Examination in the Law and Practice of Patents

As indicated in, Rule 8 of the Patent Agent Rules, a person wishing to appear on the Register is required 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. A candidate is required to complete an application form with a fee of €200.

The aim of this examination is to test candidates understanding of the law and practice relating to the grant, enforcement and exploitation of Patents rights as they apply in Ireland, Europe and Internationally.

Candidates are expected to have a good knowledge of Irish patent law and practice, including a good knowledge of relevant case law and 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.

The examination is a closed book examination lasting 3 hours.

The paper will comprise of 9 questions of which 6 questions must be answered. Questions 1 and 2 are compulsory questions.

A total of 120 marks are available for the paper. All questions carry equal marks. The pass requirement is 50%.

Candidates preparing themselves for the examination should familiarise themselves with the examination syllabus and may find it useful to consult the following:

  • Patents Act, 1992.
  • Patents Rules, 1992
  • Register of Patent Agent Rules 2015.
  • Paris Convention for the Protection of Industrial Property
  • REGULATION (EC) No 469/2009 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 6 May 2009 concerning the supplementary protection certificate for medicinal products
  • REGULATION (EC) No 1610/96 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products
  • 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. (2009 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.

All candidates have the option to have their script reviewed by a second examiner. If they wish to avail of this review they must submit an application to the Office accompanied by the prescribed fee of €70 within one month of the date of receipt of their result letter.

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 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.

Syllabus for Examination in the Law and Practice of Patents

Application form to sit the Law and Practice of Patents Examination

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 Patent Examination Board PEB ( 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 Patent Examination Board (P.E.B.) normally take place in October each year and it is the advanced papers known as P3, P4 and P6 of the P.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 P.E.B. and the Irish Board. The correcting and marking of Irish candidates scripts is also performed by the P.E.B.

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 P.E.B. The subject matters covered by papers P3, P4 and P6 of the P.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 P.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.

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, directly to the P.E.B. 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 P.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 P.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 €125, following payment of which the registration is effected.

Previous examination papers

Fees

To sit a written examination in Irish patent law and practice pursuant to a requirement under Rule 6(2)€200.00
On application for entry in the Register of Patent Agents (Rule 5).€50.00
On application for a review of marks obtained in the written examination in Irish patent law and practice.€70.00
On entry in the Register€125.00
Annual fee payable by a registered patent agent (payable before 31st December in each year in respect of the following year)€250.00

The fees prescribed in relation to registration in the Register of Patent Agents (S.I. No. 30 of 2012 with effect from 1st February 2012) are as follows:

To sit a written examination in Irish patent law and practice pursuant to a requirement under Rule 6(2) - €200.00
On application for entry in the Register of Patent Agents (Rule 5) - €50.00
On application for a review of marks obtained in the written examination in Irish patent law and practice - €70.00
On entry in the Register - €125.00
Annual fee payable by a registered patent agent (payable before 31st December in each year in respect of the following year) - €250.00