This country-specific Q&A provides an overview of the legal framework and key issues surrounding patent litigation law in Ireland.
This Q&A is part of the global guide to Patent Litigation.
For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/patent-litigation/
What is the forum for the conduct of patent litigation?
Patents in Ireland are principally governed by the Patents Act 1992, as amended (the “Patents Act”). Actions for patent infringement are generally brought before the High Court. The Commercial Court is a division of the High Court and patent disputes are generally transferred into that division. Cases admitted to the Commercial Court are subject to a case management system intended to ensure that they are progressed in a manner which is “just, expeditious and likely to minimise the costs of proceedings”.
Actions seeking revocation of an Irish patent may be brought before the High Court or the Controller of Patents, Trade Marks and Designs (the “Controller”).
Actions concerning short term patents may be brought in the Circuit Court (which usually has a monetary jurisdiction of up to €75,000) regardless of the amount of the claim.
Whilst there is currently no specialist IP division of the Commercial Court, Irish judges assigned to hear these disputes generally have experience in the area. It is also anticipated that an IP and Technology Court will be in place by early 2020 as a sub-list of the Commercial Court.
What is the typical timeline and form of first instance patent litigation proceedings?
There is no set time limit within which a case has to reach trial. The time taken will depend on the complexity of the case, the number of witnesses and whether there are pre-trial disputes on issues such as discovery. Cases in the Commercial List generally reach trial within 6 to 18 months of commencing proceedings.
Ireland is a common law jurisdiction and each party must set out its case by means of the exchange of pleadings, witnesses statements (including experts) and written legal submissions.
Patent proceedings are heard by a single judge and there is no jury present. It is a fundamental principle of the Irish law of evidence that witness testimony is given by word of mouth. However, in patent cases, it is frequently agreed that the witness statements will be taken as evidence in chief subject to elaboration and to the opponent having a right to cross examine. Written legal submissions are exchanged in advance of trial, and oral legal submissions are generally made at the opening and closing of the tral.
A plenary summons is used to commence infringement proceedings and a petition is used to commence revocation proceedings.
The procedural stages which must be adhered to by the parties may be summarised as follows:
• Issue of plenary summons for infringement (or petition for revocation) by the plaintiff;
• Entry of Appearance by the defendant;
• Delivery of Statement of Claim and Particulars of Infringement (or Particulars of Objection) by the plaintiff (petitioner);
• Delivery of a Notice for Particulars by the defendant seeking further details of the material facts being relied upon by the plaintiff;
• Delivery of Defence (to infringement) and Counterclaim (if any) (seeking revocation);
• Delivery of Notice for Particulars by the plaintiff relating to the Defence and Counterclaim (if any);
• Reply (and Defence to Counterclaim) by the plaintiff: this closes the pleadings;
• Discovery – either side may bring a motion for discovery if discovery is not agreed;
• Exchange of Witness Statements, expert reports and other pre-trial steps including details of experiments (if required) followed by the exchange of outline written submissions; and
Either party may deliver a notice for particulars seeking further particulars of the other side’s claim. In the Commercial Court, these procedural stages must be complied with according to directions given by the judge in charge of the Commercial List at various stages, including the initial directions hearing, the case management conference and the pre-trial conference.
Initial directions are made by the Court upon, or soon after, entry of the case into the Commercial List and usually provide a timetable for the exchange of pleadings. The range of directions which may be made is broad and can include requiring the parties to provide discovery or information relevant to the proceedings such as intended witnesses or particulars of a technical nature or the examination on oath of any witness in the case.
A case management conference may be held to ensure that, amongst other things, initial directions have been complied with, that the issues of fact and law in dispute are defined and/or that all pleadings have been delivered.
Pre-trial conferences may be held before a case goes to trial in the Commercial Court so that the Court has a clear picture of the state of the case before trial. At this conference, a judge will also seek to establish practical issues such as the likely length of the trial and whether any special technological arrangements may be required.
The trial commences with opening submissions from the parties, followed by any cross-examination of expert and fact witnesses, and closing submissions.
Can interim and final decisions in patent cases be appealed?
