Patents of Invention

– Patents Act, 1992.
– Patents (Amendment) Act, 2006.
– Patents (Amendment) Act, 2012.
– Intellectual Property (Miscellaneous Provisions) Act, 1998.
– Intellectual Property (Miscellaneous Provisions) Act, 2014.
– Knowledge Development Box (Certification of Inventions) Act 2017.
– Copyright and Other Intellectual Property Law Provisions Act 2019.
– Patents Rules, 1992.
– Patents (Amendment) Rules, 2006, 2008, 2009, 2011, 2012, 2017 and 2019.
– Patents and Trademarks (Fees) Rules, 2001.
– Patents, Trade Marks and Designs (Fees) (Amendment) Rules, 2012.
– Patents (Amendment) Act 2006 (Certain Provisions) (Commencement) Order, 2007, 2009, 2010.
– European Communities Regulation No. 1768/92 on a Supplementary Protection Certificate for Medicinal Products.
– European Communities (Supplementary Protection Certificate) Regulations, 1993.
– European Communities Regulation No. 1610/96 on a Supplementary Protection Certificate for Plant Protection Products.
– European Communities Regulation No. 1901/2006 on Medicinal Products for Paediatric Use.
– European Communities (Supplementary Protection Certificate) (Amendment) Regulations, 2001.
– European Communities (Legal Protection of Biotechnological Inventions) Regulations, 2000.
– European Communities (Limitations of Effect of Patent) Regulations, 2006 – giving effect to the “Bolar” provisions in EU Directives 2004/27/EC and 2004/28/EC.
– European Communities (Patent Agents) Regulations, 2006.
– European Communities (Supplementary Protection Certificate) Regulations, 2008.
– European Communities (Compulsory Licensing of Patents Relating to the Manufacture of Pharmaceutical Products for Export to Countries with Public Health Problems) Regulations, 2008.

Note: the Patents (Amendment) Act, 2006 gives effect to provisions of TRIPS, and to the European Patent Convention, 2000.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– European Patent Convention, since August 1, 1992.
– Strasbourg Agreement Concerning the International Patent Classification, since October 7, 1975.
– Patent Cooperation Treaty (PCT), since August 1, 1992.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms, since December 15, 1999.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 9, 1999.
– Patent Law Treaty, since May 27, 2012.

Filing

Applicant: the inventor or the legal successor of the inventor (individual, firm, company, etc.). 

Foreigners and non-residents: must be represented by a duly authorized Patent Agent having a place of business in the European Union. 

Kinds of patents: patents of invention only. The category of Patent of Addition has ceased to exist under the Patents Act 1992.

Confirmation patents: not available. 

Secret patents: no longer available under the Patents Act 1992.

Categories: patents covering a method, a process, a machine or a device, or a product. A product produced directly by a method or process is covered by the method or process claims. Plant varieties cannot be covered by patents, but plant breeders’ rights are available (see Section VII. “New Plant Varieties“). 

Patentability: patents are granted for inventions susceptible of industrial application, which are new and involve an inventive step. The following are all patentable: chemical substances, pharmaceutical substances, food substances, processes for making chemical compounds, products obtained by patented processes.

Microbiological processes and biological material: may be covered by patents. If proper identification by description is not possible, such description may be replaced by deposit of the biological material at a recognized Institute, not necessarily located in Ireland. 

Exceptions to protection: inventions contrary to public order or morality; a discovery, a scientific theory or a mathematical method; an aesthetic creation; a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; the presentation of information; in so far as a patent application for such subject matter or activity relates to such subject matter or activity as such. In addition, a method for treatment of the human or animal body by surgery or therapy or a diagnostic method practiced on the human or animal body constitute exceptions to protection, but this exclusion does not apply to a product, in particular a substance or composition, for use in any such method.

Novelty: to be new, an invention must not have been disclosed to the public by means of written or oral description, by use, or in any other way, before the date of filing of the patent application, and neither must the invention have been disclosed in the content of an Irish patent application, or a European or PCT application designating Ireland, which has an earlier priority date than the application in suit but is published on or after the priority date of the application in suit.

Priorities: one or more or partial priorities may be claimed. Priority may be claimed within the twelve-month Convention period either from patent applications filed in member States of the Paris Convention or in countries party to the WTO Agreement (or other foreign countries designated by Order), or from older Irish patent or short-term patent applications, provided that any such older application is not itself already based on the priority of another application outside the twelve-month period. The declaration of priority may be made subsequently provided it is made within sixteen months from the earliest priority date claimed. The applicant may correct the declaration of priority within sixteen months from the earliest priority date claimed, or, where the correction would cause a change in the earliest priority date claimed, within sixteen months from the corrected earliest priority date, whichever sixteen-month period expires first, provided that such a correction may be substituted not later than four months from the date of filing.

Period of grace: none except for a disclosure in breach of confidence.

