In Ireland, patent law is governed by the Patents Act 1992 (as amended) (the Patents Act). Procedural rules are set out in the Patent Rules 1992.

To qualify for patent protection, an invention must be susceptible to industrial application, new and involve an inventive step. Once registered, and renewed, a patent is protected for 20 years and confers on the patent owner the power to prevent others from exploiting the patented invention. 

It is also possible to apply for a short term-patent, which will last for a maximum of ten years. There is no requirement to provide evidence of novelty when applying for short term patents.

If the patent relates to a medicinal or plant protection product, it is possible to apply for a Supplementary Protection Certificate (SPC), which can extend the duration of protection for a further period of up to five years.

Applicants for patent protection (full-term or short term) in Ireland must submit an application through the Intellectual Property Office of Ireland (IPOI) e-filing portal and pay the prescribed fee. The application should also include a specification, the claims, any drawings and an abstract.

The applications undergo an examination; after which a report and opinion are issued. Once all the requirements are satisfied, the patent is granted.

The IPOI indicates that a short-term patent application can take up to 24 months to be examined completely, whereas a full-term patent application can take longer.

The IPOI has no legal requirement for patent attorney representation for filing a patent in Ireland.

A prescribed filing fee of EUR125 for a full-term patent and EUR60 for a short-term patent needs to be paid to the IPOI at the time of application. A fee of EUR200 is required for requesting a search.

The term of protection for a short-term patent is ten years, while the term of protection for a full-term patent is 20 years.

Under the Patents Act, the patent proprietor has the exclusive right to prevent third parties from carrying out infringing acts in Ireland. These acts include making, offering, putting on the market, using, importing or stocking a patented product or a patented process.

The patent proprietor has standing to bring infringement proceedings for an injunction, for an order for delivery or destruction, for damages, for an account of profit and for a declaration that the patent is valid and has been infringed. In relation to the same infringement, it is not possible to be awarded damages and an account of profits.

A patent proprietor is obliged to pay annual renewal fees to the IPOI to maintain a patent; non-payment of fees results in the lapse of a patent.

Ireland does not operate a product specific patent listing. The relevant public source to verify patent-specific information is the IPOI website, which links to a national register for Irish patents, European patents and SPCs. It is also possible to access the European Patent Register on the European Patent Office (EPO) website.

Marketing authorisation data for medicines is published in Ireland by the Health Products Regulatory Authority (HPRA). This data does not include patent status nor link to patent details.

SPCs are governed in Ireland by EU Regulation (EC) No 469/2009 (medicinal products) and implemented via the IPOI. An SPC protects the authorised product (not the patent). The authorised product might be a specific active ingredient or combination that meets the following criteria:

• it is protected by a basic patent in force; and
• it is authorised for marketing for the first time in the EU.

The maximum SPC term is up to five years after the patent in question has expired.

Under the Paediatric Regulation (EC No 1901/2006), there is a further paediatric extension available to the SPC where the regulatory requirements for paediatric investigation plans are met.

In Ireland, third-party observations can be filed by a party that considers a published application is not patentable. These observations can be filed at the IPOI. Any person may submit observations where an application for a patent has been published but a patent has not been granted to the applicant. Observations in writing should be submitted to the Controller of Patents, Designs and Trade Marks (the Controller) on the question of whether the invention is a patentable invention, stating their reasons for the observations. The Controller then considers the observations in accordance with rules made under the Patent Act. A person who makes observations does not, by reason only of those observations, become a party to any proceedings under the Patents Act.

Section 75 of the Patents Act provides that where the Controller refuses to grant a patent, an appeal lies from the decision of the Controller. Procedurally, appeals from decisions of the Controller are governed by Order 94 of the Rules of the Superior Courts (RSC). Under Order 94, such appeals are brought by special summons, rather than plenary summons, grounded on affidavit, with the Controller named as respondent.

The applicable time limit is one month from the date of the order or decision appealed against, or within such further period (not exceeding three months) as the Controller may allow, provided a request for an extension is made before the expiry of the initial one‑month period.

An appeal on a specified question of law does not lie from the decision of the court on an appeal to it under the Patents Act.

