Click here for Explanatory Memorandum

Transcription

1 Click here for Explanatory Memorandum Section 1. Definition. BILLE NA bpaitinní (LEASÚ), 1999 PATENTS (AMENDMENT) BILL, 1999 Mar a tionscnaíodh As initiated ARRANGEMENT OF SECTIONS 2. Interpretation (section 2 of 3. Patentable inventions (section 9 of 4. Exceptions to patentability (section 10 of 5. Priority right (section 25 of 6. Limitation of effect of patent (section 42 of 7. Grounds for revocation (section 58 of 8. Application for entry in register that licences of right are available (section 68 of 9. Compulsory licences (section 70 of 10. Provisions as to compulsory licences (section 71 of Principal Act). 11. Procedure on applications under sections 70 and 72 (section 73 of 12. Appeals and references to arbitrator (section 74 of Principal Act). 13. Supplementary provisions as to licences (section 75 of Principal Act). 14. Effect of European patent (section 119 of 15. Effect of filing application for European patent (section 120 of 16. Transitional provisions (First Schedule to [No. 64 of 1999]

2 Section 17. Revocation. 18. Short title, collective citation and commencement. Acts Referred to Intellectual Property (Miscellaneous Provisions) Act, , No. 28 Patents Act, , No. 1 Trade Marks Act, , No. 6 2

3 BILLE NA bpaitinní (LEASÚ), 1999 PATENTS (AMENDMENT) BILL, 1999 BILL entitled 5 10 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 AND TO GIVE FURTHER EFFECT TO THE EUROPEAN PATENT CONVENTION AND FOR THOSE PURPOSES TO AMEND AND EXTEND THE PATENTS ACT, 1992, AND TO PROVIDE FOR RELATED MATTERS. BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS: In this Act Principal Act means the Patents Act, 1992, as amended by the Trade Marks Act, 1996, and the Intellectual Property (Miscellaneous Provisions) Act, Definition. 2. Section 2 of the Principal Act is hereby amended in subsection (1) Interpretation (section 2 of (a) by the insertion after the definition of the Act of 1964 of the following: Agreement establishing the World Trade Organisation means the Agreement establishing the World Trade Organisation signed at Marrakesh on the 15th day of April, 1994;, (b) by the insertion after the definition of the Journal of the following: 30 member of the World Trade Organisation means a party to the Agreement establishing the World Trade Organisation;, and (c) by the insertion after the definition of the Treaty of the following: 3

4 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 3. Section 9 of the Principal Act is hereby amended in subsection 5 (5) by the substitution for the European Patent Convention as amended by any international treaty, convention or agreement to which the State is or proposes to become a party of any amendment of the European Patent Convention. Exceptions to patentability (section 10 of 4. Section 10 of the Principal Act is hereby amended in para- 10 graph (a) by the substitution for publication or exploitation of commercial exploitation. Priority right (section 25 of 5. Section 25 of the Principal Act is hereby amended (a) in subsection (1), by the insertion after the Paris Convention for the Protection of Industrial Property of or to 15 the Agreement establishing the World Trade Organisation, (b) in subsection (5), by the insertion after the Paris Convention for the Protection of Industrial Property of or which is not a party to the Agreement establishing the 20 World 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 a member of the World Trade Organisation and, for the 25 purposes of subsection (5), every country or territory shall be taken to be a state in the case of which an order may be made under that subsection.. Limitation of effect of patent (section 42 of Principal Act). 6. Section 42 of the Principal Act is hereby amended (a) in paragraph (d), by the insertion after the Union of Paris 30 for the Protection of Industrial Property of or in any of 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 of members of the World Trade Organisation. 35 Grounds for revocation (section 58 of 7. Section 58 of the Principal Act is hereby 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 have been allowed;. Application for entry in register that licences of right are available (section 68 of 8. Section 68 of the Principal Act is hereby amended in para- 40 graph (c) of subsection (2) by the substitution for (otherwise than by the importation of goods) of (otherwise than by the importation of goods from a country which is not a member of the World Trade Organisation). 4

5 9. Section 70 of the Principal Act is hereby amended by the substitution for that section of the following: Compulsory licences (section 70 of Compulsory licences. 70. (1) At any time after the expiration of the period of three 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 any or all of the following grounds: (a) that (i) a demand in the State for the subject matter of the patent is not being met or is not being met on reasonable terms, or (ii) a demand in the State for a product which is protected by the patent is being met by importation other than from a member of the World Trade Organisation; (b) that the establishment or development of commercial or industrial activities in the State is unfairly prejudiced. (2) If an invention protected by a patent (in this section referred to as the second patent ) cannot be exploited in the State without infringing rights deriving from another patent (in this section referred to as the first patent ) the proprietor of the second patent may apply to the Controller for a licence under the first patent to the extent necessary for the exploitation of the invention concerned: Provided that such invention involves an important technical advance of considerable economic significance in relation to the invention claimed in the first patent. (3) Subject as hereinafter provided, where an application is made under this section, if the Controller is satisfied (a) that any of the grounds specified in subsection (1) are established, or (b) that an invention protected by a patent cannot be exploited without infringing rights deriving from the first patent as referred to in subsection (2), the Controller may make an order in accordance with the application and, where the order is for the grant of a licence, the order may require the licence to be granted upon such terms as the Controller thinks fit: 5

