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1 1992



Proceedings Before the Controller or the Court

Exercise of discretionary power by Controller.

90. —Where any discretionary power is by or under this Act given to the Controller, he shall not exercise that power adversely to any applicant for or proprietor of a patent or to any party in any proceeding before him without giving that applicant, proprietor or party an opportunity of being heard as regards such exercise.

Costs and security for costs.

91. —(1) The Controller may, in any proceeding before him under this Act, order the payment to any party of such costs (if any) as he may consider reasonable, and direct how and by what parties they are to be paid, and any such order may be made a rule of court.

(2) If any party by whom notice of any opposition is given to the Controller under this Act or by whom an application is made to the Controller for the revocation of a patent or for the grant of a licence under a patent, or by whom notice of appeal is given from any decision of the Controller under this Act, neither resides nor carries on business in the State or in such other states as may be prescribed, the Controller, or, in the case of an appeal, the Court, may require the party to give security for the costs of the proceedings and in default of a requirement under this subsection being complied with the Controller or the Court, as may be appropriate, may treat the opposition, application or appeal as abandoned.

Evidence before Controller.

92. —(1) In any proceeding under this or any other enactment before the Controller, evidence shall be given by statutory declaration in the absence of directions to the contrary; but in any case in which the Controller thinks it right so to do he may take evidence viva voce in lieu of or in addition to evidence by such declaration.

(2) Any such statutory declaration in pursuance of subsection (1) may in the case of an appeal be used in lieu of evidence on affidavit, but if so used shall have all the incidents and consequences of evidence on affidavit.

(3) The Controller may for the purposes of any of the functions assigned to him by this Act do all or any of the following things—

(a) summon witnesses to attend before him;

(b) examine on oath or affirmation (which he is hereby authorized to administer) or permit the examination on oath or affirmation of the witnesses attending before him;

(c) require any such witness to produce to him any document relevant to the proceedings and which is within his power to produce;

(d) permit evidence to be given on affidavit or other sworn testimony instead of, or in addition to, evidence given by statutory declaration, or orally.

(4) A witness summons under this section shall be signed by the Controller.

(5) A witness before the Controller shall be entitled to the same immunities and privileges as if he were a witness before the Court.

(6) If any person—

(a) on being duly summoned as a witness before the Controller makes default in attending, or

(b) being in attendance as witness refuses to take an oath or affirmation duly required by the Controller to be taken, or to produce any document which is within his power to produce and which is duly required by the Controller to be produced by him, or to answer any question to which the Controller may properly require an answer,

he shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £1,000.

Right of audience before Controller.

93. —Any party to a proceeding before the Controller under this Act may be represented by counsel or a solicitor, or by a patent agent who is for the time being registered in the register within the meaning of Part X , or may appear before the Controller in person or be represented by any other person, whom he desires to represent him, being a person to whom section 106 (3) applies.

Privileged communications.

94. —(1) A communication to which this section applies shall be privileged from disclosure in any proceeding (including a proceeding before the Controller or competent authority under the European Patent Convention or the Treaty) to the same extent as a communication between client and solicitor is privileged in any proceeding before a court in the State.

(2) This section applies to a communication—

(a) between a person, or person acting on his behalf and a solicitor or patent agent, or person acting on his behalf, or

(b) for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing a solicitor or patent agent

in relation to any matter concerning the protection of an invention, patent, design or technical information or any matter involving passing off.

(3) In this section “patent agent” means a person registered as a patent agent in the register of patent agents, a company or partnership lawfully practising as a patent agent in the State or a person or partnership who satisfies the condition mentioned in subsection (1) or (3) of section 125 .


95. —(1) In an action or proceedings for infringement or revocation of a patent, or other proceedings under this Act, the Court may, if it thinks fit, and shall, on the request of all parties to the proceedings, call in the aid of an assessor specially qualified in the opinion of the Court, and try the case wholly or partially with his assistance.

(2) The Supreme Court may, if it thinks fit, in any proceedings before it relating to a patent application or a patent call in the aid of an assessor as aforesaid.

(3) The remuneration, if any, to be paid to an assessor under this section shall be determined by the Court or the Supreme Court, as may be appropriate, and be paid as part of the expenses incurred by the Minister in the administration of this Act.

Appeals from decisions of Controller.

96. —(1) An appeal to the Court shall lie from any decision or order of the Controller other than a decision under section 22 (2) or section 28 (5).

(2) Any appeal under this Act which concerns a patent application which has not been published shall be heard in private.

(3) In any appeal under this Act the Controller shall be entitled to appear or be represented and be heard in support of his decision and shall appear if so directed by the Court.

(4) In any appeal under this Act the Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.

(5) Rules of court for the conduct of appeals under this Act may include provisions for the appointment of scientific advisers to assist the Court, and for regulating the functions of such advisers; and the remuneration of any such scientific adviser shall be defrayed out of moneys provided by the Oireachtas.

(6) Save where otherwise provided in this Act, an appeal, except by leave of the Court, from an order or decision of the Controller shall not be entertained unless notice to the Court is given within the period of three months beginning on the date of the order or decision appealed against.

(7) An appeal to the Supreme Court from a decision of the Court under this section shall lie only on a question of law.

(8) In an appeal under this Act the Controller shall not be awarded or be ordered to pay costs.