1. General
The information contained hereunder does not purport to be a legal interpretation of the legal provisions governing registration in the Register of Patent Agents. The information set out is intended to inform persons contemplating registration of the main legal requirements which must be satisfied and of the examinations and tests which candidates must undergo.
2. Main legal requirements for eligibility to be registered in the Register
Under Section 107 of the Patents Act, 1992, as amended by the European Communities (Patent Agents) Regulations 2006, a person is eligible to be registered in the register if the person:
- Resides in the State or in another prescribed State
- Has a place of business in the State or in such other state as may be prescribed,
- Possesses the prescribed educational and professional qualifications, and
- Complies with the prescribed conditions.
A partnership is eligible to be registered in the register if every partner thereof is himself/herself already registered.
Section 109 of the Act empowers the Minister to make rules for the management of the register and, by such rules, to prescribe inter alia the educational and professional qualifications and the conditions for eligibility for registration in the register. Acting under this power the Minister has made Rules entitled the REGISTER OF PATENT AGENTS RULES, 1992
. The main provisions of these Rules insofar as they apply to applications for registration in the Register are:
- Applications for registration in the Register have to be made in writing to the Controller, Patents Office, Government Buildings, Hebron Road, Kilkenny and must be accompanied by the prescribed application fee. A form of Application indicating the particulars required to be furnished upon application is available on request from the Patents Office.
- Applications for registration are considered by a Board, comprising persons nominated by the Minister and of which the Controller, Patents Office, is Chairman.
- The Board considers the fitness of applicants to perform the professional duties of a patent agent in the light of the educational and professional qualifications which the applicant possesses. The Board may require applicants to undergo written or oral examinations or tests in such subjects as it considers necessary. Subsequently the Board reports to the Minister, furnishing the Minister with the names of persons considered suitable to be entered in the register.
- The Rules also prescribe the qualifications with which applicants are required to comply. Rule 7(1) specifies that a person shall not be entered in the register unless the person:
(a) Has sat a Leaving Certificate Examination conducted by the Department of Education and attained, on the basis of the results in such examination, a C grade in at least two subjects on the higher course (or a B grade on the ordinary course) and a D grade in at least three other subjects, or has attained a qualification which, in the opinion of the Board, is of equivalent standing.
(b) Has a knowledge of engineering, or chemistry, or physics (or such other scientific or technical subjects as the Board may deem appropriate) of the standard of the first University examination in those subjects, or has passed any other examination which, in the opinion of the Board, is equivalent to such examination.
(c) Has a knowledge of the law and practice of patents, including the ability to prepare, interpret and criticise patent specifications, and
(d) Has been employed for not less than three years in the office of a registered patent agent in the State, the United Kingdom or another member state of the European Community.
The Board is empowered to waive or vary any of the requirements indicated at (a), (b) and (d) of Rule 7(1) if it is otherwise satisfied that the applicant is fit to perform the professional duties of a patent agent. It will be noted that the requirement that a person must possess a knowledge of the law and practice of patents, including the ability to prepare, interpret and criticise patent specifications is a non-waivable requirement. Paragraphs 3 4 hereunder give some further information in this respect.
3. Examinations in law and practice of patents
As indicated in the preceding paragraph, Rule 7(1) of the Rules mentioned in that paragraph requires applicants to have a knowledge of the law and practice of patents. To satisfy this requirement, the Board arranges for the holding of written examinations in this subject to test applicants knowledge. The frequency with which examinations are held depends on the number of applications on hand for entry in the Register but, generally, an examination is held every year. As to the details of the examination, normally 6 questions must be answered, including certain compulsory questions. The examination paper gives a choice of questions. The time allowed for the examination is three hours and a total of 120 marks are available for the paper. All questions carry equal marks. The pass requirement is 50%. As to subject matter, candidates are expected to have a good knowledge of Irish patent law and practice, including a good knowledge of relevant case law.
Candidates are also expected to show a knowledge of E.U. Directives and Regulations relating to patent matters and a knowledge of international arrangements relating to patents such as the Paris Convention for the Protection of Industrial Property, the European Patent Convention and the Patent Co-Operation Treaty. Candidates can also expect to be asked to set out how they would advise a client in various circumstances, and propose legal remedies of which the client might avail.
Candidates in preparing themselves for the examination may find it useful to consult the following:
- Patents Act, 1992.
- Patents Rules, 1992 .
- Paris Convention for the Protection of Industrial Property.
- Council Regulations (EEC) Nos. 1768/92 and 1610/96 on Supplementary Protection Certificates and European Communities (Supplementary Protection Certificates) Regulations, 1993 (S.I. No. 125, 1993).
- European Patent Convention.
- Patent Cooperation Treaty (PCT), and Regulations under the PCT Directive on the Legal Protection of Biotechnological Inventions.
- " Intellectual Property Law in Ireland" by Clark Smyth - Butterworths.
- "Intellectual Property Law" - Law Society of Ireland.
- "C.I.P.A. Guide to the Patents Act" by the UK Chartered Institute of Patent Agents - Sweet Maxwell.
- "Intellectual Property: Patents, Copyright, Trade Marks Allied Rights" by W.R. Cornish - Sweet Maxwell.
- "Terrell on the Law of Patents" - Sweet Maxwell.
- "European Patent Handbook" by CIPA - Longman.
