1. PATENT ENFORCEMENT

1.1. How and before what tribunals can a patent be enforced against an infringer?

Patents are governed in the Republic of Ireland by the Patents Act 1992 as amended (the "Act"). The Act provides that a patent is to be enforced in the High Court with the exception of a short term patent that may be enforced in the Circuit Court (see the answer to question 5.6 below). Patent actions are "commercial proceedings" for the purposes of the Irish Commercial Court (a division of the Irish High Court) and so applications are often made by patentees to have a patent infringement action heard before that Court. The Irish Commercial Court provides for a case managed procedure with directions on the exchange of pleadings, witness statements and submissions.

1.2. What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

The pre-trial procedural stages for a patent case before the Commercial Court would be as follows:

  • Plenary Summons.
  • Appearance.
  • Statement of Claim.
  • Notice for Particulars.
  • Replies to Particulars.
  • Defence (and Counterclaim).
  • Notice for Particulars.
  • Replies to Particulars.
  • Reply (and Defence to Counterclaim).
  • Discovery.
  • Exchange of Witness Statements (including expert).
  • Exchange of Legal Submissions.

For infringement actions, the Plaintiff would be required to set out details of the infringement and the claims that are alleged to have been infringed in a document entitled Particulars of Breaches served with the Statement of Claim. In invalidity actions, a Particulars of Objections needs to be served by the Applicant (or Defendant if counterclaiming in infringement proceedings) with the petition to revoke the patent (or Defence if counterclaiming) setting out details of the grounds for invalidity and the prior art relied upon, if relevant.

The time to trial in the Commercial Court would depend on the complexity of the issues and matters such as discovery and extent of witness statements, but should be in the region of one year from issuing the proceedings.

1.3. Can a defence of patent invalidity be raised and if so how?

Yes. Validity of a patent can only be raised in the following circumstances:

  1. by way of defence to infringement proceedings;
  2. by way of defence to a groundless threats action;
  3. as a standalone court application for revocation of the patent; and
  4. proceedings relating to the right to use inventions for the service of the State.

In addition to court proceedings, it is possible to bring standalone proceedings to invalidate a patent before the Controller of Patents, Designs and Trade Marks as long as no court proceedings are in being and the Controller does not otherwise consider that the matter is more appropriate to be determined by the court.

Invalidity grounds are submitted as part of the Particulars of Objection which will set out details of the grounds for invalidity sufficient for the patentee to understand the case made.

1.4. How is the case on each side set out pre-trial? Is any technical evidence produced and if so how?

The case of each side is set out through the exchange of pleadings as set out in the answer to question 1.2 above. All technical evidence is produced in advance of trial and expert evidence is exchanged before the trial of the action.

1.5. How are arguments and evidence presented at the trial?

The arguments and evidence of the parties will have been prepared pre-trial by way of legal submission and witness statements (including experts) respectively. These papers will form part of the Court booklets and will have been reviewed by the judge in advance of the trial of the action. The evidence of witnesses is presented to the Court by way of oral evidence during the trial with a right to fully cross examine such witnesses available to the other party. Following cross-examination, there may be an element of re-examination if necessary. Legal arguments are presented by Counsel at the start or end of the trial as appropriate by way of oral submission to the Court.

1.6. How long does the trial generally last and how long is it before a judgement is made available?

The length of a trial depends on the complexity of the issues and the number of witnesses involved in the proceedings. There is no maximum length prescribed for a patent trial. Patent trials could take a number of weeks. For Commercial Court actions, judgment should be received within a couple of months.

1.7. Are there specialist judges or hearing officers and if so do they have a technical background?

There are no specialist patent judges in Ireland with a relevant technical background. However, Commercial Court judges will invariably have been involved in patent disputes as Counsel and will form part of a limited pool of Commercial Court judges that hear patent cases on a more frequent basis than other judges. To the extent required, the Court may also appoint an assessor to assist it with technical aspects of a case. The costs of this assessor are borne by the parties to the litigation.

