Patent Infringment
PATENTS ACT
CHAPTER VII
INFRINGEMENT
Action for infringement of patent.
47. —(1) Civil proceedings for infringement of a patent may be brought in the Court High Court by the proprietor of the patent in respect of any act of infringement which he alleges he is entitled under sections 40 to 43 and section 45 to prevent and (without prejudice to any other jurisdiction of the Court High Court) in those proceedings a claim may be made—
( a ) for an injunction restraining the defendant from any apprehended act of such infringement;
( b ) for an order requiring the defendant to deliver up or destroy any product covered by the patent in relation to which the patent is alleged to have been infringed or any article in which the product is inextricably comprised;
( c ) for damages in respect of the alleged infringement;
( d ) for an account of the profits derived by the defendant from the alleged infringement;
( e ) for a declaration that the patent is valid and has been infringed by the defendant.
(2) The Court High Court shall not, in respect of the same infringement, both award the proprietor of a patent damages and order that he shall be given an account of the profits.
Proceedings for infringement by co-owner.
48. —(1) In the application of sections 40 to 43 to a patent of which there are two or more joint proprietors each of the references therein to the proprietor shall be construed—
( a ) in relation to any act, as a reference to that proprietor or those proprietors who, by virtue of section 80 or any agreement referred to in that section, is or are entitled to do that act without its amounting to an infringement; and
( b ) in relation to any consent, as a reference to that proprietor or those proprietors who, by virtue of section 80 or any such agreement, is or are the proper person or persons to give the requisite consent.
(2) One of two or more joint proprietors of a patent may without the concurrence of the others bring proceedings in respect of an act alleged to infringe the patent, but shall not do so unless all the others are made parties to the proceedings as defendants, but any of the others who, pursuant to the requirements of this subsection, is made a defendant shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.
Restrictions on recovery of damages for infringement.
49. —(1) In proceedings for the infringement of a patent damages shall not be awarded, and no order shall be made for an account of profits, against a defendant who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that that patent existed, and a person shall not be deemed to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word “patent” or “patented” or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the relevant patent accompanied the word or words in question.
(2) In proceedings for infringement of a patent the Court High Court may, if it thinks fit, refuse to award any damages or make any order in respect of any infringement committed during an extension period specified in a request under subsection (3) of section 36 but before the payment of the renewal fee and any additional fee prescribed for the purpose of that subsection.
(3) Where an amendment of a specification of a patent has been allowed under this Act, no damages shall be awarded in any proceedings for an infringement of the patent committed before the date of the decision allowing the amendment, unless the Court High Court is satisfied that the specification of the patent, as originally published, was framed in good faith and with reasonable skill and knowledge.
Relief for infringement of partially valid patent.
50. —(1) If in proceedings for infringement of a patent the validity of the patent is put in issue and it is found that the patent is only valid in part, the Court High Court may grant relief in respect of that part of the patent which is found to be valid and infringed; provided that the Court High Court shall not grant relief by way of damages or costs except in the circumstances mentioned in subsection (2).
(2) Where in proceedings for the infringement of a patent the plaintiff proves that the specification of the patent was framed in good faith and with reasonable skill and knowledge, the Court High Court may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the Court High Court as to costs and as to the date from which damages should be reckoned.
(3) As a condition of relief under subsection (1) or subsection (2) the Court High Court may direct that the specification shall be amended to its satisfaction upon an application made for that purpose under section 38, and such an application may be made whether or not all other issues in the proceedings have been determined.
(4) The Court The High Court may also grant relief under this section in the case of a European patent designating the State on condition that the claims are limited to the
Court’s High Court’s satisfaction by the European Patent Office at the request of the proprietor.
Proceedings for infringement by exclusive licensee.
51. —(1) Subject to the provisions of this section, the holder of an exclusive licence under a patent shall have the like right as the proprietor of the patent to take proceedings in respect of any infringement of the patent committed after the date of the licence, and in awarding damages or granting any other relief in any such proceedings the Court High Court shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as a result of the infringement or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.
