Industrial Designs Act, 2001

Rights of State in respect of registered designs.

86.—(1) Subject to this section, the registration of a design shall have the same effect as against the State as it has against an individual.

(2) A Minister of the Government may, by himself or herself or by such of his or her officers, servants or agents as may be authorised in writing by him or her or by any other person acting on his or her behalf, at any time after the application for registration of a design under this Act, use the design for the service of the State—

(a) on such terms as may, either before or after the use thereof, be agreed on with the consent of the Minister for Finance between that Minister of the Government and the applicant or, as the case may be, the registered proprietor, or

(b) in default of agreement, on such terms as may be settled in the manner provided under this section,

and the terms of any agreement or licence concluded between the applicant or, as the case may be, the registered proprietor and any person other than a Minister of the Government shall be inoperative so far as it concerns the use of the design for the service of the State.

(3) Where a registered design has, before the date of registration or, where priority is claimed, the date of priority, been duly recorded in a document or embodied in a model by a Minister of the Government (such design not having been communicated directly or indirectly by the applicant for the registration or, as the case may be, the registered proprietor) any Minister of the Government or such of his or her officers, servants or agents as may be authorised in writing by him or her, may use the design so recorded for the service of the State free of royalty or any other payment to the applicant or, as the case may be, the registered proprietor, notwithstanding the existence of the design right.

(4) For the purposes of subsection (3), where, in the opinion of that Minister of the Government, the disclosure to the applicant or, as the case may be, the registered proprietor of the document recording the design or the model embodying the design would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of the applicant or registered proprietor or to any independent expert mutually agreed upon.

(5) In case of a dispute as to the use of a design under this section, the terms therefor or as to the existence or scope of any record referred to in subsection (3), the matter shall be referred to the High Court for decision, and the High Court shall have the power to refer the whole matter or any question or issue of fact thereon to be heard by an arbitrator upon such terms as it may direct.

(6) The High Court or arbitrator, in setting a dispute referred to in subsection (5), shall be entitled to take into consideration any benefit or consideration which the applicant or registered proprietor or any other person interested in the design may have received directly or indirectly from the State in respect of such use of the design.

(7) Notwithstanding subsection (5), an arbitrator appointed under that subsection shall make his or her finding within 3 months of the reference from the High Court, or within such further period of time as may be agreed with the High Court.

(8) In any proceedings under this section, the Minister of the Government who is a party to the proceedings may—

(a) put in question the validity of the relevant registration without applying for its invalidation, or

(b) if the registered proprietor of the design is party to the proceedings, apply for the invalidation of the registration on any ground upon which a registration may be invalidated under this Act.

(9) The right to use a design for the service of the State under this section shall include the power to sell or rent, or offer for sale or rent, any products made in pursuance of such right which are no longer required for the service of the State.

(10) Nothing in this section shall affect the right of the State or of any person deriving title directly or indirectly from the State to sell, rent or use any articles forfeited under the Customs Acts.

(11) Any person who acquires products disposed of, sold or rented in the exercise of powers conferred by this section and any person claiming under him or her shall have the power to deal with the products in the same manner as if they had been made pursuant to a design right held on behalf of the State.

(12) In this Act, “service of the State” means a service financed out of moneys charged on or advanced out of the Central Fund or moneys provided by the Oireachtas or by a local authority for the purposes of the Local Government Act, 1941 .