S.I. No. 280/2002 - Industrial Designs Regulations 2002
ARRANGEMENT OF REGULATIONS
Preliminary
Regulations
1.
Citation
2.
Commencement
3.
Interpretation
4.
Fees
5.
Signature of documents
6.
Filing of documents
7.
Documents in a foreign language
8.
Address for service
Proceedings for Registration
9.
Form of application
10.
Material to accompany application
11.
Representations
12.
Amended application
13.
Procedure to be followed on notification of particulars affecting an application for registration
14.
Deemed abandonment of applications
15.
Classification
16.
Filing date
17.
Claiming Priority
18.
Certificates for use in obtaining registration outside the State
19.
Multiple applications
20.
Divisional applications
21.
Examination of grounds for non-registrability
Register of designs
22.
Register of Designs
23.
Certificate of registration
24.
Publication of registration
25.
Deferment of publication
26.
Rectification of the Register
27.
Change of name or address
28.
Adaptation of entries to new classification
29.
Correction of errors by the Controller
30.
Inspection of the Register
31.
Right to information
32.
Registration and publication of assignments, licences etc.
Renewal, Restoration and Surrender
33.
Reminder of renewal
34.
Renewal of design right
35.
Restoration of design right
36.
Surrender of design right
Proceedings before the Controller
37.
Invalidation Proceedings
38.
Application for compulsory licence
39.
Hearings
40.
Evidence before the Controller
41.
Notice of Decision on Hearing
42.
Time limit for request for written grounds of decision
43.
Security for costs
44.
General power to enlarge time
45.
Form of statutory declaration
46.
Statutory declaration made outside the State
47.
Notice of seal of officer taking declaration to prove itself
48.
Application to Court
49.
Order of Court
Miscellaneous
50.
Excluded days
51.
Power to dispense with evidence, signature etc
52.
General power of amendment
53.
Conversion of applications under the Industrial and Commercial Property (Protection) Acts 1927 to 1958
Schedule 1
Fees payable
Schedule 2
Forms
S.I. No. 280 of 2002
INDUSTRIAL DESIGNS REGULATIONS 2002
I, MARY HARNEY, Minister for Enterprise, Trade and Employment, in exercise of the powers conferred on me by sections 9 (1), 9 (2), 9 (3), 20 (1), 22 (4), 23 , 24 (1), 25 27 (1), 30 (1), 30 (2), 31 (1), 32 , 33 (4), 36 (1), 38 (1), 39 (1), 41 (1), 41 (2), 41 (3), 43 (2) 43 (3), 44 (1), 44 (5), 46 (2) and 85 of, and paragraph 3 of the First Schedule to, the Industrial Designs Act 2001 (No. 39 of 2001) and insofar as these regulations relate to fees, with the consent of the Minister for Finance, hereby make the following regulations:
Preliminary
1. Citation
These Regulations may be cited as the Industrial Designs Regulations 2002.
2. Commencement
These Regulations shall come into operation on the first day of July, 2002.
3. Interpretation
In these Regulations, unless the context otherwise requires -
(1) “Court” means the High Court;
“Journal” means the Patents Office Journal;
“Locarno system of International Classification” means the Locarno system of International Classification for Industrial Designs signed at Locarno on October 8 1968, and as amended from time to time;
“Office” means the Patents Office;
“Principal Act” means the Industrial Designs Act 2001 ;
“publish” or “published” means publish or published in the Patents Office Journal;
“registered patent agent” has the meaning assigned to it by section 88 of the Principal Act;
“registered trade mark agent” has the meaning assigned to it by section 88 of the Principal Act.
(2) A reference to a paragraph is a reference to the paragraph of the provision in which the reference occurs, unless it is indicated that a reference to some other provision is intended.
(3) A reference to a Regulation or a Schedule is a reference to a Regulation of or a Schedule to, these Regulations, unless it is indicated that reference to some other Regulation or Schedule is intended.
4. Fees
(1) The fees to be paid in relation to any item set out in column (2) at a reference number in column (1) in Schedule 1 shall be the fee set out in column (3) opposite that reference.
(2) Payment of a fee or fees shall be made by any method which is acceptable to the Controller.
(3) A request for the remission of the whole or part of any fee properly paid shall be made in writing. No appeal shall lie from any decision of the Controller in respect of such a request.
(4) Fees shall be paid in the currency of the State.
(5) A single payment may be made to include 2 or more prescribed fees.
5. Signature of documents
(1) This Regulation applies to any notice, application or other document required or authorised under the Principal Act or these Regulations to be given, made or filed at the Office and such a notice, application or other document is referred to in the following paragraphs as “a document”.
(2) A document purporting to be signed for or on behalf of a partnership shall contain the names of all the partners in full and shall be signed by all the partners, or by any partner authorised to sign on behalf of the partnership, or by any other person who satisfies the Controller that he or she is authorised to sign the document.
(3) A document purporting to be signed for or on behalf of a body corporate shall be signed by a director or the secretary of the body corporate or by any other person who satisfies the Controller that he or she is authorised to sign the document.
(4) A document purporting to be signed for or on behalf of an unincorporated body (not being a partnership) may be signed by any person who satisfies the Controller that he or she is duly authorised to sign it.
6. Filing of documents
(1) (a) Any notice, application, or other document authorised or required under the Principal Act or these Regulations to be delivered to the Controller or any other person may be sent by post.
(b) In proving the sending it shall be sufficient to prove that the letter was properly addressed, prepaid (when requisite) and posted.
(2) The Controller may at his or her discretion allow submission of a notice or other document by other means subject to such terms or conditions as may be determined by him or her and published.