The legal consequence of a failure to pay annual renewal fees within the prescribed period is that the patent lapses and ceases to have effect.

Where a renewal fee is not paid within the prescribed period (or any permitted extension), the patent will lapse automatically.

Section 37 of the Patents Act provides for the restoration of lapsed patents. An application for restoration may be made to the Controller within two years from the date on which the patent lapsed. The application may be made by the person who was the proprietor of the patent or by their personal representative and, where the patent was held jointly, by one or more of the proprietors with the leave of the Controller.

If the Controller is satisfied that the failure to pay the renewal fee was prima facie unintentional, that reasonable care had been taken to ensure payment within the prescribed period and that there has been no undue delay in making the application, the Controller shall advertise the application in the Journal of the Intellectual Property Office of Ireland. Any person may, within the prescribed period, give notice of opposition.

The statutory fee for an application for restoration is EUR125 (Rule 35). If restoration is granted, all unpaid renewal fees must also be paid, in accordance with the IPOI Schedule of Fees.

Section 38 of the Patents Act expressly permits the amendment of a patent after grant, provided that the amendment does not extend the scope of protection. An application to amend may be made either to the Controller or to the High Court, depending on whether proceedings in respect of the relevant patent are in train.

Any amendment of a specification is invalid insofar as it extends the subject matter disclosed in the application as filed or the protection conferred by the patent. Where allowed, an amendment of a specification takes effect and is deemed always to have had effect from the date of grant of the patent.

Where an application for leave to amend a specification is advertised, any person may, within the prescribed period, give notice to the court or the Controller (as appropriate) of opposition to the proposed amendment. The court or the Controller shall consider any such opposition in determining whether any amendment should be allowed.

Where an application under this section is made to the court, the applicant must notify the Controller, who is entitled to appear and be heard on the application and shall do so if directed by the court.

Patent infringement proceedings issued in Ireland are normally dealt with by the IP and Technology division of the Commercial Court. The plaintiff must first issue proceedings in the High Court and then apply for the proceedings to be entered into the IP and Technology list. The requirements for entry are set out in Order 63A of the RSC and the judge hearing the application has discretion as to whether to allow the matter to be entered into the list. IP cases are generally admitted without difficulty, unless the applicant has delayed significantly in bringing its application, and the other party is prejudiced by that delay. Proceedings in this list are subject to case management by the judge. This ensures that matters proceed to trial quickly and cost-effectively.

Short-term patent cases and cases valued at under EUR75,000 can be dealt with in the Circuit Court. The Circuit Court is a court of limited jurisdiction and is not subject to the case management rules of the IP and Technology List.

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 (the Mediation Act) imposes an obligation to consider mediation prior to issuing proceedings. Solicitors advising the plaintiff must submit a declaration to the court confirming that they have advised their clients about mediation.

There is no pre-grant opposition procedure before the IPOI. Third parties may make observations to the IPOI on the patentability of the invention after the application has been published and before the patent is granted.

Post grant, any party can apply to either the Controller or the High Court seeking to revoke an Irish patent on the grounds that:

• the invention is not patentable (ie, it lacks novelty, inventive step, or industrial application);
• the specification of the patent does not disclose the invention in a sufficiently clear and complete manner;
• the patent as granted covers subject matter outside the original application; or
• the patent owner is not entitled to the patent.

If a party is sued in relation to infringement of a patent, it is also possible for that party to dispute the validity of the patent by way of a counterclaim for revocation in the same proceedings.

Any party may apply to the High Court under Section 54 of the Patents Act for a declaration that its acts do not infringe a patent (declaration of non-infringement).

Applications can be made to the Controller for a compulsory licence in relation to a patent, subject to certain conditions, under Section 70 of the Patents Act. Applications should specify the nature of the order sought by the applicant and contain a statement setting out the nature of the applicant's interest (if any), as well as the facts upon which the application is based. An application should be accompanied by evidence indicating that the applicant sought to obtain a licence from the proprietor of the patent but has been unable to obtain such a licence on reasonable terms and within a reasonable time.

Appeals in relation to decisions of the Controller on compulsory licences may be referred to an arbitrator, with a further appeal to the High Court.