Yes. A full right of appeal exists for all decisions of the High Court (including the Commercial Court) to the Court of Appeal. The appellant has 28 days (for an ordinary appeal) and 10 days (for the appeal of an interlocutory order) from the date on which the order of the High Court is perfected to appeal. Decisions of the Court of Appeal may only be further appealed to the Supreme Court, where the decision involves a matter of public importance or an appeal is necessary in the interests of justice.
The filing of an appeal does not operate as a stay on the execution of a decision. The grant of a stay pending an appeal is entirely at the discretion of the Court.
Which acts constitute direct patent infringement?
Patent infringement in Ireland can be direct or indirect and occurs where certain acts, which the patent proprietor has the exclusive right to control, are carried out without the consent of the proprietor.
Section 40 of the Patents Act sets out the acts which amount to direct infringement. It provides:
“A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in the State all or any of the things following:
(1) 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;
(2) 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;
(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.”
Do the concepts of indirect patent infringement or contributory infringement exist? If, so what are the elements of such forms of infringement?
Yes. Indirect infringement arises where a third party, without the consent of the patent proprietor, supplies or offers to supply a person (other than someone entitled to exploit the invention) in the State with means, relating to an essential element of that invention, for putting the invention into effect in the State, when the third party knows or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting the invention into effect (section 41, Patents Act).
Where the means supplied are staple commercial products, the patent proprietor must show that the supplier induced the person supplied to infringe the patent.
How is the scope of protection of patent claims construed?
The leading authority in Ireland on construction of claims remains the decision in Ranbaxy Laboratories v Warner Lambert  4 IR 584 where Clarke J in the Irish High Court approved at paragraph 31 the then leading case in the UK of Kirin Amgen v Hoechst  RPC 9. The central question of patent construction is;-
“What would a person skilled in the art have understood the patentee to have used the language of the claim to mean.”
The applicable law and principles are comprehensively addressed by Clarke J in his judgment. The starting point is Article 69 (1) of the European Patent Convention (“EPC”) which states that the extent of the protection conferred by a European patent “shall be determined by the claims” and that the “description and drawing shall be used to interpret the claims”.
The Protocol on the interpretation of Article 69 of the EPC provides that Article 69 is not to be interpreted as confining the scope of protection to the literal meaning of the words used in the claims, but nor are the claims a mere guideline. Instead, the interpretation adopted has to combine fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. Article 69 and the Protocol are given effect to by Section 45 of the Patents Act and the Second Schedule the Act.
In the Ranbaxy judgment Clarke J noted that the claims of the patent were to be construed purposively the inventors purpose being ascertained from the description and the drawings, and at paragraph 30 of his judgment he noted the statement in Catnic v Hill  RPC 183 by Diplock that:-
“a patent specification should be given a purposive construction rather than a purely literal one. The question in each case is: Whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive work and phrase appearing in the claim was intended by the patentee to be an essential requirement of the intervention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.”
Clarke J approved the statement in the UK case law that:
"......it follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements… the well-known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the invented concept. It may have some other purpose buried in a prior art and even if this is not discernible, the patentee may have had some reason of his own for introducing it."
Clarke J therefore approved the statement that followed that there was no general "doctrine of equivalents". However:
"On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is a fair way to read the claim in context."
Clarke J then set out his own views upon patent construction in the light of these principles and summarised his approach as follows at paragraph 3.32;-
"a Court [will] lean against a construction for which there is no rational basis from the perspective of the patentee. That is not to say that the Court will enter into a detailed analysis of the sort of consideration that might have entered the patentee's mind. The issue of construction is to be addressed from the perspective of a skilled addressee. That skilled addressee must be taken to know what the purpose of the patent is and the basic principles of patent law which would inform any person as to the general way in which a patent application would be formulated. If, from that perspective, a particular construction would immediately seem to the skilled addressee to be irrational, then there seems to me to be no reason in principle why the Court should not take that fact into significant account in the construction exercise. I propose approaching the question of construction on that basis."
Whilst the Irish Courts have adopted the purposive construction taken by the UK Courts in Kirin-Amgen v. Hoechst, rather than a purely literal construction, it remains to be seen whether the Irish Courts will reconsider the position in light of decision in Eli Lilly v Actavis  UKSC 48, where the UK Supreme Court introduced a new two-stage test that introduces an explicit doctrine of equivalents.
What are the key defences to patent infringement?