7. Documents in a foreign language
(1) Where a document or part thereof which is in a foreign language is sent to the Controller in connection with any proceedings under the Principal Act or these Regulations, a translation into a language of the State verified to the satisfaction of the Controller shall also be furnished to the Controller.
(2) Where more than one copy of a document referred to in paragraph (1) is required to be filed a corresponding number of the copies of the translation shall accompany it.
(3) The Controller may refuse to accept any translation which is in his or her opinion inaccurate and thereupon another translation verified as aforesaid shall be furnished to the Controller, together with the appropriate number of copies thereof.
(4) A document referred to in paragraph (1) shall be deemed not to have been furnished to the Controller until a translation thereof, acceptable to the Controller, has also been furnished to him or her.
8. Address for service
(1) A person concerned with any proceeding before the Controller under the Principal Act or these Regulations and every registered proprietor of a design shall give to the Controller an address for service in the State and that address may for all purposes under the Principal Act and these Regulations be treated as the address of the person who has furnished it and a letter addressed to such person or proprietor at his or her address for service shall be deemed to be properly addressed.
(2) For the purposes of this Regulation, in a case where the person or registered proprietor concerned desires that the address for service shall consist of the address of an agent who is a registered patent agent or registered trade mark agent, the Controller may accept an address for service comprising the name of the agent so registered followed by a statement in the following terms:
(a) “at his or her address as recorded for the time being in the Register of Patent Agents” or,
(b) “at his or her address as recorded for the time being in the Register of Trade Mark Agents”,
as appropriate.
(3) Where an address for service has not been given as required under paragraph (1) the Controller shall send the person concerned notice to file an address for service within 2 months of the date of the notice and where that person fails to do so-
(a) in the case of an applicant under section 20, 34, 37 or 47 of the Principal Act, the application shall be treated as abandoned;
(b) in the case of a registered proprietor of a design which is the subject of an application made under section 34, 37 or 47 of the Principal Act the registered proprietor shall not be permitted to take part in the proceedings.
Proceedings for Registration
9. Form of application
Form Nos. 1 and 1A set out in Schedule 2 are prescribed as the forms for the purposes of section 20 of the Principal Act.
10. Material to accompany application
There shall be furnished with an application for the registration of a design-
(a) a representation of the design,
(b) the fee set out in Schedule 1 or evidence of payment thereof.
11. Representations
(1) Subject to paragraph (4), a representation of a design mentioned in Regulation 10 shall be not less than 90mm x 120mm in size and not greater than 180mm x 240mm in size.
(2) Where more views than one are furnished in respect of a representation, these shall be on separate sheets and shall be designated perspective view, front view, side view, plan or otherwise as the case may be.
(3) Each representation of a design which consists of a repeating surface pattern shall show the complete pattern and a sufficient portion of the repeat in length and width.
(4) An applicant who is unable to comply with the requirements of paragraphs (1), (2 and (3) shall, in accordance with section 25 of the Principal Act, furnish a representation of the design suitable for reproduction and shall comply with the requirements of paragraphs (1), (2) and (3) within 3 months thereafter, and the design shall not be registered unless and until the requirements of this paragraph have been complied with.
(5) The Controller may at any time before registration require the applicant to furnish additional representations of the design.
12. Amended application
A person requesting an amendment of an application under section 20 of the Principal Act shall pay the fee set out in Schedule 1.
13. Procedure to be followed on notification of particulars affecting an application for registration
(1) An application under section 22(3) of the Principal Act shall be in writing and signed and shall be accompanied by a certified copy of the instrument or document upon which the claim or entitlement of the person whose title or interest to be recorded is based.
(2) The applicant shall also pay the fee set out in Schedule 1 in respect of such an application.
(3) The Controller shall cause the title or interest of the person making an application referred to in paragraph (1) to be recorded and upon registration of the design shall cause the title or interest of that person to be recorded in the Register.
14. Deemed Abandonment of applications
(1) Where an application for registration of a design is not completed so as to enable registration to be effected within 12 months from the filing date of the application owing to any fault or neglect on the part of the applicant, the Controller shall give notice to the applicant in writing of such non-completion.
(2) Where, after 30 days from the date when such notice was sent, the application is not completed, it shall be deemed to be abandoned unless application has been made and the fee set out in Schedule 1 paid for an extension of time not exceeding three months from the expiry of the 12 months referred to in paragraph (1) within which the application for registration may be completed.
15. Classification
For the purposes of section 24 of the Principal Act, products shall be classified in accordance with the Locarno system of International Classification.
16. Filing Date
The documents referred to in section 25 of the Principal Act shall be in a form that is legible and suitable for reproduction.
17. Claiming Priority
(1) A claim to priority under section 27 of the Principal Act shall indicate the filing date of the earlier application, the country, territory, state or area in or for which it was made and the filing number, where available.
(2) Where a right to priority is claimed under section 27 of the Principal Act there shall be filed, with the application for registration or within 3 months of the filing thereof, a certificate by the competent national authority verifying to the Controller's satisfaction the filing date and country of filing, the representation of the design and its filing number.
18. Certificates for use in obtaining registration outside the State
(1) The Controller may issue certificates for use in connection with applications for registration outside the State of designs which are the subject of applications pending before the Controller or which he or she has registered in the Register.
(2) A certificate shall contain such information about a pending application or a registration as may be appropriate.
19. Multiple applications
(1) 2 or more designs, subject to a maximum of 100 designs, may be combined in 1 multiple application for registration of designs. Except in cases of ornamentation, this possibility is subject to the condition that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same class of the Locarno system of International Classification.
