trade marks examination division - Irish Patents Office

4. STRUCTURE & ORGANISATION
The head of the Patents Office is Sean Fitzpatrick, the Controller of Patents, Designs
and Trade Marks. The Office structure and staffing at the time of preparation of this
manual is set out in the following organisation charts.
CONTROLLER
Administration Division
Patents
Examination Division
Trade Marks
Examination Division
Information
&
Communication technology
Information & Communication Technology
*The operation of the [Patents Office IT Unit] is the responsibility of the Organisation
and Information Systems Unit of the Department of Enterprise, Trade and
Employment.

List of Staff by Grade (as at October 2002)
Number
Staff
1 Controller
2 Assistant Principal
1 Senior Patent Examiner
8 Higher Executive Officer
3 Patent Examiner
19 Executive Officer
4.5 Staff Officer
33.5 Clerical Officer
1 Services Officer
72
In addition there are 7 staff members of the Department of Enterprise, Trade and
Employment (1 HEO Systems Analyst, 1 EO and 1 CO) working in the office
providing information technology services.), and 1 A.P., 2 H.E.O.s, and one E.O.
working in the E commerce unit

ADMINISTRATION DIVISION
1 Assistant Principal
Gerard Barrett 4121
Grants & Registration
1 H.E.O.
John Moran 4148
1 E.O.
2 SO
10 C.O.
Training
1 E.O.
Finance & Customer
Services
1 H.E.O.
Mary Flynn 4129
Maintenance
1 H.E.O.
Claire O’ Reilly 4122
Finance & Customer
Services
1 E.O.
1 S.O.
Kilkenny Library
& Information Centre
1 E.O.
1 C.O.
Finance
2 C.O.
Post & Applications
4 C.O.
Dublin Information
Centre
1 S.O.
3 C.O.
Office Services
1S.O.
3 C.O.
1 Service Officer

PATENTS EXAMINATION DIVISION (as at December 2001)
1 Senior Examiner
Name Extension Number Location
Michael Lydon 4103 (Direct: 056-7720103) Kilkenny
3 Examiners
Name Extension Number Location
Fergal Brady 4192 (Direct: 056-7720192) Kilkenny
Dolores Cassidy 4104 (Direct: 056-7720104) Kilkenny
Karen Pierce 4191 (Direct: 056-7720191) Kilkenny
Vacancy
Kilkenny

TRADE MARKS EXAMINATION DIVISION
(including Industrial Designs)
Trade Mark
Examination
1 HEO.
Billy Reid
4133
3 EO
Trade Mark
Examination
1 HEO.
Enda Murphy
4137
3 EO
Trade Mark
Examination
(Madrid Protocol)
1 HEO
Joan Burns 4184
4 EO
1 Assistant Principal
Tim Cleary 4102
Trade Mark
Examination
1 HEO.
James Kelly
4169
3 E.O.
Trade Mark Opposition
1 HEO
Breda Murphy 4168
1 EO
1 CO
Trade Mark Examination
Certification & Collective Marks
1 HEO
Denise Cuniffe
Trade Mark Search
4 C.O.

*************
Information & Communication Technology
There are 7 staff members of the Department of Enterprise, Trade and Employment
(1 HEO Systems Analyst, 1 EO and 1 CO) working in the office providing
information technology services.),
Also 1 A.P., 2 H.E.O.s, and one E.O. working in the E commerce unit.

4.1 Administration Division
The Administration Division is headed by Assistant Principal, Gerard Barrett, and
there are currently three sections each headed by a Higher Executive Officer:
1 Finance & Customer Services
2 Grants & Registration
3 Maintenance
The main functions of each section are summarised as follows:
Name of Section
Main Functions
Finance & Customer To effectively manage the filing and receipt of patent, trade
Services
mark and design applications;
To effectively manage financial and budgetary matters
including the preparation of estimates, the monitoring and
control of expenditure, the maintenance of accurate financial
records of fee receipts etc. and the preparation of various
statistical reports;
To develop and implement coherent information and customer
services policies involving the effective and efficient
dissemination of information on patents, trademarks and
industrial designs as well as publication of the Annual Report
and other information material.
To maintain and develop the Patent Office website
To manage and develop the Patents Information Centres;
To carry out the development and management of a staff
training programme as well as certain
personnel/accommodation and office management activities.
To assist in relation to the copyright functions of the Controller.
Name of Section
Grants & Registration
Main Functions
To carry out all administrative tasks associated with the
processing and granting of patent applications;
To ensure that the Office fulfils its obligations as a contracting
State of the European Patent Convention (EPC) and the Patent
Co-operation Treaty (PCT);
To prepare and produce the Official Journal of the Patents
Office.
To register trade marks and designs.
To establish electronic databases of procedures and precedents
appropriate to the administration of Patents and Trade Marks

