdetrimental to, the distinctive character or the reputation of thetrade mark.”.
40.—Section 25 of the 1996 Act is amended—
(a) by substituting the following for subsection (2):
“(2) If a Judge of the District Court is satisfied by infor-
mation on oath that there is reasonable ground for sus-pecting that infringing goods, material or articles are onany premises or place in the course of business or other-wise for the purpose of dealing in any way, the Judge maygrant a search warrant authorising a member of the GardaSı´ocha´na, accompanied by such other members of the
Garda Sı ´ocha´na or other person or persons as that
member thinks proper, at any time or times within 28 daysfrom the date of the issue of the warrant on production,where requested, of that warrant, to enter and search thepremises or place specified in the warrant using reasonableforce where necessary, and to do all or any of the follow-ing acts:
(a) to seize any such goods, material or articles;
(b) to make an inventory or prepare other evidence
of infringement of a registered trade mark orpotential infringement of a registered trademark;
(c) to seize anything found there which that
member believes on reasonable grounds may
27Revocation.
Interpretation
(section 2 of 1996Act).
Relative grounds
for refusal ofregistration (section10 of 1996 Act).
Infringement of
registered trademark (section 14 of1996 Act).
Infringing goods,
material or articles:powers of seizureand search (section25 of 1996 Act).S.40
Registration of
transactionsaffecting registeredtrade mark (section29 of 1996 Act).
Claim to priority
from other relevantoverseas application(section 41 of 1996Act).
The Paris
Convention (section60 of 1996 Act).
Appeals from the
Controller (section79 of 1996 Act).
28[No. 31.] [2006.] Patents (Amendment) Act 2006 .
be required to be used in evidence in any pro-
ceedings brought in respect of an offenceunder this Act;
(d) to require any person found there to give his or
her name and address.”,
(b) by inserting the following after subsection (2):
“(2A) A warrant issued under this section may author-
ise persons, including the registered proprietor or his orher designated representative, to accompany and assist anymember of the Garda Sı ´ocha´na in executing the warrant
or in collating any inventory or other evidence.”,
and
(c) in subsection (4), by inserting “or place” after “premises”.
41.—Section 29 of the 1996 Act is amended in subsection (2) by
inserting the following after paragraph ( c):
“(ca) matters arising from the operation of law which affect
the proprietorship of a registered trade mark;”.
42.—Section 41 of the 1996 Act is amended in subsection (2) by
inserting “, or the successor in title to such a person,” after “on aperson”.
43.—Section 60 of the 1996 Act is amended in subsection (1)—
(a) in paragraph ( a), by deleting “and”,
(b) by inserting the following after paragraph ( a):
“(aa) “Agreement establishing the World Trade
Organisation” means the Agreement estab-lishing the World Trade Organisation done atMarrakesh on 15 April 1994, as amended orsupplemented by any protocol to that Agree-ment which is for the time being in force inthe State;”,
and
(c) in paragraph ( b), by substituting “the Paris Convention or
the Agreement establishing the World Trade Organis-ation” for “that Convention”.
44.—Section 79 of the 1996 Act is amended by substituting the
following for subsection (1):
“(1) ( a) Save as otherwise provided by this Act and subject to
paragraph ( b), except by leave of the Court, an
appeal shall lie to the Court from a decision of theController under this Act within three months fromthe date of the decision.[2006.] [ No. 31.] Patents (Amendment) Act 2006 .
(b) Where a written statement of the grounds of the
decision of the Controller, in the exercise of his dis-cretionary power, has been requested in the pre-scribed manner and within the prescribed period bya party to the proceedings, the period of threemonths shall begin on the date on which the writtenstatement is furnished to the party requesting it.”.
45.—Each provision of the 1996 Act specified in column (1) of the
Table to this section is amended as specified in column (2) of that
Table opposite the mention of that provision in column (1) .
TABLE
Provisions Affected Amendment
(1) (2)
Sections 11(1)( c), 60(2), 61(1) and (2), Insert “or the Agreement establishing
62(2) and (3) and 63(2) the World Trade Organisation” after
“the Paris Convention” in each placewhere it occurs.
Section 64 Insert the following subsection after
subsection (4):
“(5) A reference in this section toArticle 6 terof the Paris Convention
shall be read as a reference to thatArticle as applied by the Agreementestablishing the World TradeOrganisation.”.
46.—The Third Schedule to the 1996 Act is amended by inserting
the following after paragraph 15:
“Transitional Provisions
16. The amendment effected by section 45 of the Patents
(Amendment) Act 2006 to section 61(2) shall not affect the con-
tinuation of any bona fide use of a trade mark begun before 1January 1996.
17. The amendment effected by section 43(c) of the Patents
(Amendment) Act 2006 and the amendment effected by section
45of the said Act to section 63 shall not affect the rights of a
person whose bona fide use of a trade mark to which section 63applies and which is protected under the Agreement establishingthe World Trade Organisation began before 1 January 1996.”.
47.—The Copyright and Related Rights Act 2000 is amended by
inserting the following after section 364:
“Costs of
Controller inproceedings.364A.—In any proceedings before any court
under this Act, the Controller shall not beawarded or be ordered to pay costs.”.
48.—Subsection (2) of section 367 of the Copyright and Related
Rights Act 2000 is repealed.
29S.44
Agreement
establishing theWorld TradeOrganisation –consequentialamendments to1996 Act.
Transitional
provisions (ThirdSchedule to 1996Act).
Costs of Controller
in proceedings.
References of
dispute to arbitrator(section 367 ofCopyright andRelated Rights Act2000).Infringement
actionable byregisteredproprietor (section57 of IndustrialDesigns Act 2001).
Appeals (section 84
of IndustrialDesigns Act 2001).
Short title and
commencement.
30[No. 31.] [2006.] Patents (Amendment) Act 2006 .
49.—Section 57 of the Industrial Designs Act 2001 is amended by
substituting the following for subsection (2):
“(2) Notwithstanding sections 29 and 43—
(a) no infringement proceedings may be begun before the
date of publication of the registration of the design,and
(b) no offence shall be regarded as committed under
section 66 by anything done before the date referredto in paragraph ( a).”.
50.—Section 84 of the Industrial Designs Act 2001 is amended by
substituting the following for subsection (1):
“(1) ( a) Save as otherwise provided by this Act and subject to
paragraph ( b), except by leave of the High Court, an
appeal lies to the High Court from any decision ororder of the Controller under this Act within 3months from the date of the decision or order.
(b) Where a written statement of the grounds of the
decision or order of the Controller, in the exerciseof his or her discretionary power, has been requestedin the prescribed manner and within the prescribedperiod by a party to the proceedings, the period of 3months shall begin on the date on which the writtenstatement is furnished to the party requesting it.”.
51.—(1) This Act may be cited as the Patents (Amendment) Act
2006.
(2) Subject to subsection (3) , this Act shall come into operation
on such day or days as the Minister may appoint by order or orderseither generally or with reference to any particular purpose or pro-vision and different days may be so appointed for different purposesor different provisions of this Act.
(3) This section and sections 1, 2(a) ,(f)and (g),7,10,12,15,16,
18to25,29(c)(ii), 31(c) ,32,34, 36 to40and 42to50shall come into
operation on the passing of this Act.