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1 1992

PATENTS ACT, 1992

CHAPTER VI

The Effects of a Patent and a Patent Application

Prevention of direct use of invention.

40. —A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in the State all or any of the things following:

(a) making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for those purposes;

(b) using a process which is the subject-matter of the patent, or, when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, offering the process for use in the State;

(c) offering, putting on the market, using or importing, or stocking for those purposes, the product obtained directly by a process which is the subject-matter of the patent.

Prevention of indirect use of invention.

41. —(1) A patent while it is in force shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply in the State a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect.

(2) Subsection (1) shall not apply when the means referred to therein are staple commercial products, except when the third party induces the person supplied to commit acts which the proprietor of a patent is enabled to prevent by virtue of section 40 .

(3) Persons performing acts referred to in paragraph (a), (b), or (c) of section 42 shall not be considered to be parties entitled to exploit an invention pursuant to subsection (1).

Limitation of effect of patent.

42. —The rights conferred by a patent shall not extend to—

(a) acts done privately for non-commercial purposes;

(b) acts done for experimental purposes relating to the subject-matter of the relevant patented invention;

(c) the extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription issued by a registered medical practitioner or acts concerning the medicine so prepared;

(d) the use on board vessels registered in any of the countries of the Union of Paris for the Protection of Industrial Property, other than the State, of the invention which is the subject of the patent, in the body of the vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the territorial waters of the State, provided that the invention is used in such waters exclusively for the needs of the vessel;

(e) the use of the invention which is the subject of the patent in the construction or operation of aircraft or land vehicles of countries of the Union of Paris for the Protection of Industrial Property, other than the State, or of such aircraft or land vehicle accessories when such aircraft or land vehicles temporarily or accidentally enter the State;

(f) the acts specified in Article 27 of the Convention on International Civil Aviation, where those acts concern the aircraft of countries, other than the State, benefiting from the provisions of that Article.

Limitation of rights.

43. —The rights conferred by a patent shall not extend to any act which, pursuant to any obligations imposed by the law of the Treaties establishing the European Communities, cannot be prevented by the proprietor of the patent.

Rights conferred by patent application after publication.

44. —(1) A patent application shall, on and from the date of its publication under section 28 , provisionally confer upon the applicant such protection as is conferred by virtue of sections 40 to 43 .

(2) A patent application shall be deemed never to have had the effects set out in subsection (1) if it is withdrawn, is deemed to be withdrawn or is finally refused.

Extent of protection.

45. —(1) The extent of the protection conferred by a patent or a patent application shall be determined by the terms of the claims; nevertheless, the description and drawings shall be used to interpret the claims.

(2) For the period up to the grant of a patent, the extent of the protection conferred by the patent application shall be determined by the latest filed claims contained in the publication under section 28 ; however, the terms of the claims of the patent as granted or as amended in accordance with section 38 shall determine the extent of protection conferred by section 44 ; provided that the foregoing provisions of this subsection shall not be construed as granting to an applicant protection greater than that sought by him at the date of publication under section 28 .

(3) In the interpretation of this section, the Court shall have regard to the directions contained in the Protocol on the Interpretation of Article 69 of the European Patent Convention and set out in the Second Schedule to this Act.

Burden of proof.

46. —(1) If the subject-matter of a patent or patent application is a process for obtaining a new product, the same product when produced by a person other than the proprietor or applicant, as the case may be, shall, in the absence of sufficient evidence to raise an issue as to whether the product was obtained by that or another process, be deemed to have been obtained by the process which is such subject-matter.

(2) In considering whether a party has discharged the burden imposed upon him by this section, the Court shall have regard to the interest of the defendant in the protection of his manufacturing and business secrets, and for that purpose the Court may, if it thinks fit, hear or receive evidence on behalf of the defendant in the absence of any other party to the proceedings.

(3) (a) Any party to infringement proceedings may, in the absence of every other party to the proceedings, apply to the Court for an order under this subsection.

(b) If in considering an application for an order under this subsection the Court is satisfied that—

(i) the applicant is in possession of a manufacturing or commercial secret, and

(ii) the secret (evidence of which shall be given in the absence of any party to the proceedings other than the applicant) is such as would enable the applicant to discharge the burden imposed by this section, and

(iii) in the circumstances of the case to require the disclosure (otherwise than on the application) of the secret would be unreasonable, the Court shall allow the application.

(c) Where the Court makes an order under this subsection, the burden imposed under this section shall, in relation to the relevant infringement proceedings, be regarded as having been discharged by the applicant.