Patents (Amendment) Act 2006

• Jurisdiction: Ireland
• Citation: IR No. 31/2006

Number 31 of 2006
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).
21. Procedure on applications under sections 70 and 72 (section 73 of Principal Act).
22. Appeals and references to arbitrator (section 74 of Principal Act).
23. Supplementary provisions as to licences (section 75 of Principal Act).
24. Evidence before Controller (section 92 of Principal Act).
25. Appeals from decisions of Controller (section 96 of Principal 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 Effect of restoring a withdrawn application under section 110 of the Principal Act.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).
45. Agreement establishing the World Trade Organisation – consequential 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.
Acts Referred to
Copyright and Related Rights Act 2000 2000, No. 28 Industrial Designs Act 2001 2001, No. 39 Patents Act 1964 1964, No. 12 Patents Act 1992 1992, No. 1 Trade Marks Act 1996 1996, No. 6
Number 31 of 2006
PATENTS (AMENDMENT) ACT 2006
AN ACT TO GIVE EFFECT TO CERTAIN PROVISIONS OF THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS ANNEXED TO THE AGREEMENT ESTABLISHING THE WORLD TRADE ORGANISATION DONE AT MARRAKESH ON 15 APRIL 1994; TO GIVE FURTHER EFFECT TO THE EUROPEAN PATENT CONVENTION SIGNED AT MUNICH ON 5 OCTOBER 1973; TO GIVE EFFECT TO THE PATENT LAW TREATY ADOPTED AT GENEVA ON 1 JUNE 2000; TO MAKE FURTHER PROVISION IN RESPECT OF MATTERS RELATING TO INTELLECTUAL PROPERTY AND FOR THOSE PURPOSES TO AMEND AND EXTEND THE PATENTS ACT 1992, THE TRADE MARKS ACT 1996, THE COPYRIGHT AND RELATED RIGHTS ACT 2000 AND THE INDUSTRIAL DESIGNS ACT 2001 AND TO PROVIDE FOR RELATED MATTERS.
[11th December, 2006]
BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:
	Definitions.	1.— In this Act—
	“ Principal Act ” means the Patents Act 1992 ;
	“ 1996 Act ” means the Trade Marks Act 1996 .
	Interpretation (section 2 of Principal Act).	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 Trade Organisation done at Marrakesh on 15 April 1994, as amended or supplemented by any protocol to that Agreement 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 treated as designated in pursuance of the European Patent Convention or the Treaty” after “invention”,
	(d) by inserting the following after the definition of “divisional application”:
	“ ‘Enlarged Board of Appeal’ means the Enlarged Board of Appeal referred to in Article 22 of the European Patent 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 Trade Organisation;”,
	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 annexed to the Agreement establishing the World Trade Organisation;”.
	Patentable inventions (section 9 of Principal Act).	3.— Section 9 of the Principal Act is amended—
	(a) in subsection (1), by inserting “, in all fields of technology,” after “An invention”, and
	(b) by deleting subsections (4) and (5).
	Exceptions to patentability (section 10 of Principal Act).	4.— Section 10 of the Principal Act is amended—
	(a) in paragraph (a), by substituting “commercial exploitation” 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 diagnostic method practised on the human or animal body.”,
	(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 such method.”.
	Novelty (section 11 of Principal Act).	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, comprised in the state of the art, for use in a method referred to in section 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 composition referred to in subsection (4) for any specific use in any method referred to in section 10(1)(c), provided that such use is not comprised in the state of the art.”.
	Date of filing application (section 23 of Principal Act).	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 application shall be taken to 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 or information sufficient to enable that person to be contacted by the Office, and
	(c) (i) a description of the invention for which a patent is sought even where the description does not comply with other requirements of this Act or with any requirements that may be prescribed, or
	(ii) a reference, complying with any relevant requirements that may be prescribed, to a previously filed application made by the applicant or the applicant’s predecessor in title.
	(2) It is immaterial for the purposes of subsection (1)(c)(i) whether the description of the invention concerned is in, or is accompanied by a translation into, a language accepted by the Office in accordance with any requirements that may be prescribed.
	(3) If the Minister prescribes a later date for payment of the filing fee under section 18(3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in subsection (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 after the filing of those documents notify the applicant of the further documents required to be filed in order for the application to have a date of filing.
	(5) Where documents filed at the Office satisfy all the conditions...