Enforcing European Patents in Ireland – 22 questions answered !

1.  What are the most effective ways for the owner of an Irish Patent derived from a European Patent to enforce its rights in Ireland?

Enforcement of a European patent in Ireland is available only by petition to the High Court in civil proceedings. Infringement proceedings are handled by the Chancery Division of the High Court. A special section of the High Court, known as the Commercial Court, has powers to hear and fast track IP disputes. The Commercial Court is empowered to hear general commercial disputes of high value and all IP cases. High Court proceedings can be transferred to the Commercial Court on application by either party to the dispute. Unlike in the Chancery High Court, judges handling Commercial Court disputes case manage the litigation and short deadlines are imposed.

The Irish Patents Office plays no role in infringement proceedings.

2.  What level of expertise can a patent owner expect from the courts in Ireland?

Ireland has no specialist patent court; nor does it traditionally have a specialist patent bar. Since the establishment of the Commercial Court, it has become usual for patent disputes to be transferred to it; consequently, Commercial Court judges have gained experience in handling patent disputes. The Patents Act enables a court to appoint a scientific assessor to assist the judge on technical aspects of a case and the courts have some history of using this provision in technically complex cases.

3.  How do Irish’s courts deal with validity and infringement? Are they handled together or separately?

Validity and infringement are heard together by the Irish courts. Validity can be challenged by petition to either the Irish Patents Office or the High Court. If any other proceedings concerning the patent have already been instigated before the court, the Patents Office may not be used as the forum for challenging validity. In the event of a revocation action being commenced in the courts, a counterclaim for infringement may be made and the court will hear the two together. Alternatively, if an infringement action is taken first, the defendant can counterclaim for revocation of the patent.

4.  To what extent is cross-examination of witnesses permitted during proceedings?

Pre-trial exchanges of reports prepared by expert witnesses usually occur in cases before the Commercial Court. Such reports address questions of both validity and infringement. The Commercial Court encourages the parties to narrow the issues in dispute as much as possible before trial, so that the examination and cross-examination of experts and witnesses during the trial can be restricted to the core areas in dispute.

In cases handled by the Chancery High Court, expert witnesses assist the court in invalidity or infringement challenges through oral evidence.

5.  What role can and do expert witnesses play in proceedings?

In Ireland, the role of the expert witness is to assist the court and experts have a duty to be impartial. Any suspicion that an expert is biased towards the position of the party instructing him or her can damage the credibility of the expert.

Pre-trial exchanges of expert reports are the norm in the Commercial Court.

The role of the expert witness is to explain to the court the state of the art in the field at the date of the patent in question. Experts also explain to the court what they, as persons skilled in the art, understand to be the teaching of the patent document. In infringement attacks experts may opine on technical issues relating to the alleged infringement. Expert witnesses may also be called on to conduct experiments and to supervise experiments conducted by the other party to the dispute. While experts may assist the court on technical issues, it is the sole prerogative of the court to determine the meaning and scope of the patent claims.

6.  Is pre-trial discovery permitted? If so, to what extent?

Pre-trial discovery is a usual part of the proceedings and arises either by agreement between the parties or by court order made following an application to the court by one of the parties. Both parties make discovery of all documents presently or formerly in their possession, custody or power which are pertinent to the issues in dispute and which are not privileged. Discovery is limited to those documents sought which are both relevant and necessary for the fair disposal of the case or to save costs.

7.  Do Irish courts apply a doctrine of equivalents?

Ireland does not apply a doctrine of equivalents. The scope of protection conferred by a patent is determined by the claims, with the description and drawings being available to assist in interpreting the claims. It is specifically provided under Irish law that when interpreting patent claims, the Protocol on the Interpretation of Article 69 of the European Patent Convention shall be applied. This protocol requires that in determining the scope of a claim, a balance should be found which gives the patent proprietor fair protection, while providing third parties with reasonable certainty as to what is covered by the claims. Elements which are equivalent to elements specified in a claim are to be taken into account when determining the protection conferred. It falls exclusively to the court to determine the scope and meaning of the claim, and the judge must do this assuming the mantle of the person skilled in the art.

8.  Are certain patent rights (e.g., those relating to business methods, software and biotechnology) more difficult to enforce than others?

The Irish courts take the same approach to enforcement, irrespective of the technological field. Complex technologies may require a higher level of explanation for the court than less complex ones and this can be done by way of expert evidence. The court also has the power to appoint an assessor to assist it in understanding scientific or technical complexities.

9.  How far are courts bound by previous decisions in cases that have covered similar issues?

Judgments issued by higher courts are binding on that court and lower courts. In Ireland, invalidity may be considered by the Patents Office or the High Court. Decisions of the Patents Office are appealable to the High Court and all High Court judgments, whether at first instance or on appeal from the Patents Office, can be appealed to the Supreme Court. Appeals to the Supreme Court can be made only on a point of law.

10.  Are there any restrictions on who parties can select to represent them in a dispute?

Patent attorneys can represent clients before the Patents Office. Only solicitors and barristers have the right of representation before the courts and it is the normal course to instruct both solicitors and barristers in any proceedings before the courts.