(2) A multiple application shall be subject to payment of the additional application fee set out in Schedule 1. Where the multiple application contains a request for deferment of publication, the additional fee for deferment of publication set out in Schedule 1 shall apply in respect of each design that is subject to the request.
(3) Each of the designs contained in a multiple application may be dealt with separately from the others for the purpose of applying these Regulations. Each may in particular, separately from the others, be enforced, licensed, be the subject of a right in rem, a levy of execution or insolvency proceedings, be surrendered, renewed or assigned, be the subject of deferred publication or be declared invalid.
(4) Each of the designs contained in a multiple application shall be numbered consecutively by the applicant using Arabic numerals inserted on the back or reverse side of the representations of the designs filed in accordance with Section 25 of the Principal Act. Where more than one representation of a particular design is submitted, each of the representations of that design should be assigned the same identification numeral.
20. Divisional Applications
(1) At any time before a certificate of registration of a design has been issued by the Controller, an applicant may send to the Controller a request for a division of a multiple application (“the original application”) into 2 or more separate applications (“divisional applications”), indicating for each divisional application those designs of the original application which are to be covered by it. An applicant for a division of an application shall pay the fee set out in Schedule 1.
(2) A divisional application shall comply with Regulations 9, 10 and 11 and shall be treated as a separate application for the purposes of the Principal Act and these Regulations save that the application fee payable under Regulation 10 shall not be payable upon the filing of a divisional application and a divisional application shall have the same filing date and date of priority as the original application.
21. Examination of grounds for non-registrability
(1) Where, pursuant to section 21 of the Principal Act, the Controller proposes to refuse an application, he or she shall notify the applicant accordingly. The Controller shall notify to the applicant a time limit within which he or she may withdraw or amend the application or submit his or her observations.
(2) Where the applicant fails to satisfy the Controller that the requirements for registration have been met, or to amend the application so as to meet them, or fails to respond before the end of the period specified by the Controller under paragraph (1) the Controller shall refuse to accept the application.
(3) Where it appears to the Controller that the requirements for registration are met the Controller shall accept the application.
Register of Designs
22. Register of Designs
The Controller shall keep a Register under section 30 of the Principal Act and upon registration there shall be entered in the Register in respect of each design the following particulars—
(a) the registration number;
(b) the name, address and nationality of the registered proprietor;
(c) the address for service furnished pursuant to Regulation 8;
(d) the description of the design and of its feature or features of novelty and individual character as furnished to the Controller in connection with the application for registration;
(e) the product or products to or in which the design is to be applied or incorporated and the class or classes thereof, including sub-classes;
(f) the date of registration as determined in accordance with section 29 of the Principal Act;
(g) the date of publication of the registration as provided for in section 32 of the Principal Act. Where deferment of publication is requested under section 32(2) of the Principal Act the date of publication shall only be entered on the Register upon such publication;
(h) the priority date (where any) claimed pursuant to section 27 of the Principal Act, the name of the state, country, territory or area and the filing number;
(i) any disclaimer or limitation subject to which the design is registered;
(j) where the first proprietor is not the author of the design, the name of the author;
(k) the representation or representations of the design as determined by the Controller;
(l) such other particulars as may be required by the Principal Act or these Regulations or as the Controller considers appropriate.
23. Certificate of registration
(1) Form No. 2 set out in Schedule 2 is prescribed as the form for the purposes of section 31 of the Principal Act.
(2) An application for a copy of a certificate of registration under section 31(2) of the Principal Act shall be accompanied by evidence setting out in full and verifying the circumstances in which the original certificate was lost or destroyed. An application for a copy of a certificate made for any other reason shall be accompanied by a statement as to why the applicant considers it expedient for a copy to be furnished to him or her and shall be supported by such evidence as the Controller shall require.
24. Publication of registration
The particulars to be published by the Controller for the purposes of section 32(1 of the Principal Act shall be:
(a) the registration number;
(b) the name and address of the registered proprietor;
(c) the address for service;
(d) the date of registration;
(e) the reproduction of a representation or representations of the design;
(f) a brief description of the design and of the feature or features of novelty and individual character claimed;
(g) where applicable, the priority date and the name of the state, country, territory or area in respect of which priority is claimed and the filing number;
(h) the class or classes, including sub-classes; and
(i) a statement of the product or products to or in which the design is to be applied or incorporated.
25. Deferment of publication
(1) The period for which publication of a design may be deferred under section 32(2 of the Principal Act shall be a period of up to 30 months from the filing date, or where priority is claimed, for a period of up to 30 months from the date of priority.
(2) Upon the expiry of the period of deferment referred to in paragraph (1), or at any earlier date on request by the registered proprietor, the Controller shall open the Register to public inspection in respect of that design and shall publish the registration of the design.
(3) Paragraphs (1) and (2) shall not operate to deny an applicant access to his or her application or supporting documentation.
26. Rectification of the Register
(1) An application to the Controller for an order for the rectification of the Register under section 34(1) of the Principal Act shall state-
(a) the name and address of the person seeking rectification;
(b) the registration number of the design; and
(c) the nature of the rectification sought;
and shall be accompanied by a statement setting out fully the nature of that person's interest and the facts upon which he or she relies and the applicant shall pay the fee set out in Schedule 1.
(2) A copy of the application and statement shall be sent by the Controller to each person who appears to him or her, from the Register or otherwise, to be interested in the application.
(3) At any time, within 3 months from the date that a copy of the application and statement is sent by the Controller to any person, that person may give notice to the Controller of opposition to the application and that notice shall set out fully the nature of the opponent's interest and the facts upon which he or she relies.
