IRISH PATENTS

Current Irish patent law is governed by the Patents Act, 1992. Ireland is a member state of the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT). Irish law now provides for the grant of full-term (20 year) and short-term (10 year) national patents.

The main provisions of the current legislation are as follows:

European Patent Convention
Ireland became a contracting state of the European Patent Convention in 1992. Today, it is possible to designate in a single European patent application in Austria, Belgium, Cyprus, Denmark, Finland, France, Germany, Greece, Italy, Ireland, Luxembourg, Monaco, Netherlands, Portugal, Spain, Sweden, Switzerland (including Liechtenstein) and United Kingdom and well as the Extension States Albania, Latvia, Lithuania, Romania, Slovenia and The Former Yugoslav Republic of Macedonia. Turkey will accede to the EPC on November 1st 2000.

Patent Cooperation Treaty
Ireland has also ratified the Patent Cooperation Treaty and is bound by Chapter II of the PCT. The Irish Patents Office is a Receiving Office for PCT applications, but it is only possible to designate Ireland by way of a European patent designation.

Full-Term Irish Patents

• National Law
  Irish national patent law is now in line with the European Patent Convention. The term of all national full-term patents is twenty years.
• Evidence of Novelty
  An applicant for a full-term Irish patent must submit evidence of novelty of the invention. The evidence of novelty can take the form of
  1. a published corresponding patent application (a United Kingdom, European or PCT application) and related search report, or
  2. the specification of a patent granted by one of the prescribed Patent Offices (the United Kingdom, German or European Patent Offices).
• Novelty Search
  Alternatively, the applicant may request the Irish Patents Office to undertake a search in relation to the invention. The United Kingdom Patent Office normally conducts the search on behalf of the Irish Patents Office.
• Amendment
  The applicant must then either amend the claims of the Irish patent application in the light of the prior art or state that no amendments are necessary. If the evidence of novelty is a copy of the specification of a granted patent, it is necessary to amend the specification of the Irish application to conform with the specification of the granted patent.
• Examination
  The Patents Office retains the right to examine any patent application, but in normal circumstances there is no substantive examination of new or existing patent applications.
• Patent Application Maintenance Fees
  Maintenance fees are payable on new applications for full-term patents, but not on applications for short-term patents.

Short-Term Irish Patents

• Definition
  The Irish Patents Act provides for the grant of short-term patents which have a maximum term of ten years. A valid short-term patent is obtainable in respect of an invention which is "new and susceptible of industrial application provided it is not clearly lacking an inventive step". An application for a short-term patent does not need to be supported by evidence of novelty and the patent is obtainable within months of filing the application.
• Infringement
  Before an infringement action can be taken in the Courts, however, it is necessary to provide evidence of novelty of the invention or request the Patents Office to undertake a search.
• Amendment
  The specification of the granted short-term patent may need to be amended in the light of the evidence of novelty or the requested search report.
• Third Party Request
  A third party may request the Patents Office to undertake the necessary search.
• Relationship with Full-Term Patents
  It is possible to apply for a short-term patent and a full-term patent at the same time, and in respect of the same subject matter, but the short-term patent will automatically be revoked on the grant of the full-term patent. It is also possible to convert an application for one form of patent to the other and to file a divisional application from either. A short-term patent may be granted while a European application for the same invention is pending, but will automatically be revoked on the grant of the European patent.
• Circuit Court
  Normally, patent infringement actions are taken in the High Court, but an infringement action may be taken in the Circuit Court in respect of a short-term patent.

Post-Grant Procedures

• Revocation
  It is possible to apply for revocation of a patent in the High Court or in the Patents Office. However, it is not possible to take an infringement action in the Patents Office.
• Restoration
  An application for restoration of a lapsed patent or patent application must be filed within two years of the date on which the renewal fee should have been paid. An applicant for restoration of a patent or patent application must show

  (a) that reasonable care had been taken to ensure payment of the renewal fee within the prescribed period,
  (b) that the failure to pay the renewal fee was unintentional, and
  (c) that no undue delay occurred in making the application for restoration.