Patent litigation in Ireland: Irish patent system

It also briefly addresses the potential impact of Ireland’s ratification of the Unified Patent Court Agreement on parties seeking to prosecute or litigate patents in Ireland.

Patent administrative functions are dealt with by the Intellectual Property Office of Ireland (IPOI) and the Controller of Intellectual Property (the controller). Patents and Supplementary Patent Certificates (SPC) may be filed in the IPOI.

Once registered, and renewed, a patent is protected for twenty years and confers on the patent owners the power to prevent others from exploiting the patented invention. If the patent relates to a medicinal or plant protection product, it is possible to apply for an SPC, which can extend the duration of protection for a further period of up to five years. An Irish patent is only valid in the Republic of Ireland.

Applications for a European Patent may also be filed directly with the IPOI or the European Patent Office (EPO). A European Patent also needs to be validated by the national patent office in each country where protection is required. International protection can also be obtained using the Patent Co-operation Treaty (PCT) which allows an applicant to simultaneously seek patent protection in more than 150 countries that are signatories to the PCT. A PCT application is filed with the IPOI or directly with the World Intellectual Property Organisation (WIPO). If filed with the IPOI, the application is checked by the IPOI before being forwarded to the WIPO.

In Ireland, it is also possible to apply for a short-term patent, which will last for a maximum of ten years. The requirement to provide evidence of novelty is dispensed with when applying for short term patents.

The controller’s functions

Proceedings regarding the validity of patents and SPCs may be brought to the controller or issued in the High Court. Aside from the granting of patent rights, the controller’s statutory functions include the power to revoke a patent on their own initiative, subject to providing the proprietor with an opportunity to make observations and amend the specification to exclude any inventions that already form part of the state of the art.

Appeals from the decision of the controller may be made to the Irish High Court. Such an appeal must be initiated by a special summons to the High Court. Any appeal which concerns a patent application which has not been published shall be heard in private.

What is a patentable invention?

Irish patent law is primarily governed by the Patents Act 1992 (the Irish Patents Act). Procedural rules for patent litigation are set out in the Patents Rules 1992. The Irish Patents Act prescribes that an invention must fulfil the following criteria to be patentable: be susceptible to industrial application; is new; and involves an inventive step.

SPCs

SPCs can extend the period of protection for medicinal products and plant protection products, beyond the 20 years of patent protection conferred under national law. The SPC regime essentially exists to compensate medicinal product patentees for delays in bringing their patented product to market while awaiting marketing authorisation approval. SPCs are governed by the EU SPC Regulation (EC) No. 469/2009. Article 3 of the SPC Regulation sets out the conditions for obtaining an SPC. Critically the product must be “protected by a basic patent in force”.

Unhelpfully, no express definition of this wording is provided in the SPC Regulation. As a result of the ambiguity surrounding this wording, this condition has grounded many challenges to the validity of SPCs in Ireland, as well as a referral to the CJEU.

Ireland as a common law jurisdiction

As a common law jurisdiction, case law developed by the higher Irish courts are binding on the courts below. Ireland is a member state of the European Union, and therefore, decisions of the Court of Justice of the European Union (CJEU) are also binding in Ireland.

Decisions from other jurisdictions and the EPO are afforded persuasive authority. Traditionally in patent disputes, decisions from the UK courts have been afforded particularly persuasive effect in Ireland, due to the similarities in the patent law and legal systems of the two countries. This trend has continued post Brexit; however, it is expected that Irish courts may place further reliance on decisions from other European Patent Convention (EPC) countries in future, particularly if and when UK law diverges from the law of other EPC states.

The principle of the comity of courts requires that the courts in Ireland should not lightly depart from a decision on the same matter made by a court of competent jurisdiction in another country which had to deal with that issue as part of litigation.

Structure of patent courts

Typically, patent proceedings issued in Ireland will be dealt with by the IP and Technology division of the Commercial Court. It is necessary to first issue proceedings in the High Court and then apply for the proceedings to be entered into the list. Entry is at the discretion of the judge hearing the application; however, IP cases are generally admitted without difficulty. Proceedings in this list are subject to case management by the judge, which ensures that matters proceed to trial in a speedy and cost-effective manner. 

Cases valued at under €75,000 and short-term patent cases may be dealt with in the Circuit Court, but as this is a court of limited jurisdiction, and it does not benefit from the case management rules in place in the IP and Technology List, instances in which a litigant will chose to litigate patent rights in the Circuit Court are rare.

Appeals against first instance decisions can be taken to the Court of Appeal and, in certain circumstances, directly to the Supreme Court. In Part 2 of this series, we examine the appeal procedure regarding patent litigation in more detail.

The UPC and Unitary Patent

The UPC is an international court comprising judges from all participating member states of the European Union. The court was set up to decide in particular on the infringement and validity of both new Unitary Patents and classic European Patents which have not been opted out of the system - a bundle of European patents as opposed to a pan European right. The UPCA entered into force on 1 June 2023 for the 17 states which ratified the UPCA. Romania became the 18^th state to join the system on 1 September 2024.

The Unitary Patent provides the opportunity for significant costs savings for patent owners, in that they can apply directly to the EPO for a patent which will be valid in all EU Member States who have signed up to UPCA. A single annual renewal fee will be paid centrally to the EPO, rather than to individual national patent office. Parties can also save on translation costs.

The benefit of streamlining will also be reflected in a significant reduction in costs in litigating patent disputes in Europe by providing a single litigation system to enforce patents. This simplified court system will allow for consistency of judicial approach in patent cases with effect in all contracting states participating in the UPC.

Ireland has signed but not yet ratified the Agreement on a Unitary Patent Court (UPCA). A referendum is required under Irish constitutional law as it will ultimately result in a transfer of sovereignty and judicial powers to the UPC. The draft Bill for the UPCA had been initiated by the Irish Government, and the country was due to hold a referendum on 7 June asking the Irish electorate to vote on whether the Irish Constitution should be amended to enable Ireland to formally ratify the UPCA. This was due to coincide with the EU and local elections, but it has now been postponed.  At the present time, UPC decisions do not extend to Ireland  because it has not yet ratified the UPCA, and as such cannot be considered to be a UPC ‘contracting member state’. A new date for the referendum will be set by the next government which could be in place by the end of this year or early next year.