Committee Reports::Report - Industrial and Commercial Property (Protection) Bill, 1925::22 June, 1926::Appendix


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Committee Reports > List of Committees > Joint > 1926 > Committee on Industrial and Commercial Property (Protection) Bill, 1925 > Report - Industrial and Commercial Property (Protection) Bill, 1925

SCEIDEAL.

SCHEDULE.

A.

It is the intention of the Bill that the question whether an invention has become known to the public by disclosure in a specification published prior to the 6th day of December 1921 should be determined either (a) by a search made by a patent agent in the London records or (b) by a certificate of acceptance of a specification by the Comptroller in London.

To remove a certain obscurity in the Bill as to its intention in this respect, insert the following new section immediately before section 18:—

“(1) Where an application for a patent has been made and a complete specification has been left, the comptroller shall not accept the specification unless the applicant shows that the invention claimed has not been wholly or in part claimed or described in any specification (other than a provisional specification not followed by a complete specification) published before the date of application, and left pursuant to any application for a patent made in the late United Kingdom during the period commencing fifty years before the date of the application under this Act and ending on the 6th day of December 1921,

(a)in case the applicant has applied for a British patent for the invention, by prescribed proof of the acceptance by the Comptroller-General of the Patent Office in London of the complete specification left pursuant to the application for the British patent,

(b)in case the application has not so applied, by statutory declaration made pursuant to sub-section (3) of section 12 of this Act by a patent agent or by a person registered in the register of patent agents in London:

Provided that it shall be open to the applicant, in the case of a refusal by the Comptroller-General of the Patent Office in London to accept such complete specification or to grant the patent applied for in Great Britain to satisfy the comptroller that such refusal was on other grounds than such publication of the invention in a previous specification during the said period in which event the comptroller shall in the absence of any other lawful ground of objection accept the specification.

(2) Where the comptroller accepts a specification under this section he shall determine whether a reference to any, and, if so what prior specifications ought to be made in the specification by way of notice to the public.

Also, in section 12, delete sub-sections (4) and (5) and substitute the following sub-sections:—

(4) A complete specification accompanied by a statement that a British patent for the invention claimed in the specification has been applied for and granted shall be accompanied by a certified copy of the complete specification on which the British patent was granted, together with the prescribed proof of the acceptance of the last-mentioned specification by the Comptroller-General of the Patent Office in London.

(5) Where a complete specification is accompanied by a statement that a British patent for the invention has been applied for and that such application is still pending, the applicant shall if the complete specification deposited pursuant to the application for the British patent be accepted by the Comptroller-General of the Patent Office in London lodge a certified copy of the last-mentioned complete specification together with the prescribed proof of such acceptance within one month after such acceptance, and shall if acceptance of the complete specification be refused by the Comptroller-General of the Patent Office in London give notice of such refusal to the comptroller within one month after he receives notice thereof.

B.

A copy of a British patent is required under section 12, sub-sections (4) and (5), section 13, sub-section (1), section 27, sub-section (3), section 28 and section 43, sub-section (4) of the Bill.

It appears, however, that a copy of a British patent cannot be supplied, but that certified copies of the entries in the British register can be furnished.

The following amendments are recommended in this respect:— In page 15, section 27, sub-section (3) to delete all the words from the word “unless” in line 11 to the word “copy” in line 13 (both inclusive), and substitute the words “unless and until certified copies of the entries in the British register relating to the patent have been furnished to the comptroller for registration, and a copy of the complete specification on which the British patent was granted has been lodged with the comptroller, but the failure to furnish or lodge such copies.”

SECTION 43.

Delete sub-section (4) and substitute therefor a sub-section as follows:—

(4) “Certified copies of all entries in the British register relating to British patents which in accordance with the provisions of this Act have force and effect in Saorstát Eireann shall be furnished to the comptroller and shall be entered in the register of patents, but it shall not be obligatory to make such entries in the register until the first occasion on which certified copies of the entries in the British register are required by or under this Act to be furnished to the comptroller.”

The required amendments of section 12, sub-sections (4) and (5) are recommended at A. above.

The deletion of section 28 is recommended at C. below.

Also

SECTION 13.

Delete sub-section (1).

C.

1. There can be no grant of patents or registration of designs and trade marks in Saorstát Eireann, during the period between the 6th day of December 1921 and the commencement of the Act.

Section 11 sub-section (6) recognises informal applications for protection made during this period, and provides that if the application be formally made within 6 months after the commencement of the Act, the latter application shall be deemed to be dated as of the date of the informal application. There are about 8,000 informal applications.

Section 28 provides that British patents granted during this period shall be extended to Saorstát Eireann, subject only to investigation as to whether the “informal applications” are prior in date. British patents are, it is stated, granted at the rate of about 16,000 a year: the work of comparison with “informal applications” would, therefore, be enormous. A large temporary staff would be required at the outset.

Further, no provision is made for the protection, under the International Convention for the Protection of Industrial Property, of patents granted in Convention countries (other than Great Britain and Northern Ireland) during the period. Under the Convention an applicant in a Convention country may apply for protection for his invention in any other Convention country within a year from the date of his primary application, and his application shall be dated as of the date of his primary application. The intention is to prevent persons who happen to become aware of foreign inventions pirating these by taking out patents for the same inventions in other countries.