11.  Are the courts willing to consider the reasoning of courts in other jurisdictions that have dealt with similar cases?

Under Irish patent law, the courts must take notice of any decision of or expression of opinion under the European Patent Convention by a competent authority on any question concerning the convention. Additionally, Irish courts are willing to consider judgments emanating from other jurisdictions on points which have not already been ruled on in Ireland. In particular, the courts are amenable to hearing the outcome of proceedings in other European Patent Convention contracting states. Furthermore, Irish courts are willing to hear how other common law jurisdictions have dealt with a point of law. Judgments from other countries are not binding on Irish courts, but may be persuasive. Concerning invalidity, if an application for revocation of a patent is filed in Ireland while an opposition or appeal is pending at the European Patent Office, the court may delay the Irish proceedings pending a final decision from that office.

12.  How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Cases before the Chancery High Court proceed slowly and it is relatively easy for a defendant to delay matters even further (eg, by seeking extra time for taking actions). However, most patent disputes are transferred to the Commercial Court and the best way for a plaintiff to minimise a defendant’s delaying tactics is to apply at an early stage for the case to be moved to the Commercial Court. Once transferred, a case is actively managed by the Commercial Court judge, who will take a poor view of any attempts by the defendant to delay and will make orders to prevent delaying tactics.

13.  Is it possible to obtain preliminary injunctions? If so, under what circumstances?

Preliminary injunctions are available in Ireland. Although short emergency injunctions are available, more usually applications for interlocutory injunctions are sought, with both sides having an opportunity to be heard. Speed is of the essence in requesting an interlocutory injunction and any delay in applying can be fatal. The court must consider whether there is a serious question to be tried and, if so, whether monetary damages could be an inadequate remedy for the party seeking the injunction. It assesses where the balance of convenience lies. For an injunction to be granted, the party seeking it must give an undertaking to the other side to pay damages to it if, at full trial, it emerges that the injunction should not have been granted. Conversely, if the injunction is refused, the other party must undertake to compensate the plaintiff for harm caused by the absence of interlocutory relief.

14.  Is it possible for the successful party in a case to obtain costs from the losing party?

Yes. An award of costs is a usual request made by both parties to proceedings. The unsuccessful party will then bear the legal costs of the winning party. In practice, the costs are assessed by the taxing master of the High Court, who is empowered to make an order concerning the percentage of the winner’s costs which should be paid.

15.  What are the typical remedies granted to a successful plaintiff by the courts?

Remedies typically available are:

  • A permanent injunction against infringement.

  • An order for delivery up or destruction of infringing products.

  • A declaration that the patent is valid.

  • Costs.

The court can also order that the infringer pay damages or make an account of profits arising from the infringement. Plaintiffs usually request damages rather than an account of profits.

16.  How are damages awards calculated? Is it possible to obtain punitive damages?

Damages are assessed in respect of the different acts of infringement which are proven – namely, making, offering, putting on the market, importing or stocking an infringing product, or using a patented process. Damages are awarded to compensate a patent owner for loss arising due to infringement. Punitive damages are not available.

No award of damages can be made against a defendant which proves that at the date of the infringement, it was unaware of and had no reasonable grounds to suppose that a patent existed. To avoid this, the plaintiff should engage in pre-trial correspondence to notify the defendant of the existence of the patent.

If a patent was amended, damages for infringement which occurred before the amendment can be denied unless the patent owner proves that the patent as granted was drafted in good faith and with reasonable skill and knowledge. Damages may also be restricted where a court finds that the patent is valid only in part. To the extent that the partially valid patent is infringed, the court may exercise its discretion to award damages, provided that it is satisfied that the patent specification was drafted in good faith and with reasonable skill and knowledge.

17.  How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

A permanent injunction against a defendant which has been found to infringe a valid patent is a statutory right and will be granted by the court as a normal remedy.

18.  Under what circumstances will the losing party in a first instance case be granted the right to appeal?

Leave to appeal is not required as both parties have the right to make an appeal. Supreme Court appeals can be made only on a question of law.

19.  Are parties obliged to undertake any type of mediation/arbitration prior to bringing a case before the courts? Is ADR a realistic alternative to litigation?

There is no requirement in Ireland for parties to undertake mediation or arbitration before bringing a case to the courts. The Commercial Court takes a favourable view of ADR and encourages parties to use it.

20.  In broad terms, how pro-patentee are the Irish courts?

Very few patent cases are heard in Ireland and those that are begun are usually settled before trial. There is no evidence of bias in either direction.

21.  Has Ireland signed up to the London Agreement on Translations?

Ireland ratified the London Agreement with effect from 3 March 2012; consequently, if a European patent is in French or German, it is no longer necessary to file any English translation at the Irish Patents Office.

22.  Are there any other notable issues relating to the enforcement system in Ireland?

Caution should be exercised when claiming patent rights before starting infringement proceedings. Irish law includes provisions to punish the making of unjustified threats of patent infringement. Anyone who feels aggrieved by threats can complain to the courts and seek an injunction and damages, unless it is shown that the threats were justified. A party which makes or imports a product for disposal or using a process cannot take action to restrain unjustified threats.

For further information please contact Yvonne McKeown by email at mail@maclachlan.ie

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