1.8. What interest must a party have to bring (i) infringement |(ii) revocation and (iii) declaratory proceedings?

  1. An infringement action must be brought by the proprietor of the patent. However, an exclusive licensee can also bring an infringement action in its own name but the patent proprietor must also be named as a party to the proceedings (but need not actively participate in the action). Similarly, a co-owner of a patent may bring infringement proceedings in its own name but the other co-owner(s) must be added as a party to the proceedings (but need not actively participate in the action).
  2. Revocation proceedings can be taken by "any person" and so there is no need to have a particular interest.
  3. For declaratory relief in groundless threats proceedings the party bringing such an action must be aggrieved by such threats. In respect of declarations of non-infringement any person may apply for such reliefs as long as it has written previously to the patentee seeking confirmation that there is no infringement and that such a request has been refused or neglected by the patentee. The party seeking such a declaration must also pay the costs of both sides to the action, regardless of the outcome, save in special circumstances. An Irish Court may also award declaratory relief in respect of patent entitlement/ownership proceedings and such actions must be referred by the person so entitled.

1.9. Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

Yes. Parties to patent proceedings, as with any other litigation in Ireland, can be subject to Court ordered discovery in accordance with the Rules of the Superior Courts, as amended. Such documents must first be requested on a voluntary basis, with reasons offered, and the documents must be relevant and necessary for the fair disposal of the proceedings and/or to save costs. There are no statutory limits as to what documents can be requested to be disclosed, as in the UK for example. Discovery is made by way of sworn Affidavit of Discovery which lists all documents disclosed and those over which privilege is claimed.

1.10. Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of but not all of the infringing product or process?

Yes. A patentee has the right to prevent indirect use of an invention, which is supplying a third party with means for putting the essential element of an invention into effect when it is known or obvious that the said means are suitable and intended to put the invention into effect. This does not apply to the provision of staple commercial products unless the supplier of such products induces the recipient to infringe the patent.

1.11. Does the scope of protection of a patent claim extend to non-literal equivalents?

Patents are interpreted purposively in Ireland with the claims of the patent being interpreted by the "skilled addressee" using the description and drawings as an aid if necessary.

1.12. Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?

A patent can also be held invalid in Ireland if:

  1. the subject matter of the patent is not patentable, for example is excluded subject matter such as a computer programme or a method of doing business as such;
  2. the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
  3. the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed;
  4. the protection conferred by the patent has been extended by an amendment which should not have been allowed; or
  5. the registered proprietor of the patent is not entitled to it.

1.13. Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?

An Irish Court would always retain discretion to stay patent infringement proceedings. It might also be the case that validity proceedings before the Controller at the Patents Office are ordered to be heard at the same time as the infringement proceedings by the Irish Courts. If the matter is being determined by another European Court then there would be no basis for an Irish Court to stay similar proceedings in Ireland. In the case of opposition proceedings before the EPO, Irish Courts have in the past stayed national infringement proceedings but this would be fact specific on a case-by-case basis and governed by the Court's discretion.

1.14. What other grounds of defence can be raised in addition to non-infringement or invalidity?

Other defences to patent infringement include:

  1. consent;
  2. acts done for non-commercial or experimental purposes;
  3. extemporaneous preparation of medical prescriptions;
  4. use related to vessels, aircraft or vehicles in certain prescribed circumstances;
  5. acts carried out in preparation for marketing authorisation applications for medicinal products or veterinary products;
  6. acts which cannot be prevented under EU law such as exhaustion of rights;
  7. acts pursuant to a compulsory licence; and
  8. acts carried out after the lapsing of a patent but before the restoration of the patent in certain prescribed circumstances.

1.15. Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?

A preliminary injunction is available from the Irish Courts if the following is established:

  1. a serious question to be tried;
  2. that damages are not an adequate remedy; and
  3. the balance of convenience so requires.

A party seeking a preliminary injunction must provide to the Court a cross undertaking as to damages suffered by the party injuncted in cases where the injunction is subsequently determined to have been wrongfully granted at trial.

In respect of final injunctions, a Court will order an injunction if there is an act to be restrained on an ongoing basis and damages alone is not a sufficient remedy. In all cases injunctions are a discretionary remedy ordered by the Court in accordance with equitable principles.

1.16 On what basis are damages or an account of profits estimated?

A plaintiff in Irish patent proceedings must elect to either claim damages or an account of profits if successful but not both. Such election can take place after discovery of appropriate and relevant records so as to enable an informed choice. An assessment as to quantum may be stayed pending the Court's determination on the issue of liability.