It is obvious that owing to the lapse of time, complete provision cannot be made in the Bill for compliance with the Convention as regards patents granted in Convention countries between 6th day of December, 1921, and the commencement of the Act.

It may be suggested that the proper course would be to allow all persons who have obtained patents during the period in Convention countries, including Great Britain, to apply here within a certain period after the commencement of the Act, with a provision that the date of the application in the Convention country shall be deemed to be the date of the application here. They would then go through the complete procedure for the grant of the patent here, involving a comparison of the applications inter se, and of the “informal applications” to ascertain priority of date. Owing to the accumulation of British and foreign patents, and of “informal applications,” this would be an almost impossible task.

The provisions of section 28 partly obviate these difficulties; but, as has been said, even under that section the work of the Office would be enormous, and it makes no provision for the protection of patents granted in Convention countries during the period in question.

It is, therefore, proposed to extend to Saorstát Eireann all British patents granted during the period, in like manner as pre-Treaty British patents are so extended by section 27, but subject to revocation by any “informal applicant” or by any person who has obtained a patent in a Convention country during the period, on the ground that the date of the application of the “informal applicant” or of the application in the Convention country was prior to the date of the application in London.

It is estimated that only about 5 per cent. of “informal applicants” and of persons who have obtained patents in Convention countries during the period have not taken out patents for their inventions in London, and that consequently there will be few revocations on the ground mentioned.

The amendments recommended for this purpose are:—

In page 8 to add at the end of section 11 the following new sub-sections:

(7) Every person or the legal representative or assignee of every person who has obtained between the 6th day of December, 1921, and the commencement of this Part of this Act protection for an invention in any British dominion (other than Great Britain and Northern Ireland) to which the provisions of section 148 of this Act have been applied by order of the Governor-General, or in any foreign state with respect to which the Governor-General has by order declared the said provisions to be applicable, shall be entitled to apply under this section within one year after the commencement of this Part of this Act for a patent in respect of the same invention, and shall be entitled to have the last-mentioned application dated and treated as having been made as of the date of the application for protection of the invention in such British dominions or foreign state for the purposes of determining the respective priorities of the said last-mentioned application and any other application, fixing the date to be borne by any patent granted pursuant to the said last-mentioned application and determining whether the invention had been previously published in Saorstát Eireann.

(8) Every person who makes an application for a patent under the provisions of sub-sections (6) and (7) of this section may at any time before the grant of the patent apply to the comptroller for the revocation of any patent deemed under the provisions of section 27 of this Act to be a patent granted under this Act which bears date as of any day between the 6th day of December, 1921, and the commencement of this Part of this Act on the ground that the date of the application for the last-mentioned patent was subsequent to the date of the application for a patent or protection for an invention made to the Minister for Economic Affairs or the Minister for Industry and Commerce, or made in such British dominion or foreign state as is mentioned in sub-section (7) of this section, and the comptroller may on such application revoke the patent on the ground aforesaid. A decision of the comptroller on such an application for revocation of a patent shall be subject to an appeal to the law-officer.

Amend section 27 as follows:—In sub-section (1), page 14, lines 3 and 4, delete the words “7th day of December, 1921,” and substitute therefor the words “commencement of this Part of this Act,” and in line 59, after the words “Saorstát Eireann” add the words “and subject to the provisions of sub-section (8) of section 11 of this Act.”

Also delete section 28.

Also, amend section 11, sub-section (6), by inserting in page 8, line 55, after the word “this” the words “Part of this” and by deleting all the words from the word “and” in line 58 to the word “invention” in line 60 (both inclusive) and substituting therefor the words “shall be entitled to apply under this section within one year after the commencement of this Part of this Act for a patent in respect of the same invention, and.”

2. The following corresponding amendments are recommended in the case of Designs:—

Amend section 60, sub-section (7), page 31, by inserting after the word “this” in line 11, the words “Part of this” and by deleting all the words from the word “and” in line 14 to the word “Act” in line 16 (both inclusive) and substituting therefor the words “shall be entitled to apply under this section within one year after the commencement of this Part of this Act for the registration of the same design, and.”

Also, in page 31, to add at the end of section 60 the following new sub-sections:—

(8) Every person or the legal representative or assignee of every person who has obtained between the 6th day of December, 1921, and the commencement of this Part of this Act protection for a design in any British dominion (other than Great Britain and Northern Ireland), to which the provisions of section 148 of this Act have been applied by order of the Governor-General, or in any foreign state with respect to which the Governor-General has by order declared the said provisions to be applicable, shall be entitled to apply under this section within one year after the commencement of this Part of this Act for the registration of the same design, and shall be entitled to have the last-mentioned application dated and treated as having been made as of the date of the application for protection of the design in such British dominion or foreign state for the purpose of determining the respective priorities of the said last-mentioned application and any other application, fixing the date as of which the design is to be registered, and determining whether the design has been previously published in Saorstát Eireann.