(4) The Controller may give such directions as he or she thinks fit in relation to the subsequent procedure and may hear the parties before deciding the application.
(5) Upon making a decision on an application for rectification of the Register under this Regulation, the Controller shall, where applicable, rectify the Register in accordance with the terms of his or her decision.
(6) In the case of applications for rectification of the Register made directly to the Court under section 33 of the Principal Act, a copy of the application shall be sent by the applicant by registered post to the Controller at the time of making his or her application to the Court.
(7) Where a rectification of the Register affects matters particulars of which have previously been published, the rectification shall be published in respect of those particulars.
27. Change of name or address
(1) The Controller shall, subject to paragraph (2) below, following a request in writing by any person upon alteration of his or her name, address, or address for service for that alteration to be recorded, record that alteration and the person concerned shall be informed when the alteration is made.
(2) Before acting on a request to alter a name, address or address for service under this Regulation, the Controller may require such proof of the alteration as he or she thinks fit.
28. Adaptation of entries to new classification
(1) Where the Controller proposes to amend existing entries in the Register in order to implement any amended or substituted classification for the purposes of the registration of designs in pursuance of section 36 of the Principal Act, the Controller shall give the registered proprietor of the design written notice of his or her proposals and shall cause the proposals to be published.
(2) Notice of opposition to the proposals may be filed within 3 months of the date of publication of the proposals. A notice shall state the grounds of opposition and shall include in particular, any grounds based on matters to which section 36(2) of the Principal Act relates.
(3) The Controller may require or admit any evidence which he or she considers relevant to the questions at issue and, where so requested by an opponent, give that opponent an opportunity to be heard thereon before deciding the matter.
(4) Where no notice of opposition under paragraph (2) of this Regulation is filed within the time specified, the Controller shall amend the Register in accordance with the proposals published under paragraph (1).
29. Correction of errors by the Controller
A request for a correction of an error made under section 37(2) of the Principal Act shall state-
(a) the name and address of the person seeking the correction and his or her interest in the design;
(b) the application number or, as the case may be, the registration number of the design;
(c) exact details of the correction desired, and
(d) a statement of the reasons why the correction is desired.
30. Inspection of the Register
(1) It is prescribed that the times the public have a right to inspect the Register under section 38(1) of the Principal Act are the hours the Patents Office is open to the public.
(2) Subject to the provisions of section 38 of the Principal Act, the Controller may, on receipt of a request for a search, accompanied by a representation of a design, and on payment of the fee set out in Schedule 1 cause such search as may be reasonably practicable to be made of the Register, to ascertain whether or not at the date of the search any design is on record which appears to be identical with, or closely resembles that design and the Controller shall notify the applicant of the result of the search.
31. Right to information
(1) A person making a request for information under section 39 of the Principal Act shall pay the fee set out in Schedule 1.
(2) The right to information under section 39 of the Principal Act does not apply to any document-
(a) prepared in the Patents Office solely for use therein;
(b) sent to the Patents Office, whether at its request or otherwise, for inspection and subsequent return to the sender, or
(c) issued or received by the Patents Office which the Controller considers should be treated as confidential.
(3) Nothing in this Regulation shall be construed as imposing on the Controller the duty of making available for public inspection any document or part of a document which in his or her opinion prejudices a person's reputation.
32. Registration and publication of assignments, licences etc.
(1) An application under section 41(1) of the Principal Act shall be in writing and signed and shall be accompanied by a certified copy of the instrument or document upon which the claim of the person whose title or interest is to be entered in the Register is based. The applicant shall also pay the fee set out in Schedule 1 in respect of such an application.
(2) An application under section 41(2) of the Principal Act shall be in writing and signed and shall be accompanied by a certified copy of the instrument or document upon which the entitlement of the person whose title or interest is to be entered in the Register is based and the applicant shall also pay the fee set out in Schedule 1 in respect of such an application.
(3) The Controller shall publish entries in the Register made under section 41 of the Principal Act.
(4) Where the name of a person is entered in the Register as mortgagee or licensee such person may on making an application for the purpose have a note entered in the Register that he or she no longer claims to be mortgagee or licensee, as the case may be.
Renewal, Restoration and Surrender
33. Reminder of renewal
Except where renewal has already been effected under Regulation 34, the Controller shall, at any time not earlier than 6 months nor later than 1 month before the expiration of the design right in a design, send to the registered proprietor notice that the design right may be renewed as prescribed in that Regulation and of the date of expiry.
34. Renewal of design right
(1) An application for the renewal of the design right in a design shall be effected by filing a request for renewal under section 43 of the Principal Act not earlier than 6 months before the expiration of the design right, or not later than 6 months immediately following the expiration of the design right. An applicant for renewal of a design right in a design shall pay the fee set out in Schedule 1.
(2) On receipt of the application and the prescribed renewal fee, the Controller shall record the renewal of the design right in the Register, shall issue to the registered proprietor of the design a certificate of renewal and shall publish the renewal.
(3) Where the period during which an application for renewal may be made as specified in section 43(4) of the Principal Act has expired and the design right has not been renewed, the Controller shall, not later than 6 weeks after the date of expiry of that period, send to the registered proprietor of the design a notice informing him or her that the design right has expired, shall record the expiry in the Register and shall publish the expiry.
35. Restoration of design right
(1) An application for the restoration of the design right under section 44 of the Principal Act may be made within 12 months from the date on which the design right expires.