Consent, express or implied, is a defence to patent infringement. A defence may also arise in connection with the limitations on the effect of a patent provided for in section 42 of the Patents Act. Essentially, the rights conferred by a patent do not extend to:
- Acts done privately for non-commercial purposes;
- Acts done for experimental purposes relating to the subject matter of the relevant patented invention;
- The extemporaneous preparation for individual cases in a pharmacy of a medicine in accordance with a medical prescription issued by a registered medical practitioner or acts concerning the medicine so prepared;
- Certain use of the invention on board foreign registered vessels;
- Certain use of the invention in the construction or operation of certain aircraft or land vehicles; and
- Acts done in relation to the subject matter of the relevant patented invention which consist of acts done in conducting the necessary studies, tests and trials on a product to demonstrate the efficacy and safety of a product which are conducted with a view to enabling a producer to obtain a marketing authorisation in preparation for the expiry of patent. This is commonly known as the Bolar exemption.
The Patents Act sets out a number of additional defences which may be available to a defendant, including:
- The rights conferred by a patent do not extend to any acts which, under the obligations imposed by the EU treaties, cannot be prevented by the patent proprietor (section 43, Patents Act).
- Where a patent has lapsed bona fide and a third party commences or makes serious preparations to do an act that would constitute an infringement if the patent had not lapsed, that person has the right to continue such acts even if the patent is subsequently restored (section 37, Patents Act).
- A person who before the date of filing of the patent application or the priority date, does in good faith an act that would constitute infringement of the patent if it were then in force or makes in good faith effective and serious preparations to do such an act has the right to continue to do that act (section 55, Patents Act).
What are the key grounds of patent invalidity?
Invalidity may be raised as a defence to infringement proceeding or during stand-alone revocation proceedings. Issues of infringement and validity are heard in the course of the same proceeding.
A patent may be revoked on the ground that:
- the subject-matter of the patent is not patentable under the Patents Act;
- 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;
- the protection conferred by the patent has been extended by an amendment which should not have been allowed; or
- the registered proprietor of the patent is not entitled to the patent (by reason of the fact that he is, for example, neither the inventor nor his employer).(Section 58, Patents Act)
How is prior art considered in the context of an invalidity action?
The test for obviousness under section 13 of the Patents Act is the same as under the EPC, namely, that the invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. The state of the art comprises everything made available to the public anywhere in the world by means of a written or oral description, by use or by any other means before the priority date.
In Re Glaxo Group Ltd  IEHC 277 Charleton J at paragraph 29 accepted the four stage methodology for approaching the issue in Pozzoli v. B.D.M.O.  F.S.R. 37 at paragraph 23:-
"1 (a) Identify the notional "person skilled in the art";
(b) Identify the relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it.
3. Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of alleged invention as claimed, do these differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
As set forth at paragraph 43 of in Re Glaxo, the common general knowledge is the technical background of the notional man in the art against which the prior art must be considered, and is not limited to what the notional addressee has memorised, but includes all material in the field which he knows to exist and which he would refer to and which he understands is generally regarded as sufficiently reliable.
In Glaxo Charleton J suggested a general preference for the problem/solution approach of the EPO, but it is clear that the EPO approach of permitting reliance only on the closest piece of prior art is not followed in Ireland – a challenger may cite as many pieces of prior art as it pleases.
At paragraph 44, the Court accepted that:-
“to common general knowledge must be added any knowledge that a skilled person would acquire before he embarks on the problem to which the patent purports to provide the solution… in addition to common general knowledge, I must examine what the prior art on the issues in this case teaches the skilled team.”
In respect of “mosaicing” pieces of prior art, Charleton J in Glaxo stated at paragraph 44:-
“Since pulling together several pieces of prior art may itself amount to innovation, a mosaic of several pieces of prior art is not inherently likely to be obvious. Where a cross-reference exists in prior art, however, it may be otherwise. Where a piece of information is common to the team in this area, such may be common general knowledge. Where a member of the team has a piece of prior art, properly so considered, it is to be expected for him or her to share it with the team. As the team will have different specialities, I see no reason why they would not add to the discussion as to the prior art, provided the team remains uninventive. The caution against mosaicing is an aspect of the proper approach to obviousness. By unthinkingly applying that caution, the statutory test of obviousness may be lost sight of… the nature of the interaction between the pieces of prior art must be such as to require an inventive step before the test for registration of a patent under the 1992 Act, and under the Convention, can be met… the question is: Is there anything about putting together (a) and (b) or whoever number of pieces of prior art, which is inventive? My view in this case is that the use by the team of the pieces of prior art cited does not attract the caution reminding me that a mosaic is, of its nature, inventive.”
