S.I. No. 579/2015 - European Communities (Patent Agents) Regulations 2015.

Notice of the making of this Statutory Instrument was published in

“Iris Oifigiúil” of 1st January, 2016.

I, RICHARD BRUTON, Minister for Jobs, Enterprise and Innovation, in exercise of the powers conferred on me by section 3 of the European Communities Act 1972 (No. 27 of 1972) and for the purpose of giving further effect to Directive No. 2006/123/EC of the European Parliament and of the Council of 12 December 2006¹ on services in the internal market, hereby make the following regulations:

1. These Regulations may be cited as the European Communities (Patent Agents) Regulations 2015.

2. In these Regulations-

“Act of 1992” means the Patents Act 1992 (No. 1 of 1992);

“Regulations of 2006” means the European Communities (Patent Agents) Regulations 2006 ( S.I. No. 141 of 2006 ).

3. Section 2 of the Act of 1992 is amended—

(a) by the insertion of the following definitions:

“ ‘EEA Agreement’ means the Agreement on the European Economic Area signed at Oporto on 2 May 1992, as adjusted by all subsequent amendments to that Agreement;

‘EEA state’ means—

(a) a Member State (other than the State), or

(b) a state (other than a Member State) that is a contracting party to the EEA agreement;”, and

(b) by the substitution of the following definition for the definition of “patent agent”:

“ ‘patent agent’ except in section 94 has the meaning assigned to it by section 105 and a reference to a patent agent in this Act (except in section 94) or any other enactment shall be construed as including a reference to a patent attorney;”.

4. Section 106 of the Act of 1992 is amended—

(a) by the substitution of the following subsection for subsection (2):

“(2) Subject to the subsequent provisions of this section—

(a) a person established in the State shall not carry on the business of acting as a patent agent in the State unless that person is for the time being registered in the register;

(b) a person acting for gain shall not practise, describe himself or hold himself out as a registered patent agent or patent agent, or permit himself to be so described or held out, unless that person is for the time being registered in the register.”,

(b) in subsection (3) (amended by regulation 4 of the Regulations of 2006), by the substitution of “an EEA state” for “a Member State of the European Community”,

(c) in subsection (3A) (inserted by regulation 4 of the Regulations of 2006), in paragraph (a), by the substitution of “EEA state” for “Member State of the European Community”,

(d) in subsection (3B) (inserted by regulation 4 of the Regulations of 2006), in paragraph (a), by the substitution of “EEA State” for “Member State”,

(e) in subsection (3C) (inserted by regulation 4 of the Regulations of 2006), by the substitution of “EEA state” for “Member State”,

(f) in subsection (3D) (inserted by regulation 4 of the Regulations of 2006), by the substitution of “EEA state” for “Member State”, and

(g) in subsection 3(E) (inserted by regulation 4 of the Regulations of 2006)—

(i) in the definition of “applicable professional title”, by the substitution of “EEA state” for “Member State”,

(ii) in the definition of “applicable qualifications”, by the substitution of “EEA state” for “Member State”, and

(iii) in the definition of “person”—

(I) in paragraph (a), by the substitution of “an EEA state” for “a Member State of the European Community”, and

(II) in paragraph (b), by the substitution of “an EEA state and having its registered office, central administration or principal place of business within an EEA state” for “ a Member State of the European Community and having its registered office, central administration or principal place of business within the European Community”.

5. Section 107 of the Act of 1992 is amended by the substitution of the following subsection for subsection (1):

“(1) Any person who—

(a) resides in the State or in an EEA state,

(b) has a place of business in the State or in an EEA 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 and a person so eligible shall, on application in the prescribed form and manner and on payment of the prescribed fee, be so registered.”.

6. A person or partnership whose name was entered in the register of patent agents immediately before the commencement of these Regulations shall continue to be registered in the register of patent agents.

7. Section 109 of the Act of 1992 is amended—

(a) by the substitution of the following subsection for subsection (1):

“(1) The Minister may make rules for the management of the register and may by such rules prescribe any matter or thing referred to in section 107 or 108 as prescribed, and in particular may so prescribe—

(a) the educational and professional qualifications, and the conditions (including conditions relating to evidence of nationality or citizenship), which must be satisfied for eligibility for registration in the register;

(b) the conditions which must be satisfied by a partnership, body corporate or unincorporated body of persons for eligibility for registration in the register, including conditions relating to:

(i) evidence of establishment as a partnership, body corporate or unincorporated body;

(ii) evidence that a patent agent established in an EEA state (other than the State) is acting as a patent agent in accordance with the law of that state;

(iii) evidence that the partnership, body corporate or unincorporated body is performing the services of a patent agent in the State;

and

(c) the maximum fees which may be charged by any person registered in the register for such services in connection with the obtaining of patents as may be specified in such rules.”, and

(b) by the deletion of subsection (3).

8. Rule 81 of the Patent Rules 1992 ( S.I. No. 179 of 1992 ) is revoked.

GIVEN under my Official Seal,

17 December 2015.

RICHARD BRUTON,

Minister for Jobs, Enterprise and Innovation.

EXPLANATORY NOTE

(This note is not part of the Instrument and does not purport to be a legal interpretation.)

These Regulations, made pursuant to the European Communities Act 1972 , amend certain provisions of the Patents Act 1992 , relating to the criteria for entry into the register of patent agents.

1 OJ No. L376, 27.12.2006, p.36