See 2.1 Actions Available Against Infringement and 7.1 Special Provisions for Intellectual Property Proceedings in relation to appeals.

Patent disputes are typically dealt with by the IP and Technology division of the High Court. There is an automatic right of appeal on a point of law to the Court of Appeal. Parties may apply for leave to appeal from a decision of the Court of Appeal to the Supreme Court. Leave will only be granted if the decision involves a matter of public importance or if it is in the interests of justice.

In the case of European patents, where the proceedings concern an issue of interpretation of EU law, and it is necessary to obtain clarity on the question in order to enable the Irish court to resolve the dispute, then Irish courts may refer questions to the Court of Justice of the European Union.

Appeals from decisions of the Controller on whether or not to grant a patent are dealt with by the High Court.

Patent disputes may be resolved by the courts or through arbitration, mediation or negotiation. Parties may appoint arbitrators or mediators from accredited bodies such as the Chartered Institute of Arbitrators (CIArb) Ireland, or the Mediators Institute of Ireland. There are no IP-specific ADR bodies in Ireland, although individual arbitrators and mediators may have particular experience in IP matters.

An exclusive licence of a patent should be recorded at the IPOI in order to enable an exclusive licensee to demonstrate sufficient standing to sue for patent infringement. The exclusive licensee must also join the patentee to the proceedings.

Before issuing proceedings, it is advisable for the patentee to issue a letter before action to the defendant. The letter should be carefully worded so that the patentee does not contravene Section 53 of the Patents Act (groundless threats).

Proceedings before the IPOI are often dealt with by patent attorneys or solicitors. For court proceedings, parties are typically represented by solicitors and barristers.

In Ireland, preliminary, interim or Mareva (freezing) orders are available to patent owners.

Injunctions are equitable remedies, and the presiding judge has discretion in granting injunctions.

Injunctive relief will generally be granted to restrain a threat or prevent ongoing patent infringement. Traditionally, Irish Courts applied a three-stage test, derived from American Cyanamid Co v Ethicon Ltd[1975] A.C. 396, and adopted in Ireland in Campus Oil v The Minister for Industry (No 2) (1983) IR 88. Under the Campus Oil test, when considering an application for an injunction, the court would assess the following questions.

• Is there a serious issue to be tried?
• Would damages provide an adequate remedy for either the applicant or the defendant?
• If damages are inadequate for both parties, where does the balance of convenience lie and should the status quo be preserved?

This approach has since evolved. Following the Supreme Court’s decision in Merck Sharp & Dohme v Clonmel Healthcare[2020] 2 I.R. 1 [2019] IESC 65, a more flexible test is now applied. In this case, it was emphasised that the adequacy of damages is usually the most significant factor in assessing the balance of convenience or justice. However, other considerations may also be relevant and should be weighed to ensure fairness pending trial, acknowledging that a trial may never occur. According to the reframed test, the first step is to consider whether a permanent injunction would likely be granted if the plaintiff succeeds at trial. If not, it is highly unlikely that an interlocutory injunction seeking similar relief would be granted. The court should then assess whether there is a fair question to be tried, which may include whether the case is likely to proceed to trial.

There is no mechanism for filing protective briefs in Ireland. A potential opponent may pre-empt infringement proceedings by issuing revocation proceedings, or proceedings seeking a declaration of non-infringement of the patent.

If an injunction is sought, the patentee must agree to provide an undertaking in damages to compensate the defendant, if the defendant is ultimately successful in the proceedings and it later transpires that the injunction was incorrectly granted.

As delay defeats equity, the patentee must act quickly when seeking interlocutory or interim injunctive relief. Typically, this means the patentee must seek relief within weeks of becoming aware of the infringing acts complained of.

Prior to issuing proceedings, it is possible for a party to seek a Norwich Pharmacal Order, which enables them to obtain pre-action disclosure of documents identifying alleged infringers from third parties.

Order 31 of the Rules of the Superior Courts deals with discovery of documents, interrogatories and inspection.