Territory covered: Republic of Ireland.

Filing requirements for an application (to be sent to resident agent):
1. Specification (A4);
2. Patent claims with no limit to the number of claims (A4). Omnibus claims also remain acceptable, subject to possible constraints imposed by evidence of novelty (see below: “Evidence of novelty“);
3. An abstract comprising the title and a summary of the disclosure, preferably not exceeding 150 words (A4). If reference is made to a drawing, the relevant reference numerals should be enclosed in brackets, and the relevant figure number should be indicated;
4. Drawings (A4), as required;
5. Form of Authorization of Agent may be filed up to three months after lodgement of application;
6. Declaration of Inventorship (not later than sixteen months from the date of filing or earliest priority date of the application, as appropriate), containing full name(s), addresses of the inventors, and particulars of the assignments or other derivation of the applicants right to be granted a patent. This information may be incorporated in the Application Form, which is prepared by the resident agent, if available at the time of filing of the application. A later-filed Declaration of Inventorship may also be signed by the resident agent;
7. Certified copy of priority application, not later than sixteen months from the earliest priority date of the application;
8. A verified translation of the priority document, if this is not in English, if requested by the Patents Office. A translation is only required where such translation would be relevant to the determination of the validity of the patent where relevant prior art has been published between the priority date and the filing date. Where requested, the translation must be provided not later than twenty-one months from the earliest priority date of the application;
9. Biological material deposit information, not later than sixteen months from the date of filing or earliest priority date of the application, as appropriate;
10. Novelty statement (i.e. a statement as to the form in which it is intended to satisfy the evidence of novelty requirement –see below), not later than twenty-one months from the date of filing or earliest priority date of the application, as appropriate.

Minimum filing requirements: specification and abstract in the English language (and drawings as required). Informal documents can usually be formalized later. Claims and an abstract may in fact be filed not later than twelve months from the date of filing of an application or from its earliest priority date. If a Convention case is in question, it will normally be necessary however to file claims and an abstract immediately with the specification. Alternatively, application may be made by reference to an earlier application by the applicant or his predecessor in title. A certified copy of the earlier application, and where the earlier application is not in Irish or English, a verified translation thereof, must be filed within four months of the date of filing in Ireland. 

Electronic filing: not available. Authorization forms may be filed by e-mail.

Examination Procedure

Formalities examination: is carried out and obvious deficiencies, such as unfiled documents or information, are drawn to the applicant’s attention, as well as any non-compliance with formal presentation requirements. 

Examination as to patentability: upon request, the Irish Patents Office will draw up a search report including a written opinion as to patentability. The applicant may then make amendments in light of the report and written opinion, or may file a statement setting out the reasons why no amendments are required. In response, the Irish Patents Office will carry out a substantive examination.  

Accelerated examination: not available.

Evidence of novelty: as an alternative to requesting an official search report and written opinion, applicants may furnish evidence of novelty by filing (a) a copy of a corresponding published European, PCT, British or German patent specification and related search report and written opinion; (b) a copy of a corresponding granted European, British or German patent; or (c) a copy of a corresponding published patent application for a state on whose behalf patent applications are the subject of searches carried out by the European Patent Office, with the relevant search report and written opinion. The foreign application must in each case be for the same invention.  

Amendment of application: following filing of a granted patent as evidence of novelty, the applicant, through his agent, is required to amend the Irish application so that the subject matter claimed in the specification does not extend beyond that of the evidence or to submit a statement that no amendment is considered necessary. In the case of an official search report, including a written opinion as to patentability, the applicant is required to amend the claims “in the light of” the search results and written opinion. Additional subject matter cannot be added in the course of such amendment. 

Division: permitted before acceptance of the main application, but additional matter cannot be introduced by division. 

Public inspection: the specification is laid open to inspection eighteen months after filing or from the first priority date claimed, whichever is the earlier. 

Inspection of the file: following laying open of the specification to public inspection, the documents of the application are also open to inspection. 

Disputes about ownership: such disputes are no longer within the power of the Controller for adjudication. 

Opposition: pre-grant opposition is not available.

Provisional registration: no longer exists as such, and the former system of provisional and complete specifications has been abolished. However, internal priority is now available. 

Appeals: any decision of the Patents Office may be appealed, with two minor procedural exceptions.

Protection

Delivery of patent: no fixed term is now set for putting an application in order for grant of a patent. 

Beginning of protection: a patent takes effect on the date on which notice of its grant is published in the Journal. 

Provisional protection: accrues, on early publication of the application, subject to certain provisos. 

Duration: maximum duration: twenty years from filing date of application.

Extension: extension of term is not available under the new law except as provided under the EC Regulations on Supplementary Protection Certificates for Medicinal Products and for Plant Protection Products.

