Section 106(3A-3D) Patents Act 1992 provides that a person established in an EEA State (other than the State) and qualified under the law of that state to act as a patent agent in that state may carry on the business of acting as a patent agent for others in connection with a patent or any procedure relating to a patent or the obtaining thereof and may accordingly be the subject of an authorisation referred to in Section 105(1).
The notification requirements are set out in the following statutory instruments:
European Communities (Patent Agents) Regulations 2006 - S.I. 141 of 2006, Patent (Amendment) Rules 2006 - S.I. 142 of 2006, S.I. No. 580/2015 - Register of Patent Agent Rules 2015.
and are summarised as follows:
On or before the first occasion on which a person acts on behalf of another before the Controller in connection with a patent or any procedure relating to a patent or the obtaining thereof, the person must notify the Controller and provide to the Controller evidence relating to –
(i) the person’s being established in another EEA state,
an entry in a relevant register (companies register, commercial register, listing in a directory of a professional body) specifying the location of the person’s registered office, central administration or principal place of business or other proof of its location in an EEA state
(ii) the person’s being qualified under the law of that state to act as a patent agent in that state,
(iii) whichever of the following is appropriate –
the person’s nationality, or
in the case of a company or firm formed in accordance with the law of an EEA state and having its registered office, central administration or principal place of business within an EEA state.
If any document furnished in compliance with the foregoing requirements is in a language other than English, then a certified translation into English must also be furnished.
The Patents Office will accept notifications and accompanying evidentiary documents which are sent by means of post, Email or fax. Communication by Email is preferred and will allow quicker completion of all formalities. Notifications and attachments in pdf format should be sent to the following Email address: patlib@patentsoffice.ie
Processing of notifications
The Office undertakes to acknowledge enquiries from EEA based agents within 2 working days of receipt and the acknowledgement will include information on the procedures to be followed and the documentation to be submitted.
Within 3 working days of receipt of a notification accompanied by all the correct documentation, the agent will be sent confirmation that he or she may act before the Controller.
Within 3 working days of receipt of a notification accompanied by incomplete or incorrect documentation, the agent will be sent a request to furnish additional documentation. The request will state why the original notification is considered incomplete or unsatisfactory. If an agent does not furnish the required material within a period of two months from the date of the request, the Controller will not recognise the agent’s entitlement to act on behalf of an Applicant/Holder and will pursue the prosecution of an application or other proceedings directly with the Applicant/Holder. The agent will be informed accordingly as soon as possible.
Within three working days of receipt of all the correct documentation in respect of a previously incomplete notification, the agent will be sent confirmation that he or she may act before the Controller.
If an agent has a complaint regarding the Office’s handling of the notification formalities, he or she may pursue the matter by writing directly to the Controller. Any complaint will be immediately acknowledged and investigated and a further reply will issue within 10 working days.
Responsibility of agent post notification
Rule 79B of the Patents (Amendment) Rules 2006 requires that if, subsequent to the provision of the evidence (set out above) already provided in compliance with Section 106(3A-3D), there is any material change of circumstances affecting the persons continuing to be qualified to act as a patent agent, the person shall, forthwith notify the Controller in writing of that change of circumstances.
Where an agent is acting, on behalf of another in connection with a patent application, a patent or any procedure relating to a patent the agent must use the applicable professional title (if any) The title is to be expressed in the official language or one of the official languages of the EEA State of establishment. Where the use of the title is not likely to be understood it is sufficient if the use of the title concerned is accompanied by an indication of the EEA State in which the person concerned is established as a patent agent. If there is no applicable professional title, then the agent when acting, shall indicate that he or she possesses the applicable qualifications and those qualifications shall be expressed in the official language or one of the official languages of the EEA State of establishment.
Forms
Application form for entry onto the Register
Application form to sit Law & Practice in trade marks examination