- "Singer Stauder:- The European Patent Convention A Commentary " - Sweet Maxwell.
- "European Patent System" by Gerald Paterson - Sweet Maxwell.
- "Case Law of the Boards of Appeal of the European Patents Office" - European Patent Office.
- "Intellectual Property Law" by Bently and Sherman. (2001 Oxford University Press).
In the case of any candidate whose result in the law and practice lies in the border between pass and fail the Board will automatically, on its own initiative, instigate a review of that candidate's answering. No review will however be conducted in any case where a candidate achieves a result of less than 48%. Where the Board instigates a review, the exam result of which the candidate involved is notified will be that achieved on the basis of the review, which will be regarded as final. A candidate who does not pass on the basis of a review will be informed that a review was carried out and that no further reviews will be undertaken.
Candidates answer scripts will be preserved for a period not exceeding 6 months from the date of notification of the results of an exam. If a candidate, during this period, requests an inspection of his/her script, arrangements will be made for an inspection in the Patents Office in Dublin or Kilkenny. Copies of scripts will not be forwarded to a candidate in response to a telephone or written request for a copy. If a candidate, in the course of an inspection at the Office requests a copy of his/her script to take away, this can be arranged; in that event the candidate will have to sign and date (date of inspection) each page of the copy and pay the appropriate photocopying fee.
4. Ability to prepare, interpret and criticise patent specifications
To satisfy the Board as to candidate’s ability in these areas, candidates are required to sit and pass the relevant written examinations prepared and conducted by the United Kingdom Joint Examination Board ( a joint committee of the Chartered Institute of Patent Agents and the Institute of Trade Mark Agents in the United Kingdom). Such written examinations of the Joint Examination Board (J.E.B.) normally take place in November each year and it is the advanced papers known as P3, P4 and P6 of the J.E.B. which Irish applicants seeking registration in the register are required to sit. The Examination in these papers is held simultaneously in the U.K. and in Ireland under special long-standing arrangements between the J.E.B. and the Irish Board. The correcting and marking of Irish candidates scripts is also performed by the J.E.B. which subsequently returns the Irish candidates results to the Irish Board. Normally a result of not less than 50% is required to pass these examinations.
Where a candidate has sat and passed the European Qualifying Examinations (examinations held for the purpose of entry on the List of Professional Representatives entitled to represent clients before the European Patent Office), the Board will consider this result as satisfying the requirement to sit papers P3 and P4 of the J.E.B. The subject matters covered by papers P3, P4 and P6 of the J.E.B. relate to preparation of specifications, amendment of patent specifications in revocation proceedings or otherwise, and infringement and validity of patents. Matters such as the dates on which the exams are held, the time allowed for each paper, the number of questions to be answered and the marking of the papers are all matters determined by the J.E.B. but the date and time on which an exam in any of these papers will take place is made known to Irish candidates, at the earliest possible date, by the Controller.
5. Other particulars relating to the examinations
Although the Rules do not specify it, the normal practice is that persons seeking registration in the Register sit the examination in the law and practice of patents first. If a candidate's application appears to be in order the candidate will subsequently be contacted by the officer of the Controller who acts as Secretary to the Board and informed as to when it is proposed to hold the law and practice exam. The candidate will then be required to confirm that he/she will sit the exam and to pay the relevant fee for that purpose.
Upon confirmation that they intend sitting the exams in papers P3, P4 and P6, as appropriate to their particular situation, candidates will also be required to pay the appropriate fee for this purpose and the necessary arrangements to enable them to sit the exams are made.
A candidate who has independently sat and passed, in the UK, papers P3, P4 and P6 of the J.E.B. as part of the requirements for qualification for registration in the UK will be considered as satisfying the requirement to pass these exams for the purpose of registration in the register.
The Board considers applications for registration in the light of the results achieved in both the law and practice examination and in papers P3, P4 and P6 (as appropriate) of the J.E.B.. If, in the Board's view, a candidate's results in any of these examinations are not considered adequate, the candidate will be informed and it will be necessary to re-sit the examination in that subject.
Where the Board is satisfied with a candidate's application and his/her examination results, and if the other requirements of the Rules are satisfied, the Board will report to the Minister on the candidate's suitability for entry in the Register. It is then a matter for the Minister to formally decide upon the candidate's registration. A positive decision results in the candidate being requested to pay the appropriate fee for entry in the Register, following payment of which the registration is effected.
6. Previous examination papers
7. Fees
The fees prescribed in relation to registration in the Register of Patent Agents are as follows:
(1) On filing a request for registration €50
(2) For each subject in which an applicant has to undergo an examination €60
(3) On entry in the Register €60
(4) Annual fee payable by a registered patent agent (payable before 31st December in each year in respect of the following year) €125
8. Correspondence
Applications for registration in the Register, and all correspondence connected with the registration of patent agents should be addressed to the Controller, Patents Office, Government Buildings, Hebron Road, Kilkenny.
Any person registered in the Register of Patent Agents should inform the Controller of any changes to his/her situation which would result in them ceasing to be eligible to be registered.
Upon request in writing by a person, the Controller shall remove the name of the person from the Register.
Where a person who is registered in the register changes his private or business address, he shall forthwith notify the Controller in writing and the Controller shall thereupon enter in the Register the new address.