(9) Every person who makes an application for the registration of a design under the provisions of sub-sections (7) and (8) of this section may at any time before the registration of the design apply to the comptroller for the cancellation of the registration of any design registered under the provisions of section 62 of this Act as of any date between the 6th day of December, 1921, and the commencement of this Part of this Act, on the ground that the date of the application for the last-mentioned registration was subsequent to the date of the application for registration made to the Minister for Economic Affairs or the Minister for Industry and Commerce, or made in such British dominion or foreign state as is mentioned in sub-section (8) of this section, and the comptroller may on such application cancel the registration of the design on the ground aforesaid. A decision of the comptroller on such an application for the cancellation of the registration of a design shall be subject to an appeal to the lawofficer.

Also, amend section 62 as follows:—

Delete in lines 7 and 8 the words “and was first so registered as of a date previous to the 7th day of December, 1921.”

Delete in lines 9 and 10 the words “the prescribed evidence of such registration,” and substitute therefor the words “the comptroller with certified copies for registration of the entries in the British register relating to the design.”

Delete lines 13-40 inclusive.

Add at the end of sub-section (3) the following words:—

“and its registration shall, so far as regards its operation in Saorstát Eireann, and subject to the provision of sub-section (9) of section 60 of this Act, be deemed to be a registration under this Act, and shall have in Saorstát Eireann a corresponding force and effect for all purposes, including its date, as the registration had in Great Britain at the date of the application for registration under this Act.”

3. The following corresponding amendments are recommended in the case of Trade Marks:—

Insert a new section immediately before section 85 as follows:—

(1) Every person who applied after the 6th day of December, 1921, and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or the Minister for Industry and Commerce in Saorstát Eireann for the registration of a trade mark shall be entitled to apply under the provisions of this Act within one year after the commencement of this Part of this Act for the registration of the same trade mark and shall be entitled to have the last mentioned application dated and treated as the date of the first-mentioned application for all purposes, including the date as of which the trade mark is to be registered.

(2) Every person or the legal representative or assignee of every person who has obtained between the 6th day of December, 1921, and the commencement of this Part of this Act protection for a trade mark in any British dominion (other than Great Britain and Northern Ireland) to which the provisions of section 148 of this Act have been applied by order of the Governor-General, or in any foreign state with respect of which the Governor-General has by order declared the said provisions to be applicable, shall be entitled to apply under the provisions of this Act within one year after the commencement of this Part of this Act for the registration of the same trade mark; and shall be entitled to have the last-mentioned application dated and treated as of the date of the application for protection of the trade mark in such British dominion or foreign state for all purposes including the date as of which the trade mark is to be registered.

(3) Every person who makes an application for the registration of a trade mark under the provisions of sub-sections (1) and (2) of this section may at any time before the registration of the trade mark apply to the comptroller for the removal from the register of any trade mark registered under the provisions of section 85 of this Act as of any date between the 6th day of December, 1921, and the commencement of this Part of this Act and registered subsequently to the date as of which the trade mark applied for might be registered, on any grounds on which opposition to registration under section 87 of this Act might be based, and the comptroller may on such application remove the trade mark from the register on the grounds aforesaid. A decision of the comptroller on such an application shall be subject to an appeal to the law officer.

Also, amend section 85 as follows:—

Delete in lines 3 and 4 the words “and was first so registered as of a date previous to the 7th day of December, 1921.”

Delete in lines 5 and 6 the words “the prescribed evidence of such registration” and substitute therefor the words “the comptroller with certified copies for registration of the entries in the British register relating to the trade mark.”

Delete lines 9-36 inclusive.

Delete in sub-section (3), lines 42 and 43, the words “and also subject to any further limitations imposed by this Act and applicable to such trade mark,” and substitute therefor the words “and its registration shall, so far as regards its operation in Saorstát Eireann and subject to the provisions of sub-section (3) of the next preceding section of this Act, be deemed to be a registration under this Act, and shall have in Saorstát Eireann a corresponding force and effect for all purposes, including its date, as the registration had in Great Britain at the date of the application for registration under this Act.”

D.

In the following three respects the Bill confers a special copyright protection in the case of works first published in Saorstát Eireann, or if unpublished, in the case of works of which the authors are citizens of or resident in Saorstát Eireann:—

1. The effect of section 60 sub-section (2), sections 168 and 177 is, in such cases, to confer copyright during the life of the author and fifty years afterwards on the author of an artistic work defining a design, although the design is capable of being registered under Part III. of the Act.

In other cases such artistic work would be entitled to protection under Part III. only, that is to copyright for 5 years with a possible extension to 15 years.

2. The effect of section 151, sub-section (1), paragraph (vi) and section 176, sub-section (1) is, in such cases, to improve the protection given to authors in the matter of the reading or recitation in public of extracts from their works.

3. The effect of section 151, sub-section (3), section 176, sub-sections (2) and (3) and section 178 is, in such cases, to improve the protection given to authors in the matter of the unauthorised public reproduction of their works.

