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1 1992



Short-Term Patents

Application for short-term patent.

63. —(1) An application under this Part may be made for a patent the term of which shall be ten years in lieu of the term provided for by or under section 36 in respect of a patent granted under Part II .

(2) A patent granted on such an application is referred to in this Part as a short-term patent.

(3) Part II shall apply to a short-term patent and an application for a short-term patent as it applies to a patent and an application for a patent under that Part subject to the necessary modifications and to the provisions of this Part.

(4) An invention shall be patentable under this Part if it is new and susceptible of industrial application provided it is not clearly lacking an inventive step.

(5) An application for a short-term patent shall be filed at the Office in the prescribed manner and be in the prescribed form.

(6) Rules made under Part II in relation to patent applications shall apply to an application for a short-term patent as they apply to an application under that Part except so far as otherwise prescribed, and different rules may be made in relation to short-term patents and applications for short-term patents.

(7) An application for a short-term patent shall—

(a) contain a request for the grant of a short-term patent;

(b) contain a specification which—

(i) describes the invention and the best method of performing it known to the applicant,

(ii) incorporates one or more claims, but not exceeding five, defining the matter for which protection is sought, which claims shall be clear and supported by the description, and

(iii) is accompanied by any drawing referred to in the description, claim or claims and an abstract to which section 22 shall apply.

(8) The application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which the fee may be paid.

Patent under Part II and a short-term patent not to co-exist for same invention.

64. —Where an application for a patent under Part II and an application for a short-term patent have been filed by the same applicant in respect of the same invention, then—

(a) the short-term patent, if granted first, shall be deemed void upon the grant of a patent under Part II ,

(b) the short-term patent application shall, if pending on the date of grant of a patent under Part II , be deemed abandoned as of that date.

Provisions relating to short-term patents and applications therefor.

65. —(1) Sections 29 , 30 and 35 shall not apply in respect of an application for a short-term patent. Sections 44 and 56 shall have effect in relation to such an application subject to section 66 .

(2) Sections 40 to 43 shall have effect in relation to short-term patents subject to section 66 .

(3) If a short-term patent is granted before the expiry of the period referred to in section 28 (1), the application shall be published at the same time as the publication provided for in section 34 (1).

Actions for infringement.

66. —(1) Civil proceedings for infringement under section 47 or 56 shall not be instituted against any person by the proprietor of a short-term patent until he has—

(a) made a request to the Controller, accompanied by the prescribed fee, to cause a search to be undertaken in relation to the invention and a report (a “search report”) of the results of the search to be prepared, and

(b) received from the Controller a copy of the search report and furnished a copy to that person.

(2) The Controller shall publish the search report referred to in subsection (1).

(3) In lieu of making the request referred to in subsection (1) (a) the applicant may, if an application for a patent for the same invention has also been filed in a prescribed foreign state or under the provisions of any prescribed convention or treaty, submit to the Controller the evidence referred to in section 30 (1); and proceedings may not be instituted until after the Controller has published any evidence so submitted to him and the proprietor has sent a copy thereof to the person concerned.

(4) The proceedings referred to in subsection (1) may be brought in the Circuit Court irrespective of the amount of a claim.

(5) References to the Court in sections 47 , 49 , 50 , 51 , 52 , 54 , 56 and 62 in relation to an action for infringement of a short-term patent shall be construed as including references to the Circuit Court.

(6) The Minister may, by rules, permit any person other than the proprietor to make a request to the Contoller to cause a search report to be prepared in relation to an invention which is the subject of a short-term patent. The rules may specify that such a request shall be subject to the payment of any prescribed fee. A search report prepared under this subsection shall be published by the Controller.

Special ground for revocation of short-term patent.

67. Section 58 shall, so far as relevant, apply to an application for the revocation of a short-term patent: provided, however, that it shall also be a ground for revocation of a short-term patent that the claims of the specification of the patent are not supported by the description.