Students
Patent
Register of Patent Agents and
Trade Mark Examinations
Patent Syllabus as copied from the Irish Patents Office website:
The Irish Law and Practice of Patents Examination
Syllabus
Aim: 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.
Format of the Exam: 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%.
Knowledge required for the examination o Patentable inventions o Right to apply for and obtain a patent, inventorship, ownership and employee rights o Making patent applications, use of foreign specification or search report, amendment and correction of applications. o Provisions as to patents after grant - term, unity, amendment, restoration o Patents as a form of property, compulsory licences, the patent register, securing information about patents, patent applications and inspection of documents o Infringement including impact of partial validity, right to continue use, effect of publication, threats, marking o Revocation of patents o International (PCT) applications and obtaining granted IE o Patent through the European route o Convention applications o Restrictions on publication and making patent applications Abroad o SPC's
Breakdown of Legislation
Patentability o Patentable inventions - Section 9 o Exceptions to patentability - Section 10 o Novelty - Section 11 o Nonprejudicial disclosures - Section 12 o Inventive step - Section 13 o Industrial application - Section 14
Applications o Right to apply for a patents - Section 15 o Right to patents - Section 16 o Mention of inventor - Section 17 o Making of application Section 18 o Disclosure of invention - Section 19 o Claims - Section 20 o Unity of invention - Section 21 o Abstract - Section 22 o Date of filing application - Section 23 o Divisional application - Section 24 o Priority right - Section 25 o Claiming priority - Section 26 o Effect of priority right - Section 27 o Publication of application - Section 28
Procedure Up To Grant o Search report - Section 29 o Use of foreign specification or search report - Section 30 o Refusal or grant of patent - Section 31 o Amendment of application - Section 32 o Withdrawal of application - Section 33 o Notification of grant; publication of specification - Section 34 o Continuation in force of applications - Section 35 o Reinstatement of applications - Section 35A o Effect of reinstatement - Section 35B
Provision as to Patents after grant o Term of patent - Section 35 o Restoration of lapsed patents - Section 37 o Amendment after grant - Section 38 o Surrender of patent - Section 39
The effects of a patent and a patent application o Prevention of direct use of invention - Section 40 o Prevention of indirect use of invention - Section 41 o Limitation of effect of patent - Section 42 o Limitation of rights - Section 43 o Rights conferred by patent application after publication - Section 44 o Extent of protection - Section 45 o Burden of proof - Section 46
Infringement o Action for infringement of patent - Section 47 o Proceedings for infringement by co-owner - Section 48 o Restrictions on recovery of damages for infringement - Section 49 o Relief for infringement of partially valid patent - Section 50 o Proceedings for infringement by exclusive licensee - Section 51 o Certificate of contested validity of patent - Section 52 o Remedy for groundless threats of infringement proceedings - Section 53 o Power of Court to make declaration as to noninfringement - Section 54 o Right to continue use begun before date of filing or priority - Section 55 o Action for infringement of published application - Section 56
Revocation o Application for revocation of patent - Section 57 o Grounds for revocation - Section 58 o Examination of application for revocation Section 59 o Controller's power to revoke patents on his own initiative - Section 60 o Circumstances in which validity of patent may be put in issue - Section 61 o Controller to be given notice of Court proceedings - Section 62
Short term Patents o Application for short term patent - Section 63 o Patent under Part II and a short term patent not to coexist for same invention - Section 64 o Provisions relating to shortterm patents and applications therefore - Section 65 o Actions for infringement - Section 66 o Special ground for revocation of shortterm patent - Section 67
Voluntary and Compulsory Licences o Application for entry in register that licences of right are available - Section 68 o Cancellation of entry - Section 69 o Compulsory licences - Section 70 o Provisions as to compulsory licences - Section 71 o Licences, etc. on application of Minister of Government - Section 72 o Procedure on applications under sections 70 and 72 - Section 73 o Appeals and references to arbitrator - Section 74 o Supplementary provisions as to licences - Section 75
Use of Inventions for the service of the State o Assignment of invention, application, or patent to Minister of Government - Section 76 o Right to use inventions for service of State - Section 77 o Use of inventions pursuant to section 77; supplementary provisions - Section 78
Property in patent applications and patent contract conditions o Nature of patent applications and patents - Section 79 o Coownership of patent applications and patents - Section 80 o Determination of entitlement to patents, etc - Section 81 o Effect of change of proprietorship - Section 82 o Avoidance of certain conditions in contracts - Section 83
Register of Patents; Evidence of Register, Document, etc. o Register of patents - Section 84 o Assignment, etc. of patent applications and patents - Section 85 o Power of Court to amend register - Section 86 o Certificate of Controller and certified copies of documents to be evidence - Section 87 o Information about and inspection of patent applications and patents - Section 88 o Request for search - Section 89
Proceedings before the Controller or the Court o Exercise of discretionary power by Controller - Section 90 o Costs and security for costs - Section 91 o Evidence before Controller - Section 92 o Right of audience before Controller - Section 93 o Privileged communications - Section 94 o Assessors - Section 95 o Appeals from decisions of Controller - Section 96
Provisions regarding International Conventions o Effect of European patent - Section 119 o A restoration where translation not filed under section 119(6) - Section 119A o Effect of filing application for European patent - Section 120 o Authentic text of European patents and patent applications - Section 121 o Conversion of European patent application - Section 122 o Determination by Court of questions as to right to European patent - Section 123 o Effect of patent decisions of competent authorities of other states - Section 124 o Patent agents and other representatives - Section 125 o European patent attorneys - Section 126 o International applications for patents - Section 127 o Orders to give effect to international agreements relating to patents - Section 128 o Evidence of conventions and instruments under conventions - Section 129 o Obtaining evidence for proceedings under European Patent Convention - Section 130 o Communication of information to European Patent Office, etc - Section 131 o Financial provisions - Section 132
Suggested Reading List
Patents Act, 1992 (as amended)
Patents Rules, 1992 (as amended)
Written grounds of decisions of the Controller under the Act and Rules (available on the Patent Office website).