(2) An application for restoration shall include-
(a) the name and address of the applicant,
(b) the registration number of the design,
(c) a statement of the amount of the renewal fee due and the date by which it should have been paid, and
(d) evidence that the registered proprietor took reasonable care to see that the period for which the design right subsisted was extended in accordance with section 43 of the Principal Act.
(3) Where the Controller decides to restore the design right in the design, he or she shall notify the applicant accordingly and shall record the restoration in the Register on payment of any unpaid renewal fee and the prescribed additional fee for restoration as set out in Schedule 1.
(4) The restoration of the design right shall be published.
36. Surrender of design right
(1) A notification of surrender of the design right in a design shall be submitted to the Controller by the registered proprietor and shall-
(a) state the name and address of the registered proprietor;
(b) state the registration number of the design;
(c) state the class or product for which the design is registered which is the subject of the surrender notice;
(d) certify that he or she is not precluded by contract or other agreement or arrangement from surrendering the design right;
(e) specify the name and address of each person entered in the Register as having an interest in the design; and
(f) certify that each of the persons named under subparagraph (e) has been notified of the registered proprietor's intention to surrender the design right at least 3 months prior to the date of the notice to the Controller and that none of the persons has objected to the surrender.
(2) Where it appears to the Controller from the Register that a person other than the registered proprietor has an interest in the design and that person's name is not included in the list referred to in paragraph (1)(e), the Controller may require the registered proprietor to notify that person of the proposed surrender and shall not act on the notice to surrender the design until he or she is satisfied that the person notified under this paragraph has not objected to the surrender within 3 months from the date on which the notification is sent.
(3) Where the registered proprietor has complied with the requirements of this Regulation, the Controller shall enter the surrender of the design right in the Register and shall publish notice of the surrender.
(4) As from the date of publication in the Journal of the notice referred to in paragraph (3), the effects of registration shall, to the extent that the design right has been surrendered, cease to apply; but no action for infringement shall lie in respect of any act done before that date.
Proceedings before the Controller
37. Invalidation Proceedings
(1) An application to the Controller for invalidation of the registration of a design under section 47 of the Principal Act shall contain a statement of the grounds on which the application is made.
(2) The applicant shall also pay the fee set out in Schedule 1 when applying for invalidation.
(3) Where an application is made under paragraph (1) by a person other than the registered proprietor of the design in question, the Controller shall by registered post send a copy of the application and the statement to the registered proprietor.
(4) Within 3 months of receipt by the registered proprietor of the copy of the application and the statement, the registered proprietor may file a notice of opposition with the Controller and the Controller shall send a copy thereof to the applicant.
(5) The Controller may require the submission to him or her of further evidence statement or counter-statement within such time as he or she may decide.
38. Application for compulsory licence
(1) An applicant for a compulsory licence under section 49 of the Principal Act shall pay the fee set out in Schedule 1.
(2) The Controller shall, upon payment of the fee referred to in paragraph (1), send notice of the application under paragraph (1) and a copy of the application to the registered proprietor and shall, thereafter, determine the procedure to be followed before deciding the issue.
39. Hearings
(1) For the purposes of section 80 of the Principal Act, the Controller shall give the applicant, registered proprietor or party concerned notice that he or she may be heard.
(2) Save as otherwise provided by these Regulations, an application for a hearing shall be made within 10 days from the date of notice by the Controller under paragraph (1 and an applicant for a hearing shall pay the fee set out in Schedule 1.
(3) Upon receiving an application for a hearing the Controller shall notify any other party to the proceedings and where such a party desires to attend and be heard he or she shall inform the Controller accordingly within 10 days of the Controller's notification. The Controller shall give the party or parties concerned not less than 10 days' notice of the time of the hearing unless the parties consent to shorter notice.
(4) A party who fails to attend a hearing appointed in accordance with this Regulation may be treated as not desiring to be heard and the Controller may act accordingly.
(5) Where in inter partes proceedings any party intends to refer at the hearing to any document not already mentioned in the proceedings, he or she shall give to the other party and to the Controller at least 7 days' notice of his or her intention, together with copies of each document to which he or she intends to refer.
40. Evidence before the Controller
(1) The Controller may for the purposes of any of the functions assigned to him or her by the Principal Act do all or any of the following things-
(a) summon witnesses to attend before him or her;
(b) examine on oath or affirmation (which he or she is hereby authorised to administer) or permit the examination on oath or affirmation of the witnesses attending before him or her;
(c) require any such witness to produce to him or her any document relevant to the proceedings and which is within his or her power to produce;
(d) permit evidence to be given on affidavit or other sworn testimony instead of, or in addition to, evidence given by statutory declaration, or orally.
(2) A witness summons under this Regulation shall be signed by the Controller.
(3) A witness before the Controller shall be entitled to the same immunities and privileges as if he or she were a witness before the Court.
41. Notice of Decision on Hearing
The applicant shall be notified in writing of the decision of the Controller on any hearing and this notification shall give an indication of the general terms of the grounds for that decision.
42. Time limit for request for written grounds of decision
Where an applicant wishes to request the Controller to state in writing the grounds of and the materials used by him or her in arriving at his or her decision in cases referred to in section 80 of the Principal Act, he or she shall make a request, within 1 month from the date of a notification under Regulation 41 on payment of the fee set out in Schedule 1.
43. Security for costs
The states prescribed for the purposes of section 81(2) of the Principal Act are the Member States of the EEA other than the State.
44. General Power to enlarge time
(1) A time or period prescribed by these Regulations, other than the period prescribed in Regulation 8, 14, 34 or 36, or any time or period that may be specified by the Controller under these Regulations may, at the request of the person or party concerned, be extended by the Controller where he or she thinks fit, upon such notice and upon such terms as he or she may direct, and such extension may be granted although the time or period has already expired.