Interrogatories are a series of questions which one party poses to the other in relation to the facts of the dispute. They are typically drafted to elicit a “yes” or “no” answer. Interrogatories may be delivered by the plaintiff at any time after delivering the statement of claim and by the defendant at the time of or after delivery of the defence. In Commercial Court proceedings, the parties do not need to seek leave of the court before delivering interrogatories. The Irish courts have encouraged the use of interrogatories as a means of reducing costs and time spent on discovery.

After pleadings close, either party is entitled to seek discovery of documents from the other side which are or have been in the possession, power or procurement of the other party, are relevant to the issues in the case, and are necessary for the fair disposal of the case or for saving costs.

Discovery of documents begins with a voluntary request for documents from each party, and an attempt to agree on the categories of “voluntary” documents to be discovered. The definition and potential scope of discovery is extremely broad, but each request must be made by reference to the pleadings.

Failing agreement, either party can make an application to the court for an order requiring the other party to make discovery of the categories of documents in dispute. There is an ongoing obligation to discover documents falling within the scope of the discovery order or the agreed discovery.

There are also mechanisms in place by which a party can seek discovery of documents from third parties who are not parties to the proceedings. 

Infringement and revocation proceedings are commenced by way of a Plenary summons, which is a short document setting out the details of the parties and the reliefs sought in the proceedings. The Plenary Summons is accompanied by a Statement of Claim.

In infringement proceedings, the Statement of Claim sets out details of the alleged infringement (including the specific patent claims that have been infringed), the legal grounds for the claim and the remedies sought by the plaintiff.

In revocation proceedings, the Statement of Claim should include "grounds of invalidity" that clearly set out each of the legal grounds for challenging the validity of the patent.

The parties should also indicate whether it is intended to call expert evidence in support of their claims, and the nature of that evidence.

In Ireland, pleadings are not front loaded - unlike in some civil law jurisdictions or before the Unified Patent Court (UPC). It is possible for the parties to seek further particulars on the initial pleading documents such as the Statement of Claim and the defence, but the evidential stages come later after the pleadings have closed in the form of discovery of documents, witness statements and expert reports.

There is no formal mechanism for representative or collective actions in patent disputes.

It is common for a patentee to sue several alleged infringers at the same time and for those cases to “travel together” through the courts. This might include sharing experts between the defendants and joint hearings, but this is very much down to the agreement of the parties on a case-by-case basis.

In revocation cases, plaintiffs may choose to join forces in order to save time and costs, but this is not as common as in other jurisdictions such as England and Wales.

Patentees should be aware of the provisions of Section 53 of the Patents Act, which provides for a person who has been subjected to groundless threats of patent infringement to apply to court for relief against the patentee.

The parties to an action for patent infringement in Ireland are the patentee and the alleged infringer(s).

Exclusive licensees of patents may bring an action for infringement in all of the same circumstances as a patentee. Non-exclusive licensees cannot bring an action for infringement.

Section 40 of the Patents Act deals with direct infringement. Direct infringement of a patent occurs when a third party performs any act that uses the patented invention itself without the consent of the patentee. Under Irish law, a patentee can prevent third parties from carrying out the following acts in relation to a patented product or process:

• making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for those purposes;
• using a process which 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
• 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.

Section 41 of the Patents Act deals with indirect infringement. Indirect infringement occurs when a person does not deal with the patented invention directly but instead supplies the means for another party to carry out the infringement. There is a knowledge requirement attached to indirect infringement. Thus, the supplier of the means essential for infringement must know, or it ought to have been obvious to a reasonable person, that the means are suitable and intended for putting the invention into effect.

There is no distinction under Irish patent law between the remedies available for direct and indirect infringement of a patent. The following remedies are available to the patentee in both circumstances:

• injunctions;
• delivery up or destruction of infringing goods;
• damages or account of profits; and
• a declaration that the patent is valid and infringed.

Ireland’s patent protection is territorial, so only acts occurring in Ireland can directly infringe. However, if any product produced abroad by the patented process is imported or used in Ireland, that still amounts to infringement and may be pursued under Irish law.