(2) In any proceedings taken by the holder of an exclusive licence by virtue of this section the proprietor of the relevant patent shall, unless he is joined as plaintiff in the proceedings, be added as defendant; provided that a proprietor added as a defendant in pursuance of this subsection shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
Certificate of contested validity of patent.
52. —(1) If in any proceedings before the Court High Court the validity of a patent to any extent is contested and the patent is found by the Court High Court to be wholly or partially valid, the Court High Court may certify the finding and the fact that the validity of the patent was contested.
(2) Where any certificate has been granted under subsection (1), then if, in any subsequent proceedings before the Court High Court for infringement of the patent or before the Court High Court or the Controller for revocation of the patent, a final order or judgment is made or given in favour of the party relying on the validity of the patent, that party shall, unless the Court High Court otherwise directs, be entitled to his costs as between solicitor and own client.
Remedy for groundless threats of infringement proceedings.
53. —(1) Where any person (whether entitled to or interested in a patent or not) by circulars, advertisements or otherwise threatens any other person with proceedings for infringement of a patent, any person aggrieved thereby may bring proceedings in the Court High Court against him for any such relief as is mentioned in subsection (2).
(2) Unless in any action brought by virtue of this section the defendant proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute, an infringement of a patent, the plaintiff shall be entitled to the following relief, that is to say—
( a ) a declaration to the effect that the threats complained of were unjustifiable;
( b ) an injunction against the continuance of the threats; and
Patents Amendment Act 2006 [31/2006]
Copyright and Other intellectual Property Law Provisions Act 2019
( c ) such damages, if any, as have been sustained by him by reason of the threats.
(3) Proceedings may not be brought under this section as regards a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process.
(3) Proceedings may not be brought under this section as regards—
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process, or
(b) a threat, made to a person who made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.
(4) For the purposes of this section a notification of the existence of a patent or a patent application does not of itself constitute a threat of proceedings.
Power of Court to make declaration as to non-infringement.
54. —(1) A declaration that the use by any person of any process, or the making or use or sale by any person of any product, does not and would not constitute an act of infringement of a patent may be made by the Court High Court in proceedings between the person and the proprietor of the patent or the holder of an exclusive licence under the patent, notwithstanding the fact that no assertion to the contrary has been made by the proprietor or licensee, if it is shown that—
( a ) the plaintiff has applied in writing to the proprietor or licensee for a written acknowledgement the effect of which, if given, would be similar to that of the declaration claimed, and has furnished him with full particulars in writing of the process or product in question; and
( b ) the proprietor or licensee has refused or neglected to give such an acknowledgement.
(2) The costs of all parties in proceedings for a declaration made by virtue of this section shall, unless for special reasons the Court High Court thinks fit to order otherwise, be paid by the plaintiff.
(3) The validity of a patent in whole or in part shall not be called in question in proceedings for a declaration made by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid.
Right to continue use begun before date of filing or priority.
55. —(1) Where a patent is granted for an invention, a person who in the State before the date of filing of the patent application or, if priority was claimed, before the date of
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priority, does in good faith an act which would constitute an infringement of the patent if it were then in force, or makes in good faith effective and serious preparations to do such an act, shall have the rights specified in subsection (2).
(2) The rights referred to in subsection (1) are the following:
( a ) the right to continue to do or, as the case may be, to do the act referred to in subsection (1),
( b ) if such act was done or preparations had been made to do it in the course of a business—
(i) in the case of an individual—
(I) the right to assign the right to do it or to transmit such right on death, or
(II) the right to authorize the doing of the act by any of his partners for the time being in the business in the course of which the act was done or preparations had been made to do it;
(ii) in the case of a body corporate, the right to assign the right to do it or to transmit such right on the body’s dissolution;
and the doing of that act by virtue of this subsection shall not amount to an infringement of the patent concerned.
(3) The rights specified in subsection (2) shall not include the right to grant a licence to any person to do an act referred to in subsection (1)
(4) Where a product which is the subject of a patent is disposed of by any person to another in exercise of a right conferred by subsection (2), that other and any person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole proprietor of the patent.
Action for infringement of published application.
