OPENING OF THE SYMPOSIUM AND WELCOMING ADDRESS
Dermot DOYLE - Controller, Irish Patents Office
Good morning and welcome to my home city of Dublin.
Dublin is like many other cities in that it is split by a river, in this case the river Liffey.
The Liffey divides the northside from the southside, which we are on, and provides not just a physical separation, but also a perceived cultural divide. The stereotypical Southsider is cultured and refined with their northside neighbours less so. We make fun of Northsiders and one of the more humourous jokes is "What do you call a Northsider wearing a shirt, a tie and a suit?" The answer is "the defendant".
I am a Northsider in a shirt, tie and suit, so please forgive me for being nervous standing before so many judges.
On behalf of the Irish Patents Office, I am pleased and honoured to have this opportunity to address this, the European Patent Judges' Symposium.
I have chosen to talk about patents and the patents system in Ireland because it was brought to my attention that some of you attending this symposium had expressed an interest in knowing about the level of patenting activity in Ireland and whether our system for processing and granting patent applications was similar or different to that of the UK.
Let me begin with some historical background by way of illustrating how the close and long association in terms of governance and law between Ireland and England has played a role in the development of the Irish patents system.
Prior to English rule, Ireland had its own indigenous system of law (The Brehon Laws) dating from Celtic times, which survived until the 17th century when it was finally supplanted by the English common law system. English law applied in Ireland up until the establishment of the Irish Free State in 1922.
Prior to 1852, it was necessary for Irish inventors to embark on a cumbersome, convoluted and expensive process in order to obtain the grant of a letters patent from the Crown. For an Irish application, a petition had to be drafted, setting forth the title of the invention and stating that the petitioner was the inventor. It also had to be accompanied by a declaration made before a Master in Chancery verifying the information. The petition and declaration were transmitted to the Lord Lieutenant, who referred it to the Attorney General for Ireland, both of whom were based here in Dublin Castle - the centre of British rule in Ireland until independence. If there was no opposition, the application was sent to London where a warrant was made, with a copy of the petition for the Kings signature. Following a number of further stages, again involving the King's signature, it was returned to Dublin Castle to have the Great Seal of Ireland affixed to it. Few applications were made largely due to the substantial costs involved and the 6 months it took for the process - this was considered prohibitive in 1850, but clearly would represent a much accelerated process in today's world!
Concerns about this procedure were reflected in a report written by one Dr. J. A. Lawson which was published in Dublin in 1851 and called for the establishment of a single patent office for the United Kingdom. His recommendation was swiftly acted upon by the English authorities and the Patent Amendment Act of 1852 abolished Irish patents and provided for the establishment of the UK Patents Office. It also provided for the publication of a single United Kingdom patent, thereby replacing the issuing of separate patents for each nation of the Union.
The effect of this Act was to dramatically increase the number of patents protected in Ireland (from 60, of which only 3 were from Irish residents in 1850, to some 21 000 in force in 1862). A further UK Patents Act of 1883 introduced a limited form of examination of patents by patent examiners; mainly to ensure that the specification described the invention properly, but without any investigation into novelty - the novelty requirement was not expressly provided for until the UK Patents Act of 1902.
The creation of the Irish Free State (Saorstat Eireann) in 1922 caused something of a lacuna for several years as far as patents (and indeed other IP rights) were concerned. The new state took over the laws of the UK insofar as they applied to Ireland and these continued in force as long as they were not inconsistent with the Constitution or until they were repealed or amended by the Irish Parliament (the Oireachtas). It was not until 1927 that the first Irish IP statute - the Industrial and Commercial Property Act - formally repealed all the previous UK Acts concerning patents, designs, trade marks and copyright.
While the 1927 Act provided for the establishment of an independent Irish Patents Office, it recognised that it was not practicable for the Office to take on, in the early stages at least, the same degree of examination as had been carried out by the UK Office. The solution was to require an applicant to provide prima facia evidence of novelty in the form of an accepted equivalent British (UK) patent application. UK patents dated before 1 October 1927 could be extended to the Irish Free State subject to the payment of renewal fees and the filing of a certified copy of the relevant entries in the UK Patents Register. During the period from 1927 to 1964 approximately 25 000 patent applications were received with approximately 55% being granted.
The next review of patent legislation in Ireland resulted in the 1964 Patents Act - this had many similarities with the UK Patents Act of 1949 - however, there were also some notable differences. The 1964 Act introduced the idea of universal novelty for the first time, replacing the old concept that an invention was novel if it had not been published in the State - this allowed Ireland to conform with the Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention. The 1964 Act also took account of the fact that it was not feasible for the Irish Office to make a novelty search on all applications and so the Act provided that different forms of evidence of novelty could be accepted. These included search results from the UK Office or the Institut International des Brevets in The Hague.
Copies of granted patent specifications from either the UK or German offices could also be used to satisfy the novelty requirement.
During the period from 1964 to 1992, the number of filings rose steadily, reaching a peak of just under 5 000 in 1990. However, after 1992, national filings began to reduce substantially as a consequence of Ireland's ratification of the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT). The 1992 Patents Act provided for ratification of these two agreements and also updated Irish patent law so that it was brought into line with the laws applying in other European countries, especially our EU partners.