It has been pointed out that such special protection to works first published in Saorstát Eireann and to authors who are citizens of or resident in Saorstát Eireann, may be held to be an infraction of the International Convention for the protection of literary and artistic works, which provides that each contracting country must afford to the nationals of other contracting countries the same protection as it affords to its own nationals.

With the object, therefore, of extending the three cases of superior protection to authors of all countries, and avoiding any infraction of the Convention, the following amendments are recommended:—

1. In section 60, sub-section (2), line 51, delete the word “Parts” and substitute the word “Part” and delete the word and figure “and VII.”

In section 168, sub-section (2), line 52, delete the word and figure “Part VII” and substitute therefor the words “in the next following section of this Act” (the section referred to being the new section next recommended).

Insert a section immediately after section 168 as follows:—

(1) This Part of this Act shall apply to an artistic work defining a design if—

(a) in the case of a published work, the work was first published after the commencement of this Part of this Act, or

(b) in the case of an unpublished work, the work was made after the commencement of this Part of this Act.

(2) For the purpose of the application under this section of this Part of this Act to an artistic work defining a design, “copyright” shall include the sole right—

(a) to publish the design defined in the work,

(b) to authorise the industrial application of the design.

(3) Where, in the case of an artistic work defining a design to which by virtue of this section this Part of this Act applies the author was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person and the design defined in the work is used or intended to be used for an industrial purpose there shall, in the absence of any agreement to the contrary, be deemed to be reserved to the author a right to restrain the use of the design for any other industrial purpose.

2. Number paragraph (vi.) of section 151, sub-section (1) as (vi.) (a).

In page 55, section 151, sub-section (1), paragraph (VI.), delete all the words after “published” in line 21 to the figures “1922” (inclusive) in line 23 and substitute therefor the words “after the commencement of this Part of this Act.”

Add a new sub-paragraph (b) as follows:—

“(b) in the case of a work which was first published after the commencement of this Part of this Act the reading or recitation in public as part of a lecture, address, sermon, or speech by one person of any reasonable extract from the work.”

3. In page 55, number sub-section (3) of section 151 as (3) (a) In page 55, section 151, sub-section (3), delete all the words after the word “published” in line 37 to the figures “1922” in line 39 (inclusive), and substitute therefor the words “after the commencement of this Part of this Act.”

In page 55, section 151, insert at the end of sub-section (3) new paragraphs (b) and (c) as follows:—

(b) in the case of a work first published after the commencement of this Part of this Act copyright shall also be deemed to be infringed by any person who permits a theatre, hall, room, or other place to be used for the public performance for profit of the work without the consent of the owner of the copyright, unless such person was not aware and had no reasonable grounds for suspecting that the performance would be an infringement of copyright.

(c) Every person who permits a theatre, hall, room, or other place to be used for a performance which is under the foregoing paragraph an infringement of the copyright in a work shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding fifty pounds.

Insert a new section immediately after section 151 as follows:—

(1) It shall be the duty of the proprietor of every theatre, hall, room, or other place, in which public entertainments are held to keep or cause to be kept in such theatre, hall, room, or place a register in the form prescribed by the Minister, of all public entertainments held in such theatre, hall, room, or place, and within twelve hours after every such public entertainment to enter or cause to be entered in such register such particulars of the entertainment and of the person holding the same as shall be prescribed by regulations made by the Minister under this section.

(2) Every register kept in pursuance of this section may be inspected at all reasonable times by any officer of the Minister duly authorised by him in that behalf or by any person who is the author of or owner of the copyright in any published work.

(3) The Minister may by Order make regulations prescribing all or any of the following matters, that is to say:—

(a) the form of the register to be kept in pursuance of this section;

(b) the particulars to be entered in the register in respect of every entertainment, and of the person holding same;

(4) If any person who is required by this section to keep, or cause to be kept any such register as aforesaid—

(a) fails to keep such register or to cause the same to be kept; or

(b) fails to make or cause to be made in such register within the time prescribed by this section any entry required by or under this section to be made therein; or

(c) fails to produce such register for the inspection of any person entitled under this section to inspect the same or obstructs or impedes any such person in making such inspection; or

(d) wilfully or negligently makes or causes or permits to be made in such register any entry which is false or misleading in any material particular,

shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a penalty not exceeding ten pounds.

(5) For the purposes of this section—

(a) inspection of a register includes taking copies thereof or of any part thereof, and

(b) “entertainment” means the presentation of any dramatic work as defined in section 174 of this Act or the giving of a lecture as similarly defined.

Delete sections 176, 177, 178 and the last paragraph of section 184.

It is further recommended that amendments be made in the Bill to the effect that the existence of copyright during the life of the author and fifty years afterwards in artistic work defining a design, shall be dependent on the registration of such copyright and the owner thereof in a register kept for the purpose by the comptroller; and providing (by an amendment of section 71) for the cancellation of a registered design on the ground that the registration was made without the consent of the owner of the copyright in the artistic work.

The object of the first amendment is to meet the difficulty that a person proposing to make an industrial application of artistic work could not, without such a register, ascertain whether the industrial application would involve an infringement of copyright; the second amendment is to enable the rectification of the register of designs in case a design has been registered without the consent of the owner of copyright in the artistic work defining the design.