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. (2009 Oxford University Press).
Further details as well as past examination papers can be found here: http://www.patentsoffice.ie/en/patents_agents_reg_guidelines.aspx
Trade Mark
Examination Structures
The examination paper is as follows:
A single paper examination of 3 hours duration.
The paper will be divided into 3 Sections
A. Irish Trade Mark Case Law
B. Trade Mark Practice
C. Community Trade Marks
Each Section will contain 4 questions, all having equal marks
Candidates will be required to answers 2 questions from each Section.
Candidates must obtain a pass mark in each of the three sections in order to gain an overall pass. If a candidate fails any one of these 3 sections they will fail the overall exam.
The paper contains a maximum of 120 marks, i.e. 6 questions at 20 marks each. The overall pass is 50%. (60 marks)
Each section will require candidates to attempt 2 questions at 20 marks each, the maximum obtainable per section thereby being 40 marks.
To pass each section the candidates must obtain 20 marks out of the possible 40 available marks (50%).
The Irish Law and Practice of
Trade Marks Examination
Syllabus
Aim
The aim of this examination is to test candidates
understanding of the law and practice relating to the registration, enforcement and exploitation of trade mark rights as they apply in the Republic of Ireland. Candidates can expect the examination paper to test their knowledge of the Irish Trade Marks Acts and Rules; Trade Marks case law; how they would advise clients in given situations; knowledge of EU Directives and Regulations and the European Community Trade Mark system.
Format of the Exam
A single paper examination of 3 hours duration.
The paper will be divided into 3 Sections
A. Irish Trade Mark Case Law
B. Trade Mark Practice
C. Community Trade Marks
Each Section will contain 4 questions, all having equal marks
Candidates will be required to answers 2 questions from each Section.
Candidates must obtain a pass mark in each of thethree sections in order to gain an overall pass. If a candidate fails any one of these 3 sections they will fail the overall exam.
The paper contains a maximum of 120 marks, i.e. 6 questions at 20 marks each. The overall pass is 50%. (60 marks)
Each section will require candidates to attempt 2 questions at 20 marks each, the maximum obtainable per section thereby being 40 marks.
To pass each section the candidates must obtain 20 marks out of the possible 40 available marks (50%).