56. —(1) After a patent has been granted the proprietor may bring civil proceedings in the Court appropriate court for infringement of the patent application by any act committed in the period, beginning on the day after the date of publication of the application pursuant to section 28 and ending on the day before the date of publication of the notice of the grant of the patent, which he alleges he is entitled by virtue of sections 44 and 45 to prevent and in such proceedings a claim for damages may be made in respect of an alleged infringement.
(2) The provisions of sections 48 to 53 and section 55 relating to infringement of a patent shall apply, in so far as they are appropriate, to proceedings under this section.
(3) In considering the amount of any damages to be awarded in proceedings under this section, the Court appropriate court shall consider whether or not it would have been reasonable to expect, from a consideration of the application as published under section 28, that a patent would be granted conferring on the proprietor of the patent protection
from an act of the same description as that found to have infringed those rights, and if the Court appropriate court finds that it would not have been reasonable so to expect, it shall reduce the damages to such an amount as it thinks fit.
District Court Rules
Intellectual Property : S.I. No. 421 Of 2010
Seizure without warrant, delivery up, forfeiture, disposal and applications for return in intellectual property cases
1. In this Order:
“the Act of 1996” means the Trade Marks Act 1996 (No. 6 of 1996);
“the Act of 2000” means the Copyright and Related Rights Act 2000 (No. 28 of 2000);
“the Act of 2001” means the Industrial Designs Act 2001 (No. 39 of 2001).
2. An application for an order permitting seizure of infringing goods, material or articles without warrant under section 25(1) of the Act of 1996, may be made ex parte at any sitting of the Court for the district in which the said infringing goods, materials or articles are for the time being.
3. (1) An application by the owner of copyright in a work for an order permitting seizure without warrant under section 132(1) of the Act of 2000 may be made ex parte at any sitting of the Court for the district wherein it is believed that infringing copies of the work or articles specifically designed or adapted for making copies of work knowing or having reason to believe that it has been or is to be used for making infringing copies of a work, or protection-defeating devices are being hawked, carried about or marketed. Such application may be grounded upon the information on oath and in writing of the owner of the copyright in the work or his or its authorised representative and the Court may receive hearsay evidence to the effect that the witness or deponent believes that the material may be found in a particular location.
(2) An application to the Court by the owner of any copies, articles or devices seized under section 133 of the Act of 2000 for the return of those copies, articles or devices shall, unless the Court otherwise permits, be made not later than 30 days after the seizure. The application shall be preceded by the issue of a notice of application in the Form 31B.10, Schedule B (to which is attached a copy of the notice given under section 133(8) of the Act of 2000). A copy of that notice shall be served personally or by prepaid registered post on (a) the person claiming to be the owner of the copyright in the work concerned, as identified in the notice given in accordance with section 133(8) of the Act of 2000 and (b) the Superintendent or an Inspector of the Garda Síochána for the district in which the seizure was made.
(3) An application to the Court by the owner of any copies, articles or devices seized under section 133 of the Act of 2000 or other person aggrieved by such seizure for damages in accordance with section 133(12) of the Act of 2000 shall be preceded by the issue of a notice of application in the Form 31B.10, Schedule B (to which is attached a copy of the notice given under section 133(8) of the Act of 2000). A copy of that notice of application shall be served personally or by prepaid registered post on the person claiming to be the owner of the copyright in the work concerned, as identified in the notice given in accordance with section 133(8) of the Act of 2000.
4. An application by the registered proprietor of a design for an order authorising seizure without warrant under section 62(1) of the Act of 2001 may be made ex parte at any sitting of the Court for the district wherein it is believed that infringing products or articles are being hawked, carried about or marketed. Such application may be grounded upon the information on oath and in writing of the owner of the registered design or his or its authorised representative and the Court may receive hearsay evidence to the effect that the witness or deponent believes that the material may be found in a particular location.
5. (1) An application by the owner of the rights in a recording of a performance conferred by Part III of the Act of 2000 for an order authorising seizure without warrant under section 256(1) of the Act of 2000 may be made ex parte at any sitting of the Court for the district wherein it is believed that illicit recordings of the performance, articles specifically designed or adapted for making recordings of a performance which the person hawking, carrying about or marketing those articles knows or has reason to believe have been or are to be used to make illicit recordings of a performance, or protection-defeating devices are being hawked, carried about or marketed. Such application may be grounded upon the information on oath and in writing of the owner of the rights in the recording of the performance conferred by Part III of the Act of 2000 or by his or its authorised representative. The Court hearing such application may receive hearsay evidence to the effect that the witness or deponent believes that the material may be found in a particular location.