E. MISCELLANEOUS AMENDMENTS.

SECTION 3.

In page 5, line 33, after the word “matter” insert the words “and includes an alleged invention.”

In page 6, line 9, after the word “described” insert the words “and claimed.”

This latter amendment is rendered necessary by the consideration that, for several reasons, it is essential that an applicant for a patent should not only describe the invention but state with accuracy and precision the part of the invention for which he claims protection.

For the same reason a number of similar amendments are recommended below.

SECTION 5.

The Minister for Industry and Commerce is of opinion that for reasons of economy and efficiency the office should be divided into two instead of three branches.

The following amendments are accordingly recommended:—

In sub-section (2), line 1, delete the word “three” and substitute therefor the word “two.”

In sub-section (2), line 6, after the word “Designs” insert the words “and Trade Marks.”

In sub-section (2), line 8, after the word “designs” insert the words “and trade marks.”

Delete paragraph (c) of sub-section (2).

SECTION 6.

In sub-section (2), line 23, delete the words “salary or fees” and substitute therefor the word “remuneration.”

Having regard to the provisions of the Civil Service Regulation Act, 1924, insert at the end of the sub-section (2) a new sub-section as follows:—

(3) Subject to his being in good health at the time of appointment, the comptroller shall if appointed permanently be deemed to be employed in the permanent Civil Service of the State, notwithstanding that he has not been appointed with a certificate from the Civil Service Commissioners and there may be granted to him on retirement or on death to his legal personal representatives such superannuation and other allowance or gratuity as might under the Superannuation Acts for the time being in force have been granted, had he been employed in the permanent Civil Service of the State.

SECTION 10.

In sub-section (4), line 34, after the word “drawings” add the words “other than such specifications and drawings as have reference to British patents which in accordance with the provisions of this Act have force in Saorstát Eireann.” The object of this amendment is to obviate the expense of keeping on sale the very large number of specifications which will be lodged in connection with British patents extended to Saorstát Eireann.

SECTION 11.

Sub-sections (3), (4) and (5). It appears that the requirement of a statutory declaration will be of no advantage and may cause difficulty. The following amendments are recommended with the object of making a statutory declaration essential only when prescribed by Rules:—

Delete sub-sections (3), (4) and (5), and substitute therefor the following sub-sections:—

(3) The application must contain a declaration to the effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application one at least of the applicants, claims to be the true and first inventor, and for which he desires to obtain a patent, and must be accompanied by either a provisional or complete specification.

(4) The declaration required by this section may be either a statutory declaration or not, as may be prescribed.

SECTION 12.

Sub-section (1): It appears to be more convenient administratively that the statement referred to in this sub-section should accompany, and not be included in, the specification.

For this purpose, in line 3 delete the word “contain” and substitute therefor the words “be accompanied by.”

Similar amendments are recommended below.

In sub-section (2), line 10, after the word “performed” insert the words “and must end with a distinct statement of the invention claimed.”

In sub-section (3), line 15, delete the word “containing” and substitute therefor the words “accompanied by.”

In line 16 delete the word “described” and substitute the word “claimed.”

In line 18 after the word “Agent” insert the words “or by a person registered in the register of patent agents in London.”

In lines 19 and 20, delete the word “either” and the words “or in the office established under this Act.”

In line 21, delete the word “described” and substitute the word “claimed.”

SECTION 17.

In sub-section (5), line 8, insert after the word “months” the words—“and that, where an application for a British patent was pending when the complete specification was deposited the comptroller may grant without payment of fees such extension of time for the acceptance of the complete specification as he thinks fit.”

SECTION 18.

In sub-section (1), line 13, delete the word “described” and substitute the word “claimed.”

In line 14, before the word “described” insert the words “claimed or.”

In sub-section (2), line 20, before the word “described” insert the words “claimed or.”

In sub-section (3), line 26, delete the word “described” and substitute the word “claimed.” In line 27, before the word “described” insert the words “claimed or.”

In sub-section (4), line 36, delete the word “described” in two places and substitute the word “claimed.”

SECTION 19.

In sub-section (1), line 44, delete the word “described” and substitute the word “claimed.” Line 45, delete the word “described” and substitute the word “claimed.”

In sub-section (2), line 49, delete the word “described” in two places and substitute the word “claimed.”

SECTION 22.

In paragraph (b), line 33, delete the words “the date of the commencement of this Part of this Act,” and substitute therefor the words “the 6th day of December, 1921.”

In paragraph (c), line 40, after the word “publication” insert the words “before the date of the application.”

In paragraph (d), line 45, delete the word “described” and substitute the word “claimed.”

In paragraph (f), line 55, after the word “describes” insert the words “or claims.”

In paragraph (g), line 63, after the word “describes” insert the words “or claims.”

SECTION 23.

Delete paragraph (d) of sub-section (2) and substitute therefor the following:—

(d) “Where an application for a British patent was pending when the complete specification was deposited the comptroller may grant without payment of fees such extension of time for the sealing of the patent as he thinks fit.”