Irish National Trade Mark Law and Practice
Aim
To test candidates understanding of the law and practice relating to the registration, enforcement and exploitation of trade mark rights as they apply in Ireland
Application Procedure
Who may apply:
Use or intended use by the applicant or with consent
Nice Classification, which goods and services are
included in each class
Requirements, effect, supporting documents and
deadlines regarding priority
Certification, collective and series marks
Limitations, Disclaimers, Translation Clauses
Division/Merger of Applications
Registrability and Absolute Grounds for Refusal (Section 8 Trade Marks Act 1996)
"Capable of distinguishing"
"Capable of bring represented graphically"
Colours and combinations of colours
Shapes
Sensory marks
Geographical names
Surnames and personal names
Slogans
Letters and numerals
Foreign words
Specially protected emblems
Contrary to public policy/deceptive
Evidence of use
Relative Grounds for Refusal (Section 10 Trade Marks Act 1996)
"Earlier Rights"
Comparison of marks
Comparison of goods and services
Honest concurrent use
Trade Marks Journal:
What information is published
Post-publication observations
Opposition
Possible grounds for opposition
Trade marks having "a reputation"
Opposition procedure including drafting of documents to be filed and evidence
Deadlines
Appeals
Costs
Revocation and Invalidity
Grounds
Procedure including drafting of documents to be filed
and evidence
Burden of proof
Appeals
Registrable Transactions
Assignments:
Procedure for recordal
Stamp duty (a general knowledge)
Effect of recordal
Licences:
Basic provisions
Procedure for recordal
Effect for recordal
Exclusive licences
Security interest
Procedure for recordal
Effect for recordal
Stamp duty (a general knowledge)
Maintenance/Formalities
Duration of registration and renewal procedure
Change of name or address
Voluntary amendment of specification
Surrender
Amendment of trade marks
Correction of errors
Division/Merger of Registrations
Trade Mark Infringement and Passing Off
Effect of trade mark registration
Law of passing-off
Protection of well-known marks
Counterfeiting/Criminal offences
Defences
Transitional Provisions
Transitional arrangements for application received under the Trade Marks Act 1963
Trade Marks Act 1996
Candidates will be expected to have a working knowledge of the practice under the Trade Marks Act 1996 and Trade Mark Rules 1996 and the Trade Marks Amendment Rules 2010. Candidates are also expected to be familiar with the written grounds of decision of the Controller under the Act
and Rules (available on the Patent Office website).
Community Trade Mark Law and Practice
Aim
To test candidates understanding of the law and
practice relating to the registration, enforcement and exploitation of Community trade mark rights
Application Procedure
Who may apply
Application Form
Language
Representation
Nice Classification
Requirements, effect, supporting documents and
deadlines re priority/convention
Requirements, effect, supporting documents and
deadlines re seniority
Collective Marks
Time limits
Registrability and absolute grounds for refusal
Definition of a trade mark
Capable of being represented graphically
Distinctiveness
Colours
Geographical marks
Letters and numerals
Surnames
Foreign words
Specially protected emblems
Contrary to public policy/deceptive
Evidence of use
Community and National Searches
A general knowledge of procedure
Community Trade Marks Bulletin
What information is published
Post-publication observations
Opposition
Grounds for opposition
Language
Admissibility
Procedure including drafting of documents and
evidence
Deadlines
Costs
Revocation and Invalidity
Grounds for revocation and invalidity
Procedure including drafting of documents and
evidence
Deadlines
Consequences of revocation and invalidity
Community Trade Marks as objects of property
Transfer
Licensing
Rights in renewal
Maintenance/Formalities
Duration of registration and renewal procedures
Use of a Community Trade Mark
Change of name or address
Voluntary limitation of specification
Surrender
Amendment of a trade mark
Correction of errors
Inspection of files
A general knowledge of fees
Legal Actions and Disputes
Effect of trade mark registrations
Community Trade Mark Courts
Jurisdiction
Presumption of validity
Counterclaims
Applicable law
Appeals (Procedure and Deadlines)
Conversion
Requirements of conversion
Deadlines
International Trade Mark Law and Practice
Aim
To test candidates understanding of the law and
practice relating to the registration, enforcement and
exploitation of International trade mark rights
Madrid Protocol
A working knowledge of the operation of the Madrid
Protocol including the procedures and principles
Application Procedure
Who may apply
Basis of application
Office of origin
Language
Representation
Contracting parties
WIPO
Nice Classification
Requirements, effect, supporting documents and
deadlines
Procedure
Substantive requirements
Examination by WIPO
Examination by Contracting Parties
Irregularities
Grounds for refusal
Remedying defects and irregularities
Publication
Registration
Duration and Renewal
Opposition
Time limits
Maintenance/Formalities
Dependence and Independence
Transformation
Change of name or address
Correction of errors
Subsequent designations
Limitation, renunciation and cancellation
Transfers
A general knowledge of fees
Suggested Reading List
"Irish Trade Marks Law & Practice" by M. Tierney;
"Irish Intellectual Property Law" by R. Clark & S. Smyth;
"Irish Law of Torts" by B. McMahon & W. Binchy;
"Kerly; Law of Trade Marks and Trade Names" (Sweet & Maxell);
"Equity and the Law of Trusts in the Republic of Ireland" by Hon. Justice R.
Keane;
"Irish Legal System"; by R. Byrne & P. McCutcheon;
"Dictionary of Irish Law" by H. Murdoch;
"Community Trade Mark Handbook" (Sweet & Maxell);
"The Law of Passing Off" by C. Wadlow;
"Intellectual Property: Patents, Copyright, TradeMarks and Allied Rights" by
WR Cornish;
"Cases and Materials on Intellectual Property" by WR.Cornish;
"Trade Marks Law" by Glen Gibbons.
Further details as well as past examination papers can be found here:
http://www.patentsoffice.ie/en/trademark_guidlines.aspx