In Ireland, the scope of patent protection is determined by the claims. Irish Courts interpret the scope by reference to Section 45 of the Patents Act, which mirrors Article 69 European Patent Convention (EPC) and its Protocol on Interpretation. Under this approach, neither strict, literal interpretation of the claims nor treating the claims as merely a guideline is permitted. Instead, the court seeks a balance that ensures both adequate protection for the patentee and reasonable legal certainty for third parties.

Irish courts apply a purposive construction of patent claims by interpreting the claims through the eyes of the skilled person, in light of the description and drawings.

The Doctrine of Equivalents does not form part of Irish patent law.

Prosecution history does not play a role in determining the scope of patent protection in Ireland.

Defences to patent infringement in Ireland are as follows:

• private, non-commercial use of a patented invention;
• experimental use of a patented invention;
• preparation of medicines in an individual case and in accordance with a prescription (pharmacy exemption);
• absence of knowledge (for indirect infringement only);
• defence by counterclaim of invalidity (arguing that the patent should never have been granted in the first place); and
• the use of a patented invention for regulatory approval of generic medicines (Bolar exemption) (industry-specific).

Experts play a central role in Irish patent cases because patent disputes typically involve technical subject matter beyond the court’s own expertise.

Their main functions include:

• educating the court on the relevant scientific or technical field;
• acting as the hypothetical “person skilled in the art”, assisting the court in analysing novelty, inventive step, sufficiency, technical terminology, and common general knowledge; and
• as experts providing written reports and oral testimony who are frequently subject to cross-examination in open court.

Experts in Irish patent litigation owe their primary duty to the court, not to the party paying their fees.

Generally, the parties appoint their own experts. However, the court has the power to appoint an independent expert, typically referred to as an assessor. The court may call on an assessor to assist the judge in understanding technical matters. This is used where the issues are especially complex or where the court wants a neutral, independent technical perspective. Court-appointed assessors do not replace party-appointed experts; rather, they assist the judge directly.

There are no standalone claim construction hearings in Ireland.

Amicus briefs are permissible in Irish Courts. However, they are not typically engaged in patent litigation.

Under Section 58 of the Patents Act, an application for revocation of a patent may be sought on the basis that:

• the subject-matter of the patent is not patentable under the Patents Act - namely, that the patent lacks novelty, inventive step or is not capable of industrial application;
• the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
• the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed, or, if the patent was granted on an application which by virtue of a divisional application or entitlement to a patent is deemed to have been filed on the date of filing of an earlier application, it extends beyond that disclosed in the earlier application as filed;
• the protection conferred by the patent has been extended by an amendment which should not have been allowed; or
• the proprietor of the patent is not entitled thereto under section 16 (1) of Patents Act.

The possible outcomes of a patent revocation action are:

• partial or whole invalidation of the patent;
• amendment of patent to cure the defects;
• upholding of patent;
• costs orders; and
• ancillary consequences (licensees effected etc.).

Anyone can bring a patent revocation action in Ireland. Unlike infringement, no special legal interest is required. However, there is one exception. Where a person brings a revocation action on the basis that the patent proprietor is not entitled to the patent, he or she must satisfy the court that they themselves are entitled to the patent.

Under Section 58 of the Patents Act, a patent may be revoked on various validity grounds (lack of novelty, inventive step, added matter, insufficiency, improper amendment, or entitlement issues). Irish patent law does not require the entire patent to fall if only certain claims are invalid. Irish revocation practice, like UK and EPC practice, accepts that a court or the Controller may invalidate individual claims.

Section 38 of the Patents Act provides that the court or the Controller may permit the amendment of a patent as part of revocation or cancellation proceedings 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 must not increase the scope of the subject matter disclosed or the protection conferred by the patent.

When infringement is alleged before the High Court, the defendant may raise invalidity as a counterclaim. In this situation, the High Court hears both infringement and revocation issues together within the same proceedings. Where both issues are heard together, the Court generally issues a single decision covering both issues. Patent infringement and revocation cases are typically heard before the Commercial Court (a high-value, efficient, case-managed facet of the High Court), with an expected timeline of 12–18 months from initiation to trial. 

Revocation may also proceed separately before the court or the Controller. These proceedings run independently unless a party applies to have them consolidated. Where revocation and infringement are pursued separately, outcomes may not align in timing.

