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Association of Patent and Trademark Attorneys' History

THE HISTORY OF THE ASSOCIATION

The history of the Association falls in four parts. Firstly, its origins, which are protectionist and arguably anti-colonial in their nature. Secondly, the stagnant years of the 1940s through to the 1970s when there was relatively little activity in the Association and the number of members of the Association remained small. Thirdly the era which could be called the “emancipation of trade mark agents” and fourthly, the expansion years which were accompanied by new intellectual property legislation, much of it of an international nature.

THE ORIGINS

1929 was quite an eventful year. It was the year of the Wall Street Crash and by December 1st, the New York Stock Exchange value had dropped by over 26 billion dollars and the Great Depression had begun. The first Academy Awards were held and Al Capone was sentenced to a year in prison for carrying a concealed weapon. In the same year the Association was founded by Sean MacEntee.

Sean MacEntee was a Belfast man born in 1889 who joined the Irish Volunteers in 1915. He was involved in the Easter Rising of 1916 and was apparently one of the last people to leave the GPO in Dublin. For his part in the Rising he was sentenced to death but the sentence was commuted and he was interned by the British until the general amnesty of 1918. In the same year he was elected to the new Dail Eireann as the Sinn Fein candidate for County Monaghan. In the 1920s he joined Fianna Fail while he worked as a Consulting Engineer and remained in that party until his retirement from politics in the 1960s. He held many posts in the Government, including that of Minister for Finance and also Minster for Health. He died in 1984. MacEntee must have gained his interest in Patents when he worked as an assistant engineer in Dundalk Urban District Council.

With the creation of the Irish Free State by the Anglo-Irish Treaty, signed on December 6 1921, all patent and trade mark rights, previously granted through the operation of the British Patent Office, were no longer effective in the Free State. However, in 1927 legislation was passed by the Dáil which established the Irish Patents Office headed by a Controller and former British rights which had not expired could be re-registered, new inventions patented and trade marks registered. A Register of Patent Agents was also set up for entry of the names of persons and firms qualified to represent clients in connection with patent work. To practice as a Patent Agent one had to have an office in Ireland or be resident in Ireland.

Prior to the introduction of the above legislation, only one Patent Agent operated in Ireland, namely Ewart. W. Doyle who advertised his services extensively in the local press and could properly be described as a ‘loner’’. ¹ In 1927 Hugh Donald Fitzpatrick set up a practice with Andrew Hamilton and Hamilton was the first individual Patent Agent to have his name inscribed on the Irish register of patent agents on October 12 1927. Fitzpatrick's father served with the British Army during the Crimean war and Hugh was born on a naval troop ship anchored in Dublin Bay as the family was returning home to the UK after hostilities had ended.² Fitzpatrick had founded the Patent firm of Fitzpatricks in Scotland in 1887 but shortly after the founding of H. D. Fitzpatrick & Co. in Ireland, he sold the Dublin practice to Hamilton but continued with an office in Belfast.

A number of the larger firms of British Patent Agents set up offices in Dublin to handle the work resulting from the 1927 legislation and three local Consulting Engineers, of whom Sean MacEntee was one, were also registered as Patent Agents. A list of Patent Agents compiled in Dublin in 1928 contained the names of 28 individuals, 24 of whom were British Patent Agents while the remaining 4 were Ewart Doyle and the three local Consulting Engineers. An attempt in 1928 to refuse to register the name of any British Patent Agent who did not intend to be in constant attendance at his Dublin “business address” was contested by a British Patent Agent, H. E. Potts and the Controller was eventually persuaded to enter his name on the Register, since the Act did not say that the Agent must be in constant attendance at his office.

It soon became apparent that the bulk of the work, which mostly came from abroad, was in the hands of the British Agents who were residing in the United Kingdom and in 1929 the law was amended to make it compulsory for a Patent Agent to have an office in Ireland and be resident in Ireland if he/she wanted to act as an Agent in this country. Nearly all the British Agents then left or transferred their Irish businesses to those few who decided to reside here. It is at this time (1929), that Sean MacEntee and his colleagues, whom we believe were Frank Litton, James Dornan, Ewart Doyle and Andrew Hamilton, decided to form the Association to protect their interests.

