Intellectual property rights

IP protection for software

Which intellectual property rights are available to protect software, and how do you obtain those rights?

The principal intellectual property right that protects software is copyright (the right to prevent others from, among other things, copying the software). Under the Copyright Act 2000 (as amended), copyright vests in the author on creation. Organisations should ensure that they have appropriate copyright assignment provisions in place in all agreements they have with employees or contractors to ensure that they obtain these rights.

IP developed by employees and contractors

Who owns new intellectual property developed by an employee during the course of employment? Do the same rules apply to new intellectual property developed by contractors or consultants?

The default position under Irish law is that the employer owns intellectual property developed by an employee during the course of employment, unless it is otherwise stated in an agreement with the employee. However, this default position does not extend to intellectual property generated by an employee outside their employment (such as out of hours or off premises).

Contractors and consultants (who are not employees) are generally not subject to the default position described above and, unless the agreement between the contractor or consultant includes an assignment or other transfer of intellectual property to the customer, the contractor or consultant will own any intellectual property rights generated during the course of the work. Ownership of such intellectual property, if related to the subject matter of employment, should be addressed through the relevant contract.

Joint ownership

Are there any restrictions on a joint owner of intellectual property’s right to use, license, charge or assign its right in intellectual property?

Yes. Joint owners of patents cannot assign or grant a licence of an interest in a patent or a design right without the consent of all other joint owners. Under the Trade Marks Act 1996 (as amended), a joint owner may sue another joint owner for trademark infringement where the trademark is used in relation to goods or services for which all joint owners have not been connected in the course of trade. On the basis of this legislation, we would expect that the consent of all joint owners is required for a licence of the trademark to be given.

Although the Copyright Act 2000 (as amended) is silent as to the rights of joint copyright owners, the current common law position appears to suggest that the consent of all co-owners is required for the grant of a licence to third parties.

Trade secrets

How are trade secrets protected? Are trade secrets kept confidential during court proceedings?

The European Union (Protection of Trade Secrets) Regulations 2018 (the Regulations) transpose the Trade Secrets Directive 2016/43 into Irish law and provide for civil redress measures in respect of the unlawful acquisition, use and disclose of trade secrets. Prior to the operation of the Regulations, confidential information was protected either through a contractual agreement to keep certain information confidential, or through the common law obligation to keep information confidential (because of the nature of the relationship between the discloser and disclose, the nature of the communication or the nature of the information itself). 

The Regulations set out the circumstances in which the acquisition of a trade secret is considered lawful (eg, where the information is obtained by independent discovery) and also the circumstances in which the acquisition of a trade secret, without the consent of the trade secret holder, is considered unlawful (eg, by unauthorised access to, appropriation of, or copying of documents or materials etc). 

The Regulations further provide that in legal proceedings relating to the unlawful, use or disclosure of a trade secret, the court may make an order directing that one or more relevant persons shall not be permitted to disclose or use any trade secret or alleged trade secret which has been identified as confidential. 

There is no general rule, however, that requires confidential information that is revealed during court proceedings to be kept secret. It is possible to obtain an order from a court limiting access to such confidential information, but such orders are given on a case-by-case basis.

Branding

What intellectual property rights are available to protect branding and how do you obtain those rights? How can fintech businesses ensure they do not infringe existing brands?

The main intellectual property rights available to protect branding are registered and unregistered trade and service marks. 

Registered trade and service mark rights only arise through registration, and can be applied for either in Ireland (in respect of Ireland only) or more broadly in the EU (as an EU trademark) or internationally. Trade and service mark rights give registered owners certain rights to prevent others using identical or confusingly similar trademarks to their registered mark.

Brand owners can also rely on unregistered trademark rights through the common law of passing off. This allows the owner to prevent others from damaging their goodwill with customers by using branding or get up that is identical or confusingly similar to their own. 

For certain branding (particularly complex branding with artistic elements), copyright protection may also be available.

Remedies for infringement of IP

What remedies are available to individuals or companies whose intellectual property rights have been infringed?

The exact remedies available to individuals or companies depend on the intellectual property right that has been infringed. Generally speaking, however, for infringements of trademarks, patents, copyright and design rights under Irish law, the owner of the right may seek an injunction against further infringement, damages, an account of any profit made by the infringer from any articles incorporating the infringed intellectual property and delivery up or destruction of those articles.