(2) Subject to paragraph (3), a request for extension under paragraph (1) shall be made before the time or period in question has expired.
(3) If the request under paragraph (1) is made not later than 2 months after the expiry of the time or period in question, the Controller may, at his or her discretion extend the period of time if he or she is satisfied with the explanation for the delay in requesting the extension and it appears to him or her that any extension would not disadvantage any other person or party affected by it. A person availing of the provisions of this paragraph shall pay the fee set out in Schedule 1 at the time the request for extension is made.
45. Form of statutory declaration
A statutory declaration required by the Principal Act, or under these Regulations or used in any proceedings before the Controller under the Principal Act or these Regulations, shall -
(a) be headed in the matter to which it relates,
(b) be drawn up in the first person,
(c) be divided into paragraphs consecutively numbered and each paragraph shall so far as is possible be confined to one subject,
(d) state the description and true place of abode of the person making the declaration,
(e) bear the name and address of the person leaving it, and
(f) state on whose behalf it is left.
46. Statutory declaration made outside the State
A statutory declaration required by the Principal Act or these Regulations or used in any proceedings before the Controller thereunder shall, where made and subscribed outside the State, be made and subscribed before a person authorised by law to administer an oath for the purpose of any legal proceedings in the state, country territory or area, in which it is made.
47. Notice of seal of officer taking declaration to prove itself
Any document purporting to have affixed, impressed or subscribed thereto or thereon the seal or signature of any person authorised to take a declaration, in testimony that the declaration was made and subscribed before him or her, may be admitted by the Controller without proof of the genuineness of the seal, the signature, the official character of the person or his or her authority to take the declaration.
48. Application to Court
Except as otherwise provided in the Principal Act or these Regulations, every application to the Court under the Principal Act in relation to any matter which is a function of the Controller shall be notified forthwith to the Controller by the applicant.
49. Order of Court
(1) Except as otherwise provided in the Principal Act or these Regulations, where an order has been made by the Court in any matter under the Principal Act relating to a function of the Controller, the person in whose favour the order has been made, or such one of them where there is more than one as the Controller may direct, shall forthwith leave at the Office an attested copy of that order.
(2) The Controller shall as soon as possible take such action as may be required of him or her to give effect to the order.
Miscellaneous
50. Excluded days
Whenever the last day fixed by the Principal Act, or by these Regulations, for doing any act or thing at the Office falls on any of the days on which the Office is not open (which days shall be excluded days for the purposes of the Principal Act and these Regulations), it shall be lawful to do any such act or thing on the first day which is not an excluded day next following such excluded day, or days, where 2 or more of them occur consecutively.
51. Power to dispense with evidence, signature etc
Where under these Regulations, any person is required to do any act or sign any document, or to make any declaration on behalf of himself or herself or of any body corporate, or any document or evidence is required to be produced to or left with the Controller or at the Office, and it is shown to the satisfaction of the Controller that from any reasonable cause such person is unable to do such act or thing or to sign such document or to make such declaration or that such document or evidence cannot be produced or left as aforesaid, it shall be lawful for the Controller, upon the production of such evidence and subject to such terms as he or she thinks fit, to dispense with any such act or thing, signature, declaration, document or evidence.
52. General power of amendment
Any document for the amending of which no special provision is made by the Principal Act or these Regulations may be amended, and any irregularity in procedure which in the opinion of the Controller may be obviated without detriment to the interests of any person may be corrected, where and on such terms and in such manner as the Controller thinks fit; provided that, without prejudice to the Controller's power to extend any time or periods under Regulation 44 and except where such irregularity is attributable wholly or in part to an error, default or omission on the part of the Office, the Controller shall not direct that any period of time specified in the Principal Act or these Regulations shall be altered.
53. Conversion of applications under the Industrial and Commercial Property (Protection) Acts 1927 to 1958
Form No. 3 set out in Schedule 2 is prescribed as the form for the purposes of paragraph 4 of the First Schedule to the Principal Act.
SCHEDULE 1
Fees Payable under Regulation 4
Regulation 4
Reference Number
Item
Amount €
(1)
(2)
(3)
1
On application to register a design under section 20 of the Principal Act
70.00
2
Additional fee in the case of a multiple application for registration — Regulation 19
Per design
25.00
3
On request to amend an application for registration under section 20 of the Principal Act
12.00
4
On application to register a transaction under section 22 of the Principal Act-
(i) for one design,
60.00
(ii) for each other design included in the application or notice which is affected by the transaction
6.00
5
On request for a certificate for use in connection with filing of application abroad — Regulation 18
25.00
6
On request for division of an application — Regulation 20(1) For each divisional application
45.00
7
On application to the Controller to state grounds of decision under Regulation 42
95.00
8
On request for deferment of publication under section 32 of the Principal Act -
For a period up to 12 months
50.00
For a period from 12 to 24 months
150.00
For a period from 24 to 30 months
250.00
9
On application for rectification of the Register under section 34 of the Principal Act
15.00
10
On request under section 38 of the Principal Act for a certified copy or extract of any entry in the Register.
