Patents Act, 1964

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PART IX.

Miscellaneous.

Patent agents.

86.—(1) Subject to such exceptions as may be prescribed or as, in any particular case, the Controller may direct, whenever under this Act any act has to be done by or to any person in connection with a patent or any procedure relating to a patent or the obtaining thereof, the act may under and in accordance with rules made under this section be done by or to an agent (in this Act referred to as a patent agent) of such person duly authorised in the prescribed manner.

(2) There shall continue to be kept at the Office a register called the register of patent agents and a person acting for gain shall not, either alone or in partnership with any other person, practise, describe himself or hold himself out as a patent agent, or permit himself to be so described or held out, unless he is registered as a patent agent in the register of patent agents or, as the case maybe, unless he and all his partners are so registered; and a company acting for gain shall not practise, describe itself or hold itself out or permit itself to be described or held out as aforesaid unless every director of the company and, if the company has a manager who is not a director, that manager, is registered as aforesaid:

Provided that if in any circumstances he thinks it right so to do the Minister may authorise any person whom he considers suitable to act as a patent agent in a particular case or at a particular time:

Provided further that it shall not be an offence under this section if the legal personal representative of a deceased patent agent carries on the business or practice of that deceased patent agent for a period not exceeding three years from the death of the patent agent, or for such further period (if any) as the Court allows, and is himself registered as a patent agent or employs a registered patent agent or a person authorised under this section to act as a patent agent to manage the business or practice on his behalf.

(3) Any person who—

(a) resides in the State,

(b) has a place of business in the State,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be registered in the register of patent agents, and a partnership shall be so eligible if every partner of the firm is registered in accordance with the provisions of this section, and a person or firm so eligible shall on application in the prescribed form and manner and on payment of the prescribed fee be so registered.

(4) Any person who contravenes the provisions of this section shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding, in the case of a first offence, twenty pounds, and in the case of a second or subsequent offence, one hundred pounds.

(5) Notwithstanding subsection (4) of section 10 of the Petty Sessions (Ireland) Act, 1851 , proceedings for an offence under this section may be begun at any time within twelve months from the date of the offence.

(6) Nothing in this section shall be construed as prohibiting solicitors from taking such part in proceedings under this Act as has heretofore been taken by solicitors in connection with a patent or any procedure relating to a patent or the obtaining thereof.

(7) A patent agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 , (which prohibits the preparation for reward of certain instruments by persons not legally qualified) by reason only of the preparation by him of a deed assigning the right to make an application for a patent, a deed assigning from the patent agent a patent granted to him or any other document (not being a deed) for use in proceedings under this Act before the Controller or the Court.

(8) A person (in this subsection referred to as an agent) duly authorised by any person under subsection (1) of this section to act as his agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and that person, cease to act as agent for that person.

(9) There shall continue to be kept at the Office a register called the register of clerks and the Minister may make rules for the management of the register and may by such rules prescribe the qualifications and conditions for eligibility for and the fees to be paid on registration in such register.

(10) Any person registered in the register of patent agents who—

(a) ceases to be eligible to be so registered, or

(b) applies to be removed from the register,

may be removed by the Controller from the register of patent agents, but no person shall be so removed (except on his own application) without being given an opportunity of being heard.

(11) (a) Where a person registered in the register of patent agents is found by the Controller, after due inquiry by the Controller (including the hearing by the Controller of representations, if any, by the person), to have been guilty of conduct disgraceful to that person in a professional respect, the Controller may, if he sees fit, decide that the name of that person should be erased from the register of patent agents.

(b) On making a decision under this subsection, the Controller shall forthwith send by post to the person to whom the decision relates, at his address as stated in the register of patent agents, a notice in writing stating the decision, the date thereof and the reason therefor.

(c) A person to whom a decision of the Controller under this subsection relates may, within the period of fourteen days beginning on the date of the decision, on giving notice to the Controller in the prescribed manner, apply to the Court for cancellation of the decision, and if he so applies—

(i) the Court, on the hearing of the application, may either—

(I) cancel the decision, or

(II) confirm the decision and direct the Controller to erase the name of such person from the register of patent agents,

(ii) if at any time the Controller satisfies the Court that such person has delayed unduly in proceeding with the application, the Court shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register,

(iii) the Court may, subject to section 76 of this Act, direct how the costs of the application are to be borne.

(d) Where a person to whom a decision of the Controller under this subsection relates does not, within the period of fourteen days beginning on the date of the decision, apply to the Court for cancellation of the decision, the Controller may apply ex parte to the Court for confirmation of the decision and, if the Controller so applies, the Court, on the hearing of the application, shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register of patent agents.

(e) The decision of the Court on an application under this subsection shall be final, save that, by leave of the Court, an appeal, by the Controller or the person concerned, from the decision shall lie to the Supreme Court on a specified question of law.

(f) On erasing the name of a person from the register of patent agents under this subsection, the Controller shall forthwith send by post to such person, at his address as stated in the register of patent agents, notice in writing of the erasure.

(g) A person whose name has been erased from the register of patent agents under this subsection may at any time be restored to the register by special direction of the Controller but not otherwise, and when a person is so restored to the register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by such person if he was then being registered for the first time) as the Controller thinks fit.

(12) The Minister may make rules for the management of the register of patent agents, and may by such rules prescribe any matter or thing referred to in this section as prescribed, and in particular may so prescribe the educational and professional qualifications and the conditions (including conditions relating to nationality or citizenship) for eligibility for registration in that register, and the maximum fees which may be charged by any person registered in the register of patent agents for such services in connection with the obtaining of patents as may be specified in such rules.

(13) Rules under this section may authorise the Controller to refuse to recognise as agent in respect of any business under this Act any person whose name, having been entered in the register of patent agents under this Act, has been removed therefrom.

(14) Rules under this section may authorise the Controller to refuse to recognise as agent in respect of any business under this Act a company or firm of which any director or manager or any partner (as the case may be) is an individual whom the Controller could refuse to recognise as an agent.