6 Provided that: (i) any licence granted shall be nonexclusive; (ii) any licence granted shall be predominantly for the supply of the market in 5 the State; (iii) any licence granted may only be assigned with the prior authorisation of the Controller and with that part of the enterprise or goodwill which uses 10 the patented invention and, in the case of a licence granted on an application under subsection (2) in respect of the first patent, the licence may only be assigned by the proprietor of 15 the second patent in conjunction with the assignment of the second patent; (iv) a licence shall only be granted subject to the payment to the proprietor of the patent of adequate remuneration in 20 the circumstances of the case, taking into account the economic value of the licence; (v) the scope and duration of the licence shall be limited to the purpose for 25 which it is granted; (vi) any licence granted on an application under subsection (1) in respect of a patent which relates to semi-conductor technology shall only be for public 30 non-commercial use; (vii) no order shall be made on an application under subsection (2) unless the proprietor of the second patent is able and willing to grant the proprietor of 35 the first patent and the licensee of that proprietor a cross-licence, on reasonable terms, to use the invention claimed in the second patent. (4) The Controller shall, in determining 40 whether to make an order pursuant to an application under this section, take account of the following matters, namely (a) the nature of the relevant invention, the time which has elapsed since the grant 45 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 50 licence would be granted under the 6

7 order to exploit the patent to the public advantage, and 5 (c) the risks to be undertaken by that person in providing capital and exploiting the patent if the application is granted. (5) Section 68(3) shall apply to a licence granted pursuant to an order under this section as it applies to a licence granted by virtue of section Section 71 of the Principal Act is hereby amended by the substitution for that section of the following section: Provisions as to compulsory licences. 71. (1) Where an order for the grant of a licence or for an entry in the register has been made pursuant to an application under section 70, any person may apply to the Controller to amend or cancel the order on the grounds that the circumstances which led to the order have changed or have ceased to exist and are unlikely to recur. (2) Where the Controller is satisfied that the circumstances referred to in subsection (1) have changed or have ceased to exist and are unlikely to recur, the Controller may order the amendment or cancellation of the existing order upon such terms as the Controller thinks fit, including, in particular, terms which provide for the protection of the interests of the licensee concerned. Provisions as to compulsory licences (section 71 of (3) Section 73 shall, in so far as it is applicable, apply in relation to an application under subsection (1). 30 (4) Where, following an application under subsection (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 Section 73 of the Principal Act is hereby amended Procedure on applications under sections 70 and 72 (a) in subsection (1), by the insertion after upon which the (section 73 of application is based of and shall be accompanied by evidence indicating that the applicant sought to obtain a licence from the proprietor of the patent but has been unable to obtain such a licence on reasonable terms and within 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 subsection (1) 45 (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: 7

8 Provided that the proprietor of the relevant patent has been informed as soon as reasonably practicable of the intention of the applicant to apply to the Controller for a licence under the patent.. Appeals and references to arbitrator (section 74 of 12. Section 74 of the Principal Act is hereby amended in subsec- 5 tion (1) by the substitution for section 70 or 72 of section 70, 71 or 72. Supplementary provisions as to licences (section 75 of 13. Section 75 of the Principal Act is hereby amended (a) in subsections (2) and (3), by the substitution for section 70 or 72 of section 70, 71 or 72 in each place it occurs, 10 and (b) in subsection (3), by the insertion after European Economic Community of or with the TRIPs Agreement.. Effect of European patent (section 119 of 14. Section 119 of the Principal Act is hereby amended by the 15 substitution for subsections (6), (7) and (8) of the following: (6) (a) Subsection (1) shall not apply to a European patent designating the State and whose specification was published in French or German, unless a translation in English of the specification is made available in 20 such form and manner and within such period as may be prescribed by the Minister in rules made under this Act. (b) Subsection (4) shall not apply to an amendment made in French or German unless a translation in English 25 of the specification as amended is made available in such form and manner and within such period as may be prescribed by the Minister in rules made under this Act. (c) The Minister may prescribe, in rules made under this 30 Act, a fee to be paid (i) when a translation is made available under paragraph (a) or(b), or (ii) within a specified period after such a translation is made available under paragraph (a) or (b), 35 and the form and manner in which such fee is to be paid. (7) Where, in accordance with subsection (6), a translation is not made available, or any prescribed fee is not paid, the patent shall be treated as always having been void. 40 (8) The Minister may make rules in respect of the publication of translations made available under subsection (6).. 8