As mentioned in 4.4 Revocation/Cancellation and Infringement, patent proceedings are typically heard by the Commercial Court. This is a case-managed, efficient branch of the High Court in Ireland. Patent litigation in the Commercial Court typically takes 12–18 months from commencement to trial, but this may vary depending on court capacity and complexity of the case.

There is a single trial hearing. Factual and expert witnesses are heard at the trial of the action and are generally subject to cross-examination.

In Ireland, remedies are not always decided at the same time as liability. It is common for the High Court to decide infringement and validity first and then determine damages or an account of profits at a later, separate stage if necessary. Damages in patent cases may require extensive evidence about market effects, pricing, loss quantification, etc. Because these issues are separate from liability, the court regularly treats them as a later-phase inquiry.

Patent cases are heard and determined by judges. Parties have no influence on the decision maker. There is a sub-list in the Commercial Court called the Intellectual Property and Technology List. The judges assigned to that list are, for the most part, experienced former intellectual property trial lawyers.

Ireland favours ADR, particularly mediation, and has statutory mechanisms that create strong incentives for parties to engage in settlement dialogue. However, mediation / settlement is not mandatory.

The Mediation Act places a statutory obligation on Irish 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.

Under the Mediation Act, the court may formally invite parties to mediate at any time during proceedings. Parties may also apply for an adjournment to allow mediation.

Irish courts may stay domestic patent actions where parallel proceedings elsewhere are ongoing. However, the court will take prejudice, efficiency, proportionality, resources and public interest into account when deciding whether to grant a stay.

In Eli Lilly v Eisai[2018] IEHC 46, a stay was granted where opposition proceedings were ongoing at the EPO. However, the stay was only granted in respect of the trial date, and the judge refused to grant an order for a stay on “discovery, the carrying out of experiments or the other interlocutory steps that will require to be taken in order to put these proceedings in a state of readiness for trial”. The reason for the limited stay was the public interest in avoiding delays of a new Alzheimer’s medicine coming to market.

Remedies for patent infringement are set out in Section 47 of the Patents Act. These include:

• an injunction;
• an order for delivery or destruction;
• damages;
• an account of profits; and

• a declaration that the patent is valid and has been infringed.

Damages and an account of profits will not both be awarded in relation to the same infringement, so an election must be made in relation to these remedies.

The court has wide discretion in relation to remedies. The legislation requires the court to consider all the circumstances of the case and determine whether the award sought is just and proportionate.

There are no specific rules on the type or amount of damages which should be awarded, nor is there any set formula for calculating them. Where the defendant can show that they were unaware of the infringement and had no reason to believe they were infringing, damages may not be awarded. In certain circumstances, where there is evidence of particularly egregious conduct on the part of the defendant, the court may award aggravated or exemplary damages.

Typically, the successful party to the dispute will also be awarded their reasonable costs in pursuing or defending the proceedings, as the case may be.

The court has wide discretion in relation to orders for costs in Irish patent proceedings. Usually, costs follow the event, meaning that the prevailing party may recover their reasonable legal costs of pursuing the proceedings from the losing party. The prevailing party would typically expect to recover between 60–70% of their costs. Deductions may be made in certain circumstances, such as in relation to conduct, where the other party was successful on a particular issue, or if it was unreasonable to pursue certain arguments.

The court will not specify the amount of costs to be awarded in its order but may specify a percentage. It is the responsibility of the party who has been awarded its costs to provide details of the costs it has incurred. The level of costs to be paid is then a matter to be agreed between the parties. In the absence of any agreement, the costs may be adjudicated by the Legal Costs Adjudicator. See 8.3 Responsibility for Paying the Costs of Litigation.

There is no applicable information in this jurisdiction.

The usual practice is that the injunction takes effect and continues in force pending the outcome of the appeal.

When the circumstances are reversed, and the patent is found invalid, it is still possible for the patentee to apply for an interlocutory injunction pending appeal. See 2.7 Interim Injunctions.

In Ireland, there is a right of appeal against every decision of the High Court, including the Commercial Court, to the Court of Appeal. There is no automatic stay on the execution of a decision when an appeal is filed. Instead, the parties must request a stay pending an appeal, and the court has discretion as to whether to grant this.

