An extract from The Patent Litigation Law Review, 6th Edition

Types of patent

Irish patents can be subdivided into two categories: (1) full-term patents (where the term of protection is 20 years from the patent filing date)3 and (2) short-term patents (where the term of protection is 10 years from the patent filing date).4 They are mutually exclusive – they cannot both exist for any one invention.

Short-term patent applications are generally less costly. The distinctive features of short-term patents are set out in Part III of the Patents Act.

i Patentability

Under the Patents Act, an invention shall be patentable if it is susceptible of industrial application, is new and involves an inventive step.5

The Patents Act provides that an invention will be susceptible of industrial application if the invention can be made or used in any kind of industry, including agriculture.6

An invention is novel if it does not form part of the state of the art.7 'State of the art' means everything made available to the public, anywhere in the world before the date of filing of the patent application.8

An invention will be considered to involve an inventive step if the invention would not have been obvious to a person skilled in the art, based on the entire state of the art at the date of filing.9

ii Exclusions to patentability

A patent cannot be granted in respect of the following inventions:10

  1. a discovery, scientific theory or mathematical method;
  2. an aesthetic creation;
  3. a scheme, rule or a method for performing a mental act, playing a game, doing business or a program for a computer;
  4. the presentation of information;
  5. inventions where commercial exploitation would be contrary to public order or morality;
  6. a plant or animal variety or a biological process for the production of plants or animals other than microbiological processes and products thereof; or
  7. 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.11
iii Application – securing a patent

An application for an Irish patent must relate to one invention only or to a group of inventions so linked as to form a general inventive concept.

Every application for an Irish patent must be filed with the Intellectual Property Office of Ireland and must contain a request for the grant of a patent, a specification (containing a description of the invention, one or more claims and any drawing referred to in the description or claim) and an abstract.12 The claims must define the matter for which protection is sought. They must be clear and concise and must be supported by the description.13

Ireland is a party to the Paris Convention; thus, the principle of priority applies to Irish patent applications in Ireland. Once a patent application has been filed in Ireland, the applicant is entitled to claim the priority date of that application in respect of all other applications for the same invention made in other states that are signatories to the Paris Convention or are members of the World Trade Organization.

iv Examination

The examination of an Irish patent is carried out by the Controller of Intellectual Property (the Controller).

Once the Controller is satisfied that the invention meets the requirements of the Patents Act, a patent will proceed to grant. Upon payment of the fee by the applicant, the grant becomes formalised. Once formally granted, the Controller publishes a notice of the grant and a brief specification of the patent in the Journal of the Intellectual Property Office of Ireland. The patent takes effect from this date of publication in the Journal of the Intellectual Property Office of Ireland and will continue in existence (subject to the payment of annual renewal fees) for the duration of the patent term.

In relation to Irish-designated European patents, where a European patent is granted in English and designates Ireland, the patent becomes automatically validated.

v Extension of Irish patents

The Patents Act does not allow for the extension of an Irish patent; however, supplementary protection certificates (SPCs) are permissible in two sectors: agrochemicals and pharmaceuticals. SPCs can extend the period of protection to a maximum of 25 years.14 The patent term is extended only in respect of the specific product, not the entire scope of the claims.

Substantive law

i Infringement

Under the Patents Act, the following acts, if done without the proprietor's consent within the territory of Ireland, amount to direct patent infringement:

  1. making, offering, putting on the market or using a product that is the subject matter of the patent, or importing or stocking the product for those purposes;
  2. using a process that is the subject matter of the patent or – when the third party knows or it is obvious to a reasonable person in the circumstances that the use of the process is prohibited without the consent of the proprietor of the patent – offering the process for use in the state; and
  3. offering, putting on the market, using or importing, or stocking for those purposes, the product obtained directly by a process which is the subject matter of the patent.40

Further, it is an indirect infringement of a patent for a third party, without the consent of the proprietor of the patent, to supply or offer to supply in the territory of the state a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect, when the third party knows, or it is obvious in the circumstances to a reasonable person, that those means are suitable and intended for putting that invention into effect.41

ii Construction

The Patents Act provides that:

[T]he extent of the protection conferred by a patent or a patent application shall be determined by the claims; nevertheless, the description and drawings shall be used to interpret the claims.42

Although in Ireland there is no general doctrine of equivalents, the Patents Act does provide that, when interpreting the section above:

[T]he Court shall have regard to the directions contained in the Protocol on the Interpretation of Article 69 of the European Patent Convention and set out in the Second Schedule to this Act.43

The Irish courts (both the High Court44 and the Supreme Court45) have approved the approach taken by the UK courts in Kirin-Amgen Inc v. Hoechst46 – namely a purposive construction rather than a purely literal one, giving the language of the claim the meaning that would have been understood by the notional addressee (the person skilled in the art).

The Irish courts have not yet had occasion to consider the equivalents section of the EPC Protocol or the reasoning of the UK Supreme Court in Eli Lilly v. Actavis.47

iii Defences – statutory exceptions to infringement

Under the Patents Act, the rights conferred by a patent do not extend to:48

  1. acts done privately for non-commercial purposes;
  2. acts done for experimental purposes relating to the subject matter of the relevant patented invention;
  3. the extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription or acts concerning that medicine;
  4. use of the invention on board certain vessels or aircraft that temporarily or accidentally enter the territory of the state;
  5. acts specified in Article 27 of the Convention of International Civil Aviation; and
  6. acts falling under the Bolar exemption.49
iv Other defences

A defendant may claim that the patentee has exhausted its rights. In short, the principle of exhaustion of rights provides that a patent cannot be used to prevent a third party from importing goods that have been put on the market in another Member State by the patentee or with his or her consent.

A defendant may also claim that it has a right to continue use that had begun before the filing or priority date, provided those acts are done in good faith.50

Finally, a defendant may plead that neither damages nor an account of profits should be awarded, on the basis that he or she can prove that at the date of the infringement he or she was not aware, and had no reasonable grounds for supposing, that the infringed patent existed.51