9 5 15. Section 120 of the Principal Act is hereby amended in subsection (3) by the insertion of the following proviso to paragraph (d): Provided that the application shall be considered as comprised in the state of the art under section 11(3) only if the designation fee in respect of the State under the European Patent Convention has been validly paid;. Effect of filing application for European patent (section 120 of 16. The First Schedule to the Principal Act is hereby amended by the repeal of paragraph 4. Transitional provisions (First Schedule to The Patents (International Arrangements) Order, 1996 (S.I. No. 38 of 1996), and the Patents Act, 1964 (Section 93) (Declaration Order), 1976 (S.I. No. 314 of 1976), are hereby revoked. Revocation (1) This Act may be cited as the Patents (Amendment) Act, (2) The Patents Act, 1992, section 75 of the Trade Marks Act, 1996, sections 4 and 5 of the Intellectual Property (Miscellaneous Provisions) Act, 1998, and this Act may be cited together as the Patents Acts, 1992 to Short title, collective citation and commencement. (3) Section 14 of this Act shall come into operation on such day as the Minister may by order appoint. 9

10 Click here for Bill BILLE NA bpaitinní (LEASÚ), 1999 PATENTS (AMENDMENT) BILL, 1999 EXPLANATORY MEMORANDUM Background Grant of patents is the traditional means of encouraging inventive activity and the necessary investments for research and for industrial exploitation of inventions. Briefly speaking, a patent is a document issued by a Government authority (patents office) to the inventor or his/her successor in title, the main legal and economic consequence of which is that, for a certain number of years, the invention may be exploited only by the proprietor of the patent or with his/her permission. The patent system serves not only the interests of the inventor. Patents are published. Consequently, the inventions described in them become public knowledge. This serves the interests of the general public in various ways. Knowledge about the existence of an invention may inspire further new inventions during the time the invention is protected. Once the protection ceases, anyone may freely exploit the invention. During its protection, persons who wish to exploit the invention may obtain licences from the proprietor of the patent or, in certain circumstances, even against the will of the proprietor ( compulsory licences ). Objectives of Bill The existing law relating to patents for inventions is contained in the Patents Act, 1992, as amended by section 75 of the Trade Marks Act, 1996, and sections 4 and 5 of the Intellectual Property (Miscellaneous Provisions) Act, 1998 ( the Principal Act ). The main objective of the Bill is to update the present law so that it accords with the provisions of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs Agreement) annexed to the Agreement establishing the World Trade Organisation (WTO). The Bill also includes provisions necessary to keep Irish law in line with recent and projected changes in the European Patent Convention and practice thereunder. TRIPs Agreement Ireland ratified the WTO Agreement, with the TRIPs Agreement annexed thereto, on 30 December, The TRIPs Agreement covers a whole range of intellectual property including patents and contains minimum provisions to be included in the patent law of member countries of the WTO. In general, the present Irish patent law is compatible with the TRIPs Agreement, the main exception being the provisions relating to compulsory licences. 1

11 European Patent Convention The EPC, to which Ireland is a party since 1 August, 1992, provides for a European Patent Office (EPO) in Munich and contains all the points of substantive and procedural law necessary for the grant of an examined European patent. With effect from the date of grant, European patents count as national patents in the EPC Contracting States in which they are granted. Although the national authorities remain competent to revoke patents they may do so only on the grounds specified in the Convention. Provisions of the Bill The criteria as to what is patentable subject matter and the requirements of novelty as laid down in sections 9, 10 and 11 respectively of the Principal Act are based on the corresponding provisions of the EPC. These may be modified, under subsection (5) of section 9 of the Principal Act, by order by the Minister for the purpose of giving effect to any future amendment of the EPC. However, section 9(5) of that Act incorrectly provides that the EPC can be amended by any international treaty, convention or agreement. In fact, the EPC can be revised only by a Conference of the Contracting States and section 3 effects the necessary amendment. Section 4 enables the wording of paragraph (a) of section 10 of the Principal Act concerning exclusion from patentability of inventions whose exploitation would be contrary to public order or morality to be brought into line with Article 27.2 of the TRIPs Agreement. Under section 25 of the Principal Act a filing of a previous application in a Paris Convention country may give rise to a priority right in a subsequent application in the Irish Patents Office. Section 5 extends the provisions of section 25 of that Act to WTO member countries which were not party to the Paris Convention. A filing in a country not party to the Paris Convention can also give rise to priority if the Government makes an order to that effect consequent upon bilateral or multilateral agreements. Two such orders made previously will become superfluous when section 5 comes into operation and accordingly section 17 provides for their revocation. Section 6 amends the provisions of section 42 of the Principal Act concerning the use of inventions on board vessels and aircraft and land vehicles from Paris Convention countries. The amendment is considered necessary to meet the most-favoured-nation obligation under Article 4 of the TRIPs Agreement. Section 58(d) of the Principal Act which sets out one of the grounds on which a patent may be revoked is to be amended by section 7 in order to conform with Article 138(1)(d) of EPC. Section 68 of the Principal Act permits the proprietor of a patent to make available as of right licences under his/her patent, thereby reducing by half the renewal fees payable to keep that patent in force. Under subsection (2)(c) of section 68 of that Act an infringer of such a patent may agree to take a licence, in which case no injunction will be granted against the infringer and the damages will be limited to what the royalties would have been if the licence had been granted before the earliest infringement. This restriction on the remedies against the infringer does not at present apply to infringement by importation. Section 8 seeks to remove any discriminatory restriction on importation of a patented product from another member country of the WTO. 2