The Dail Debates of the time for the 1929 Act make interesting reading but not for the erudition of the debate as witnessed by this exchange between Deputy Flinn and Deputy JJ Byrne:

Deputy FLINN: ”You can get a patent in France and in two or three other countries for the price at which you can apply for a patent in the Free State. You can get a patent for England and for the Free State cheaper than you can get a patent for the Free State alone. That is rather remarkable”.
Deputy BYRNE: “Will the Deputy substantiate that?”
Deputy FLINN: “If that baby would only be good!”
Deputy BYRNE: “If the Deputy would only be logical!”
Deputy FLINN: “He is evidently quite impossible. Some day I shall have to spank that baby”.
Deputy BYRNE: “That may be more difficult than you anticipate”.
Deputy FLINN: “All right. He has not got a place to be spanked on”.

In a later debate the fee of ten guineas being charged by a Patent Agent was being discussed and Deputy Cummins made the following statement:

Deputy CUMMINS: “I think that this handicap would weigh very heavily on the Irish inventor and discourages Irish invention, if it will not do away with it altogether. It would mean, moreover, that an inventor in Saorstát Eireann before he could even lodge his application for a patent would have to reveal the secret to a patent agent, the seriousness of which members will readily appreciate”.

However, it would appear that the flight of the British Agents was hasty and they need not have panicked and shut up shop. In a High Court case against the Minister in 1931 by Hugh Donald Fitzpatrick, it was held that a British Agent, who had been placed upon the register prior to the passing of the 1929 Act, could not be removed. Sean Lemass, later to be Taoiseach, asked the Minister what he proposed to do about this situation and he replied:

Minister McGILLIGAN: ”The courts decided that the action which I have taken and which put certain English patent agents off the register was not legal, and that these people must be put back. The court decision pretty well amounts to this, that the Act which we passed will have effect with regard to new applicants, but that any agents who were previously on could not be removed—in other words, that the Act was not retrospective. When I brought in that particular piece of legislation it was represented to me ((presumably by Mr. MacEntee)) that there were quite a number of people who were able to take on the work of patent agents in the country, that there was quite a lucrative field of employment which had been occupied by outsiders, and it was aimed at getting that field of employment for our own people. An examination was held, and, as far as I remember, four people obtained the qualifications to go on the register, but since then that number has diminished. There has been one death, and some of the others, I am informed by the office, do not appear to be taking patent work seriously. Consequently, there is a very definite dearth of patent agents who would have the double qualification, if we insisted on re-establishing the new condition with regard to those who had been previously on the register”.

Having won his case, H. D. Fitzpatrick politely said “Now I will ask you to take my name off the Register”. After the case, those British Patent Agents whose names had been removed from the Register could have been reinstated but none of them was interested.³

The Act and Rules provided that the Minister could register as a Patent Agent anyone who satisfied him as to his education and technical qualifications and that he could prescribe examinations to satisfy himself that any applicant had attained the necessary qualifications. The opportunity to hold an examination occurred in 1931 when the initial rush of work in the Patents Office had subsided and about six temporary examiners there were given notice to terminate their engagement. However, to soften the blow they were told that they could sit the examination and hopefully become Patent Agents. An examination was set up by eminent University professors aided by the Controller and a legal luminary. About ten candidates sat, these being either Patent Office Examiners or Registered Clerks but only one passed and he was an Examiner (Francis R. Kelly) and he had no wish at that time to give up his civil service position to enter the profession4. Francis (Laddie) Kelly would eventually join the profession when he purchased H. D. Fitzpatrick & Co. in 1948 from Andrew Hamilton.

On Mr. MacEntee’s appointment as Minister for Finance in 1932, his colleague, Francis Litton5, who was acting as Secretary of the Association, circulated the members with a notice to the effect that the Association was “suspended” until such time as Mr. MacEntee could return as he now had to devote his energies to the affairs of the State. However, the other members decided to carry on with Malcolm Cruickshank acting as Secretary and a chairperson being elected at each meeting.