(2) An application to the Court by the owner of any recordings, articles or devices seized under section 257 of the Act of 2000 for the return of those recordings, articles or devices shall, unless the Court otherwise permits, be made not later than 30 days after the seizure. The application shall be preceded by the issue of a notice of application in the Form 31B.11, Schedule B (to which is attached a copy of the notice given under section 257(8) of the Act of 2000). A copy of that notice shall be served personally or by prepaid registered post on (a) the person claiming to be the owner of the rights in the recording concerned, as identified in the notice given in accordance with section 257(8) of the Act of 2000 and (b) the Superintendent or an Inspector of the Garda Síochána for the district in which the seizure was made.
(3) An application to the Court by the owner of any recordings, articles or devices seized under section 257 of the Act of 2000 or other person aggrieved by such seizure for damages in accordance with section 257(12) of the Act of 2000 shall be preceded by the issue of a notice of application in the Form 31B.11, Schedule B (to which is attached a copy of the notice given under section 257(8) of the Act of 2000). A copy of that notice of application shall be served personally or by prepaid registered post on the person claiming to be the owner of the rights in the recording concerned, as identified in the notice given in accordance with section 257(8) of the Act of 2000.
6. (1) An Order made on an application authorising or permitting seizure without warrant under rule 2, 3(1), 4 or 5(1) shall be in the Form 31B.1, 31B.2, 31B.3, or 31B.4 , Schedule B, as appropriate.
(2) An Order made on an application under rule 3(2), 3(3), 5(2) or 5(3) shall be in the Form 31B.12 or 31B.13, Schedule B, as appropriate.
7. (1) An order may be made for the delivery up of an infringing copy, article or device under section 142 or of an illicit recording, article or device under section 260 of the Act of 2000 or of an infringing product or article under section 69 of the Act of 2001 by the Court, of its own motion or on the application of the person bringing the prosecution, at any convenient time during such proceeding, provided that the Court is satisfied that there is a prima facie case to answer, or following the determination of such proceeding.
(2) An order for the delivery up of an infringing copy, article or device to the copyright owner or to such other person as the Court may direct under section 142 of the Act of 2000 shall be in the Form 31B.5, Schedule B.
(3) An order for the delivery up of an illicit recording, article or device to the rightsowner or to such other person as the Court may direct under section 260 of the Act of 2000 shall be in the Form 31B.6, Schedule B.
(4) An order for the delivery up of an infringing product or article to the registered proprietor or to such other person as the Court may direct under section 69 of the Act of 2001 shall be in the Form 31B.7, Schedule B.
(5) An order made by the Court under section 142 or section 260 of the Act of 2000 or under section 69 of the Act of 2001 shall be served personally or by prepaid registered post on the accused and on any person to whom it is ordered that any infringing copy, article, or protection-defeating device, or illicit recording, article or protection-defeating device or infringing product or article be delivered up. On the hearing by the Court of an application by the person bringing the prosecution for such an order, or where the Court makes such order of its own motion, the Court may additionally direct the person bringing the prosecution to make and serve notice of an application for forfeiture or disposal (as provided for in rule 8) under section 145 or section 264 of the Act of 2000 or, as the case may be, under section 72 of the Act of 2001 on notice to the known or reputed copyright owner or rightsowner or registered proprietor and to any other person directed by the Court to be served with such notice.
8. (1) An application in a criminal proceeding for the forfeiture or disposal of an infringing copy, article or device under section 145 of the Act of 2000 or of an illicit recording, article or device under section 264 of the Act of 2000 or of an infringing product or article under section 72 of the Act of 2001 shall be in the Form 31B.8, Schedule B and shall be served by the applicant personally or by prepaid registered post on (a) any person heard or represented on any previous application for the delivery up of the same infringing article, copy or device under section 142 or illicit recording, article or device under section 260 of the Act of 2000 or of the same infringing product or article under section 69 of the Act of 2001, (b) any other person appearing to have an interest in the recording, copy, article, device or product concerned and (c) any other person directed by the Court to be served.