Orders 86 and 86A of the RSC provide for the procedural rules for appeals to the Court of Appeal. To appeal a decision of the High Court or the Commercial Court to the Court of Appeal, the appealing party must lodge a Notice of Appeal within 28 days from the date of the perfected order (the final order of the court) being appealed. The applicant serves the Notice of Appeal on the respondent. The respondent then has 21 days from receipt of the Notice of Appeal to serve a Respondent’s Notice.

Orders 58 and 59 of the RSC govern proceedings in the Supreme Court. Where a further appeal to the Supreme Court is sought, leave to appeal is required and will only be granted if the decision involves a matter of public importance or if it is in the interests of justice. All applications for leave to appeal to the Supreme Court must be brought by lodging a notice in the prescribed form. Applications for leave to appeal are typically made within 21 days of perfection of the Court of Appeal order. A respondent served with a notice of application for leave has six weeks from the date of the perfected order to serve a Respondent’s Notice.

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.

Appeals can only be taken on a question of law. Therefore, the appeal court will not hear new evidence or allow new issues to be put before it that were not considered by the trial court.

Before issuing patent infringement proceedings, it is advisable for the plaintiff to send a warning letter or letter before action to the alleged infringer. The court will look unfavourably on a party who has not taken this step and given the infringer an opportunity to mend their hand.

Unlike proceedings in some other jurisdictions (including the UPC) patent proceedings in Ireland are not frontloaded. Witness evidence and discovery of documents are dealt with after the close of formal pleadings, so the bulk of these costs are incurred at a later stage in the proceedings. That said, litigants do need to take advice and formulate a clear strategy prior to issuing proceedings on what witness evidence and documents they intend to rely on to prove their case.

There is no procedure for filing protective briefs in Ireland.

Nominal fees (stamp duty) are payable to the court when initiating proceedings, filing an appearance, filing affidavits and so on. Stamp duty of EUR5,000 is payable on an application to have the matter entered into the Commercial List.

In Ireland, the general rule is that costs follow the event. As a result, the losing party must reimburse the prevailing party’s reasonable costs of the litigation, including court fees, expenses, expert witness fees and solicitors’ and barristers’ professional fees.

The award of costs is subject to judicial discretion under the Legal Services Regulation Act 2015, Section 169 of which sets out conditions where costs may not be recoverable by the successful party, or where costs are only partially awarded. In exercising its discretion, the court may consider factors such as:

• behaviour before and during proceedings;
• whether it was reasonable to raise or contest issues;
• the manner in which cases were conducted;
• any exaggeration of claims;
• payments into court;
• offers to settle and their timing; and
• whether parties acted unreasonably in refusing settlement discussions or mediation when invited by the court.

Parties to a patent dispute may voluntarily agree to resolve disputes through ADR. This includes through mediation, conciliation, or another dispute resolution process. It is also possible for the court (whether of its own motion or on application of any of the parties) to adjourn proceedings to allow the parties to try to resolve matters by way of an ADR process. Agreements reached by parties by way of ADR are enforceable under contract law.

Under Section 85 (1) of the Patents Act, an assignee of a patent must apply to the Controller to have their interest recorded on the patent register. The application must be accompanied by proof of title. Typically, this will be evidenced by a written deed of assignment.

The applicant must complete a Patent Assignment Form and submit it to the IPOI together with proof of title and pay the prescribed fee of EUR50 for the first patent, and EUR6 for each additional patent listed on the form.

Licence Agreements can be exclusive, non-exclusive or sole. It is recommended that details of licencing arrangements are recorded on the Patents Register. Exclusive licensees in particular should ensure that their licences are recorded at the earliest opportunity, as failure to register could lead to them encountering difficulties in issuing infringement proceedings under Section 51 of the Patents Act. Under Section 81(7) of the Patents Act, documents which have not been recorded in the register will only be admitted in court as evidence of title if the court so directs.

A Licence Application form should be completed and submitted to the IPOI together with an original or certified copy of the Licence Agreement and the prescribed fee of EUR50 for the first patent, and EUR6 for each additional patent on the application form.