Patent litigation in Ireland: pre-action steps and initiating proceedings

Read more on patent litigation in Ireland:

• Patent litigation in Ireland: Irish patent system (pinsentmasons.com)

Pre-action steps required in patent litigation

The Irish Mediation Act 2017 (26 pages / 448 KB) places a statutory obligation on solicitors acting for a claimant to advise it of the option of having the dispute referred to mediation before issuing proceedings. This applies to all litigation, including patent proceedings. Solicitors must file a statutory declaration with the court confirming that they have advised their client of the availability and benefits of mediation and to confirm that mediation was considered. There are potential cost implications for unreasonably failing to engage in mediation. 

It is also common practice to send a pre-action letter before commencing proceedings and a failure to do so could result in an adverse cost order being issued. However, the Irish Commercial Court has found that failure to send a warning letter in respect of a revocation action may not be fatal in respect of costs.

Time limits

Actions for patent infringement, a type of tort, are subject to a six-year limitation period from the date of the infringing act as set out in the Irish Statute of Limitations Act 1957 (as amended).

Moreover, the doctrine of ‘equitable estoppel’ may arise where a party promises or implies that they will not rely on their strict legal rights. This doctrine prevents a party from going back on a promise or representation that another party has relied upon to their detriment. This principle helps ensure fairness by stopping the promiser from acting in a way that would be unjust or inequitable given the reliance placed on their promise. In the context of Irish patent law, equitable estoppel can arise if, for example, a patent holder makes a representation that they will not enforce their patent rights, and another party relies on this representation to their detriment. If the patent holder later tries to enforce their rights, the court may prevent them from doing so to avoid an unjust outcome.

Groundless threats

Parties should exercise caution in issuing cease and desist letters/letters before action where they do not intend to issue infringement proceedings, or where they cannot prove that the acts complained of would not constitute infringing acts. Where any person threatens a person with proceedings for infringement of a patent, the threatened party may seek relief for groundless threats in the form of a declaratory order, an injunction and damages.

Notifying the existence of a patent or a patent application does not constitute a threat of proceedings.

Entry to the Commercial Court, case management and preliminary issues

Intellectual property proceedings including patent matters fulfil the criteria for entry to the Intellectual Property (IP) and Technology division of the Commercial Court. An application to the judge of the Commercial Court must be made by motion with a certificate from the applicant’s solicitor explaining why the proceedings are appropriate for and should be assigned to the IP and technology list. Infringement and invalidity proceedings are commenced by way of a plenary summons – a legal document used to initiative civil proceedings in the High Court of Ireland.

By virtue of order 63A of the Rules of the Superior Courts, a Commercial Court judge may make orders or directions for the determination of the proceedings in a manner which is just, expeditious and likely to minimise costs. A date will be fixed for a case management conference, if required, that will be chaired by the judge. At the outset, directions in the form of an agreed timetable setting out the time periods for delivery of the various pleadings are usually agreed by the parties and submitted to the judge of the commercial list. Once pleadings are closed, disclosure of documents in the form of discovery commences. After discovery is concluded, the parties will exchange witness statements and legal submissions.

The Commercial Court has the power to order the hearing of preliminary issues. This might be done in the form of the modularisation of a trial.

Amending patent claims

Section 38(2) of the Patents Act 1992 (the Irish Patents Act) allows the court, or the controller, to permit the amendment of a patent as part of any proceedings. This is 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.

Any amendment of a specification under s38(2) of the Irish Patents Act will be invalid if it extends the subject matter disclosed in the application as filed or the protection conferred by the patent. The court also has jurisdiction to amend a patent specification in respect of infringement proceedings in which the patent is found to be partially invalid or valid.

Alternative dispute resolution (ADR)

Parties may voluntarily agree to resolve disputes through ADR, including mediation, conciliation, or another dispute resolution process. The court can also of its own motion or on application of any of the parties to the proceedings adjourn proceedings to resolve matters by way of an ADR process. Agreements reached by parties by way of ADR are enforceable under contract law.

The Mediation Act 2017 imposes an obligation to consider mediation prior to issuing proceedings, and this needs to be confirmed to the court.

Appeals

In Ireland, there is a right of appeal against every decision of the High Court, including the Commercial Court, to the Court of Appeal. However, parties should bear in mind that filing an appeal does not operate as an automatic stay on the execution of a decision. The grant of a stay pending an appeal is at the discretion of the court.

The appellant must file a notice of appeal 28 days (for an ordinary appeal) from the date the order of the High Court is perfected. In exceptional circumstances, decisions of the High Court can be appealed directly to the Supreme Court. However, there is no automatic right to appeal to the Supreme Court. A party must first request leave to appeal by setting out the grounds of appeal, which must relate to public importance or the interest of justice. The application for leave to appeal must be lodged within 21 days of perfection of the relevant order.

The Court of Appeal will take into account the urgency of an appeal. Subject to resources, the Court of Appeal may hear cases on an expedited basis.

Costs recovery

As a general rule, costs follow the event in Ireland - the unsuccessful party pays the successful party’s costs. A successful litigant may reasonably expect to recover between 60 and 70% of the costs incurred by it in relation to the proceedings from the other party to the dispute. The courts also have discretion to make a cost order.

There are circumstances in which the courts may decide to award costs differently. The court will consider a number of factors including whether it was reasonable for a party to raise, pursue or contest the issue or issues concerned; whether a party has succeeded on part of or all of its case; offers to settle made by either party; and a party’s refusal to mediate or to attempt to settle the case.

If the parties cannot agree on the costs figure, they can refer the case to a legal costs adjudicator of the High Court who can decide on the figure to be paid.

Where an injunction is granted to a patentee, the patentee will often be required to undertake to pay damages for the loss or damages that the respondent suffers. If the respondent is successful in proving that the patent is invalid at trial, it typically recovers costs as well as damages under any cross-undertakings provided.