(2) An order of the Court on such application shall be in the Form 31B.9, Schedule B.
9. (1) Notice of an application under this Order shall, if served personally, be served not less than seven days before the date of the sitting of the Court to which it is returnable and, if served by prepaid registered post, be served not less than fourteen days before the date of the sitting of the Court to which it is returnable.
(2) The original of any notice of application under this Order shall be lodged with the Clerk not less than four days before the date of the sitting of the Court to which it is returnable.
Rules of the Superior Courts
Patents, Designs, Trade Marks and Copyright
1. In this Order:
“the Controller” means the Controller of Patents, Designs and Trade Marks.
“the Journal” means the Official Journal of Industrial and Commercial Property issued by the Controller pursuant to Statute.
2. Where, pursuant to section 129(5) of the Industrial and Commercial Property (Protection) Act 1927, section 40(4) of the Trade Marks Act 1963, or section 65(5) of the Patents Act 1964, an order, rectifying any register kept under the Acts, directs that notice of the rectification be served on the Controller, the applicant shall serve an attested copy of the order on the Controller who upon receipt thereof shall rectify the register accordingly.
3. Every action for or in respect of the infringement of a patent, trade mark or copyright or for relief under section 131 of the Industrial and Commercial Property (Protection) Act 1927, or section 61 of the Patents Act 1964, shall be commenced by plenary summons.
II. Actions for infringement of patent
4. In an action for infringement of a patent the plaintiff shall deliver with his statement of claim particulars of the breaches relied upon.
5. Particulars of breaches shall specify which of the claims in the specification of the patent sued upon are alleged to be infringed and shall give at least one instance of each type of infringement of which complaint is made.
6. The defendant, if he disputes the validity of the patent, shall deliver with his defence particulars of the objections on which he relies in support of such invalidity.
7. A defendant who, under section 57 of the Patents Act 1964, counterclaims for revocation shall deliver with his counterclaim particulars of the objections to the validity of the patent on which he relies in support of his counterclaim.
8. Particulars of objections shall state every ground upon which the validity of the patent is disputed and shall give such particulars as will clearly define every issue which it is intended to raise.
9. If one of the objections taken in the particulars of objections be want of novelty, the particulars shall state the time and place of the previous publication or user alleged, and if it be alleged that the invention has been used prior to the date of the patent, shall also specify the names of the persons who are alleged to have made such prior user and whether such prior user is alleged to have continued down to the date of the patent, and if not, the earliest and latest dates on which such prior user is alleged to have taken place, and shall also contain a description (accompanied by drawings if necessary) sufficient to identify such alleged prior user, and if such user relates to any machinery or apparatus shall specify whether the same is in existence and where the same can be inspected. No evidence at variance with any statement contained in such particulars shall be given in support of any objection, and no evidence as to any machinery or apparatus which is alleged to have been used prior to the date of the patent and which is in existence at the date of the delivery of the particulars shall be receivable unless it be proved that the party relying on such prior user has, if such machinery or apparatus be in his own possession, offered inspection of the same, or if not in his own possession, has used his best endeavours to obtain inspection of the same for the other parties to the proceedings.
10. Particulars of breaches and particulars of objections may from time to time be amended by leave of the Court upon such terms as may be just.
11. Further and better particulars of breaches or particulars of objections may at any time be ordered by the Court.
12. At the hearing of an action for infringement of a patent or a counterclaim or petition for revocation of a patent, no evidence shall, except by leave of the Court (to be given upon such terms as to the Court may seem just) be admitted in proof of any alleged infringement or objection not raised in the particulars of breaches or particulars of objections respectively.
13. On the taxation of costs in any such action, counterclaim or petition, the following provisions shall apply:
(1) If the action, counterclaim or petition proceeds to trial on any patent, no costs shall be allowed in respect of any issues raised in the particulars of breaches or particulars of objections and relating to that patent to the parties delivering the same respectively except in so far as such particulars are certified by the Court to have been proven and to have been reasonable and proper without regard to the general costs of the case.