THE STAGNANT YEARS

When World War II broke out (or the Emergency as it’s known in this country) in 1939, business for Patents Agents fell at once to about 30% of normal levels as members were unable to obtain instructions from their associates and clients in many of the belligerent countries. Particularly affected was the payment of annuities for the renewal of patent and trade marks and Andrew Hamilton took it upon himself at his own expense to maintain many of the more valuable patents and trade marks 6. Otherwise the affairs of the Association went on more or less as usual, albeit with only 3 or 4 active members in the three existing Patent firms, namely Cruickshank & Co, Tomkins & Co and Fitzpatrick & Co (to be renamed F.R. Kelly & Co in 1952). By 1955 only 4 names remained on the Patent Register and one of those was Sean McEntee, who as Minister was in charge of the Register. He must have valued his status as a Patent Agent since he maintained his name on the Register for over 30 years while he held Ministerial rank in the Irish Government, although he is not thought to have taken any active part in the patent business, which was carried on by his partner.

From 1929 to 1966, the meetings were chaired on an ad hoc basis but in 1967 Arthur Tomkins was elected as President and was elected annually to that position until he retired from the position in 1983. Arthur Tomkins came to Ireland from England in 1930 to purchase a practice and remained here for the next 74 years and almost right up until his death in 2004 at the age of 104, took an active interest in the affairs of the Association. Following upon Mr. Tomkins’ retirement as President, a rule was enacted that a President could serve for a maximum of 3 years.

In 1976, due mainly to the efforts of Michael McShane and Andrew Parkes, the Association for the first time developed a proper set of written Rules and a Code of Conduct for its members. It was also at the behest of Michael McShane that the Association became a nominating body on the Industrial Panel for Seanad Eireann elections.

“EMANCIPATION OF THE TRADE MARK AGENT”

1963 had seen the introduction of the Trade Marks Act, 1963 and a Register of Trade Mark Agents was set up. This apparently came as a surprise as no Patent Agent had asked for it 7. However, all the Patent Agents were entered in the new Trade Marks Register and so were officially recognised as members of this new profession.

On the other hand the Association was slow to recognize this profession and up to the mid 1980s, the name of the Association remained as the "Association of Patent Agents" since Trade Mark Agents were only permitted “associate membership” but that Rule was changed in 1985 and the name of the Association was altered to the Association of Patent and Trade Mark Agents.

Prior to 1993 to become President of the Association a member had to be both a qualified Patent and Trade Mark Agent. Since all Patent Agents were also Trade Mark Agents, this in practice limited the Presidency to Patent Agents, since there were few Trade Mark Agents who were also Patent Agents. However, this Rule was changed in 1993 and so that a member who is qualified only as a Patent Agent or as a Trade Mark Agent may be elected President of the Association. Cliff Kennedy became the first non-Patent Attorney to be elected President in 2001.

THE EXPANSION YEARS

There is no doubt that the IP business expanded enormously in this country during the last two decades of the 20th century. By 1982 there were only 20 active members. Twenty-five years later there were over 60 full members and numerous student, associate and life members.

Up to 1967 there had only been 3 specialist IP firms, namely Tomkins & Co, F R Kelly & Co and Cruickshank & Co. But as the work slowly started to grow opportunities arose and Norman MacLachlan was the first to make the break when he left Tomkins & Co to set up N W MacLachlan & Co in 1967 (renamed MacLachlan & Donaldson in 1972). Others followed from various practices in due course to set up their own firms including Frank Gorman, Dermot Cummins, Anne Ryan, John O’Brien, Michael Weldon and Peter Hanna.

In the 1970s and early 1980s, the Patents Office due to Governmental staff constraints had developed a large backlog in the examination of trade mark applications and related matters. By 1981 the time lag between filing an application and having that application examined had grown to 5 years and seven months. In that year Maurice Kennedy joined the Patents Office from the National Prices Commission as Assistant Controller with a brief to tackle the logjam. This he and his colleagues achieved with great success and by the end of 1984 the backlog was a thing of the past, much to the relief and delight of the members of the Association and their clients. Maurice left the Patents Office in January 1985.

Some of the Association’s members played leading roles in international intellectual property bodies. Martin Tierney was the President of ECTA (European Community Trade Mark Association) from 1983-4 while Andrew Parkes was President of UNION (Union of European Practitioners in Industrial Property) from 1990-3 and was subsequently elected an Honorary President. The Irish Group of UNION was set up in 1974, shortly after Ireland signed the EPC (although Ireland did not ratify it until 1992). The founder members of the Irish Group were all of the eight Patent Agents on the Irish Register at the time. Other Patent Agents who qualified over the next ten years also joined UNION, so that the Irish Group had 100% membership among the Irish patent profession over a long period of time. The group hosted the Dublin Congress of UNION in 1987.