Can a patentee seek to amend a patent that is in the midst of patent litigation?
Section 38(2) of the Patents Act provides that the Court or the Controller, as the case may be, may, in the course of invalidity proceedings, allow the patent proprietor to amend the specification of the patent in such a manner as the Court or the Controller thinks fit and subject to such terms as to advertising the proposed amendment and as to costs. Any such amendment is deemed to have had effect from the date of grant of the patent.
Is some form of patent term extension available?
It is not possible to extend the duration of a patent; however, a form of ‘extension’ is available in relation to patents for medicinal and plant protection products to which the Supplementary Protection Certificate (“SPC”) regime applies. An SPC does not extend the duration of the patent itself, but only the protection for the specific product which is the subject of the marketing authorisation. The SPC takes effect from the expiry of the basic patent covering the product for a maximum term of five years. An SPC for a medicinal active ingredient may also be extended for a further six months if it has undergone the appropriate paediatric testing.
How are technical matters considered in patent litigation proceedings?
Expert evidence plays a central role within patent litigation in Ireland.
The construction of the patent claims is an issue solely for the Court however the Court’s task is to read the claims through the eyes of the skilled person in the art and the expert’s role is to enable the Court to undertake that task. The purpose of an expert in a patent case is to clothe the Court in the mantel of expertise worn by the witnesses, so the Court may make its own decision.
In Re Glaxo Group, Charleton J characterised the skilled team or addressee as being “an ordinary practitioner in the field of technology who is aware of what was common general knowledge in the art as of the relevant date.”
Accordingly, the expert witness may give evidence as to the state of the art at any particular time, to address technical terms, to address whether the specification allows the invention to be carried into effect, to address what the patent would have taught him or her on any given hypothesis and whether a variation from the precise terms of the patent would have a material effect upon the operation of the patented invention.
Certain economies of scale and cost savings obviously arise in addressing both validity and infringement in one set of proceedings before the Irish Court. For example, the expert report(s) would generally deal with both issues and the matters are usually heard and dealt with together in the context of the same hearing.
Is some form of discovery/disclosure and/or court-mandated evidence seizure/protection (e.g. saisie-contrefaçon) available, either before the commencement of or during patent litigation proceedings?
Pre-Action Measures – methods for obtaining evidence and information
The possible options that are available to a patentee to obtain information on a potential infringement are set out below:
(i) Norwich Pharmacal Order
It is well settled in Ireland that the Courts have jurisdiction to make an Order for Discovery in an action that has been instituted solely for this purpose on the basis that it may be of considerable value towards the attainment of justice. In Megaleasing UK Limited v. Barrett  ILRM 497 Finlay CJ emphasised that this is “a power which for good reason must be sparingly used”. The person seeking the Order must have a genuine intention of commencing proceedings and establish clear proof of a wrongdoing. The importance of confining actions for sole discovery to those where clear proof of wrongdoing exists was confirmed by the Supreme Court in Megaleasing UK Limited. In particular Finlay CJ stated as follows:
“I am, accordingly, driven to the conclusion that the existing authorities upon which the Judgement of the High Court are largely based, which are the authorities of the English Courts, do in fact confine the remedy to cases where very clear proof of a wrongdoing exist, and possibly, as far as applies to an action for discovery alone prior to the institution of any other proceedings, to cases where what is really sought are the names and identity of the wrongdoers, rather than factual information concerning the commission of the wrong”.
The Irish case law including Megaleasing and EMI v Eircom requires clear proof of violation of rights. In the circumstances, an order of this nature may only be sought for the purpose of establishing the identities of the wrongdoers rather than factual information concerning the commission of the wrong.
(ii) Anton Piller Order
The Court may also grant Anton Piller Orders (preservation orders where documents and items may be seized by the moving party) where there is a serious risk that articles or documents vital to a party’s case may be imminently destroyed or otherwise disposed of.