(2)[7] Subject as aforesaid the costs of the issues raised by the particulars of breaches and particulars of objections shall be in the discretion of the Legal Costs Adjudicator.
14. If the defendant in an action for infringement of a patent intends to rely on the insertion by the patentee in any contract of any condition which by virtue of section 54 of the Patents Act 1964, is null and void, he shall deliver with his defence full particulars of the dates of, and parties to, all contracts on which he intends to rely as containing any such condition and of the particular conditions in any such contract on which he intends to rely as being by virtue of that section null and void. Particulars under this rule may be from time to time amended by leave of the Court upon such terms as to costs and otherwise as to the Court may seem meet.
III. Amendment of specification
15. An application by a patentee under section 32 of the Patents Act 1964, for leave to amend his specification by way of disclaimer, correction or explanation shall be made by motion in the action or proceedings pending before the Court. Notice of such motion together with a copy of the specification certified by the Controller showing in red ink the amendment proposed to be made shall be served on the other party in such action or proceedings, and in the first instance on such party only.
16. On the hearing of such motion the Court shall decide whether and on what terms as to costs or otherwise the application shall be allowed to proceed. If the application be allowed to proceed the Court shall give directions as to whether such application shall be heard on oral evidence or on affidavit and, if on affidavit, shall fix the time within which such affidavits shall be filed by the parties respectively and by any other person entitled to be heard under the Act or this rule.
17.[1] If the application be allowed to proceed the applicant shall forthwith serve on the Controller:
(a) a copy of the notice of motion;
(b) copy specification as aforesaid;
(c) an attested copy of the order allowing the application to proceed;
(d) a note of the name and address of the applicant’s solicitor (if any).
18.[2] [3] The Controller, on receipt of such documents, shall cause to be inserted in the next issue of the Journal an advertisement stating:
(a) the number and title of the patent and the name of the patentee;
(b) the proposed amendment;
(c) that any person desiring to oppose the amendment must within fourteen days of the advertisement give to the applicant’s solicitor notice in writing of such desire and must state therein his address for service;
(d) the name and address of the applicant’s solicitor (if any).
19. Any person giving such notice as is mentioned in rule 18 shall be entitled to be heard upon the hearing of the motion.
20.[4] Within seven days after the receipt of any such notice the applicant shall, if the person giving such notice shall have stated therein his address for service, serve on such person:
(a) a copy of the notice of motion;
(b) a copy of the specification as aforesaid;
(c) a copy of the order allowing the application to proceed.
Such service may be made by prepaid registered letter sent to such person through the post to his address for service.
21. Where the Court allows the specification to be amended the applicant shall forthwith lodge with the Controller an attested copy of the order allowing such amendment. The applicant shall also if required to do so by the Court or the Controller, leave at the Patents Office a new specification and drawings as amended, the same being prepared so far as may be in accordance with the Industrial Property Rules for the time being in force.
22. The Controller shall cause the said order to be advertised at least once in the Journal.
IV. Petition for revocation of a patent
23. Any person presenting a petition for revocation of a patent under section 34 of the Patents Act 1964, shall deliver with his petition particulars of the objections to the validity of the patent on which he relies in support of his petition.
24. The provisions of rules 8 to 13 inclusive in regard to particulars of objections shall apply mutatis mutandis to such a petition and the particulars to be delivered therewith.
25. The respondent to such petition shall be entitled to begin, and to give evidence in support of the patent and, if the petitioner gives evidence impeaching the validity of the patent, the respondent shall be entitled to reply.
V. Petition for extension of the term of a patent
26. A patentee who intends to present a petition to the Court under section 27 of the Patents Act 1964, praying that his patent may be extended for a further term shall advertise his intention to do so twice in Iris Oifigiúil and once in at least two daily newspapers published in Dublin.
27. Such a petition may relate to more than one patent.
28.[5] [6] The advertisement shall state:
(a) the number and title of the patent and the name of the patentee;
(b) that the object of the petition is to obtain an extension of the patent for a further term;
(c) the date on or before which the petition is to be presented to the Court;
(d) that any person desirous of objecting must within fourteen days from such date lodge in the Central Office written notice that he intends to lodge objections and must in such notice give an address for service;
(e) the name and address of the patentee’s solicitor (if any) and the patentee’s address for service.