Shortly after the Munich Diplomatic Conference of 1973, the Association published a booklet summarising the important provisions of the Convention on the Grant of European Patents (EPC). A second edition of the booklet was brought out in 1976 while in 1988 the Association published a booklet entitled Patents, Designs and Trade Marks in Ireland. Around the same time (January 1987), Martin Tierney, a member of the Association,  wrote the first book in Ireland exclusively dedicated to intellectual property called Irish Trade Marks Law and Practice. In 1997, Martin's colleague, Shane Smyth, with co-author Professor Bob Clark, published a book entitled Intellectual Property Law in Ireland (since reprinted in 2004 and 2011 (with Niamh Hall also being co-author to the latter edition)).

INTERNATIONAL DEVELOPMENTS

The 1990s witnessed a flood of new intellectual property legislation, much of it changing forever the nature of the work of the members and adding an extra international dimension to that work. The Competition Act lead the way in 1991 and which was the impetus for the Association to change its rules, albeit only after many heated debates, to permit advertising by its members, while the Association also ended its practice of agreeing standard charges among its members.

In 1992 the Patents Act came in to force, replacing the 1964 Act and enabled Ireland to ratify the European Patent Convention (EPC) which had been enacted in 1973 to strengthen co-operation between the States of Europe in respect of the protection of inventions. The European Patent Office (EPO), located in Munich, was responsible for the grant of European patents in accordance with the EPC and Irish Patent Attorneys would henceforth have a right of appearance at the EPO in Munich. The same 1992 Act also resulted in Ireland ratifying the Patent Co-Operation Treaty (PCT), the main objective of which was the streamlining of patent application filing and novelty search procedures for applicants wishing to obtain patent protection in a wide number of countries around the world. The 1992 Act also introduced short term patents for the first time. Continuing the international developments, the Community Trade Mark came in to force in 1996 and the Association lobbied to have the Community Trade Marks Office located in Dublin but lost out to Alicante in Spain. In the same year the Trade Marks Act, 1996 replaced the 1963 Act and permitted the registration of service marks for the first time.

The Association was consulted by the Government on both the Patents Act, 1992 and the Trade Marks Act, 1996 and many of its recommendations were incorporated in the final legislation. In this connection the 1990s also saw the formation by the Government of an Intellectual Property Unit (IPU) which was responsible for the development of intellectual property policy, the preparation of legislation and the provision of an intellectual property regime which reflected the international law environment and best practice. The Unit was also to act as a liaison section between the Department and the Patents Office on policy and legislative matters. The President of the Association is invited to sit at formal meetings of IPU.

The Gearoid O’Sullivan Memorial Award was instituted in 1997 in memory of Gearoid who had died suddenly the previous year at the age of 41. Gearoid was a Patent Agent with Tomkins & Co at the time of his death from an asthma attack, having previously worked for MacLachlan & Donaldson and F F Gorman & Co.

In 1998, the Patents Office moved from its home of 71 years at 45 Merrion Square, Dublin 2, to Hebron Road in Kilkenny.

Ireland ratified the Madrid Protocol on 19 July 2001 and the Protocol entered into force, with respect to Ireland, on 19 October 2001, bringing yet a further international dimension to the work of the members of the Association and enabling members to protect their clients’ trade marks on a direct international basis.

In 2002, the name of the Association was changed to the Association of Patent and Trade Mark Attorneys and the Association set up its own website.

Industrial designs followed their patent and trade mark cousins by becoming available for European Union wide protection on April 1 2003, such applications being handled by The Community Trade Marks and Designs Office in Alicante under the European Union’s new Community system for the protection of designs.

In 2005, the Association adopted a new crest but which incorporated elements of the old design.

In the same year Peter Mole from the United Kingdom was elected the first Honorary Member and he donated a beautiful silver plate to the Association.The Association named this kind gift "The Honorary Members Plate" and is now presented as an award to individual members of the Association who have made a special contribution to the Association and can encompass contributions to social events, committees, education or any other aspect of the Association. In 2008, the Association also had the pleasure of electing its first Overseas Members, Eric and Margaret Ramage from the United Kingdom. In 2013 Niamh Hall was elected the first female President of the Association.