Damages are awarded in accordance with the concept of lost sales of the patent proprietor but for the infringement. However, damages will not be awarded against an innocent infringer. Irish Courts have also awarded damages based on the "convoyed goods principle" which can compensate for lost sales of related goods in appropriate circumstances. If the patentee is not exploiting the patent then damages would be based on a reasonable royalty for the infringing acts.

An account of profits is based on the profit made by the infringer as a result of its infringing act and would involve an assessment of the profit made based on the infringer's books of account.

1.17. What other form of relief can be obtained for patent infringement?

A patentee could seek declaratory relief and/or an order for delivery up or destruction of the infringing articles.

In addition, all of the reliefs under the IP Enforcement Directive (2004/48/EC) such as freezing orders, orders for the preservation of evidence, corrective measures and publication of judgments are available to a patentee before the Irish Courts if warranted.

Finally, a successful party is entitled to claim the costs of the proceedings from the other party if awarded by the Court. Costs will usually follow the event and be awarded to the successful party.

1.18. Are declarations available and if so can they address (i) non-infringement and/or (ii) claim coverage over a technical standard or hypothetical activity?

  1. Declarations of non infringement are available in Ireland.
  2. Whilst an Irish Court has a wide remit to grant declarations there is no precedent for it making a declaration for claim coverage over a technical standard or hypothetical activity.

1.19. After what period is a claim for patent infringement time-barred?

Six years from when the cause of action accrued.

1.20. Is there a right of appeal from a first instance judgement and if so is it a right to contest all aspects of the judgment?

There is a right to appeal in Ireland without special leave of Court. Such appeals from the Commercial Court would be to the Supreme Court and could contest all aspects of the judgment to the extent a point of law is concerned. However, this would not involve a full rehearing of the matter rather written and oral legal submission by Counsel.

1.21. What are the typical costs of proceedings to first instance judgement on (i) infringement and (ii) invalidity; how much of such costs are recoverable from the losing party?

Costs in respect of patent disputes would depend on the complexity of the matter and the amount of evidence involved. Also costs would depend on whether it was just infringement or validity at issue or both. The costs of a Commercial Court patent action could range from €500,000 to in excess of €1,000,000 inclusive of Counsel's fees etc. Costs are normally awarded by the Court to follow the event but on a party/party basis and subject to taxation in default of agreement. This usually means a recovery of approximately two thirds of the costs from the other side.

2. PATENT AMENDMENT

2.1. Can a patent be amended ex parte after grant and if so how?

Yes. An application to amend after grant can be made to the Controller but will be advertised for the purposes of facilitating any third party objection within a prescribed timeframe. Such an application cannot be made where proceedings concerning the validity of the patent are before the Courts or the Controller.

2.2. Can a patent be amended in inter partes revocation proceedings?

Yes. The Court – or the Controller as the case may be – may permit the amendment of a patent as part of invalidity proceedings subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise as the Court or the Controller thinks fit. Irish Courts have also held that the application for amendment must be made before the trial of the invalidity action so as to be heard at the same time and therefore cannot be taken post trial with the benefit of hindsight.

2.3. Are there any constraints upon the amendments that may be made?

Such an amendment cannot add to the subject matter of the patent as filed. The amendment must always be sufficient to cure the invalidity ground at issue.

2.4. Do reasons for amendment need to be provided and if so is there a duty of good faith?

Yes they do.

3. LICENSING

3.1. Are there any laws which limit the terms upon which parties may agree a patent licence?

Patent licences are subject to provisions of the competition law (Irish and EU). There are also statutory restrictions on patent licences containing conditions that directly or indirectly would prevent or restrict a party using a third party's product or process and/or that would require a party to acquire from another party a product not subject to the patent, with limited exception.

3.2. Can a patent be the subject of a compulsory licence and if so how are the terms settled and how common is this type of licence?

Yes. As long as it is after the expiration of three years from the publication of the grant of the patent and (i) a demand in the State for the subject matter of the patent is not being met on reasonable terms, (ii) a demand in the State for a product which is protected by the patent is being met by importation other than from a member of the WTO, and/or (iii) that the establishment or development of commercial or industrial activities in the State is unfairly prejudiced. Such applications are made to the Controller and settled based on the terms of the application or at the Controller's discretion, subject to certain statutory requirements. Compulsory licensing of patents is also available in Ireland where such licences relate to the manufacture of pharmaceutical products for export to countries with public health problems and applications are also made to the Controller in that regard.