29. When the first advertisement appears in Iris Oifigiúil the patentee shall send a copy thereof to the Controller for insertion in the next issue of the Journal.
30. A patentee intending to present such petition shall, if he requires an extension of the period within which such petition may be presented apply to the Court ex parte for an order extending such period. The application may be made before or after the time limited for presentation of the petition and shall be supported by an affidavit to the patentee or his solicitor stating the reasons for the delay. If the Court shall extend the period it shall in such order fix the date on or before which the petition shall be presented to the Court, and such date shall be stated in the said advertisements.
31. The petition shall be lodged in the Central Office on or before the date stated in the advertisements for presentation of the petition.
32. Within four days of lodging the petition the patentee shall serve a copy thereof on the Controller.
33. There shall be lodged along with the petition:
(a) an affidavit by the petitioner, or his solicitor, that the advertisements prescribed above have been duly published;
(b) a copy of each issue of Iris Oifigiúil and of each of the said newspapers, containing such advertisements;
(c) two printed copies of the specification of the patent.
34. A copy of the petition shall be served on every person who has lodged notice that he intends to lodge objections.
35. Every such person shall within three weeks after the service of a copy of the petition upon him:
(a) lodge in the Central Office particulars of the objections upon which he intends to rely against the granting of the prayer of the petition;
(b) serve upon the petitioner a copy of such particulars;
(c) send to the Chief State Solicitor two copies of such particulars. Any such person who fails to comply with this rule shall be deemed to have abandoned his objections. No person shall be entitled to oppose the granting of the prayer of the petition on any grounds not stated in such particulars.
36. Within six weeks after presentation of the petition the petitioner shall:
(a) lodge in the Central Office an affidavit by the petitioner or his solicitor that a copy of the petition has been served on the Controller and every person who lodged notice of his intention to lodge objections;
(b) lodge in the Central Office two copies of the balance sheet of expenditure and receipts relating to the patent, which accounts are to be proved on the hearing of the petition;
(c) send two copies of the said balance sheet to the Controller.
37. The petitioner shall on receiving two days notice give to the Controller or to any person deputed by him for the purpose reasonable facilities for inspecting and making extracts from the books of accounts by reference to which it is proposed to verify the said balance sheet or from which the materials for making up the same have been derived.
38. Any person who has duly complied with rule 35 shall be entitled at his own expense to obtain from the petitioner copies of the said balance sheet.
39. After the expiration of six weeks from the presentation of the petition the petitioner shall apply to the Court by motion for directions as to the proceedings (if any) to be taken preliminary to the hearing of the petition and as to the mode of trial thereof or otherwise with reference thereto and as to the date on which the petition shall appear in the list for hearing. Notice of this motion shall be served on the Controller and on all persons who have duly complied with rule 35.
40. Upon the hearing of such motion the Court shall fix a date for the hearing of the petition and shall give such further or other directions in regard to advertisement, service or otherwise as it may deem necessary or expedient.
41. The Controller, if he elects or is directed to appear on the question of granting the prayer of the petition, shall not be required to give notice of any objection he may think fit to take.
42. The Court may in cases where opposition has been entered to the prayer of a petition give costs to or against the opponents, but in the event of the Court refusing the prayer of the petition it shall not except under special circumstances give more than one set of costs amongst all the opponents.
43. The Controller shall not be liable in, or entitled to, any costs or expenses.
44. Service of any document which may be required to be served under this part of this Order may be effected by registered post addressed to the person to be served at his address for service.
45. Every appeal to the Court from an order or decision of the Controller or from the award of an arbitrator under section 45 of the Patents Act 1964, or section 41(3) of the Copyright Act 1963, shall be made by special summons. The summons shall be served upon the Controller and upon all other persons (if any) interested.
46. The summons shall state whether the appeal is from the whole or part only, and if so what part, of the order, decision or award, and shall also state concisely the grounds of the appeal. No grounds other than those so stated shall, except with the leave of the Court to be given on such terms and conditions as may seem just, be allowed to be taken by the appellant at the hearing.