SECTION 26.

In sub-section (1), paragraph (d), line 41, insert after the word “answerable” the words “according to law”. Delete all the words from the word “all” in line 42 to the word “by” in line 43 (both inclusive).

In sub-section (2), lines 47 and 48, delete the words “describe more than one invention” and substitute therefor the words “contain more than one claim.”

SECTION 27.

In sub-section (1), for the purpose of making it clear that a British patent is extended to Saorstát Eireann with all the incidents attaching to it at the date of transfer (e.g., extension of time, restoration of lapsed patents, revocation, licences of right, etc.), and, on the other hand, that such a patent will be liable to be modified under the Act in all respects as if it were a patent granted under the Act, the following amendment is recommended:—

Delete lines 60-64 inclusive and substitute therefor the following (which will come immediately after the words “and subject to the provisions of sub-section 8 of section 11 of this Act” proposed at C above, page x, to be inserted here)—

“be deemed to be a patent granted under this Act, and shall have in Saorstát Eireann a corresponding force and effect for all purposes, including its date, as the patent had in Great Britain at the commencement of this Part of this Act.”

SECTION 31.

Sub-section (2)—In order to obviate any hardship that may arise, in the case of British patents extended to Saorstát Eireann, owing to the date of payment of renewal fees being more or less contemporaneous with the commencement of this Part of this Act, the following amendment is recommended:—

Add to sub-section (2) the following words:—

“and that on the first occasion when fees become payable in respect of British patents which, in accordance with the provisions of this Act have force in Saorstát Eireann, the comptroller may if he thinks fit on the application of the patentee and without payment of any additional fee enlarge the time to such extent as may be applied for but not exceeding six months from the commencement of this Part of this Act.”

SECTION 33.

Sub-section (1). Owing to the amendments recommended of section 27 delete all the words after the word “granted” in line 2, to the figures “1921” in line 4 (inclusive).

SECTION 39.

For the purpose of adhering to the existing law as regards revocation of a patent by the Court, the following amendments are recommended:—

Delete sub-section (1) and substitute therefor the following sub-sections:

(1) No proceeding by scire facias shall be taken to repeal a patent.

(2) Revocation of a patent may be obtained on petition to the Court.

(3) Every ground on which a patent might at common law be repealed by scire facias shall be available by way of defence to an action of infringement and shall also be a ground of revocation under this section.

SECTION 41.

In sub-section (2), paragraph (a), line 25, after the word “patent” insert the words “or in the case of British patents which in accordance with the provisions of this Act have force in Saorstát Eireann three years from the commencement of this Part of this Act.” The object of this amendment is to allow a reasonable period for working the patent in Saorstát Eireann before proceedings can be taken for the abuse of monopoly rights.

SECTION 46.

To enable the Court to grant relief in respect of particular claims, it is recommended to insert a new section, immediately after section 46, as follows:—

Notwithstanding anything to the contrary appearing in section 37 of this Act, if the Court in any action for infringement of a patent finds that any one or more of the claims in the specification, in respect of which infringement is alleged, are valid, it shall, subject to its discretion as to costs and as to the date from which damages should be reckoned, and to such terms as to amendment as it may deem desirable, grant relief in respect of any of such claims which are infringed without regard to the invalidity of any other claim in the specification. In exercising such discretion, the Court may take into consideration the conduct of the parties in inserting such invalid claims in the specification or permitting them to remain there.

SECTION 51.

In line 5 delete the word “special.”

SECTION 52.

Delete paragraph (a) of sub-section (1), since there is no reason why the publication of an invention in a British specification published more than 50 years before the date of application should not invalidate the patent.

In sub-section (2) delete all the words from the word “publication,” in line 42 to the word “him,” in line 44 (both inclusive) and substitute therefor the words “matter published was derived or obtained from him and that the publication was made without his knowledge and consent.”

SECTION 57.

In order to make this section applicable to ships registered in the British dominions as well as in Great Britain, the following amendments are recommended:—

In sub-section (1) delete all the words after the word “use” in line 35, to the word “area” in line 38, inclusive, and substitute therefor the words “within the area of jurisdiction of the Government of Saorstát Eireann, of an invention for the purposes of the navigation of a British vessel registered at a port or place outside Saorstát Eireann or of a foreign vessel, or the use of an invention in any such vessel within that area.”

In sub-section (2), line 42, delete the words “foreign state,” and substitute the word “country.”

SECTION 59.

For the purpose of ensuring that all patent agents doing business with the comptroller shall reside or have a place of business in Saorstát Eireann—in sub-section (1), paragraph (a), line 15, delete the words “Great Britain, or Northern Ireland.”

With the object of allowing applicants for patents to do business with the comptroller through a duly authorised agent, though not a patent agent, delete sub-section (3).

And for the proper control of such duly authorised agents (not being patent agents)—

Add, immediately after section 59, a new section as follows:—

(1) Rules under this Act may authorise the comptroller to refuse to recognise as agent in respect of any business under this Part of this Act any person whose name has under the provisions of sub-section (2) of section 59 of this Act been removed from the register of patent agents, or any company which, if it had been an individual, the comptroller could refuse to recognise as such agent.

