Patent Rights

Rights Conferred

Patents confer a number of legal rights on their owner. The rights confer and protect the economic benefits of ownership. In broad terms, the patent holder has the exclusive right to exploit and use the patent and license others to do so.

A patent while it is in force shall confer on its proprietor the right to prevent all third parties not having his consent from doing in the State all or any of the things following:

• making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for those purposes;
• using a process which is the subject-matter of the patent, or, when the third party knows, or it is obvious to a reasonable person in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, offering the process for use in the State;
• offering, putting on the market, using or importing, or stocking for those purposes, products obtained directly by a process which is the subject matter of the patent.

As with other intangible property rights, patent rights are protected principally by legal action or the threat of legal action. The patent owner can assert his rights by restraining the infringement of the patent.

Patents legislation prohibits third parties from doing the following acts, in relation to the product, the subject of the patent, without the consent of the patent holder;

• making the product
• marketing, offering for sale or using the  product;
• importing or stocking the product for the purposes of using it or offering it for sale;
• using a process protected by the patent;
• offering for sale, marketing, using, importing or stocking a product obtained directly as a result of a patented process.

The prohibition is wide and applies to manufacturers, distributors, retailers and users.

Scope of Patent

The scope and extent of the patent and the rights which it thereby confers depend on the underlying patent claim. The interpretation of the patent is a matter for the courts. The description and drawings are used to interpret the claims. The courts interpret the patent claim as an objective document rather than by reference to what the parties who prepared and registered it might have intended.

The courts may receive evidence from witnesses who are skilled in the area of interpreting the patent. The scope of the patent must be interpreted from the viewpoint of a skilled in the relevant field or discipline that the patent covers. Ultimately, the court interprets the patent itself, with the assistance of expert evidence where appropriate,  in much the same way as any contract of other legal documents.

A patent application may be amended. It must not be amended to introduce something exceeding that disclosed in the original specification.  Where it is intended to apply for an amendment, this must be advertised. Third parties may oppose the amendment if the extent of the protections impacts them.

Indirect Infringement

A patent, while it is in force, confers on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply in the State a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or it is obvious in the circumstances to a reasonable person, that the said means are suitable and intended for putting that invention into effect. This does not apply when the means referred to therein are staple commercial products, except when the third party induces the person supplied to commit acts that the proprietor of a patent is enabled to prevent.

The patent legislation contains certain provisions which assist in proof of infringement. In particular, if a patent covers a process for obtaining a new product, the product shall be presumed to have been obtained as a result of the patented process. In some circumstances where legitimate manufacturing or business secrets are involved, the court can consider evidence in the absence of the other party.

Certain categories of persons who are not involved in direct acts of infringement may be subject to legal action and restraint by the patent owner if they commit so-called “secondary” infringement. This includes knowingly supplying the means of creating an infringing product (e.g. instructions to assemble an infringing product).

Remedies

Compensatory damages and an account of profits are alternatives and cannot be granted together. An injunction is always discretionary. Under general equitable principles, it is possible to apply to the court for a temporary injunction, before the full hearing of a legal action where it is necessary to protect the critical interests of one party. This may be granted, but the applicant must usually give an undertaking in respect of damages in the event that he is unsuccessful in the ultimate trial of the matter.

An exclusive licence holder has the right to take action for infringement in the same way as the owner. The extent of his loss takes account of the extent of the rights concerned.

Where the patent renewal fees are unpaid, or a decision on the amendment of the specification is pending, the court may refuse an award of compensation unless it is satisfied that the specification as originally published was framed in good faith.

A patent lapses by failure to pay renewal fees. It may be restored, on which outstanding fees must be paid. There are restrictions on infringement proceedings during the period in which the patent has lapsed.

EU legislation provides for information disclosure orders to assist enforcement. These can be made against parties who are suspected of being involved in the infringement.

A final injunction may be granted in a patent case. The injunction is protective of the legal rights as decided in the trial of the matter. See our chapter on the grounds on which injunctions are granted by the courts, both pre-trial and at the conclusion of a full hearing.

An account of profits is effectively a forced payment to the patent owner, of the profits made by the person who has infringed the patent. It may be determined by a royalty rate equivalent to what would otherwise be commercially available had the infringer sought a licence to use the patent. .

Liability & Orders

Persons who infringe a patent are legally liable to the owner and /or a licensee or assignee of the owner for the sanctions and remedies provided by law. (see below). The current owner or an exclusive licensee may take legal action. Where an assignment or licensee of the patent has not been registered, there may be delays and practical disadvantages in the context of enforcement action.

The owner (or exclusive licensee) of a patent may apply to the court for orders to assert and protect his rights. The court may

• make an order to stop infringement;
• require products to be delivered up or destroyed;
• award monetary compensation;
• require the infringer to account for profits derives
• a declaration that the patent is valid and has been infringed

The court can appoint an assessor to assist it in determining the case.

A court may order that goods which infringe a patent be delivered to the patent owner or destroyed.. An order may be made requiring the product to be varied so as to be not infringing.

The court may order the destruction of things used in the creation and manufacture of the infringing products.

Where the patent has been infringed, the court may order the publication of the order at the defendant’s expense.