47. The summons shall be issued within one calendar month from the date of the order or decision of the Controller, or the award of the arbitrator (as the case may be) appealed against, or within such further time as the Controller may have allowed for the purpose.
48. Every such appeal to the Court shall be by way of rehearing; and, subject to the provisions of the Act, every appeal under section 25 of the Trade Marks Act 1963, shall be heard on the materials stated by the Controller to have been used by him in arriving at his decision, and every other appeal shall be heard on the same evidence as that used at the hearing before the Controller. No further evidence shall be given nor further material brought forward for the consideration of the Court on the hearing of any appeal without the special leave of the Court granted on an application made at or before the hearing; but nothing herein contained shall be deemed to prevent the submission to the Court of a statement in writing by the Controller in pursuance of section 143 of the Industrial and Commercial Property (Protection) Act 1927, section 56(2) of the Trade Marks Act 1963, or section 65(3) of the Patents Act 1964.
49. Where under section 26(10)(b) of the Trade Marks Act 1963, an applicant becomes entitled and intends to withdraw his application, he shall give notice in writing of his intention to the Controller and to the other parties (if any) to the appeal within one calendar month after the leave referred to in those sub-sections has been obtained.
VII. Other applications to the Court
50. Save as otherwise provided by the Acts or this Order every application to the Court under the Industrial and Commercial Property (Protection) Acts, 1927-1958, the Trade Marks Act 1963, the Copyright Act 1963, or the Patents Act 1964, shall be made by special summons. The summons shall be served upon the Controller and upon all other persons (if any) interested.
51. Where the Controller, under section 75 of the Industrial and Commercial Property (Protection) Act 1927, refers an application to the Court for trial, the applicant or appellant (as the case may be) shall within one calendar month from the date of such reference apply to the Court by special summons to hear and determine such application or appeal, and unless he so applies he shall be deemed to have abandoned the application or appeal.
52. A party seeking a decision of the Court on a dispute under section 130 of the Industrial and Commercial Property (Protection) Act 1927, or under section 92 of the Patents Act 1964, shall apply by special summons. Where the application is by a patentee, or by a proprietor of a registered design, the Minister, head of the Department of State concerned, shall be named as defendant, and the summons shall be served on the Chief State Solicitor. Where the application is by a Minister, the patentee or the proprietor of the registered design (as the case may be) shall be named as defendant.
53. Where the Attorney-General under section 133 of the Industrial and Commercial Property (Protection) Act 1927, or the Controller or the Minister for Industry, Trade, Commerce and Tourism under section 135 of the Industrial and Commercial Property (Protection) Act 1927, or the Controller under section 51 of the Trade Marks Act 1963, section 37 of the Copyright Act 1963, or section 72 of the Patents Act 1964, has made an order that costs be paid by any party, such order may be made a rule of Court on the application of the party to whom such costs are payable. Such application may be made ex parte grounded on an affidavit entitled in the matter of the Act and the proceedings before the Attorney-General, Controller or Minister (as the case may be).
[1] Order 94 rule 17(d) amended by SI 307 of 2013, effective 26 August 2013. This substituted “the name and address in the City of Dublin of the applicant’s solicitor” with “the name and address of the applicant’s solicitor (if any)”.
[2] Order 94 rule 18(c) amended by SI 307 of 2013, effective 26 August 2013. This deleted the words “within the jurisdiction” following “address for service”.
[3] Order 94 rule 18(d) substituted by SI 307 of 2013, effective 26 August 2013. This substituted “the name and address in the City of Dublin of the applicant’s solicitor” with “the name and address of the applicant’s solicitor (if any)”.
[4] Order 94 rule 20 amended by SI 307 of 2013, effective 26 August 2013. This deleted the words “within the jurisdiction” following “address for service”.
[5] Order 94 rule 28(d) amended by SI 307 of 2013, effective 26 August 2013. This substituted the words “an address within the jurisdiction at which he can be served with any document” with “an address for service”.
[6] Order 94 rule 28(e) substituted by SI 307 of 2013, effective 26 August 2013.
[7] Order 94 rule 13(2) substituted by SI 584 of 2019, effective 3 December 2019.