Ireland's Patents Act, 1992 was flawed when originally enacted because it failed to properly implement a mandatory provision of the European Patent Convention (EPC).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).