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The establishment of the new subdivision of the Irish Commercial Court means that there is now a dedicated list to hear and determine intellectual property disputes and disputes concerning complex technology. Specialised rules which came into operation on 22 October 2021 will see intellectual property disputes including those concerning patents and Supplementary Protection Certificates (SPCs) assigned to the Intellectual Property and Technology List.

The introduction of a specialised intellectual property list follows the publication of a review on the Irish justice system. The review group noted the importance of a specialist division to ensure that “the courts of Ireland remain an attractive forum for parties seeking to resolve such disputes in as timely and cost-effective manner as possible.”[1]

A new dawn

The key developments relate to jurisdiction, case management and discovery.

The jurisdiction of the new IP division has been revised. Intellectual property proceedings are now more broadly defined to align with legislative developments, and contain an expanded list of legislative provisions, instruments and unregistered rights that can be relied on when issuing proceedings.

Case management conferences will be held before an Intellectual Property and Technology List Judge, with the court addressing matters that are unique to patent and SPC proceedings. Examples include whether any inspection or experiments are necessary, or whether the appointment of an assessor is necessary.

There are specialised rules that provide that discovery will only be ordered where it is necessary to resolve the actual technical issues in dispute and where it is proportionate. Of specific interest, where a patentee relies upon the commercial success of a patent in proceedings concerned with its validity, unless the Court orders otherwise, for special reasons set out by it, it shall not be necessary for the patentee to make discovery of categories of documents related to the issue of commercial success. This rule will only apply where the patentee has offered to deliver within a reasonable time the details set out in a prescribed schedule to the rules.

Conclusion - Benefit of expertise

The establishment of the new Intellectual Property and Information Technology division of the High Court will be welcome news to many life sciences companies as patent disputes will now benefit from a bespoke case management procedure.

Apart from the benefits of efficient disposal of patent and SPC issues, it should result in the development of more judicial expertise with the appointment of an Intellectual Property and Technology List Judge to deal with intellectual property proceedings. The Irish Courts Services have confirmed that the judges to be assigned to that list will be experienced intellectual property trial lawyers.

For more information, contact a member of our Intellectual Property Team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.


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