The Association has come a long way since its foundation in 1929. It has flourished and has done a great deal to assist in the healthy development and protection of intellectual property rights in general, both in Ireland and abroad, and its activities have extended far beyond its original aim of protecting the interests of Irish Patent Agents.


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1 From an address by Mr. N. W. Waddleton, President of the UK Chartered Institute of Patent Agents, to the members of that organisation in December 1980 and entitled “The British Patent Agent in the last 100 years”.
2 From a History of Fitzpatrick & Co.
3 see 1 above.
4 see 1 above
5 Litton was a Francophil who served as a poilu in the French Army in the First World War and many of whose intellectual property files were maintained in French ((from a discussion with Martin Tierney).).
6 Hamilton, though a loyal subject of His Majesty, happened to have a large German clientele, including the infamous, I G Farben conglomerate. During the Second World War, Hamilton was unable to get any instructions from his German clients regarding the payment of Patent Annuities or Trade Mark renewals. He nonetheless kept the entire portfolio renewed and intact at his own expense so that when the Allied Control Commission set about trying to restore German industry ruined by the war, they found the Irish intellectual property rights still intact ((from a discussion with Martin Tierney)).
7 see 1 above.

The Presidents of the Association have been as follows:

1929-1967 No President
1967-1983 Arthur Tomkins
1983-1986 Peter Kelly
1986-1989 Norman MacLachlan
1989-1991 Andrew Parkes
1991-1994 Donal O'Connor
1994-1997 Gerald Kinsella
1997-1999 Peter Shortt
1999-2001 Frank Gorman
2001-2004 Cliff Kennedy
2004-2007 Lindsay Casey
2007-2009 Michael Kiernan
2009-2011 Gearoid Schutte
2011-2013 Denis McCarthy
2013-2015 Niamh Hall
2015- Simon Gray



To view their photos please click here



Past and Present Ordinary Members

1. Sean MacEntee
2. Frank Litton
3. James Dornan
4. Ewart W. Doyle
5. George Malcolm Cruickshank
6. Andrew Hamilton
7. Arthur B. Tomkins
8. Francis R. Kelly
9. Paul Curran
10. Norman MacLachlan
11. Peter Kelly
12. Andrew J. Parkes
13. Michael McShane
14. Frank Donaldson
15. Dermot Cummins
16. Donal O’Connor
17. Peter Shortt
18. Michael Kiernan
19. Martin Tierney
20. Gerald Nolan
21. Gerald Kinsella
22. Margaret Fogarty
23. Michael Shortt
24. Patrick O’Connor Lawler
25. Francis Gorman
26. Anne Ryan
27. Michael Walsh
28. Cliff Kennedy
29. Brenda O’Regan
30. Bernadette Walsh
31. Gearoid O’Sullivan
32. John O’Brien
33. Peter Hanna
34. Denis McCarthy
35. Catriona Collins
36. Shane Smyth
37. Neil McVeigh
38. Lindsay Casey
39. Philip Coyle
40. Louise Carey
41. Patricia McGinley
42. Christina Gates
43. Assumpta Duffy
44. Oliver Fenton
45. Maura O’Connell
46. Michael Weldon
47. Seamus Doherty
48. Simon Gray
49. Frank Kelly
50. Cliona Loftus
51. Carla MacLachlan
52. Peter MacLachlan
53. Yvonne McKeown
54. Mary Rose O’Connor
55. Marie Walsh
56. Conor Boyce
57. Linda Keane
58. Gearoid Schutte
59. John Ryan
60. Clare O’Regan
61. David Brophy
62. Niall Tierney
63. Gavan Ferguson
64. Deirdre Naessens
65. Michael Flynn
66. Naoise Gordon
67. David Cullen
68. Gillian McNamara
69. Niall Rooney
70. Alan Wallace

