Business brief 2012: Ireland
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
Ireland is party to the European Patent Convention and Patent Cooperation Treaty. Irish patents may be obtained nationally through the Irish Patents Office (IPO), or regionally as a European Patent designating Ireland.
In Ireland, regular (long-term) patents and shortterm patents are available. The maximum lifetime of a regular patent is 20 years, which is reduced to 10 years for short-term patents. Short-term patents are not subject to a novelty search before grant.
Ultimately, the decision on proceeding nationally or internationally is a commercial choice.
What are the costs of obtaining and defending a patent?
Costs for a regular Irish patent include a filing fee of €125 ($166), a search fee of €200 ($266) and a grant fee of €64 ($85). These fees are halved for short-term Irish patents. Professional fees, including drafting charges, are generally charged on an hourly basis.
IP litigation is not cheap and costs depend on the complexity of the case. In the Commercial Court typical costs for defending a revocation action can be in the region of €600,000 ($800,000) or more.
Where can you find information on existing patents in your jurisdiction?
Databases covering patents, special protection certificates (SPCs), designs and trademarks are available at www.patentsoffice.ie.
What are the most common mistakes businesses make?
One of the most common mistakes is to disclose an invention before a patent application has been filed. In addition, filing a patent application too early before an invention is fully enabled will give rise to problems during prosecution. Your patent attorney will be able to advise on this matter.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Patent owners must be active in monitoring third party activities and taking action when needed. Cease and desist letters may be sent to potential infringers before taking full legal action, although care must be taken to ensure these do not involve groundless threats. The usual patent remedies, (damages, delivery up, etc) are available to patent proprietors. Pre-trial interlocutory injunctions are also available.
Have there been any changes to the patent law(s) in the last 12 months?
Ireland is expected to ratify the London Agreement in 2012. This is good news for European Patent owners, as it will reduce translation costs associated with validation of a European Patent in Ireland.
Trademarks
How do you register or secure trademark rights, and what protection do they grant?
Trademark rights derive both from use and registration. Registered trademark rights in Ireland can be obtained by filing an application with the IPO or filing a Community trademark application with the Office for Harmonization for the Internal Market (OHIM).
“Cease and desist letters may be sent to potential infringers before taking full legal action, although care must be taken to ensure these do not involve groundless threats.”
Registration of a trademark gives the owner a statutory monopoly. If a competitor uses the same, or a similar, mark on the same, or similar, goods, the owner of a registered trademark can sue for infringement. Trademark rights can also be secured through use of the mark, where the owner can establish sufficient goodwill and reputation.
Ireland is party to the Madrid Protocol and can also be designated as part of an international trademark registration.
What are the costs of registering and defending a trademark?
The IPO charges €70 ($93) per class with registration fees of €177 ($236). OHIM charges €900 ($1,200) for up to three classes. Professional fees are generally charged as a fixed fee.
The costs for enforcing a trademark registration through the courts are high and full court proceedings may cost €300,000 ($400,000) and above. As an initial enforcement measure, cease and desist letters are common.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
The key threat to trademark owners relates to unauthorised use and, increasingly, online infringement is an issue for many companies. Obtaining a trademark registration in Ireland or in Europe helps prevent unauthorised use. Once a registration is in place, cease and desist letters are an expeditious and low-cost method of challenging infringement. If unsuccessful, an action for passing off or infringement through the courts can be considered.
What are the most common mistakes trademark owners make?
Failure to use a trademark in Ireland for a period of five years could lead to the invalidation of the registration if an action is brought by a third party. Trademark owners should store evidence of use of their marks.
Failure to communicate with IP attorneys regarding new brands, products and/or trading territories can lead to gaps in protection.
Have there been any changes to the trademark law in the last 12 months?
There was a consultation process and the practice in relation to honest concurrent use has changed. For more information please contact our offices.
Counterfeiting
How big a problem is counterfeiting in your jurisdiction?
Counterfeiting is an issue that affects many companies within Ireland.
What industries are particularly under threat?
A broad range of industries, but in particular the clothing, perfumery and electronics industries.
What are the best strategies for dealing with the problem?
Filing a customs application with Irish customs or an EU customs application can prevent the counterfeit goods from entering the country. Once an application is in place, customs can detain all suspected counterfeit goods and these goods can potentially be destroyed.
Copyright
What are the key challenges to copyright holders in your jurisdiction?
Unlike other IP rights, copyright is an unregistered right. Copyright is not an exclusive right, it protects only against direct copying. The crucial issue and challenge for copyright owners relates to proving that a substantial part of the work has been taken.
How should people ensure they are protected against copyright infringement?
It is not necessary to register copyright in a work in Ireland as copyright subsists automatically. A copyright notice is not required. It is recommended that notification that copyright subsists be given.
What is the best way to deal with infringement, and what are the costs associated with it?
Cease and desist letters may be sent to potential infringers before taking full legal action. Typical costs in the Commercial Court range from €250,000 ($333,000) upwards.
Have there been any changes to the copyright law(s) in the last 12 months?
On February 29, 2012, Ireland passed new legislation that allows copyright holders to force Internet providers to block ‘pirate’ websites. In addition, in 2012 the Irish government will commence a review of Ireland’s copyright legislation.
General
Are there any legislative changes to the IP regime that would make life easier for businesses?
The Commercial Court, with specialist IP judges, has been in operation since 2004. This has assisted greatly in offering a fast (typically six to nine months until a final decision) and effective means of litigating IP matters.
