John Halligan (Waterford, Independent) | Oireachtas source

I move amendment No. 2:

In page 30, to delete lines 11 and 12 and substitute the following:“(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”.

As these two technical amendments to the Patents Act 1992 are interlinked, I welcome the opportunity to address them together. Amendment No. 3 inserts a revised version of section 127A into the Patents Act. The purpose of section 127A is to open the national route for patent co-operation treaty, PCT, applications by allowing current patent applicants to choose to convert an international patent application into a national patent application. Applicants may choose to do so for a number of reasons. During the international applications process which usually takes approximately 31 months to complete applicants may discover that an international patent is not suitable. This may be due to the high costs involved, the patent not being commercially viable, protection in international markets no longer being necessary or the results of the search report and written opinion precluding the patent from being granted in certain countries. Section 127A facilitates the opening up of the national route for PCT applications which will provide an additional choice for applicants which has not been available up to now.

The differences between the revised section 127A and the version included in the Bill, as published, are a new section 127A(1) and a revised section 127A(2)(d). The new section 127A(1) allows the controller to assign the all-important patent filing date where an international PCT application has been refused a filing date owing to an error or omission by the international patenting organisation. The national patent application can then be accepted and processed in the normal way on the basis of this filing date.

Following publication of the Bill, users of the PCT route suggested an additional instance in which a PCT patent applicant might opt for a national as opposed to an international patent. The revised section 127A(2)(d) takes this on board. Under this provision, a PCT patent applicant may at any time within a 31 month period apply to the controller for that application to be treated as a national application, while the PCT application could be pursued separately. For example, the applicant may want a national patent for the purpose of securing an investment opportunity or to pursue infringement proceedings. Recognising the merit of the users' proposal, I am happy to be able to facilitate the proposal by way of the amendment.

Section 127 of the Patents Act provides for the handling of international patent applications.Amendment No. 2 contains three technical amendments to section 127 that are consequential on amendment No. 3. The amendments take into account that an international application designating the European Patent Office may also be treated as a national patent application under section 127A 2(d). I know that this all sounds exceptionally technical, but if the committee requires any further information or a breakdown of the detail, we can supply it to members of the committee.