Industrial and Commercial Property (Protection) Act, 1927

Rights of State in respect of patented inventions and registered designs.

130.—(1) A patent and the registration of a design shall respectively have to all intents the like effect as against the State as they have against a citizen:

Provided that any Minister head of a Department of State may, by himself or by such of his agents, contractors, or others as may be authorised in writing by him at any time after the application, make, use, or exercise the invention, or use, or apply the design for the services of the State on such terms as may, either before or after the use thereof, be agreed on with the approval of the Minister for Finance between such Minister and the proprietor, or, in default of agreement, as may be settled in the manner hereinafter provided, and the terms of any agreement or licence concluded between the proprietor and any person other than a Minister shall be inoperative so far as concerns the making, use, or exercise of the invention or the use or application of the design for the service of the State:

Provided further that, where an invention which is the subject of any patent, or any registered design has, before the date of the patent or of the registration, been duly recorded in a document by, or been tried by or on behalf of any such Minister (such invention or design not having been communicated directly or indirectly by the applicant or the proprietor) any Minister or such of his agents, contractors, or others as may be authorised in writing by him, may make, use, and exercise the invention, or use or apply the design so recorded or tried for the service of the State free of any royalty or other payment to the proprietor, notwithstanding the existence of the patent or registration, and if in the opinion of such Minister the disclosure to the applicant or the proprietor, as the case may be, of the document recording the invention or design or the evidence of the trial thereof would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of the applicant or proprietor or to any independent expert mutually agreed upon.

(2) In case of any dispute as to the making, use, or exercise of an invention, or use or application of a design, under this section, or the terms therefor, or as to the existence or scope of any record or trial as aforesaid, the matter shall be referred to the court for decision, which shall have the power to refer the whole matter or any question or issue of fact arising thereon to be tried before an arbitrator upon such terms as it may direct. The court or arbitrator, as the case may be, may with the consent of the parties take into consideration the validity of the patent or registration, for the purposes only of the reference and the determination of the issues between the applicant and such Minister. The court or arbitrator in settling the terms as aforesaid shall be entitled to take into consideration any benefit or compensation which the proprietor or any other person interested in the patent or design may have received directly or indirectly from the State or from any Minister or any Government Department in respect of such patent or design.

(3) The right to use an invention or a design for the service of the State under the provisions of this section, shall include the power to sell any articles made in pursuance of such right which are no longer required for the service of the State.

(4) 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 or use any articles forfeited under the laws relating to the customs or excise.

(5) In this section the word “applicant” means either an applicant for a patent or an applicant for the registration of a design, as the case may require, and the word “proprietor” means an inventor, or a patentee, or a registered proprietor of a design, as the case may require.