3.00
For each page of the document comprising the certified copy or extract
0.60
11
On request for information about an application or a registered design under section 39 of the Principal Act
For each item of information requested
6.00
12
On request for information as to existence of right in registered design under section 40 of the Principal Act
10.00
13
On application to register a transaction under section 41 of the Principal Act -
(i) for one design,
60.00
(ii) for each other design included in the application or notice which is affected by the transaction
6.00
14
On application for the renewal of the design right under section 43 of the Principal Act
(i) for a second period of 5 years
200.00
(ii) for a third period of 5 years
225.00
(iii) for a fourth period of 5 years
250.00
(iv) for a fifth period of 5 years
300.00
15
On application for a hearing under section 80 of the Principal Act
60.00
16
For restoration of the design right under section 44 of the Principal Act
76.00
17
On application for invalidation under section 47 of the Principal Act
125.00
18
On application for compulsory licence under section 49 of the Principal Act
310.00
19
On application for extension of time for completion of registration of design — Regulation 14
30.00
20
On application for extension of time under Regulation 44(3) (General Power to Enlarge Time)
For each month of extension
30.00
21
For photocopying or reproduction of documents open to public inspection
Per Page
0.30
22
On request for certified copies, manuscripts, typed, printed or photographic
3.00
For each page of the document comprising the certified copy
0.60
23
On giving notice requesting that an application under the 1927 Act be determined in accordance with the Principal Act — Paragraph 4, First Schedule to the Principal Act
10.00
24
On request for a search — Regulation 30(2)
35.00
SCHEDULE 2
FORMS
Regulation 9 19 23 53
Form No. 1
Application for registration of a design - Single Application
Form No. 1A
Application for registration of designs - Multiple Application
Form No. 2
Certificate of registration of a design
Form No. 3
Notice Under Paragraph 3 of First Schedule to the Industrial Designs Act 2001
FORM No. 1
INDUSTRIAL DESIGNS ACT 2001
APPLICATION FOR REGISTRATION OF A DESIGN
SINGLE APPLICATION
Reference No. of Applicant
or Authorised Agent.............
To: The Controller of Patents, Designs and Trade Marks
Patents Office
Government Buildings
Hebron Road
Kilkenny
The Applicant(s) named herein hereby claim(s) to be the proprietor(s) of the design, a representation of which is attached, and request(s) the registration of the design on the basis of the following information:
1. Type of Application
This is a single application in respect of one design.
2. Fees
Included with this application is the prescribed fee of €70 or evidence of payment thereof.
3. Representations
A representation of the design complying with the conditions set out in Regulation 11 is enclosed.
Yes
No
4. Applicant(s)
Full name
Address
Nationality
5. Author
If the author(s) is/are not the first proprietor(s) of the design, insert here the name and address of the author(s).
Full name
Address
6. Brief description of design
Insert here a brief description of the design.
7. Novelty and Individual Character
Insert here a statement of the feature(s) of novelty and individual character claimed for the design.
8. Product(s)
List here the product(s) to or in which the design is to be applied or incorporated.
9. Class(es)
List here the class(es) including subclass(es) of the Locarno Classification in which registration of the design is requested.
10. Claim for right of Priority
Complete this section where a right of priority is claimed on the basis of an earlier application for registration of the design that was filed in a state, country, territory or area within the meaning of section 26 of the Principal Act.
State/Country/Territory/Area
Filing Date
File No. (if available)
11. Deferment of Publication
Is deferment of publication as provided for in section 32(2) of the Principal Act requested?
Yes
No
If yes, please indicate the period for which deferment is requested (the maximum period allowed is 30 months from the filing date or, if priority is claimed, from the date of priority).
Period of Deferment
12. Authorised Agent (if any)
The following has been authorised to act on behalf of the Applicant(s) in all proceedings connected with this application for registration and any proceedings arising subsequent to registration:
Name of Agent
Address
13. Address for Service (indicate and complete as appropriate)
same as at 12
If not the same as at 12, state hereunder the address for service.
14. Signature
(The application may be signed by a person authorised to do so by or on behalf of the Applicant(s) or by the Agent named at 12).
Date:
FORM No. 1A
INDUSTRIAL DESIGNS ACT 2001
APPLICATION FOR REGISTRATION OF A DESIGN
MULTIPLE APPLICATION
Reference No. of Applicant
or Authorised Agent.............
To: The Controller of Patents, Designs and Trade Marks
Patents Office
Government Buildings
Hebron Road
Kilkenny
The Applicant(s) named herein hereby claim(s) to be the proprietor(s) of the designs representations of which are attached, and requests the registration of the designs on the basis of the following information:
1. Type of Application
This is a multiple application covering
designs.
2. Fees
Included with this application is the prescribed fee of €
(or evidence of payment thereof) which comprises an application fee of €70 and an additional fee of €25 for each design included in the application.
3. Representations
Separate representations of each of the designs, complying with the conditions set out in Regulation 11, are enclosed.
Yes
No
[IMPORTANT — PLEASE NOTE: THE REPRESENTATIONS ENCLOSED WITH THIS APPLICATION MUST BE NUMBERED CONSECUTIVELY USING ARABIC NUMERALS INSERTED ON THE BACK OR REVERSE SIDE OF THE REPRESENTATIONS. THESE NUMERALS ARE REQUIRED TO IDENTIFY AND DISTINGUISH THE DESIGNS IN RESPECT OF WHICH REGISTRATION IS REQUESTED. WHERE MORE THAN ONE REPRESENTATION OF A PARTICULAR DESIGN IS SUBMITTED, EACH OF THE REPRESENTATIONS OF THAT DESIGN SHOULD BE ASSIGNED THE SAME IDENTIFICATION NUMERAL.]
4. Applicant(s)
Full name
Address
Nationality
5. Author
If the author(s) is/are not the first proprietor(s) of the designs, insert here the name(s and address(es) of the author(s). If there is more than one author indicate the design identification numeral of each design (see 3 above) opposite the name of each author.