(2) Where a company or firm acts as agents, such rules as aforesaid may authorise the comptroller to refuse to recognise the company or firm as agent if any person whom the comptroller could refuse to recognise as an agent acts as director or manager of the company or is a partner in the firm.

(3) The comptroller shall refuse to recognise as agent in respect of any business under this Part of this Act any person who neither resides nor has a place of business in Saorstát Eireann.

SECTION 60.

In sub-section (1), line 49, after the word “Eireann” insert the words “or in the late United Kingdom prior to the establishment of Saorstát Eireann.”

In sub-section (4), page 30, line 60, after the word “may” insert the words “except where the refusal is given on a ground mentioned in section 134 of this Act.”

SECTION 61.

The deletion of this section is recommended on the ground that refusal of registration of a design is an imperfect remedy for the evil which the section is intended to prevent.

The desired object can be more appropriately attained by amendment of the Merchandise Marks Act, 1887.

Further, under sections 80 and 134, the comptroller has discretion to refuse registration of a design indicative of Saorstát Eireann origin if in fact the article is not of Saorstát Eireann origin.

SECTION 71.

In sub-section (1) paragraph (a), line 35, delete the words “prior to” and substitute therefor the words “or in the late United Kingdom prior to the establishment of Saorstát Eireann before.”

SECTION 73.

In line 32 delete the word “shall” and substitute the word “may.”

SECTION 75.

In order to make provision for the control of agents of applicants for registration of designs—

Add immediately after section 75, a new section as follows:—

(1) Rules under this Act may authorise the comptroller to refuse to recognise as agent in respect of any business under this Part of this Act any person whose name has under the provisions of sub-section (2), of section 59, of this Act, been removed from the register of patent agents, or any company which, if it had been an individual, the comptroller could refuse to recognise as such agent.

(2) Where a company or firm acts as agents such rules as aforesaid may authorise the comptroller to refuse to recognise the company or firm as agent, if any person whom the comptroller could refuse to recognise as agent acts as director or manager of the company or is a partner in the firm.

(3) The comptroller shall refuse to recognise as agent in respect of any business under this Part of this Act any person who neither resides nor has a place of business in Saorstát Eireann.

SECTION 78.

In paragraph (e), line 42, delete the words “except by order of the Minister.”

The effect of the amendment is to leave the question of distinctiveness to the comptroller, subject to appeal to the Minister or the court under section 82.

SECTION 81.

The deletion of this section is recommended for like reasons as the deletion of section 61.

SECTION 86.

In sub-section (1), line 53, delete the words and figure “sub-section (5)” and substitute the words “paragraph (e).”

For administrative convenience, insert before sub-section (2) a new sub-section as follows:—

“In any case in which he deems it expedient so to do the comptroller may cause an application for registration of a trade mark to be advertised before the acceptance thereof.”

In lines 58 and 59, of sub-section (2), delete the words “and was first so registered as of a date previous to the 7th day of December, 1921,” and substitute therefor the words “at the commencement of this Part of this Act.”

SECTION 112.

In sub-section (1), line 50, insert after the word “by” the words “the provisions of sections 80 and 134 of.”

The object of this amendment is to ensure that the validity of a registration in Part A cannot be questioned except on the specific grounds mentioned in the section.

SECTION 117.

The object of this section is to enable any Minister to have a mark indicating the quality, origin, mode of manufacture, etc., of any goods registered and protected like a trade mark. For example, under the Dairy Produce Act, 1924, the Minister for Agriculture is to have the “National Mark” indicating the quality of butter registered as soon as he is enabled to do so by legislation. This section is intended to give him and other Ministers such power.

But such a mark is different from an ordinary trade mark. A trade mark is one that connects a special person with special goods, while this mark is one that merely indicates quality, etc., and, therefore, resembles the “Standardisation mark” dealt with in section 120. Further, it seems to be settled law that there cannot be a licence to use any ordinary trade mark; for the grant of a licence by the proprietor to another person would destroy the essential feature of a trade mark, namely, something that connects a particular person with particular goods. A trade mark can, therefore, only be assigned along with the goodwill of the business.

For these reasons, it seems that this section ought to be re-cast, on the lines of section 120, in order to make it clear that such a mark is different from an ordinary trade mark, though power is given to register and protect it like a trade mark.

There seems to be no reason against giving a licence for a mark of this kind.

Subject to the approval of the Parliamentary Draftsman, the following amended section is proposed instead of the present section 117. The references in the existing section to the acquiry by the Minister of an ordinary trade mark are omitted, as being inconsistent with the definition of a trade mark, and, as it seems, unnecessary for the intention of the section,—

117.—(1) Any Minister may procure the registration in Part A of the register of a mark intended to indicate the origin, material, mode of manufacture, quality, accuracy, or other characteristic of any goods. When so registered, such mark shall be deemed to be in all respects, save as otherwise provided by this section, a registered trade mark, and the Minister who has procured its registration shall be deemed to be the proprietor thereof.

