Termination

Table of Contents

Period

A patent may continue for twenty years, provided the renewal date fees are paid. Under the older legislation, the period of protection was 16 years.

It runs from the date the complete specification is filed. This accords with the international period of protection of a patent. There are various bases on which it may lapse or be revoked within this period.

Renewal Fees

Renewal fees are payable annually after the third year. The fees are prescribed by law. The Controller issues a renewal certificate upon payment.

Renewal fees must generally be paid within four months. An extension for payment of up to six months may be granted, provided the necessary extension fees are paid.

The court may refuse to award damages or grant an order for infringement before renewal fees are paid.

For an Irish grant, they are paid to the Irish intellectual property office. For a European patent which designates Ireland, they are paid to the European Patent Office from the third year.

Restoration

Where a patent has lapsed by failure to pay the renewal fees, an application may be made to restore it within three years of lapse. If the Controller is satisfied that the lapse was unintentional or that no undue delay has ensued in making the application to restore, an order may be made for restoration. The application may be made by the patent holder or its successor.

If the Controller does not believe there is a prima facie case for restoration, it must inform the holder, who in turn may request a hearing. If there is a prima facie case, the application is advertised. There is a two-month period in which an opposition procedure can be taken by a third party. The applicant may file a counterstatement opposing the grounds of opposition.

If the Controller decides to allow an application for restoration, he shall, upon payment of any unpaid renewal fee and of such additional fee as may be prescribed, make a restoration order in accordance with the application.

Order for Restoration

An order for the restoration of a patent may be made subject to such conditions as the Controller thinks fit, including, in particular, a condition requiring the entry in the register of any matter in respect of which the requirements as to entries in the register has not complied.

If any condition to which an order is subject is not complied with by the proprietor of the patent, the Controller may revoke the order and give such directions consequential on
the revocation as he thinks fit.

Conditions may be imposed to protect those who have relied, in good faith, on the non-lapsing of the patent. Persons who have done in good faith what would otherwise be an infringement may continue to act and have a defence to infringement. These are the personal rights of the person concerned that may not be assigned or licensed.

Revocation

An action for revocation of a patent may be taken before the High Court or the Controller of Patents. If proceedings are already pending in the High Court, an application to the Controller may only be taken with the consent of the High Court. The Court may grant a stay (suspension) in an action for infringement for this purpose.

If a patent is being opposed at the European Patent Office, the High Court may grant a stay. The court has the discretion to grant a stay and it may do so to prevent duplication of issues.

If an application for revocation is pending before the Controller, an application may only be made to Court if the controller certifies that the question is one which should properly be determined by the High Court.

Grounds for Revocation

There are a number of grounds upon which a patent may be challenged. The principal basis of the challenge is that the subject matter of the patent is not capable of being patented. The grounds of non-patentability are that the subject matter is not novel, lacks an inventive step, is not capable of industrial application or is unlawful.

A patent may be challenged on the basis that the owner is not entitled to the patent. This ground is open only to a person who has been determined to be entitled.

The Controller may seek revocation based on an earlier patent application or another application or patent with earlier priority. Double patenting may arise where there is an EPO and national patent for the same matter.

A patent may be revoked if it is not described in a manner that is sufficiently clear and complete so as to allow it to be carried into effect by a person skilled in the art. An amendment to a patent specification which has expanded its subject matter may itself be challenged as invalid. The patent may be amended on the application or may be wholly revoked. An amendment may be allowed.

Proceedings

The applicant seeking revocation bears the burden of proof. If the Controller initiates revocation, the owner must be notified and given the opportunity to make observations and amend the patent. The patentability of a patent may be raised in defence to infringement proceedings, as well as other proceedings in which patents arise. The Controller may award costs in applications for revocation.

In proceedings before the Controller, persons who have an interest are entitled to be heard. Proceedings will be by way of documentary evidence and statutory declaration. The Controller may also summons and examine a witness and require the production of documents. Witnesses may be asked questions under oath. The same obligations, immunities and privileges apply.

An application may be made by a third party to the court to revoke a patent on the basis that the holder is not entitled to it. This may be done only by a person who has obtained a court declaration as to his or her own entitlement. This must be done within two years unless the purported patent was aware that he was not entitled to the grant.

A patent may be revoked in whole or in part. The court may allow the person making the application to apply for a patent to be deemed effective from the date of the original patent application.

Forum

If a patent is being opposed at the European Patent Office, the High Court may grant a stay. The court has the discretion to grant a stay and it may do so in order to prevent duplication of issues. If an application for revocation is pending before the Controller, an application may only be made to Court if the controller certifies that the question is one which should properly be determined by the High Court.

Effect on Licences

If a patent is revoked, a licence which depends on it will lapse. Where there is a change of ownership, licences and rights granted beforehand terminate from the date of registration of the new owners. Previous owners and licensees who act in good faith, perform proceedings or prepare to use the patent may continue to use it on a nonexclusive basis.

They may request a grant of a new licence within two months or, in the case of a licensee, within four months of being notified of the court order. The above provision regarding change of ownership and licensees applies. If the court order changes, the Controller settles the terms of the license in the absence of agreement.