Discovery in the course of Proceedings/ Requests for Samples / Orders for Inspection / Interrogatories / Experiments
Patent litigation in Ireland usually involves the parties having to give documentary discovery/disclosure. The Court rules require an applicant for discovery to demonstrate that the documents sought are both relevant and necessary for the fair disposal of the case or to save costs.
Relevance has been held to mean “every document relating to the matters in question in the action, which not only would be evidence upon any issue, but also which, it is reasonable to
suppose, contains information which may – not which must – either directly or indirectly enable the party requiring the Affidavit either to advance his own case or to damage the case of his adversary”.
The documents sought must also satisfy the requirement that the discovery sought is necessary for disposing fairly of the cause or matter or for saving costs. An applicant for discovery must show that it is reasonable for the Court to suppose that the documents contain information which may enable the applicant to advance his own case or to damage the case of his adversary. An applicant is not entitled to discovery based on mere speculation or on the basis of what has been traditionally characterised as a fishing expedition.
The Rules of the Superior Courts provide for the discovery of documents which are, or which have been, in a person’s possession or power and, if privilege is claimed, the Court may inspect the documents to decide whether the claim of privilege is correct. The existence of a duty of confidence does not in itself provide a basis for a claim of privilege however a court may limit the inspection of such documents to legal advisors.
Samples and Orders for Inspection
It is also possible to request samples and/or to request an order for inspection as part of the discovery process. Where the interests of justice require, the inspection may be limited to solicitors, counsel, patent agents, and/or independent experts.
Interrogatories can also be useful to obtain admissions in respect of a defendant’s product or process. Leave is not required from the Court to serve interrogatories in the course of proceedings before the Commercial Court.
In appropriate cases, experiments may be ordered upon the application of a party that wishes to establish a fact by experimental proof.
Are there procedures available which would assist a patentee to determine infringement of a process patent?
In relation to process patents, section 46 of the Patents Act provides that a product produced by a person other than the patent proprietor shall be deemed to have been obtained by the process which is the subject matter of the patent where the product is the same and in the absence of evidence to the contrary. The burden of proof shifts onto the defendant.
Admissions may be made by a defendant in its defence that it is, for example, manufacturing in the State or, particularly in the innovator versus generics scenario, that the product falls within the claims of the patent while contending that the patent is invalid.
Discovery is available and may also help to address the issue. While there is not a formal rule of procedure in Irish patent litigation which specifically provides for a product or process description to be furnished, the rules which govern proceedings in the Commercial Court give the judge wide powers to make orders which assist in the efficient conduct of the litigation:
“the Judge may, at any time and from time to time, of his own motion and having heard the parties, give such directions and make such orders, including the fixing of time limits, for the conduct of proceedings entered in the Commercial List, as appears convenient for the determination of the proceedings in a manner which is just, expeditious and likely to minimise the costs of those proceedings.”
The foregoing includes the fixing of any issues of fact or law to be determined in the proceedings.
Are there established mechanisms to protect confidential information required to be disclosed/exchanged in the course of patent litigation (e.g. confidentiality clubs)?
Confidentiality clubs may be agreed by the parties or ordered by the Court where the disclosure of certain information might give a competitor an unfair commercial advantage and are becoming a more common feature of the Irish litigation process. These impose restrictions on the discovery process by stipulating who on the opposing side can have access to the documents which are being disclosed, how documents may be copied, where they may be viewed and how the information they contain may be disseminated. In such cases, the court will typically direct that only the parties’ lawyers, and not the parties themselves, and their experts may inspect the documents. The lawyers and experts will also be required to undertake not to reveal the contents of the documents to their clients or other third parties.
Is there a system of post-grant opposition proceedings? If so, how does this system interact with the patent litigation system?
Any person can bring an application to the High Court or the Controller for the revocation of a patent (Section 57, Patents Act).
If there are already court proceedings pending in Ireland in relation to a patent, it is not open to a party to take revocation proceedings before the Controller without leave of the High Court. However, where validity proceedings are already in existence before the Controller then the Court has discretion to stay infringement proceedings pending the Controller’s decision.
It is open to either party to apply to the Irish court for a stay of the Irish proceedings in circumstances where a corresponding European Patent is the subject of opposition proceedings before the EPO. The applicant for a stay argues that pressing on with the Irish proceedings runs the risk of conflicting decisions and /or wasted costs. In 2018 the Commercial Court allowed a partial stay of patent revocation proceedings between Eli Lilly and Eisai pending the determination of EPO opposition proceedings.