(2) An application for the registration of a mark under sub-section (1) of this section shall be made in the prescribed manner, and save as aforesaid the registration shall be subject to the provisions of the Act relating to the registration of a trade mark in Part A of the register.

(3) Any Minister may procure the registration of a mark intended to indicate the origin, material, mode of manufacture, quality, accuracy or other characteristic of any goods (whether registered under this section or not so registered) in any register maintained in any place outside Saorstát Eireann if and so far as and subject to such conditions as such registration is permitted by the law regulating such register, and in any such case may procure himself to be entered as the proprietor of the trade mark so registered.

(4) It shall be lawful for a Minister to grant to any person a licence to use any mark of which he has procured the registration under the provisions of sub-sections (1) and (2) of this section, and to apply the same to any goods or classes of goods in respect of which it has been registered, and also to grant to any person a licence to use any mark of which he has procured the registration under the provisions of sub-section (3) of this section and to apply the same to any goods or classes of goods in respect of which it has been registered, if and so far as he is permitted so to do by the law regulating the registration of the last-mentioned mark.

(5) Every licence granted by a Minister under the foregoing sub-section shall contain provisions ensuring that the mark to which such licence relates shall be applied by the licensee only to goods grown, manufactured, or produced in Saorstát Eireann, and any such licence may also contain such provisions, conditions, and restrictions as the Minister may think proper for ensuring that the mark to which such licence relates shall only be applied by the licensee to goods of a specified quality or description.

(6) A Minister may at any time take such lawful steps, whether by action, or prosecution at law or otherwise, as he shall think proper to restrain or punish infringements of or otherwise to protect any mark of which he shall be the registered proprietor under this section, and may take such steps in Saorstát Eireann or in any other country or place in which he is so registered.

(7) In this section the word “Minister” means a Minister, head of a Department of State under the Ministers and Secretaries Act, 1924 (No. 16 of 1924).

SECTION 124.

Since a licence to use a trade mark cannot be legally given, the following amendments are recommended:—

In sub-section (2), page 47, line 1, after the word “patent” insert the word “or” and before the words “trade mark” insert the words “as mortgagee or otherwise to any interest in a.”

In sub-section (3), line 7, after the word “patent” insert the word “or” and in line 8 delete the words “or trade mark”; in line 11, after the word “patent” insert the word “or” and delete the words “or trade mark.”

SECTION 129.

In line 22, insert before the words “the patent” the words “any claim in the specification of”; and before the word “registration” insert the words “or of the.”

In line 25, delete the word “patent” and substitute therefor the word “claim.”

SECTION 146.

Add at the end of sub-section (3) the words “or a registered trade mark.”

SECTION 148.

To meet the cases of applications pending in Convention countries at the date of the commencement of the Act, the following amendment is proposed:—

In sub-section (1), paragraph (a), line 30, delete the word “and,” and add the following words—

“or if the application for protection in a foreign state was made before the passing of this Act in the case of a patent within twelve months, and in the case of a design or trade mark within four months, from the date of the passing of this Act; and.”

In sub-section (1), paragraph (b), line 35, delete the words “this country” and substitute the words “Saorstát Eireann.”

SECTION 150.

Sub-section (1), paragraph (b), page 54, in line 8, after the word “within” insert the words “Saorstát Eireann or.”

SECTION 152.

In lines 50 and 51 delete the words “subsists at the date of the passing of this Act,” and substitute therefor the words “subsisted on the 16th day of December, 1911.”

SECTION 165.

In sub-section (2), page 60, delete all the words after the word “Eireann” in line 41 to the word “extends” in line 42 (inclusive).

SECTION 171.

In sub-section (1), line 18, after the word “dominions” insert the words “and protectorates.”

SECTION 174.

In sub-section (5), page 65, line 42, after the word “state” where it first occurs, insert the words “dominion or British possession.”

SECTION 175.

In sub-section (1), line 50, after the word “Ireland” insert the words “and a copy of the book to the authority having the control of the Library of Trinity College, Dublin.”

In line 51, after the word “trustees” insert the words “and authority”;

In line 54, after the word “Ireland” insert the words “or of the authority having the control of the Library of Trinity College, Dublin.”

In sub-section (2), page 66, lines 8 and 9, delete the words “The Library of Trinity College, Dublin, the Library of the National University of Ireland.”

In sub-section (3), line 17, after the word “Ireland” insert the words “the authority having the control of the Library of Trinity College, Dublin.”

It is recommended that further consideration be given by the Department of Industry and Commerce to the following matters, with a view to a modification of the Bill in these respects if found to be desirable:—

1. The provisions in section 164 restricting copyright in Government publications to 50 years, and relating to the ownership of copyright in works published under the control of the British Government;

2. Provision for relief from removal fees in the case of “provisional” and foreign applicants, in consideration of the period between the Treaty and the commencement of the Act during which they had no protection;

3. The possibility of utilising Iris Oifigiúl as the Official Journal.

4. The possibility of having searches by patent agents in the records of the National Library, Dublin, or elsewhere, instead of the restriction of such searches to the records in London.