Criteria for granting a patent are not listed in current legislation. However, it is provided that the true and first inventor of an invention may apply for a patent for that invention. It defines an invention as a new and useful art, process, machine, manufacture or composition of matter; any improvement thereon; and any new method or process of testing in manufacture. The key criteria, therefore, are the novelty and usefulness of the invention, for which prior publication and commercial viability are the respective yardsticks.
The 1992 Act sets out three criteria for the patentability: In the case of a 20 year patent, an invention will be patentable thereunder if it is
- susceptible of industrial application,
- new, i.e. does not form part of the state of the art,
- involves an inventive step.
2. EXCLUSIONS
Anything "obviously contrary to well-established natural laws" or contrary to public order or morality may not be patentable, at the discretion of the Controller of Patents. If it is claimed that the invention is a substance capable of being used as food or medicine, and it is a mixture comprising the aggregate of known ingredients, the application may be refused.
In line with EEC law, under the 1992 Act, a list of matters which will not be regarded as an invention:-
- a discovery, a scientific theory or a mathematical method,
- an aesthetic creation,
- a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer,
- the presentation of information,
- a method for treatment of the human or animal body by surgery or therapy,
- a diagnostic method practised on the human or animal body.
Furthermore, a patent will not be granted in respect of a plant or animal variety or an essentially biological process.
3. FILING AN APPLICATION
Application may be commenced by filing the requisite form and a provisional application. However, before the Patents Office will examine an application, the following must also be filed:
- A complete specification, including claims and drawings;
- Evidence of novelty; and
- A declaration of inventorship.
The provisional specification creates a "stop gap" to allow the inventor to decide whether the invention is profitable and worth patenting. Its filing gives the applicant priority in time but creates no patent rights. If a patent is eventually granted, it is dated back to the filing of the complete specification. Any infringement during the period in which only a provisional application is filed would have to be pursued in contract or under the equitable principles of confidentiality.
Under the 1992 Act, provisional and complete specifications no longer apply. Priority may be gained from an earlier application, however, by filing a later "divisional application" based on the earlier one. Rules indicating how this new system will work have not yet been made available. Applications under the 1992 Act must contain
- a request for a grant of a patent;
- a specification, containing a description; the claims which define the matter for which protection is sought; and any drawings; and
- an abstract, containing technical information.
Filing fees are IR14.00 for a provisional application; IR103.00 for a complete specification; and IR68.00 for evidence of novelty, at present.
4. EXAMINATIONS
Upon receipt of a complete specification, the Patents Office examines the application to determine if:
- the invention is already published in the State in another patent specification or any other document;
- the invention is included in any other specification published on or after the date of filing of the application.
If the Patents Office finds prior publication, it may refuse the patent. If the invention was contained in a simultaneous or later specification, it may direct that a note to that effect be inserted in the applicant's specification. If it is found that performance of the invention will produce a substantial risk of infringing another patent, the applicant's specification might be endorsed with a note of the other patent.
Such examinations will no longer be carried out when the 1992 Act comes into force, unless the Controller directs an examination to be made in a particular case. Instead, the evidence of novelty filed by the applicant will contain the entire novelty evidence. If a search report is being adduced as part of novelty evidence, it will have to be commissioned from the Patents Office and not from a Patent Agent as heretofore.
6. DURATION AND CONTENTS
At present, a patent lasts for 16 years. Unless a renewal fee is paid before the expiry of the fourth year and every year thereafter, the patent lapses. The 16 year term may be extended upon petition to the Controller or the Court at least 6 months prior to the expiry date. One frequently used ground for such an extension is the inadequacy of profits from the patent to date. This ground will not be available after the commencement of the 1992 Act.
The 1992 Act extends the period of a patent to 20 years and introduces a new system of short-term, 10 year, patents (see below).
The patent is in the form set out in the Patent Rules. It is dated the date of filing the complete specification. It confers on the grantee the exclusive right in the State to make, use, exercise and vend the invention; to enjoy the profits from the invention; to prohibit others from using the invention; and to sue for an infringement.
7. INFRINGEMENT ACTIONS
An action for infringement may be brought any time after the grant of the patent for any infringement on or after the date of publication of the complete specification. The Plaintiff may claim injunctive relief, damages or an account of profits, and delivery of the infringing material.
A Defendant who proves that at the date of infringement, he was not aware, and had no reasonable grounds for supposing, that a patent existed, will not have damages awarded against him. A Defendant may apply for a revocation of the patent by way of counterclaim, in accordance with the rules of court.
When threatening an action for infringement, care should be taken that the threat is sustainable as there is provision for an action for damages against a person who makes "groundless threats" in such cases.
There is an additional burden of proof on the Defendant in the 1992 Act: if the subject matter of the patent is a process for obtaining a new product, anyone other than the patentee who produces the new product shall be deemed to have used the patented process.
The 1992 Act lists the remedies available in an infringement action:
- an injunction,
- the delivery or destruction of infringing product,
- damages or an account of profits,
- a declaration of validity and infringement.
All infringement actions must be notified to the Controller, when the new Act comes into force.
8. PROPERTY RIGHTS: CO-OWNERSHIP; EXPROPRIATION; TRANSFER AND LICENSING
Co-owners have equal individual shares in the patent unless they have entered into an agreement to the contrary. Each co-owner is entitled to make, use, exercise and sell the patented invention without accounting to the others. The patent cannot be assigned or licensed other than on consent of all co-owners.
Disputes as to inventions made by employees may be referred for determination to the Controller of Patents or to the Court. The determination may provide for exclusive right to, or an apportionment of, the benefit of the patent.
The owner of a patent has the right to transfer, by way of assignment or mortgage, and to licence, the patent. A transferee or licensee must apply to register his title at the Patents Office. An exclusive licensee of a patent is given
the right to bring an action for infringement provided that the patentee is also a party to the action.
The patentee may apply for "licences of right" of the patent. If granted, any person may apply to become licensee of the patent, on terms to be settled by the Controller. Once the patent is endorsed with the words "licences of right", renewal fees for the patent are reduced by one half. After the later of four years from the patent application or three years from its sealing. The Controller may also grant such an endorsement on the application of a third party if the patentee has abused monopoly rights under the patent. The Controller may also grant a licence to one person, and may direct that the patentee may be deprived of any right to make, use or sell the invention, a licence to one person.
Special provision is made for the application to the Controller for a licence of a patent relating to food or medicine.
The 1992 Act additionally provides for the grant of compulsory licences where the Controller considers that adequate commercial use has not been made of the patent.
9. SHORT TERM PATENTS IN THE 1992 ACT
One significant change brought about in the 1992 Act is the introduction of short term patents which will last for 10 years. The criteria for patentability are set out above. Until rules are made under the Act, it will not be clear how it is proposed to administer the contrasting requirements concerning the inventive step.
A short term patent becomes void on the grant of a 20 year patent.
The application procedures will be less stringent for short term patents as formal novelty evidence need not be adduced unless proceedings for infringement of the patent are contemplated.
Only if an action for infringement is being brought need a search report to prove novelty be commissioned in the Patents Office, or novelty evidence in the form of a foreign application be adduced. Before an action is brought, the evidence of novelty must be furnished to the proposed Defendant. Infringement proceedings may be brought in the Circuit Court or High Court in relation to short term patents.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.