The Irish courts have jurisdiction to hear actions relating to patent infringements occurring in Ireland. Proceedings may be served on persons outside Ireland if they are infringing a patent within Ireland.

A direct infringement involves making, offering, importing, stocking, marketing or using a product that is the subject of a patent.

An indirect infringement occurs if a person supplies or offers to supply, the means required to put an invention or an essential element into effect. There must be knowledge that the means are suitable for the infringement.

This knowledge may be imputed where it would be apparent to a reasonable person. The indirect infringement is not made out where the means are staple commercial products unless they are offered or supplied for the purpose of inducing a person to undertake a direct infringement.

Knowledge or fault is generally irrelevant. In the case of offering a process for use, it is necessary that a reasonable person would have known or that the possibility of an infringement was obvious. This is because the method of use may not be evident to the seller.

Some Exemptions

Acts done for private, non-commercial purposes do not constitute an infringement. Acts done for experimental purposes do not constitute an infringement if they relate to the subject of the invention.

The preparation of medicines by pharmacies, in individual cases, in accordance with a prescription, is not an infringement.

If goods have been lawfully put in the market in one EU country, they cannot generally be restricted from free circulation in the EU.

Provisions in licensing agreements may be void under competition law as they may be anti-competitive or abuse of a dominant position. There is a block exemption applicable to certain types of agreements, including licensing agreements.

The exemption specifies certain circumstances and conditions under which licences will not generally be anti-competitive. Certain clauses are “blacklisted” and their presence in a licensing agreement is likely to render it anti-competitive and in breach of EU legislation.

Patent Scope

The extent of the patent and the protection it is granted is defined by the patent claim. The patent claim and drawings may be produced in interpreting the extent of the claim.

The wording of the claim is not to be taken literally or as a mere guideline.  An intermediate position is to be taken, which combines a fair degree of certainty of protection for the patentee with a reasonable degree of certainty for third parties.

The wider a patent claim, the greater the risk for the patent holders that might be deemed to lack novelty or be obvious. It is a defence to show that the material was published prior to the patent, relative to which the patent was obvious or lacked novelty.


Under the doctrine of equivalents, the scope of protection of a patent is not based solely on the literal wording of the claims but may be something outside the claims which performs substantially the same function in substantially the same way to obtain the same result.  The defendant cannot make “immaterial variations” and by doing so, avoid infringement.

Due account shall be taken of any element which is equivalent to an element specified in the claims.”  The key question is what the skilled person would understand the patentee to be using the language of the claim to mean. The approach is similar to that adopted in interpreting commercial documents

The question is whether a variation has a material effect on the way the invention works. If it does, there is no infringement. If the variation has no material effect on the way it works that would be obvious to a skilled observer, there will be an infringement.

If the specification makes it clear that the exclusion of the variation element in the claim was not intended, there may be infringement. A purposive approach is to be given, with reference to what a reasonable person skilled in the art would think.

Action for Infringement

An action for infringement is taken in the High Court.  It may be taken by the owner or exclusive licensee.  An injunction may be granted in a patent infringement case.  A pre-trial injunction may be granted on the normal criteria (See the section on pre-trial injunctions).

An application may be made against third parties for obtaining information and disclosure under the European Community (Enforcement of Intellectual Property Rights) Regulations 2006.

The patent holder must prove infringement. When sufficient evidence has been raised, the alleged infringer must prove non-infringement. If this requires disclosure of his own secrets, the court may hear the defendant’s evidence in the absence of the other party.

The courts may make orders against persons who are involved in transactions which appear to constitute an infringement. They may be obliged to aid the patentee and disclose details of suppliers. If the patent relates to a process, the use of that process or its offering for use constitutes an infringement.

At the conclusion of the trial, a permanent injunction may be given to enforce the right. The grant of a pre-trial injunction may determine the matter from a practical perspective. Breach would constitute contempt of court in the usual way. Damages may be granted instead or as well as an injunction.

Groundless Threats

Because the most significant defence against action for infringement is proof of its invalidity, the law recognises the potential for abuse. An unjustified threat may be the subject of an injunction and damages against the patent holder. The legislation is aimed primarily at threats of litigation.

If the court declares that the threats are unjustified, an injunction to restrain threats and damages may be granted. Notification of the existence of a patent or patent application is not by itself a threat. The context may, however, show otherwise.


The measure of damages is based on loss of profit.  The general principle is that damages should compensate for the loss occasioned by the infringement. Punitive damages are not generally awarded.

An action for damages may not be brought up before the patent is granted. They may be attributable to the period from the publication of the patent.

Damages may be calculated on a loss of profit or based on notional royalties, which would have been charged, had the defendant paid a royalty.

Where the defendant shows, he acted in good faith on the basis that the patent was not infringed or was invalid, damages may be limited on the above basis.

Where a patent specification has been amended, damages are not awarded for the period prior to the amendment unless the court is satisfied that the specification originally published was framed in good faith and with reasonable skill and knowledge.

Account Injunction & Delivery

An account of profits requires the person liable for infringement to give up profits. The claimant may be entitled to elect between damages or an account of profit. The information orders mentioned above may assist.

An injunction may be granted against an innocent infringer as may costs, although damages or an account of profits may not be granted.

Where some of the patent claims are valid and some invalid, an injunction may be granted in respect of the valid claims. It may be a condition of the injunction that the patent is amended.  The court has the discretion to grant relief by way of damages and costs.

An order for delivery and destruction of an infringing product cannot be granted after the patent has expired or where it applies after the patent has expired. The order may not require destruction if a modification prevents the infringement.

Defence of No Patent

The onus is on the defendant to show that the patent does not exist. There is a heavy onus on the defendant in this regard. He is deemed to be aware of the probability of patents existing and may be obliged to carry out investigations if there is some evidence in the market as to the existence of a patent.

The existence of patent numbers on authentic goods with a patent number is likely to be deemed sufficient public notice, meaning there could be no reasonable grounds for suspecting a patent did not exist.  The defendant must show in good faith, that he was completely unaware of the existence of a patent.

Declaration of Validity

If a patent has been contested and found valid, a declaration of validity may be given by way of a certificate. If in subsequent proceedings for infringement or revocation, a final order is made in favour of the person entitled to the patent, the person is entitled to costs on a solicitor and client basis, unless the court shall otherwise direct.

This is intended to be a disincentive to further claims contesting the validity of a patent, which has already been determined. The claimant must show that the specification was framed in good faith and with reasonable skill and knowledge.

Declaration of Non-Infringement

An application may be sought for declaration of non-infringement of a patent. This could cover use, sale or process. The person seeking the declaration must request the patentee to acknowledge that there is no infringement.

He must give particulars of the process or product.  The application may be made if the patent holder refuses to acknowledge the non-infringement.

Unless the court otherwise orders, the applicant bears the cost of all parties. The validity of the patent may not be challenged in the action.

Where a third party is acting in good faith, making effective and serious preparations for that which would constitute the infringement at the date the patent was granted, there is protection against infringement. The right of continued use may be assigned. It may not be licensed to third parties.


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Draft Articles; The articles on this website are in draft form and are subject to further review for typographical errors and, in some cases, updating and correction. It is intended to include references to the sources of materials and acknowledgements in the final version. The content of articles with [EU] in the title and some of the articles in the section on Agriculture are a reproduction of or are based on European or Irish public sector information.

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