To what extent are decisions from other fora/jurisdictions relevant or influential, and if so, are there any particularly influential fora/jurisdictions?
Judgments of the UK courts, in particular, have persuasive effect in Ireland.
In Ranbaxy, Clarke J stated at paragraph 51 that, having regard to the extremely similar legislation in Ireland and the UK, and the states’ common adherence to the EPC, the judgments of the UK courts in this field have persuasive effect, as may judgments of other common law courts. In particular, he stated:
“…it is important to note that, while the broad scope of patent law has many similarities from one common law country to the next, there are, undoubtedly, some differences in the established approach in the respective jurisdictions. In particular, the underlying statutory basis does differ. Ireland and the United Kingdom have, of course, the European Patent Convention in common, and, as was pointed out by counsel for the plaintiff’s, the Patents Act 1992, is in very similar terms to the equivalent United Kingdom legislation and is clearly closely modelled on the United Kingdom Patents Act1977. This is hardly surprising, as both the United Kingdom and Ireland are signatories to and have ratified the European Patent Convention. It is fair to state that less caution needs, therefore, to be exercised in considering the application of judgments of the courts of the United Kingdom from other common law countries.
In those circumstances, it seems to me, that while it would not be appropriate to ignore the jurisprudence of other common law countries, it is the decisions of the United Kingdom courts that require most attention. The broad approach to the construction of patents is, of course, at least similar. Unless there is a material statutory difference or an established variation in the applicable jurisprudence, it does seem that the non-United Kingdom common law authorities are also persuasive in this context. However, for the reasons I have set out, caution should be applied and it should not be assumed that all relevant factors are necessarily the same.”
In dealing with the standing of foreign judgments which addressed the same patent and issues as before the Irish court, Clarke J stated at paragraph 54 that:
“The principle of the comity of courts requires that the courts in one jurisdiction should not lightly depart from a decision on the same issue made by a court of competent jurisdiction in another country which had to deal with that issue as part of litigation properly under its consideration. Thus, for example, where the courts in one jurisdiction have interpreted a contract in a particular way and where the same contract comes to be interpreted, in a separate dispute between the same or similar parties, in the courts of another jurisdiction, then the comity of courts requires that the interpretation of the contract in the second proceedings should not lightly depart from the interpretation given to the same contract in the first proceedings.”
Clarke J held that “subject to the caveats relating to differences in statutory law, jurisprudence, the patents themselves and the evidence…[it is correct] to pay appropriate regard to the international decisions in the related cases” in those particular proceedings.
However, as Clarke J. noted in Ranbaxy, differences in evidence before the Irish Court may warrant deciding that it ought to depart from a foreign judgment on the same patent. Thus, in Re Glaxo Group  IEHC 277, Charleton J in the High Court, whilst ultimately reaching the same conclusion as the English Court that the invention was obvious, noted that before the Irish court;-
“substantially different facts were argued and new witnesses called [with the result that it would have been impossible, notwithstanding my respect for Pumfrey J [in the English High Court] and for the courts in the neighbouring kingdom, to proceed towards a conclusion on the correctness of the decision in the previous litigation without examining this evidence in detail and with an open mind. Since a finding on that issue could change the other aspects of evidence which may have been common between this case and that tried in the United Kingdom, a complete re-evaluation of all of the evidence was required in the present case.”
How does a court determine whether it has jurisdiction to hear a patent action?
The normal rules under the Brussels Regime will apply or, where Brussels does not apply, the rules of private international law will apply. The Irish court has exclusive jurisdiction in proceedings concerned with the validity of any Irish patent.
What are the options for alternative dispute resolution (ADR) in patent cases? Are they commonly used? Are there any mandatory ADR provisions in patent cases?
The Arbitration Act 2010 gives effect to the UNCITRAL Model law on International Commercial Arbitration and where the parties agree to arbitration any awards made are enforceable and binding on the parties in accordance with this model law.
The parties can agree to resolve patent disputes through ADR. In addition, the court may of its own motion, or on application by any party to a dispute, adjourn proceedings in order to give the parties time to resolve the dispute by ADR.