Annuities: application renewal fees are due for the third and each following year that the application is pending. For each patent, patent renewal fees are due in respect of the third and each following year. With effect from November 1, 1997, the amounts payable for application renewal fees are equal to patent renewal fees. Renewal fees are payable on or before the last day of the month in which the due date falls. Renewal fees may not be paid more than four months before the due date. 

Annuity grace period: after the due date, payment of renewal fees is allowed with a fine for up to a further six months. Application renewal fees paid during the pendency of the application prior to November 1, 1997, may be deducted from the amount of the accumulated patent renewal fees payable at grant.

Marking of patented goods: desirable but not compulsory. 

Text of marking: “patent number …”. 

Assignment: possible on production of deed or other proof of transfer. It should be registered as soon as possible. 

License for exploitation: possible by formal agreement, which should be registered as soon as possible. 

Licenses of right: patent may be endorsed “Licenses of Right” and renewal fees thereby halved.

Working: no positive legal value except as evidence that the invention is available for sale or license; should be carried out within three years of grant and repeated at intervals of not more than three years if patent is not being worked commercially.

Post-Grant

Revocation: possible at any time on the following grounds: (a) subject matter of patent not patentable; (b) specification insufficiently clear and complete to disclose invention adequately; (c) matter disclosed in specification of patent extends beyond that disclosed in application as filed; (d) protection conferred by patent extended by amendment which should not have been allowed; (e) proprietor not entitled. No other ground is admissible.

Compulsory licenses: may be granted for failing to meet a demand for the invention or meeting it by importation, other than importation from a WTO member State. It is also a ground for a compulsory license that the establishment or development of commercial or industrial activities in the State is unfairly prejudiced, or hindering working of another patented invention. All grounds for the grant of a compulsory license are subject to the provision that no order will be made which is at variance with the EEC Treaty.

Expropriation: no. 

Restoration of lapsed patents: possible within two years if lapse was unintentional. 

Reinstatement: for patents refused or withdrawn as a result of failure to comply with the requirements of this Act, other than failure to pay a renewal fee, where it was shown reasonable care was taken. 

Infringement: suit is brought in the High Court. 

Penalties: within hands of Court, for example, injunction and/or damages or account of profits.

Particularities

Miscellaneous: the unique Irish evidence of novelty requirement remains applicable under the current law, with the additional option of requesting the Irish Patents Office to carry out a search and provide a written opinion as to patentability. Following filing of a patent application, the applicant must state the form of evidence of novelty on which he intends to rely. A period of twenty-one months from the application or earliest priority date is allowed for this statement. Documents required as evidence of novelty must be filed within certain times. For example, granted patents from the British or European Patent Office must be filed within two months of publication, although this period may be extended on payment of fines. No specific period now applies for putting an application in order for grant, but four-month periods are set by the Patents Office for responding to “disconformity” objections, namely the requirement to bring the Irish case into line with the evidence of novelty. Extensions of this period are now very expensive to obtain. 

Extensions: so far as documents to be lodged following filing are concerned, the majority are excluded from any extension and the specified periods must be regarded as essentially inextendible.

European Patent Convention

Applications: European patent applications may be filed directly at the European Patent Office or at the Irish Patents Office, in which case the Irish Office then forwards the applications to the European Patent Office. There is no restriction as to who may file European applications at the Irish Office, and European applications may be lodged in Ireland by both Irish nationals and residents and also by overseas applicants. However, a European divisional application may not be lodged at the Irish Office. 

Secrecy: there is no secrecy requirement in Ireland. 

Protection: provisional coverage according to Articles 67 and 93 EPC becomes effective in the case of European applications not in English only if an English translation of the published claims is filed for publication by the Irish Patents Office, or alternatively, if an English translation is forwarded to the alleged user of the invention. 

National phase: the Patents (Amendment) Act, 2012 gave effect to the London Agreement in Ireland. For European patents granted on or after March 4, 2012, an English translation is no longer required in order to bring a European patent granted in French or German into force in Ireland.  

Renewal fees: the minimum time period for paying renewal fees due at validation is two months, in line with the EPC.

Patent Cooperation Treaty

1. The Irish Patents Office may act as a receiving Office according to Article 10 of PCT for persons making International Applications, provided the applications are in English.

2. Ireland may be a designated country, but when Ireland is designated in an International Patent Application, the application is deemed to be an application for a European patent, designating Ireland, according to the provisions of the European Patent Convention, even if no other EPC countries are designated. Ireland has also ratified Chapter II of the PCT, i.e. international preliminary examination, but such examination is carried out by the European Patent Office. There are thus no specific provisions for direct entry into the national phase for a PCT application under normal circumstances, and a PCT application can only become a granted patent in Ireland by the European route. However, there are now provisions to allow a PCT application to be treated as a national application in the event that it is not accorded a filing date, or is withdrawn or deemed withdrawn before 31 months from priority.  

Time limit for entering the regional phase under Chapters I and II: 31 months.