Getting a Patent
Written by, Roddy Tyrrell, publisher of Lawyer.ie, Dublin. If you want to apply for a patent or believe you patent has been infringed, get the best advice to ensure you have all your legal issues covered. Call today on 01 - 667 1746 or use the enquiry form.
1. Introduction to Patents
The law relating to patents is governed by the Patents Act 1992 which has been in force since August 1st 1992. The Patent Rules were also enacted in 1992 to deal with the administration of patents by the Patents office and with the powers of the Controllers of Patents in relation to the regulation of the patent regime. Patent law is an extremely specialised area of the law and people use patent agents who are experts in the drafting and processing of patents.
2. Requirements for an invention to be patentable
A patent may be obtained for any patentable invention and will grant the owner of the patent a monopoly protection in the invention for either a ten-year period (short term) or twenty-year period. In order for an invention to be patentable it must be new, it must involve an inventive step and it must be capable of industrial application.
In the case of a short term patent the invention must be new, susceptible to industrial invention and must not clearly lack an inventive step. There are also certain exceptions to patentability under the Patent s Acts.
A patent will not be granted in respect of an invention, the publication/exploitation of which will be contrary to public order or morality, provided that the exploitation will not be deemed to be so contrary only because it is prohibited by law. A patent will also not be granted in respect of a plant or animal variety or an essentially biological process for the production of plants or animals other than a microbiological process ort eh products thereof.
3. Applying for a Patent
A patent application may be made by any person alone or jointly with another person but the right to the patent belongs to the inventor who has a right to be mentioned in the application. The patent application must contain firstly a request of the grant of a patent, secondly a specification containing a description of the invention to which the application relates, one or more claims and any drawing referred to in the description or the claim and finally the application must contain a brief summary description. The application must be accompanied by the filing fee and must clearly disclose the invention to which it relates.
4. Date of Priority
The date of priority is the date of filing of the patent application inn the State or abroad. It is a very important date as it fixes the time that is to be considered for the purpose of assessing whether the invention is new. It also fixes the date from which infringement proceedings are to be taken. It is often advisable to apply for the patent at the first opportunity. This is to ensure that no rival makes an application for the same invention and to obtain an early priority date. A more detailed application may then be filed within a twelve-month period. The patent application must then be published in the official journal of the Patents Office, which is published every fortnight. Publication must be as soon as is practicable after the expiry of eighteen months from the filing date or priority date, if claimed. If no objections are received then the patent proceeds to grant. It is then sealed and issued.
5. Protection conferred by a Patent
While a patent is in force, it is confers upon it’s owner the right to prevent all third parties not having his consent using the invention directly or indirectly. Direct use would include making, using, or putting on the market a product which is the subject matter of the patent, or importing the product for those purposes. The prevention of indirect use of the invention means that the owner may also prevent all third parties not having his consent from supplying or offering to supply in the State someone, other than a party entitled to use the patented invention.
6. Extent of Protection
The extent of the protection conferred by a patent or patent application is to be determined by the terms of the claim. The protection conferred by a short term patent is the same as for a normal patent subject to the provisions of s66 of the 1992 Patent Act. This section attempts to strike a balance between the rights of a short term patent holder and third parties.
7. Who owns the patent?
The owner of a patent is normally the inventor. In the case of joint inventors, both parties may be named as the owners of the patent. In the case of inventions made by an employee, these will belong to the employer if made during the course of the employee’s employment. The Act does expressly state this so contracts of employment should state that all inventions belong to the employer.
8. Infringement – what can I do if someone infringes?
A patent is infringed by anyone who, in the State without the consent of the patent owner, makes, offers or puts on the market a product which is the subject matter of a patent or uses a process which is the subject matter of a patent, knowing that the use of they process is prohibited. Civil proceedings may be brought by the patent owner or a licensee of patent for alleged infringement of a patent under s47 of the 1992 Act.
9. Remedies for infringement of a patent
The owner or licensee of a patent that has been infringed has various remedies that are open to him. They include an injunction restraining the defendant from any act of infringement, an order requiring the defendant to deliver up or destroy any product protected by the patent in relation to which the patent is alleged to have been infringed, an account of profits derived by the defendant from the alleged infringement, a declaration that the patent is valid and has been infringed by the defendant and damages. Damages will not be awarded nor will an order be made for account of profits against a defendant who proves that, at the date of infringement, he was unaware of and had no reasonable grounds for supposing that the patent in question existed.
10. Revocation of a patent
Any person may apply to the court or the Controller of Patents for revocation of a patent under s57 of the 1992 Patents Act. There are various grounds that an application for revocation can be made under. For example an applicant may claim that the subject matter of the patent is not patentable. The Controller of Patents has the power to revoke patents on his own initiative if it appears that the patent that has been granted formed part of the state of the art.