4. PATENT TERM EXTENSION

4.1. Can the term of a patent be extended and if so (i) on what grounds and (ii) for how long?

It is not possible to extend a standard 20-year patent save in accordance with EU Regulations concerning Supplementary Protection Certificates for medicinal and plant protection products. The criteria for obtaining the relevant extension are set out in the above-mentioned Regulations. The Regulations also govern the calculation of the extended period which is limited in any event to no longer than 5 years following expiry of the patent or 15 years from the date of authorisation for the product, whichever is the earlier.

5. PATENT PROSECUTION AND OPPOSITION

5.1. Are all types of subject matter patentable and if not what types are excluded?

The following are excluded patentable subject matter "as such":

  1. a discovery, scientific theory or a mathematical method;
  2. an aesthetic creation;
  3. a scheme, rule or method for performing a mental act, playing a game or doing business, or a programme for a computer; and
  4. the presentation of information.

In addition, a patent will not be granted in respect of an invention that:

  1. is contrary to public order or morality;
  2. a plant or animal variety or an essentially biological process for the production of plants or animals other than a microbiological process or the products thereof;
  3. a method for treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body;
  4. a process for cloning human beings;
  5. a process for modifying the germ line genetic identity of human beings;
  6. the use of human embryos for industrial or commercial purposes; and
  7. a process for modifying the genetic identity of animals which is likely to cause them suffering without any substantial medical benefit to man or animal, and animals resulting from such a process.

5.2. Is there a duty to the Patent Office to disclose prejudicial prior disclosures or documents?

No there is not.

5.3. May the grant of a patent by the Patent Office be opposed by a third party and if so when can this be done?

No. Revocation proceedings will be necessary for an Irish patent. A European patent designating Ireland can be opposed at the EPO within the prescribed timeframe.

5.4. Is there a right of appeal from a decision of the Patent Office and if so to whom?

Yes but within a three-month timeframe. Such an appeal is heard before the High Court (with an application possible to the Commercial Court) and involves a full rehearing. A further appeal can be made from the High Court/Commercial Court to the Supreme Court on a question of law only.

5.5. How are disputes over entitlement to priority and ownership of the invention resolved?

An Irish Court is entitled to grant such declaratory relief upon request of an interested party if appropriate. This is subject to a two-year time bar limit post grant of the patent save in exceptional circumstances. If ownership forms part of an invalidity action then the Court may order a new application for the same invention to be filed by the rightful owner maintaining the original filing/priority date.

5.6. What is the term of a patent?

A patent lasts for twenty years from the filing/priority date.

Provision is also made in Ireland for a short term (ten-year) patent which is subject to less stringent patentability criteria, i.e. it is clearly not lacking an inventive step. However, a search report in respect of the invention must be obtained and served on an infringer before a short term patent can be enforced.

6. BORDER CONTROL MEASURES

6.1. Is there any mechanism for seizing or preventing the importation of infringing products and if so how quickly are such measures resolved?

Yes. EU Council Regulation 1383/2003 as amended is in force in Ireland and covers goods imported into Ireland from outside the EU.

7. ANTITRUST LAW AND INEQUITABLE CONDUCT

7.1. Can antitrust law be deployed to prevent relief for patent infringement being granted?

There has been no case in Ireland on this point but antitrust law could be argued before an Irish Court in appropriate circumstances.

7.2. What limitations are put on patent licensing due to antitrust law?

See questions 3.1 and 7.1 above.

8. CURRENT DEVELOPMENTS

8.1. What have been the significant developments in relation to patents in the last year?

There have been none.

8.2. Are there any significant developments expected in the next year?

The Patents (Amendment) Bill 2011, when enacted, will provide for the ratification by Ireland of the London Agreement, which will reduce the requirements to file translations of granted patents under the European Patent Convention (EPC).

8.3. Are there any general practice or enforcement trends that have become apparent in Ireland over the last year or so?

A number of written judgments issued by the Commercial Court provide useful guidance on the scope of discovery in patent proceedings in Ireland.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.