12 Provisions of the present law concerning the compulsory licensing of patents without the authorisation of the patent proprietors as contained in sections 70 to 75 are to be amended by sections 9 to 13 to bring them into line with Articles 27.1 and 31 of the TRIPs Agreement. The existing provisions of section 70(2) that (a) the patent is not being adequately worked in the State, (b) the demand for a patented product in the State is being met by importation, and (c) commercial working of the invention in the State is being prevented or hindered by importation are inconsistent with EU law and contrary to Article 27.1 of the TRIPs Agreement which provides that patents shall be available and patent rights enjoyable without discrimination as to whether the products are imported or locally produced. Pursuant to section 9 a compulsory licence may not be granted under the new section 70(1) if the demand for a product covered by the patent is met by importation from a WTO member country. This provision also meets the condition set forth in Article 31(f) of the TRIPs Agreement that the grant of compulsory licence should be predominantly for the supply of the domestic market. The new section 70(2), as inserted by section 9 deals with the case in which a patented invention cannot be exploited without also using an invention which has been patented by another person on the basis of an earlier application. It incorporates condition (i) of Article 31 (l) of the TRIPs Agreement. Section 70(3) is revised to take account of the amendment of the grounds available to the applicant in support of an application for a compulsory licence and of the conditions specified in Article 31 of the TRIPs Agreement. The existing provision in section 70(3)(f) dealing with inventions relating to food or medicine offend Article 27.1 and is to be deleted. Section 71 of the Principal Act is deleted as it conflicts with Article 31(b) of the TRIPs Agreement which provides that the applicant for a compulsory licence must first have sought a voluntary licence on reasonable terms. The new section 71, as inserted by section 10, is intended to give effect to the requirement in Article 31(g) of the TRIPs Agreement. Section 11 amends section 73 of the Principal Act to include the requirement in Article 31(b) of the TRIPs Agreement that except in situations of national emergency and in the case of an application for a licence for public non-commercial use, a compulsory licence may be granted only where efforts for a reasonable contractual licence have failed. Section 12 is self-explanatory. Section 13 amends section 75 of the Principal Act to include a general provision (in subsection (3)) that no order for the grant of compulsory licence shall be made at variance with the TRIPs Agreement. Section 119(6) of the Principal Act provides that in the case of a European patent designating the State, if the language of the patent specification is not English (French and German being the other two permissible languages of EPC) a translation in English of the specification must be filed with the Irish Patents Office and published here in order that that patent may have effect in Ireland. Similar requirements exist in the majority of EPC Contracting States. As a means of reducing costs to the applicants for patents it has been suggested at various international fora that filing of translations of European 3

13 patent specifications be centralised at the EPO and that the translations filed at the EPO be transmitted to the national patent offices concerned. The purpose of section 14 is to empower the Minister to prescribe in the Patents Rules the manner of the furnishing of translations of the European patent specification if and when arrangements for the centralised filing of translations at the EPO are finalised. It is also provided in section 18(3) that section 14 shall come into operation on such day as the Minister may by order appoint. Section 15 amends section 120(3)(d) of the Principal Act to take account of certain changes made to the EPC in The proviso added to section 120(3)(d) corresponds to a similar provision in new Rule 23a inserted in the Implementing Regulations to the EPC. Section 16 repeals the transitional provision set out in paragraph 4 of the First Schedule to the Principal Act as that provision is inconsistent with Article 28 of the TRIPs Agreement which stipulates that where the subject matter of a patent is a product, the patent owner shall have exclusive right to prevent third parties not having the owner s consent from the acts of: making, using, offering for sale, selling or importing that product. An Roinn Fiontar, Trádála agus Fostaíochta, Samhain, Wt. P50672/B/ /99. Cahill. (X40502). G