Copyright and Other Intellectual Property Law Provisions Act 2019

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Amendment of Patents Act 1992

42. The Patents Act 1992 is amended—

(a) in section 2(1)—

(i) by the substitution of the following definition for the definition of “the Controller”:

“ ‘Controller’ means the Controller of Intellectual Property;”,

and

(ii) by the substitution of the following definition for the definition of “the Office”:

“ ‘Office’ means the Intellectual Property Office of Ireland;”,

(b) in section 6, by the insertion of the following subsections after subsection (4):

“(5) The Patents Office continued in being by this section shall, from the commencement of section 42 of the Copyright and Other Intellectual Property Law Provisions Act 2019, cease to be known as the Patents Office and instead be known as the Intellectual Property Office of Ireland.

(6) The Controller of Patents, Designs and Trade Marks continued in being by this section shall, from the commencement of section 42 of the Copyright and Other Intellectual Property Law Provisions Act 2019, cease to be known as the Controller of Patents, Designs and Trade Marks and instead be known as the Controller of Intellectual Property.”,

(c) in section 31(1), by the deletion of “, following the substantive examination and investigation carried out in pursuance of section 29(5) or 30(5),”,

(d) in section 127—

(i) in subsection (1), by the insertion of “and shall, subject to section 127A, also be capable of being treated as an application for a patent under Part II” after “European patent designating the State”,

(ii) in subsection (5), by the insertion of “designates the European Patent Office and” after “which”, and

(iii) in subsection (6), by the insertion of “designates the European Patent Office and” after “which”,

and

(e) by the insertion of the following section:

“Circumstances in which international application for patent designating State shall be treated as application for patent under Part II

127A. (1) If an international application for a patent which designates the State is refused a filing date under the Treaty and following a request made in the prescribed manner and within the prescribed period, the Controller determines that the refusal was caused by an error or omission in an institution having functions under the Treaty, he may direct that the application shall be treated as an application under Part II, having such date of filing as he may direct.

(2) Subject to compliance with the prescribed conditions, an international application for a patent which designates the State shall be treated as an application under Part II if—

(a) the applicant withdraws the international application at any time prior to the expiration of 31 months from the filing date or the priority date of the application, whichever is the earlier, and the international processing procedures in the international phase are discontinued,

(b) the International Bureau determines, for any reason, that the international application or the designation of the State in it, is withdrawn or considered withdrawn,

(c) the international application is considered to be withdrawn on the ground that it has not, within the period prescribed by Article 20 (as that Article is construed in accordance with Rule 47 of the Treaty Regulations), 22(1) or 39(1) of the Treaty, been received by the European Patent Office, or

(d) the applicant decides, at any time prior to the expiration of 31 months from the filing date or the priority date of the international application designating the State, whichever is the earlier, to request the Controller to treat the international application as a patent application under Part II.

(3) Subject to compliance with the prescribed conditions, an international application for a patent designating the State which has, under subsection (1) or (2), ceased to be deemed to be an application for a European patent designating the State shall, upon that cesser taking effect, be treated as an application under Part II.

(4) Subsection (5) applies to an international application for a patent designating the State which is treated as an application for a patent under Part II.

(5) An application for an international patent designating the State which has been published by the International Bureau in accordance with the Treaty in a language other than Irish or English shall be treated, for the purposes of sections 56 and 66(3), as published under section 28 when a translation into Irish or English of the claims of the application have been filed and published by the Office.

(6) Article 2 of the Treaty shall apply to the interpretation of this section as that Article applies to the interpretation of the Treaty.

(7) In this section, ‘Treaty Regulations’ means the Regulations under the Treaty as such Regulations are in force from 1 July 2016.”.