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1 August 2005

Enforcing Patents in Ireland

What options are open to a European patent holder, whose rights cover your jurisdiction, when seeking to enforce its rights in your jurisdiction?

The first step is normally to write to the allegedly infringing party with a view to avoiding the necessity of taking court action. Consideration should be given to the situation in other countries (is it possible to sue in a number of countries and, if so, where is it most favourable to commence action?).

Assuming that a decision is taken to pursue the alleged infringer through the courts in Ireland, the first two considerations should be:

• Is a preliminary (or interlocutory) injunction likely to be available?
• Is the patent enforceable in its current state or does it require amendment?

If the patent needs to be amended and no preliminary injunction is likely to be granted, then it may be advisable to amend the patent first and then commence action.

Sooner or later, the patentee issues a writ to commence an action in the High Court in the hope of removing the allegedly infringing product or process from the market and recovering damages suffered as a result of the infringing activities.

Does your jurisdiction have specialist patent courts? If not, what level of expertise can a patent owner expect from the courts?

No. Court cases involving patents are normally entered in one of two divisions of the High Court. The first division is the Chancery division, which is a fairly general division of the High Court. The second division is the new Commercial Court, which specialises in commercial litigation having a claim value of more than Euros 1 million (though exceptions to this threshold may be made for IP cases).

In either case, a High Court judge will hear the case, and this judge can be expected to have significant commercial expertise and experience in dealing with complex litigation. The judge may or may not have IP experience in the Chancery division. If the case is in the Commercial Court, the judge will have experience in patent matters, but will not be a full-time patent judge.

The Commercial Court, set up in 2004, provides a more condensed procedure and has a particular interest in IP cases. For parties wishing to expedite matters and obtain an early and informed decision, therefore, it is advantageous to enter the case in this Court list.

In order for a case to be heard in the Commercial Court, an application must be made by one or other of the parties. While the general rule is that such cases will have a claim value of Euros 1 million or greater, exceptions may be made. Normally, the application to have the case heard in the Commercial Court will be made at the commencement of proceedings or shortly afterwards. If the case has proceeded for some time in the general High Court list, and a late application is made to transfer into the Commercial Court, it may be refused by the Commercial Court.

Is it possible to cross-examine witnesses at trial? How far are proceedings based on written evidence? Are there restrictions on the use of evidence from experts?

Yes, cross-examination of witnesses is possible. For cases in the Commercial Court, the proceedings are expected to be completed as far as possible in writing and for the hearing to take place on the basis of agreed evidence between the respective experts. The court can require the parties to set out their cases in writing (reducing lengthy opening speeches) and can use the witness statements, sworn under affidavit, as the main evidence of the witnesses.

Cases heard in the High Court, outside the specialist Commercial Court division, can be expected to progress more slowly and with a greater reliance on oral argumentation and on evidence primarily presented at trial rather than in advance.

Are infringement and invalidity dealt with simultaneously? What level of proof is necessary to demonstrate one or the other?

Yes, they are heard in the same trial. Furthermore, it is possible to argue, as a defence to an allegation of patent infringement, that the patent is invalid. The burden of proof is on the patentee to show that the patent is infringed. If invalidity is alleged, the burden of proof is on the party making that allegation. In both cases the standard is on the balance of probabilities (ie, the court must be convinced that it is more likely than not that the patent is either infringed or invalid).

To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted?

Pre-trial discovery is permitted and potentially extends to any document which is of relevance to the issues under litigation, with the exception of documents entitled to privilege (eg, certain advice between the lawyer and the client). Both sides can be ordered to discover documents in their possession or control.

Discovery is either made voluntarily or is ordered by the court following a successful application by one or other party.

To what extent does any doctrine of equivalents apply in an infringement action?

There is no doctrine of equivalents other than the principles set out in the Protocol to Article 69 EPC. The Irish courts would be likely, in the absence of Irish case law on this subject, to give consideration to the case law of other European jurisdictions and in particular to the case law of the English courts.

Are there certain types of patent right that may be granted by the EPO - biotech or computer software-related, for example - that are more difficult to enforce than others?

In principle, patents should be equally enforceable in all areas of technology. It is speculated that patents in those areas in which the principles of patentability are actively being developed at present, such as biotech and software, will be more open to challenge on the grounds of lacking patentable subject matter than, for example, mechanical or chemical engineering patents.

This is due to the lack of specific case law and the resultant uncertainty rather than any specific bias against such inventions. Nevertheless, if the patentability of a particular invention has been properly considered and favourably decided on by the EPO, this should influence the Irish courts somewhat in favour of the invention's inherent patentability.

To what extent are courts willing to consider, or are bound by, the opinions and decisions of other courts that have dealt with similar cases?

Patent litigation in Ireland has historically been very rare and disputes tend to be settled on the basis of the interlocutory injunction or on the basis of similar proceedings in other jurisdictions. While not normally bound by the decisions or opinions of other courts, judicial notice is taken of decisions on similar issues in other countries.

There is a historical tendency for the Irish courts to give particular attention to the decisions of English courts where the laws are drafted in similar terms.