Defences

If the person infringing the patent had no reasonable grounds for believing that the patent existed, damages and an account of profits are not ordered. The onus is on the infringer to prove that he had no reasonable grounds for believing that a patent existed.

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. However, there may be other grounds which denied this defence.

Where a patent is found only partly valid, the court may make orders in relation to the part found valid and infringed.  The court may direct that the specification be amended Where the patent is challenged in court and found to be wholly or partly valid, the court may certify this fact.

Where a patent is found partly invalid, the court may make orders in relation to the part found valid damages or costs may not be awarded save that the  Court has the discretion to grant costs and damages from a later date if the claimants prove the specification was framed in good faith and with reasonable skill and knowledge. The court may direct the specification to be amended.

When infringement proceedings are brought, the defendant can challenge the validity of the patent. If the patent is found to be invalid, it can be revoked.

Where a person is doing something in the course of a business before the date of application for a patent, in good faith or is making good faith preparations to do so, he may continue to do so after the grant of the patent. The right to continue prior use may be passed on on death or continued through a partnership or a company. The prior use right is limited to the State.

The rights conferred by patents do not extend to restrict acts done privately for non-commercial and experimental purposes. Commercial purposes are prospectively wide. Things  done that may have a prospective commercial benefit may not qualify.

EU Defences

Under European Union law, if goods have been lawfully marketed and sold in one EU country, they are generally thereby in free circulation and may be circulated throughout the European Union. The holder of a patent cannot prevent the importation of products lawfully in circulation in the EU with the consent of the patent owners or other authorised persons.

The goods may have been put on the market in another EU state by a licensee who is authorised to distribute the goods in that member state by the patented holder or with his consent. The patent cannot be used to prevent the parallel importation of such goods by reason of the overriding principle of free movement of goods under EU law.

Medicinal & Veterinary

The preparation of medicine and pharmacy in an individual case in accordance with a medical prescription is exempted. Experimental purposes relating to the patent that invention may be directed at discovering something that is not known, testing a hypothesis.

Patent rights do not apply to restrict studies done to fulfil the requirements in relation to marketing and authorisation of a medicinal product for human or veterinary use. The preparation of medicines in a pharmacy in accordance with a medical prescription does not infringe the underlying patent.

There are a number of other exemptions applicable to medicinal and veterinary products. Acts done by way of necessary studies, tests and trials with a view to satisfying various pieces of EU legislation the not breach the patent concerned.

Unwarranted Threats

Whether a person, whether entitled to a patent or not, threatens another person with legal proceedings, an application may be made to the court to restrain proceedings so that the person alleging the infringement must prove that the alleged acts constitute infringement and the patent is not shown to be valid.

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 declaration to the effect that the threats complained of was unjustifiable;
• an injunction against the continuance of the threats; and
• such damages, if any, as have been sustained by him by reason of the threats.

Proceedings may not be brought under this provision 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, or 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.

Various Remedies

It is possible to apply to the court for a declaration that a particular act does not constitute an infringement. An application must first be made to the proprietor or licensee seeking an acknowledgement in writing to  this effect, which has not been accepted. The validity of a patent may not be challenged in these proceedings.

An application can be made for infringement of a published application. It must relate to something done after the date of publication and before the grant. Remedies equivalent to those mentioned above may be granted for infringement.

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 u, that a patent would be granted conferring on the proprietor of the patent protection only 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.

There are procedures for requesting Customs authorities to detain infringing items. The Authorities must be notified of the relevant details of the act. They must be given an indemnity.

Revocation of Patent

Any person may apply to court or the Controller to revoke a patent. The principal ground is that the invention is not patentable.

The validity of a patent may be put in issue by way of defence in proceedings. It can also be raised in issues relating to threats of infringement proceedings for revocation and disputes as to the rights of the State to use the invention.

Where court proceedings are pending, the application may not be made to the controller. Where an application is pending before the controller, the applicant may not apply to court unless this is agreed or the controller certifies in writing that the matter should more properly be dealt with by the court.

The grounds for revocation include the following;

• the invention was not patentable,
• the specification does not disclose an invention in a sufficiently clear and complete manner to be carried into effect by a person skilled in the art;
• the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed
• protection has been extended by an invalid amendment;
• the proprietor of the patent is not entitled to it.

In this latter case, the person must have a declaration as to his own entitlement.

Where a patent is being challenged in the European Patents Office, proceedings in Ireland may be adjourned until the matter is determined. Revocation would have an automatic effect in Ireland.

Revocation Procedure

Due process and fair procedures apply to proceedings before the controller for the revocation of a patent. Both parties are entitled to be heard. The controller may hear evidence by statutory declaration. Party may apply for an oral hearing. The controller has the power to summon witnesses and require the production of documents. Witnesses are obliged to respond in the same manner as court proceedings.

Where the application is made to the controller, the controller has the power to award costs.

The controller can revoke a patent on his own initiative. This does not by itself necessarily plans the validity of the patent as other grounds of five.

Procedures apply to proposals to revoke. He must first give the owner an opportunity to make observations and to amend the patent so as to exclude any matters which do not qualify.

If a patent under the Irish legislation and the European patent designating the state has been granted for the same priority and were filed by the same parties, the controller may give the party concerned the opportunity to make observations.

The Controller is to be given notice of court proceedings for infringement.