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1 January 2007

Guide to Changes Introduced by the Ireland Patents (Amendments) Act 2006

The 2006 Act fulfils several purposes, amending not only Ireland's Patents Act, but also the Trade Marks Act, the Industrial Designs Act, and the Copyright and Related Rights Act.

Some of the provisions are not yet in force, like those dealing with Ireland's obligations under the EPC 2000 and the Patent Law Treaty. This article confines itself to the amendments which are already in force, since the date of enactment of the legislation on December 11, 2006.
The main changes in the Patents Act are:

• Equal treatment for all WTO Countries
• Compulsory licence provisions rewritten
• Ground for revocation changed
• Groundless threats
• Deadline for appealing Controller's Decision
• Repeal of Transitional Provision 4

Equal treatment for all WTO Countries

The Patents Act 1992, as originally enacted, gave priority rights to applications filed in Paris Convention countries (and those with which Ireland had bilateral arrangements). These rights now extend to all WTO countries.

Many other minor amendments were required in order to give equal treatment to persons and companies from WTO countries which were not Paris Convention countries. To give one example, there is an exemption for infringing products which temporarily enter Ireland as part of the fixed equipment of a ship or airplane. The law had confined this to cases where the country of registration of that ship or airplane was a Paris Convention member, but this now extends to all WTO countries. In short, the entire Patents Act has been checked carefully for such instances of unequal treatment and appropriate corrections have been made.

Compulsory licence provisions rewritten

The compulsory licensing provisions of the Patents Act, 1992, pre-dated the harmonised TRIPs rules for such licenses. A wholesale revision of sections 70, 71 and 73 has now been carried out. The most important of the changes are:

• Previously a compulsory licence was available on the grounds that the demand for the invention was being met primarily through importation. Now, as long as the patentee is meeting demand for the invention either by manufacture in Ireland or by importation from a WTO country, no compulsory licence can be granted.
• Previously compulsory licences could be sought on the grounds that an export market was not being satisfied by the patentee. As a result of TRIPs, such licences can no longer be granted, since compulsory licences are only available in any WTO country to satisfy a demand in that country itself.
• The law provided, before the current revision, that special public interest considerations had to be taken into account in setting a royalty rate where a compulsory licence was granted for a food or medicine. Because of the TRIPs requirement of equal treatment for all fields of technology, that provision no longer applies.
• Before applying for a compulsory licence the Patentee must first be approached seeking a licence on reasonable terms.
• Compulsory licences can now be assigned along with the goodwill of the business to which the licence relates.

Ground for Revocation Changed - Section 58(D)

Ireland's Patents Act, 1992 was flawed when originally enacted because it failed to properly implement a mandatory provision of the European Patent Convention (EPC).
Under the EPC, only certain well defined grounds exist to revoke a European Patent, and since revocation actions can take place nationally in each member country, as well as under the EPO's opposition procedure, the grounds of revocation under each country's national laws should be strictly harmonised.
One of the grounds under the EPC (Article 138(1)(d) is: "The protection conferred by the patent has been extended".
This was implemented under the original Patnets Act, 1992 with the wording: "The protection conferred by the patent has been extended by an amendment of the application or the specification of the patent". The underlined wording implied that a patent might be invalid if the claim scope was broadened before grant of the patent, which was clearly not mentioned in the EPC as a ground for revocation.
Under the changes brought about by the 2006 Act, the wording of amended section 58(d) now reads: "The protection conferred by the patent has been extended by an amendment which should not have been allowed" It is not at all clear why the draftsperson has not simply copied the wording of the EPC, although the same wording is found in the United Kingdom Patent Act, 1977.
It is submitted that the additional words "by an amendment which should not have been allowed" must be meaningless if the section is to be interpreted as being identical to the EPC provision (which it ought to be).

Groundless Threats

An action for groundless threats is provided for any person aggrieved by unjustified threats of infringement proceedings under section 53. This right to take an action was however restricted under the original section, if the "threats" in question mentioned only the manufacture or the importation of the patented product or the use of the patented process.
The intention of this restriction was to limit the use of unjustified threats actions to secondary infringers, namely those who merely sold an infringing product without having made or imported it, or those who bought the infringing product and subsequently used it. The philosophy underlying this restriction is that while a patentee can prevent such secondary infringements if ultimately successful in court, some means should exist to restrain patentees from making unjustified threats against those who know nothing about the manufacture or importation of an allegedly infringing product.
There was a loophole in the original wording, however. If a patentee correctly identified the primary infringer, but worded the letter so that it included mention of the sale of a product (as well as its manufacture/importation), the primary infringer could initiate a court action for unjustified threats merely on account of this mention of the product's sale.
New wording has been introduced to exclude any action from being taken regarding: "a threat, made to a person who made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process". In other words, if the party against whom the threat was made is a primary infringer, they no longer have recourse to the threats action, irrespective of the wording of the letter.

Deadline for appealing Controller's Decision
The 3 month deadline for appealing to the High Court against a decision of the Controller is now calculated from date when he makes his written statement of grounds available (rather than from the date of the decision as previously was the case (section 96).

Repeal of Transitional Provision 4
Under the Patents Act, 1992, the term of patents granted under the Patents Act, 1964, was extended automatically from 16 to 20 years. As a balancing measure, the patentee's rights were limited during the final two years of this term, ostensibly preventing infringement action from being taken against a person who was making preparations to bring a product onto the market once the patent had actually expired, although this exemption was significantly weakened in the ppharmaceutical field by a caveat stating that it did not apply to acts of importation.
This measure has now been repealed entirely, and this repeal is no doubt influenced by the earlier introduction of the so-called Bolar provisions, which provide a comprehensive, Europe-wide regime for allowing third parties to prepare for the expiry of a pharmceutical patent by conducting the necessary trials and studies required to obtain marketing authorization.