Note that in certain specific cases Ireland, like other EU countries, has agreed to be bound by decisions from other countries, such as in the enforcement of judgments under the Brussels Convention. Also, as a signatory of the European Patent Convention, a decision of the EPO opposition division or board of appeal limiting or revoking a specific European patent designating Ireland will, of course, be binding in Ireland. However, once the EPO relinquishes jurisdiction following grant, opposition or appeal, the Irish courts retain exclusive jurisdiction in determining the validity of an Irish patent.

To what extent are courts willing to consider the reasoning given by foreign courts that have handed down decisions in similar cases?

Again, the Irish courts will be open to arguments based on the reasoning arrived at by foreign courts. The extent to which the reasoning is adopted by the Irish court (if at all) will depend in large part on whether that reasoning is consistent with the legal principles previously applied by Irish courts. Accordingly, the reasoning applied in decisions of the English courts, which share common historical roots and a similar common law system, will often prove attractive to the Irish courts.

What options are open to a defendant seeking to delay a case? How can a plaintiff counter delaying tactics?

For cases in the general Chancery list of the High Court, a myriad of delaying tactics are available. It is partly to counter such delays that the Commercial Court was set up. Parties in the High Court may miss various successive deadlines and fail to respond outright to some time limits, all of which can cumulatively push back the hearing of the case by many months.

With the new Commercial Court in place, however, a party disadvantaged by delaying tactics can apply for the case to be transferred to this Court to prevent further delays. The Commercial Court is extremely averse to any delaying tactics and each case is put in a fast-track procedure with strict time limits.

How available are preliminary injunctions and how do you get them?

Because it may take many months for an action to proceed to full trial, particularly in the regular High Court list, a patentee can apply for an interlocutory injunction to restrain the defendant from the allegedly infringing activities during the pre-trial period. Such an injunction will only be granted where the patentee can show that there is a serious issue to be tried and that there is a reasonable prospect of success in the full trial.

In addition, the patentee must be able to demonstrate that the balance of convenience (or fairness) lies in awarding the injunction rather than allowing the expected infringement to commence, or the alleged infringement to continue.

Finally, the patentee must prove to the court that if the injunction were to be refused, the patentee could not be adequately compensated by an award of damages following a successful full trial.

How long does it take to get a decision at first instance? Is it possible to expedite this process?

The Commercial Court may issue a decision in as little as three to four months from commencement of proceedings or as much as eight to nine months.

In the general High Court list, timescales are of the order of 12 to 18 months. As indicated above, expediting cases is most effectively achieved by transferring to the Commercial Court as early as possible.

Who can represent parties in court? Is specialist representation required?

Representation in Irish courts is limited to barristers and solicitors. Specialist representation is highly recommended, in the sense of employing a team including a barrister with patent experience, and a solicitor specialising in intellectual property litigation, and a patent attorney.

What remedies are available for infringement and how are these typically applied? Are punitive damages available and in what circumstances?

The list of possible remedies available to a patentee is as follows:

• A permanent injunction to prevent future infringement by the defendant.
• An order for delivery up or destruction of any remaining infringing products.
• A declaration that the patent is valid and infringed.
• An award of damages or account of profits.

The successful patentee can choose whether to receive an award of the damages it suffered or an account of the profits made by the defendant from the infringing activities. Punitive damages are not available. Also, no award of damages will be made where the defendant can show that it was an innocent infringer, in the sense of being unaware of (and having no reason to suspect) the existence of the patent.

An award of costs, covering the costs of the barristers but not those of the solicitor or patent attorney, will generally also be made to the winning party unless such an award of costs would be unfair, eg, due to the conduct of the winning party. Even a winning party that receives an award of costs will be significantly out of pocket at the termination of the case.

What avenues for appeal are open to the defeated party in a first instance case? What criteria are there for granting an appeal? How long does the appeal process take?

Appeals from the High Court may be made on a point of law to the Supreme Court. Findings of fact made in the lower court will not be reviewed on appeal.

To take a case through to a first instance decision, what level of cost should a party to a litigation expect to incur?
Are there any realistic alternatives to litigation in cases relating to patent disputes?

Settlement is more usual than litigation in Ireland. An explicit aim of the new Commercial Court is to encourage parties to employ arbitration where it appears to the Court that settlement is a possibility. To this end, the judge
is likely to quickly reduce each case, at an early date before trial, to the real issues in dispute between the parties. When this is done, the parties are more likely to wish to settle sooner rather than later.

Are there any other features of the enforcement system in your jurisdiction that you would like to point out?

While the normal course of events is for the patentee to initiate action for enforcement, there are specific circumstances in which the alleged infringer can initiate action and thereby take the initiative as plaintiff.

In particular, if letters or circulars are issued making improper threats of patent infringement, then persons aggrieved by these threats can take an action for groundless threats of patent infringement.

Furthermore, a party that is worried that a specific activity might give rise to an action for infringement can seek an acknowledgement to this effect from the patentee. If the patentee refuses to give such an acknowledgement in writing, then the party can apply to the court for a declaration of non-infringement.

An exception to the general rule that actions for enforcement of patents will be heard in the High Court (or Commercial Court) applies in relation to the enforcement of short-term patents with claims of small value, in which case the action can be heard in a circuit court with an appeal to the High Court.

FRKelly

First appeared in the IAM Magazine Supplement "Patents in Europe" August, 2005

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