Under section 14 of the Mediation Act 2017 solicitors are required to advise clients as to the benefits of ADR as an alternative to litigation, prior to the issuing of proceedings. When commencing proceedings, the solicitor is obliged to confirm by statutory declaration that he/she has complied with this requirement.
What are the key procedural steps that must be satisfied before a patent action can be commenced? Are there any limitation periods for commencing an action?
Whilst there is no requirement under the Patents Act to send a cease and desist letter to an alleged infringer before issuing patent infringement proceedings, it is usual to do so. Failure to send a cease and desist letter may be looked upon unfavourably by the Court when it comes to dealing with the question of costs.
A claim for patent infringement is time-barred six years from the date of the infringing act.
Which parties have standing to bring a patent infringement action? Under which circumstances will a patent licensee have standing to bring an action?
Actions for patent infringement may be brought by either the patent proprietor or the exclusive licensee in its own right. In particular, section 51 of the Patents Act provides that the exclusive licensee “shall have the like right as the proprietor of the patent to take proceedings in respect of any infringement”.
When the exclusive licensee brings the action, the proprietor, unless joined as a co-plaintiff, must be named as a defendant in the proceedings. Similarly, where any co-proprietor does not concur in the bringing of infringement proceedings by another co-proprietor, the non-concurring co-proprietor must be joined as a defendant. The purpose of joining such parties as defendants in this way is to give them notice of the action: however, they will not be liable for any costs unless they enter an appearance and take part in the proceedings.
Non-exclusive licensees do not have standing to bring patent infringement proceedings under the Patents Act.
Who has standing to bring an invalidity action against a patent? Is any particular connection to the patentee or patent required?
Any person has standing to bring an invalidity action against a patent.
Are interim injunctions available in patent litigation proceedings?
Yes, preliminary injunctions are available from the Irish courts in patent litigation proceedings and are granted if the party seeking the injunction establishes:
(a) There is a serious issue to be tried;
(b) The “balance of convenience” favours an injunction.
Preliminary injunction applications are almost always heard inter partes. Where interim ex-parte relief is sought, the judge would normally make an order for short service of the papers on the other side and put the matter back for mention for a few days up to one week later. At that time a defendant is generally allowed time to file a replying affidavit. A plaintiff may wish to file a further affidavit on receipt of the replying affidavit.
In Ireland, the granting of preliminary and permanent injunctions is subject to equitable principles and therefore the Court always has discretion whether to order an injunction. In recent years, preliminary injunctions in patent cases had become difficult to obtain in Irish proceedings. Where damages were held to be an adequate remedy for the applicant (in the event that he succeeded at the trial of action), preliminary injunctions were typically refused and no consideration of the balance of convenience was undertaken by the Court.
However, in the recent decision of the Supreme Court in Merck v Clonmel Healthcare Ltd the Court delivered an extremely important and far reaching decision concerning the approrpate test for the grant of a preliminary injunction which reasserts the flexible nature of the remedy and clarifies that adequacy of damages (or irreperable harm) should be assessed as forming part of the wider balance of convenience. Irish courts must now consider the whole balance of justice and not just irreparable harm when deciding whether to grant relief.
This ruling reaffirms the flexible nature of preliminary injunctions as a remedy and moves away from the treatment of the Campus Oil and American Cyanamid principles as akin to statutory rules. The decision clarifies that the adequacy of damages, although often the most important factor, is part of the overall balance of convenience and is not an antecedent, stand-alone test which must satisfied prior to a consideration of the balance of convenience.
The Supreme Court outlined eight steps which might be followed in applications for preliminary injunctions:
1. The Court should consider whether, if the plaintiff succeeded at the trial, a permanent injunction might be granted.
2. Is there a fair question to be tried. This may also involve a consideration of whether the case will probably go to trial.
3. The Court should consider how best the matter should be arranged pending the trial, which involves a consideration of the balance of convenience and the balance of justice
4. The most important element in that balance is, in most cases, the question of adequacy of damages.
5. In commercial cases where breach of contract is claimed, courts should be robustly sceptical of a claim that damages are not an adequate remedy
6. Difficulty in assessing damages may be a factor which can be taken account of and lead to the grant of an interlocutory injunction
7. A number of other factors may come into play and may properly be considered and weighed in the balance in considering how matters are to be held most fairly pending a trial, and recognising the possibility that there may be no trial
8. Any application should be approached with a recognition of the essential flexibility of the remedy and the fundamental objective in seeking to minimise injustice.