Unlike the 1964 Act, there is no definition of novelty in the 1992 Act - instead, the Act closely follows the EPC in setting out a series of criteria for what is patentable. There is no longer an opposition period and the term of a patent was increased from 16 to 20 years with no provision for an extended term. As in the 1964 Act, the provision for allowing an applicant to provide evidence of novelty was extended to include EP and PCT search reports and EP granted patents. There continues to be limited, rather than substantive, examination of patent applications with the onus being put on the applicant to comply with substantive issues such as incomplete disclosure, lack of novelty, etc. Failure to do so can lead to the emergence of good grounds for revocation of the patent by the Court or the Controller. A novel feature of the 1992 Act was the introduction of the concept of a short-term patent with a 10-year term. This patent is very similar to a utility model and is aimed at the smaller, independent inventor and for less technologically complex inventions. No search report is required and there is no obligation to submit evidence of patentability as in the case of standard 20-year patents. Consequently it is not costly and can be granted quickly. However, in order to enforce a short-term patent against third parties by way of an action for infringement, the proprietor must first obtain a prior art search from the Office - the results of this are provided to both the proprietor and the alleged infringer.
It is true to say that, prior to the 1992 Act, much of Irish patent law had been based on the UK patent statutes, and the decisions of the UK courts in patent matters were therefore of considerable persuasive value in Irish case law. Whilst this continues to be the position, Section 129 of the Patents Act of 1992 allows for a broader perspective by specifically providing that judicial notice and notice by the Controller shall be taken of the EPC and the PCT, including the decisions and opinions of the EPO Enlarged Board of Appeal on any question concerning the EPC. Additionally, Irish courts will consider judgements emanating from other jurisdictions on points which have not been ruled on in Ireland and are also amenable to hearing the outcome of proceedings in other Contracting States.
Since the 1992 Act came into force, very few patent cases have been heard in Ireland and those that are begun are often settled before trial. Prior to the 1992 Act, the majority of High Court proceedings under the Patents Act 1964 were concerned with applications to extend the term of a patent beyond the then standard period of 16 years. These proceedings more often than not related to pharmaceutical patents where the proprietors sought a longer period of patent protection to compensate for the lengthy delay in obtaining regulatory authorisation to put these products on the market.
Although the 1992 Act increased the length of the patent term to 20 years, it also repealed the provisions allowing proprietors to extend the term of a patent.
However, in January 1993, Ireland also ratified an EU Regulation providing for a Supplementary Protection Certificate (SPC) for Medicinal Products. Under this regulation, pharmaceutical companies can extend the patent term in respect of a medicinal product so as to be able to obtain an overall maximum term of fifteen years from the time that medicinal product first obtained an authorisation to be placed on the market anywhere within the EU. Because it can provide a patent term extension of up to a maximum of five years, the SPC has become an extremely valuable, commercial IP right across the EU, i.e. it prolongs the exclusive protection for a medicinal product at a time in the product's lifecycle when significant profits can be achieved.
I mention SPCs because it is an area of patent law which is currently evolving at a very rapid rate. SPC filings are extremely high by international standards, with 1 SPC application for every 12 standard patent filings, compared to 1 SPC per 1 000 patent filings in the German office. Despite smaller application numbers, SPC cases have been responsible for a disproportionately large number of court referrals both at national level and, increasingly, before the Court of Justice of the European Union (CJEU) - this further serves to highlight their commercial value for pharmaceutical companies. Over the past ten years, most of the patent hearings in the Irish office have been concerned with SPC issues - one of these cases resulted in an appeal to the Commercial Division of the Irish High Court. I am happy to report that in this instance the Court upheld the decision of the Controller!
Finally, I will conclude with a few words on patent activity in Ireland today and the latest developments in our patent legislation.
I have already alluded to the considerable reduction in national patent applications which followed Ireland's ratification of the EPC. In the last decade the number of national applications has averaged 998 per annum. Applications have sharply declined year-on-year since 2008 - indicating that the economic downturn continues to impact on investment in innovation, particularly amongst smaller enterprises.
However, the picture is not altogether bleak, as increases in the number of patent applications (for European, PCT, UK and US patents) by Irish-resident companies indicates that export-orientated companies are widening their market reach, expanding into new international markets, opening up new businesses and becoming more competitive and innovative. This is a positive development and reflects the return to export-led growth evident over the last year or so.
Whilst the 1992 Act remains the basis of Irish patent law, it has been amended to ensure that Ireland's legislation is harmonised internationally in order to encourage innovation and technological advancement incorporating the best practice of successful patent administration systems. For example, the Act was amended by the Patents (Amendment) Act of 2006 - mainly in order to give effect to the revision of the EPC, to ensure compatibility with the TRIPS agreement in the area of compulsory licensing and to give effect to the Patent Law Treaty adopted in Geneva in June 2000.
I am also pleased to announce that the Ministerial Order commencing the Patents (Amendment) Act 2012 was signed on the 2nd September (yes Ministers do work on Sundays) thereby giving effect to the London Agreement and providing for simplified translation requirements for European patents and reducing costs for patent applicants.
Looking ahead, we are anxious that further amendments to our patent law will be aimed at adapting it to the requirements of an increasingly innovative 21st century global economy so as to ensure that Ireland is not at a competitive disadvantage vis-à-vis our national patent system and those of our global competitors.
Thank you for your attention and let me wish you all an enjoyable and interesting symposium.