Name of Section
Maintenance
Main Functions
Renewals of patents
Grant and maintenance of supplementary protection certificates;
To manage and ensure the integrity of the data on the register of
patents and the register of trade marks
Registration of Patent Agents;
Registration of Trade Mark Agents
To examine applications to register security interests, assignees,
licensees, etc. of trade marks and patents
Renewal of trade mark registrations;
To deal with requests for rectification of data concerning
patents and trade marks contained in the patent and trade mark
registers.
Process renewals fees for designs
Update Register of European Patents (Entering address for
service, translations received)
Voiding of European Patents
Mergers of Patents
Issuing of certified copies and certified extracts
14. Processing of Patent Caveat applications
Classes of Records
The main classes of records held in Administration Division are:
Patent, trade mark & design application files.
General administration files (see section 5.6).
Supplementary Protection Certificate application files.
Copyright files.
The following are the main legislative texts for the administration of which the
Division is responsible are:
The Industrial Designs Act 2001 (No.39 of 2001)
The Industrial Designs Regulations 2002 (S.I. No.280 of 2002)
Copyright and Related Rights Act 2000 (No.28 of 2000)
Copyright and Related Rights (Register of Copyright Licensing Bodies)Regulation,
2002 (S.I. No. 463 of 2002.
Trade Marks Act 1996 (No. 6 of 1996)
Trade Marks Rules 1996 (S.I. No. 199 of 1996)
Industrial & Commercial Property (Protection) Act, 1927 (No. 16 of 1927))
Industrial Property Rules, 1927 (S.I. No. 78 of 1927)
Industrial Property Rules, 1927 (Amendment) Rules, 1987 (S.I. No. 332 of 1987)
Patents Act, 1992 (No. 1 of 1992)
Patents Rules, 1992 (S.I. No. 179 of 1992)
European Communities (Supplementary Protection Certificate) Regulations, 1993
(S.I. No. 125 of 1993).

Patents, Trade Marks, Copyright and Designs (Fees) Rules, 1997 (S.I. No. 433 of
1997)
Patents and Trade Marks (Fees) Rules, 1999 (S.I. No. 403 of 1999)
Patents and Trade Marks (Fees) (No. 2) Rules, 1999 (S.I. No. 434 of 1999)
The main international agreements applicable are:
European Patent Convention, 1973 (EPC). This was revised in 2000.
Patent Cooperation Treaty, 1970 (PCT)

4.2 Trade Marks Examination Division
The Division is headed by an Assistant Principal, Tim Cleary, and at present is
divided into seven sections.
Trade Mark Examination Section I
Trade Mark Examination Section II
Trade Mark Examination Section III
Trade Mark Examination Section IV (International Registrations)
Trademark Examination V (Certification and Collective Marks)
Opposition Section
Search Section
The main functions of each section are summarised as follows:
Name of section
Examination I
Examination II
Examination III
Main Functions
The three examination sections carry out the same functions
which are:
To carry out an examination of all trade mark and industrial
designs applications under the relevant legislation and to deal
with all administrative tasks arising there from.
Name of Section
Examination iv
Name of Section
Examination V.
Main Functions
To carry out an examination of all applications for International
registration under the Madrid Protocol under the relevant
legislation and to deal with all administrative tasks arising there
from
Main Functions
To carry out an examination of all certification and collective
trade mark applications under the relevant legislation and to
deal with all administrative tasks arising there from

Name of Section
Search
.
Main Functions
To conduct a search of the trade marks database of pending and
registered marks and other searches required to comply with
current legislation prior to examination of trade marks
To conduct a search of Community Trade Mark applications
filed with O.H.I.M. and to communicate to O.H.I.M. the results
of each search report within three months of the date of receipt.
The main legislative texts for the administration of which the Division is responsible
are:
The Industrial Designs Act 2001 (No.39 of 2001)
The Industrial Designs Regulations 2002 (S.I. No.280 of 2002)
Trade Marks Act 1996 (No. 6 of 1996)
Trade Marks Rules 1996 (S.I. No. 199 of 1996)
Industrial & Commercial Property (Protection) Act, 1927 (No. 16 of 1927))
Industrial Property Rules, 1927 (S.I. No. 78 of 1927)
Industrial Property Rules, 1927 (Amendment) Rules, 1987 (S.I. No. 332 of 1987)
Classes of Records
The main classes of records held in the Trade Marks Division are:
Trade mark application files.
Industrial design application files.
Files relating to oppositions to trade mark registration, including Hearings.

4.3 Patents Examination Division
The Patents Examination Division, is headed by Senior Examiner, Dr. Michael Lydon
and its functions are as follows:
Name of Section
Patents
Examination
Section
Main Functions
Reading patent applications (title, description, claims and
drawings) and analysing them sufficiently to identify the
problem the invention seeks to address, the insight leading to its
solution, the means essential to the solution as particularly
reflected in the technical features thereof (as found in the
claims) and recommending the grant or refusal of the
application;
Performing technical classification of the applications
according to the International Patent Classification Convention
for the purpose of creation of a searchable data base;
Considering if the abstract (a brief summary of the invention)
filed with the application meets the formal requirements, and
determining its definitive content with a view to publication;
Pointing out any technical defects in the application for
attention of the applicant;
Carrying out the examination of applications for Supplementary
Protection Certificates, applications for revocation of patents,
applications for licences and requests for amendments to
granted patent specifications;
Dealing with certain legal and technical aspects of patent law,
conventions and directives.
Patents Examination Contact Points
The main legislative instruments in the patents field with which the Patents
Examination Divisions is concerned are:
Patents Act, 1992 (No. 1 of 1992)
Patents Rules, 1992 (S.I. No. 179 of 1992)
European Communities (Supplementary Protection Certificate) Regulations, 1993
(S.I. No. 125 of 1993).
Patents, Trade Marks, Copyright and Designs (Fees) Rules, 1997 (S.I. No. 433 of
1997)
Patents and Trade Marks (Fees) Rules, 1999 (S.I. No. 403 of 1999)
Patents and Trade Marks (Fees) (No. 2) Rules, 1999 (S.I. No. 434 of 1999)
The main international agreements applicable are:
European Patent Convention, 1973 (EPC). This was revised in 2000.
Patent Cooperation Treaty, 1970 (PCT)

Classes of Records
The main classes of records held in the Patents Examination Division are:
Patent application files;
Supplementary Protection Certificate application files;
Files relating to actions for infringements of patents.