The State (Rajan) v Minister for Industry and Commerce

JurisdictionIreland
JudgeMr. Justice Barron
Judgment Date01 January 1988
Neutral Citation1987 WJSC-HC 1058
Docket Number153 S.S./1986
CourtHigh Court
Date01 January 1988
RAJAN & ORS v. MIN INDUSTRY & COMMERCE
THE STATE AT THE PROSECUTION OF JACOB RAJAN AND OTHERS
.V.
THE MINISTER FOR INDUSTRY AND COMMERCE AND THE CONTROLLER OF PATENTS DESIGNS AND TRADEMARKS

1987 WJSC-HC 1058

153 S.S./1986

Synopsis:

PATENTS

Controller

Powers - Subordinates - Functions - Roles distinct - Registration of patents - Applications for registration - Examination of applications - Shortage of staff - Arrears - Controller's attempted solution - Directions issued by Controller to the examiners - Examiners directed to dispense with statutory investigations in course of examination of certain applications for registration - Refusal of examiners to comply with directions of Controller - Disciplinary sanctions imposed by Controller - Normal salary increments withheld from examiners - The prosecutors, being such examiners, obtained a conditional order of certiorari quashing certain directions and rulings of the Controller unless cause were shown to the contrary - Cause having been shown by the Controller and by the Minister for Industry and Commerce, the prosecutors applied for an order absolute - Held that the Controller and the examiners had distinct functions to perform in relation to the examination of applications for registration of patents under the Act of 1964 - Held that the authority and powers conferred on the Controller by that Act did not enable him to forbid his subordinate officers to perform the statutory duties imposed on them by that Act - Held, accordingly, that the directions and rulings of the Controller were invalid, as were the withholding from the prosecutors of their normal salary increases - Order absolute granted - Patents Act, 1964, ss.8, 10–12, 77 - (1986/153 SS - Barron J. - 13/3/87) - [1988] ILRM 231

|The State (Rajan) v. Minister for Industry & Commerce|

STATUTORY INTERPRETATION

Office

Creation - Office holder - Powers - Subordinate officials - Functio - Distinct roles of office holder and subordinate officials - Office holder not empowered to forbid his officials to discharge their statutory duties - ~See~ Patents, controller - (1986/153 SS - Barron J. - 13/3/87) - [1988] ILRM 231

|The State (Rajan) v. Minister for Industry & Commerce|

Citations:

PATENTS ACT 1964 S77

PATENTS ACT 1964 S79(1)

PATENTS ACT 1964 S78(5)

PATENTS ACT 1964 S16(3)

PATENTS RULES 1965 SI 268/1965 r27

PATENTS ACT 1964 S8(6)

PATENTS RULES 1965 SI 268/1965 r117

RANKS HOVIS MCDOUGALL LTD V THE CONTROLLER 1979 IR 142

MCLOUGHLIN V MIN SOCIAL WELFARE 1958 IR 1

PATENTS ACT 1964 S11(1)

PATENTS ACT 1964 S11(2)

PATENTS ACT 1964 S11(3)

PATENTS ACT 1964 S11(4)

PATENTS ACT 1964 S12(1)

PATENTS ACT 1964 S12(2)

PATENTS ACT 1964 S12(3)

PATENTS ACT 1964 S12(4)

PATENTS ACT 1964 S13(1)

PATENTS ACT 1964 S13(2)

PATENTS ACT 1964 S13(3)

PATENTS ACT 1964 S78(5)

1

Judgment of Mr. Justice Barron delivered the 13th day of March 1987.

2

This case concerns a dispute as to the manner in which the arrears of work in the Patent Office should be reduced. It is common case that the arrears are excessive. To understand the conflicting positions assumed by the parties, it is necessary first to refer to the staffing in the office and to the procedure existing there before the present dispute began.

3

The Patent Office is established under Section 77 of the Patents Act 1964and is under the immediate control of the Controller of Patents Designs and Trademarks ("the Controller"). The Controller is appointed by the Government, his officers are appointed by the Minister and are by section 79 (1) to be of such number as the Minister, with the sanction of the Minister for Finance, may consider necessary for the purposes of the Act and for such other functions as the Controller may be charged with. This indication that the functions of the Controller may be discharged by his officers had already been clearly expressed in the provisions of section 78 (5) which is as follows:

" (5) Any act or thing directed to be done by or to the Controller may be done by or to any officer authorised by the Minister."

