Patents Act, 1992

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Determination by Court of questions as to right to European patent.

123.—(1) The Court shall determine a question to which this section applies in accordance with the following provisions of this section.

(2) This section applies to a question arising before the grant of a European patent as to whether or not a person has a right to be granted a European patent, or a share in any such patent, and in this section “employer-employee question” means any such question between an employer and an employee, or either or both of their successors in title, arising out of an application for a European patent for an invention made by the employee.

(3) Subject to subsection (5), the Court shall consider and determine a question to which this section applies, other than an employer-employee question, if, and only if, the following conditions are satisfied:

(a) there is neither an agreement in writing whereby, nor other written evidence establishing that, the parties have agreed to submit to the jurisdiction of a court or other competent authority which under the law of a relevant contracting state other than the State has jurisdiction to decide the question, and

(b) (i) the applicant ordinarily resides in or has his principal place of business in the State, or

(ii) the other party claims that the patent should be granted to him and he ordinarily resides in or has his principal place of business in the State, and the applicant does not have his residence or principal place of business in any of the relevant contracting states.

(4) Subject to subsection (5), the Court shall consider and determine an employer-employee question if, and only if, the following conditions are satisfied:

(a) (i) the employee is wholly or mainly employed in the State, or

(ii) the employee is neither wholly nor mainly employed in a particular state or territory, or

(iii) the place at which the employee is mainly employed cannot be determined but the employer has in the State a place of business to which the employee is attached (whether or not he is also attached elsewhere);

and

(b) there is not written evidence that the parties have agreed to submit to the jurisdiction of a court or other competent authority which under the law of a relevant contracting state other than the State has jurisdiction to decide the question, or, where there is such evidence of such an agreement, the proper law of the contract of employment does not recognise the validity of the agreement.

(5) The Court may consider and determine any question to which this section applies if there is written evidence that the parties have agreed to submit to the jurisdiction of the Court and, in the case of an employer-employee question, the proper law of the contract of employment recognises the validity of the agreement.

(6) If, after proceedings to determine a question to which this section applies have been brought before a court or other competent authority which under the law of a relevant contracting state other than the State has jurisdiction to decide the question, proceedings are begun before the Court, the Court shall stay the proceedings before it until the following conditions are satisfied:

(a) such authority either—

(i) declines jurisdiction, or

(ii) makes a determination which the Court refuses to recognise under section 124 , and

(b) where an appeal lies from the decision of such authority, either an appeal has been taken and has been determined or withdrawn or, in case such an appeal is not taken, the time for appealing has expired.

(7) References in this section to the determination of a question include references to—

(a) the making of a declaration with respect to the question; and

(b) the making of such order as the Court deems appropriate in relation to the question.

(8) In this section and section 124 “relevant contracting state” means a state which is a party to the European Patent Convention and has not exercised its right under the said convention to exclude the application of the protocol to the said convention therein referred to and known as the Protocol on Recognition.

(9) This section and section 124 apply to a question arising before the grant of a European patent whether the relevant European patent application designates the State or not.