71. Cathal Lane
72. Donnacha Curley
73. Barry Moore
74. Martin O’Dea
75. Siobhan Kavanagh
76. Mary Bleahene
77. Kieran Heneghan
78. Niamh Hall
79. Carol Gormley
80. Brian O' Neill
81. Tara Jennings
82. Michael O’Connor
83. Hazel Tunney
84. Sinead Dunne
85. Fiona Gorman
86. Stephan Murnaghan
87. Orlaith Reedy
88. Alison Ryan
89. Madeline Kelly
90. Paul Hussey
91. Anna-Louise Hally
92. Dermot Roche
93. Aoife O’Neill
94. Clare Speed
95. Sumithra Nadarajah
96. Alice Crabb
97. Olivia Catesby
98. Stephane Ambrosini
99. Judy McCullagh
100. Sarah-Jane Nally
101. Richard Paul
102. Sarah McCrann
103. Eimear Brennan
104. Naoise Gaffney
105. Michael Lucey
106. Donal Kelly
107. Sarah Murnaghan
108. Barry Purdy
109. Stephen Waller
110. Susanne Cahill 
111. Mark Carmody
112. Nicole Gernon 
113. Seamus McCooey 
114. Mary Munroe
115. Sinead Skrba 
116. Kate Syrtsova
117. Rory Litton
118. Eimear O'Gara
119. Triona Walshe

120. David Flynn
121. Richard Gillespie
122. Sean Harte
123. Shauna Tilley
124. Alan Casey
125. Kate Harris
126. Paul Keane
127. Sinead Lucy
128. Philomena O’Donoghue
129. Angela Quinlan
130. Sinead Mahon
131. Catherine Hanratty
132. Alison Brennan
133. Anne Marie Carr
134. Eimear Sampson
135. Isabel Meenan
136. Kevin Cosgrave
137. Laurence Bibow
138. Kate Syrtsova
139. Lisa O’ Brien  
140. Susanne Pierce
141. Andrew Waldon
142. Richard O’Connor


Sean MacEntee
Sean MacEntee (1889-1984)

 

 

 

 

 

 

 

 

 

 

 

 

50 year jubilee
Hugh Donald Fitzpatrick receiving a silver salver in 1937 on the jubilee of the founding in Scotland of H D Fitzpatrick & Co. On the extreme right of the photo is Andrew Hamilton who had purchased the Dublin branch of the business and which business later became F R Kelly & Co. Others in the photo from left to right are Hugh's son, Hugh James Fitzpatrick, Stanley Dunlop, R W Cunningham and Ms Taylor.

 

 

 

 

 

 

 

 

 

 

 

first patent granted
An old Independent poster dated July 25 1929 announcing the grant of the first patent by the Irish State is inspected in 1977 by Arthur Tomkins, President of the Association, Pat Slavin, Chairman of the Irish Professional Civil Servants and by the Minister, Desmond O'Malley.

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Patrick McGilligan
Patrick McGilligan (2nd from the right) in Germany in 1931.

 

 

 

 

 

 

 

 

 

 

 

 

francis_kelly
Francis (Laddie) Kelly, who purchased H.D. Fitzpatrick & Co. in 1948, and shortly thereafter renamed F. R. Kelly & Co.

 

 

 

 

presidents

From the left Peter Kelly (President 1983-6), Gerald Kinsella (President 1994-7), Michael McShane, Dermot Cummins and Martin Tierney.

 

 

 

 

 

 

 

 

 

 

 

 

Andrew Parkes

Andrew Parkes (President 1989-91), Arthur Tomkins (President 1967-83) and Peter Shortt (President 1997-99) at Mr. Tomkins' retirement party in 1983.

 

 

 

 

 

 

norman and frank
Norman MacLachlan (President 1986-89) who founded N.W. MacLachlan & Co in 1967 and Frank Donaldson (right) who came from England in 1970 to join Norman in partnership.

 

 

 

 

 

 

 

Patent Design

Patents, Designs and Trade Marks in Ireland Booklet 1988

 

 

Community trade marks

The cover of the brochure prepared in support of the bid for the Community Trade Marks Office to be located in Dublin.

 

 

 

 

Gearoid O'Sullivan
Gearoid O'Sullivan
Patent Office Kilkenny
The building in 45 Merrion Square which was the location of the Patents Office from 1927-98, and is now the home of the Irish Architectural Archive (photo from the latter's website).
The former crest of the Association
 

 

 

 

 

 

 

 

 

 

 

 

presidents

(L-R: Donal O'Connor, Peter Shortt, Gerald Kinsella, Arthur Tomkins, Peter Kelly, Norman MacLachlan, Andrew Parkes, Frank Gorman)
 
 
 
 
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