Design Identification Numeral
Name of author
Address
6. Brief description of designs
Insert here a brief description of the designs. If you require to provide separate description of each of the designs included in the application, indicate the design identification numeral of each design opposite each of the descriptions provided.
Design Identification Numeral
Description
7. Novelty and Individual Character
Insert here a statement of the feature(s) of novelty and individual character claimed for the designs. If you require to provide separate statements of the features of novelty and individual character of each of the designs included in the application indicate the design identification numeral of each design opposite each of the statements provided.
Design Identification Numeral
Statement of novelty and individual character
8. Product(s)
List here the product(s) to or in which the designs are to be applied or incorporated. If the different designs included in the application are to be applied to or incorporated in different products, indicate the design identification numeral of each design opposite each of the products listed.
Design Identification Numeral
Product
9. Class(es)
List here the class(es) including the subclass(es) of the Locarno Classification in which registration of the designs is/are requested. [Note: Except in cases of ornamentation, all of the designs in a multiple application for registration must be in respect of products that belong to the same class of the Locarno Classification.]
Design Identification Numeral
Class
Sub-class
10. Claim for right of Priority
Complete this section where a right of priority is claimed on the basis of an earlier application for registration of the designs that was filed in a state, country, territory or area within the meaning of section 26 of the Principal Act. If there are different claims to priority in respect of the different designs included in the application indicate the design identification numeral of each design opposite each of the claims listed.
Design Identification Numeral
State/Country/Territory/Area
Filing Date
File No.
(if available)
11. Deferment of Publication
Is deferment of publication as provided for in section 32(2) of the Principal Act requested?
Yes
No
If yes, please indicate the period for which deferment is requested (the maximum period allowed is 30 months from the filing date or, if priority is claimed, from the date of priority).
Design Identification Numeral
Period of Deferment
12. Authorised Agent (if any)
The following has been authorised to act on behalf of the Applicant(s) in all proceedings connected with this application for registration and any proceedings arising subsequent to registration:
Name of Agent
Address
13. Address for Service (indicate and complete as appropriate)
same as at 12
If not the same as at 12, state hereunder the address for service.
14. Signature
(The application may be signed by a person authorised to do so by or on behalf of the Applicant(s) or by the Agent named at 12).
Date:
FORM No. 2
INDUSTRIAL DESIGNS ACT 2001
CERTIFICATE OF REGISTRATION OF A DESIGN
It is hereby certified that the design to which this certificate relates (representation attached) has been registered in the Register of Designs in the name of
............................................................ ............................................................ ...............
(registered proprietor) at ............................................................ .....................................
............................................................ ............................................................ ....... (address)
under registration No............................................in respect of certain products in class(es) and
sub-class(es)............................................................ ............................................................ ....
A list of the products to which the registration relates is appended to this certificate * .
This design has been registered as of............................................................ .............................
Dated this day .........................................
............................................................ ....
Controller of Patents, Designs and Trade Marks
FORM No. 3
INDUSTRIAL DESIGNS ACT 2001
NOTICE UNDER PARAGRAPH 3 OF FIRST SCHEDULE TO THE INDUSTRIAL DESIGNS ACT 2001
Part 1
1. Application No.
2. Name and address of Applicant(s)
3. Notice
The Applicant(s) named herein hereby give(s) notice to the Controller of Patents, Designs and Trade Marks that the registration of the design(s), the subject of the application identified above, is to be determined in accordance with the provisions of the Industrial Designs Act 2001 .
It is acknowledged that this notice is irrevocable.
4. Fee
The prescribed fee in the amount of €
is enclosed with this notice.
Signed:
Dated:
Part 2
For the purposes of the notice in Part 1 of this Form, the Applicant(s) named in Part 1 submits hereunder the following particulars:
1. Author of design
If the author(s) is/are not the first proprietor(s) of the design, insert here the name and address of the author(s).
Full name
Address
2. Brief description of design
Insert here a brief description of the design.
3. Novelty and Individual Character
Insert here a statement of the feature(s) of novelty and individual character claimed for the design.
4. Product(s)
List here the product(s) to or in which the design is to be applied or incorporated.
5. Deferment of Publication
Is deferment of publication as provided for in section 32(2) of the Principal Act requested?
Yes
No
If yes, please indicate the period for which deferment is requested (the maximum period allowed is 30 months from the filing date or, if priority is claimed, from the date of priority).
Period of Deferment
Given under my Official Seal, this 5th day of June, 2002.
MARY HARNEY
Tánaiste and Minister for Enterprise, Trade and Employment.
The fees prescribed by the foregoing Regulations are hereby sanctioned by the Minister for Finance.
Given under the Official Seal of the Minister for Finance,
this 31st day of May, 2002.
CHARLIE MCCREEVY
Minister for Finance
EXPLANATORY NOTE
(This note is not part of the Instrument and does not purport to be a legal interpretation).
This Instrument embodies the Industrial Designs Regulations 2002 made by the Tánaiste and Minister for Enterprise, Trade and Employment pursuant to powers conferred on her by section 85 of the Industrial Designs Act 2001 (No. 39 of 2001) and in exercise, with the sanction of the Minister for Finance, of the powers conferred by section 9 of that Act. The Regulations prescribe the fees payable forms to be used and the procedures to be observed in connection with the registration of industrial designs under the provisions of the Act. These Regulations come into operation on 1 July 2002, which is the day the Tánaiste and Minister for Enterprise, Trade and Employment has appointed for commencement of the Act.
* The listing of products shall not be taken to limit the scope of protection conferred by the design right.