On what basis are damages for patent infringement calculated? Is it possible to obtain additional or exemplary damages?
Damages, as a general rule, are awarded only to compensate the loss suffered as a result of the infringement. The court, in assessing the appropriate ‘quantum’ to be awarded, will seek to place the defendant in the same financial position he would have occupied had the infringement not taken place. Loss of profits will be central to this determination. Courts may also look to the amount which would have been payable by the defendant as a reasonable royalty for the infringing use. Damages are not generally awarded on a punitive basis in infringement actions.
An account of profits is based on the principle of restitution (or unjust enrichment). The focus is therefore on the gain made by the infringing party.
A successful plaintiff in Irish patent proceedings may seek either damages or an account of profits, but not both.
How readily are final injunctions granted in patent litigation proceedings?
Final injunctions are routinely granted if the plaintiff is successful at the trial of the action where there is an act to be restrained on an on-going basis and damages alone are not an adequate remedy. However, as a general principle of Irish law, the Irish Courts may refuse to grant a final injunction if it is considered that an award of damages alone would be an adequate remedy.
Are there provisions for obtaining declaratory relief, and if so, what are the legal and procedural requirements for obtaining such relief?
Any person may apply to the Court for a declaration that he has not acted in a manner which infringes a patent, provided that he has first written to the proprietor (or licensee) requesting written acknowledgment that he is not infringing and has been refused such acknowledgment.
Similarly, any person may apply to the Court for a declaration that he is entitled, by operation of law or otherwise, to any Irish patent or patent application. The Court may also make declarations in respect of groundless threats,
Declaratory relief is sought by way of plenary proceedings which would involve the steps outlined at question no. 2 above
What are the costs typically incurred by each party to patent litigation proceedings at first instance? What are the typical costs of an appeal at each appellate level?
The costs incurred will vary greatly and will depend on such factors as the length and complexity of the proceedings, the length of the trial and the amount of pre-trial applications involved. The award of costs is always a matter for the discretion of the trial judge; however costs generally follow the event. The general rule is that costs are awarded against the losing party.
Can the successful party to a patent litigation action recover its costs?
Yes, to an extent. So-called “party and party” costs are generally recoverable and would normally cover approximately two thirds of the successful party’s total legal costs. If there is no agreement on the amount of costs to be paid, this is decided by the Taxing Master of the High Court who will assess and determine the appropriate amount of costs to be paid by the unsuccessful party.
What are the biggest patent litigation growth areas in your jurisdiction in terms of industry sector?
Many of the major global pharmaceutical/biotech and medical device companies have set up manufacturing operations in Ireland. The consequence of this is that Ireland has become an important jurisdiction for patent litigation in Europe with a significant increase in patent litigation, particularly relating to pharmaceutical/biotech and medical devices.
What do you predict will be the most contentious patent litigation issues in your jurisdiction over the next twelve months?
An important decision was delivered by the Supreme Court recently in proceedings in which Whitney Moore acted for Merck, Sharp & Dohme. The Supreme Court unanimously upheld MSD’s appeal against the decisions of the High Court and Court of Appeal refusing a preliminary injunction restraining the alleged infringement of MSD’s SPC for a cholesterol drug. The judgment has huge significance for the pharmaceutical sector in Ireland because in recent years it has been considered difficult for a rights owner to obtain a preliminary injunction in Ireland. The test for the grant of preliminary injunctions has now been clarified and rightsholders will feel more confident in applying for such relief. We expect this development to lead to more applications for preliminary injunctions and also more revocation actions being commenced given that it is now clear from the judgment that the failure to clear the way by a defendant will be a significant factor in the court deciding whether to grant such relief.
Which aspects of patent litigation, either substantive or procedural, are most in need of reform in your jurisdiction?
Proposals are currently being examined for the establishment of a dedicated IP and Technology division of the Commercial Court.
The rules surrounding discovery in Ireland are in need of reform.
What are the biggest challenges and opportunities confronting the international patent system?
It is possible that the Unified Patent Court might be adopted subject to international developments on this issue.