Utility Models (Short-Term Patents)
– Patents Act 1992, Part 3, Sections 63 to 67.
– Patents Rules 1993, Rules 44 and 45.
– Patents and Trademarks (Fees) Rules, 2001.
All of the requirements applicable to a full-term or twenty-year patent also apply to a short-term patent, with the following differences:
Inventive step: a notionally lesser level of inventive step applies to a short-term patent, whose invention is required to be “not clearly lacking an inventive step” as distinct from a full term patent, where an invention is required to “involve an inventive step”.
Specification: the specification is required not only to describe the invention but also the “best method of performing it known to the applicant”, which is not a requirement for a full-term patent.
Claims: a short-term patent application is limited to not more than five claims.
Term: ten years, as distinct from twenty years for a full-term patent.
Fees and annuities: approximately 50% of the fees applicable to a full-term patent.
Co-existence with a full-term patent: an application for a short-term patent may be filed for an invention for which an application is also filed for a full-term patent. The short-term patent, if granted first, is deemed void on grant of the full-term patent.
Working: same statutory provisions as for full-term patents.
Infringement: in action for infringement of a short-term patent, proceedings may not be instituted unless an official search is previously requested from the Intellectual Property Office of Ireland or evidence of novelty is submitted in one of the forms prescribed for a full-term patent. Suit may be brought in the Circuit Court.
Revocation: in addition to the grounds applicable to a full-term patent, a short-term patent may be revoked on the grounds that the claims are not supported by the description.
Subject matter: a short-term patent may be granted for any technical subject matter for which a full-term patent may be granted.