4

It appears that all the then officers in the Patent Office regardless of grade were so authorised by Ministerial Order dated 19th June 1972. No further authorisation has since been made.

5

The staff of the Patent Office is divided between clerical staff and professional staff. The duties of the clerical staff are to ensure that the formal legal requirements relating to patent applications have been complied with. The duties of the professional staff are in effect to determine whether or not such applications should be accepted. Each member of the technical staff is recruited to the position of Examiner and each is academically highly qualified. They are university graduates either with postgraduate qualifications or research or industrial experience or both. There is no statutory position of Examiner as such. The officer of the Controller to whom applications and specifications are referred by the Controller for examination is referred to in the Act as an Examiner. There are three grades of Examiners: Examiners, Senior Examiners and principal Examiners. The investigation of patent applications is carried out by the first two grades (whom I shall refer to collectively as "Examiners"). In practice, the principal Examiners carry out the hearing functions of the Controller.

6

The present Controller was appointed on the 14th September 1983. At the date of his appointment the number of applications awaiting examination amounted to approximately 13,000. For many years, each annual report of the Controller had referred to the insufficient number of Examiners and the problems that this was causing having regard to increasing numbers of patent applications. The Controller determined to redress this problem. As appears from a memorandum dated 28th December 1984 sent by him to the principal Examiners for circulation to the Examiners he sought without success to obtain the appointment of additional Examiners. He also indicated to the Department as an alternative the need for amending legislation so that the work of the Examiners might be lessened. Presumably, having no faith in receiving any assistance from the Department, he determined upon a course which would speed up the procedure in certain cases. He decided in effect that if patent specifications were accepted in either the United Kingdom or European Patent Offices that they should be accepted here provided that the complete specification lodged here was in exact conformity with the accepted specification.

7

The memorandum dated 28th December 1984 was circulated in pursuance of this decision. This in effect was a direction to the Examiners to accelerate the examinations where the Irish specification was in complete conformity with the specification accepted in either the United Kingdom or European Patent Offices. This direction was based upon two assumptions. This Controller took the view that since section 16 (3) of the 1964 Act did not warrant the validity of any patent and further provided that no liability should be incurred by the Minister of Controller or any officer of the Minister of Controller by reason of or in connection with the examination or investigation of any patent application or specification or any report or other proceedings consequent thereon then meticulous searching was unnecessary. He also took the view that the acceptance of a specification by either the United Kingdom or European Patent Offices in effect established the novelty of the invention. In so far as the United Kingdom Patent Office was concerned, this was supported by the belief that that office received copies of all Irish published specifications and that its search would cover such documents. He concluded his memorandum by indicating that if a substantial reduction was to be made in arrears over the following twelve months an overall average output of eight to ten examined cases per Examiner per week would be required. He then directed the principal Examiners to monitor the arrears and output and situation on a regular two weekly basis or more frequently if necessary.

8

The Examiners replied to this memorandum by a memorandum dated 17th January 1985. This involved detailed comments on the Controller's memorandum which it is not necessary to deal with in similar detail. Essentially they sought to point out that the views of the Controller were misconceived. In particular the memorandum drew to his attention the fact that only accepted specifications were printed and sent abroad. The memorandum ended by requesting as follows:

9

2 "(1) That the principal Examiners indicate to us in writing what changes in examination practice they expect as a result of their distribution to us of copies of the Controller's minute; and

10

(2) that the Controller clarify some of the points raised above in relation to our duties under the Act. In particular we would like to know whether he is asking the Examiners not to be concerned with the requirements of sections 9, 12 and 13 in those cases where foreign granted patent specifications are furnished as evidence under section 8 (6)."

11

Section 8 (6) is as follows:

"Where a complete specification is filed in pursuance of an application for a patent, the applicant shall furnish, within the time prescribed, such evidence as may be prescribed of-"

(a) the result of any investigation made for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification has been published before the date of filing of the complete specification in a specification filed in any of such patent offices outside the State as may be prescribed, or

(b) the acceptance by any of such patent offices outside the State as may be prescribed of an application for a patent for the invention aforesaid."

12

The type of evidence to be furnished under the provisions of...

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