Types of Patents

There are two types of Irish patents available.(1) Full-term patentsThese patents allow the inventor/applicant protection for up to 20 years. For a full-term patent to be granted, the applicant must provide evidence of the invention's novelty. This can be done by requesting a "Search Report" from the Office, or by submitting evidence of novelty.(2) Short-term patentsShort-term patents are designed to assist smaller inventors. These patents can also suit inventions where a shorter market life is expected, or inventions that are not technologically complex. These patents last for a maximum of ten years, and the applicant does not need to provide evidence of the invention's novelty. This effectively reduces the costs and length of time involved in getting an invention patented.Because procedures are generally simpler, short-term patents can be granted reasonably quickly and well within 12 months from the filing date if requirements are complied with promptly. If applications are made for both a short-term patent and a full-term patent in respect of the same invention, the short-term patent will become void when the full-term patent is granted.With some exceptions, the provisions relating to full-term patent applications and patents also apply to short-term patent applications and short-term patents. The main exceptions are:(i) The specification of a short-term patent application must not include more than five claims. The requirements of novelty and industrial applicability apply but instead of non-obviousness, it is sufficient that the invention be "not clearly lacking an inventive step". Neither a search report nor evidence of novelty in the form of a foreign patent specification is required in order that a short-term patent be granted.(ii) The filing fee, grant fee and renewal fees are only 50% of those for a full-term patent; and generally the procedures are simpler. This will be of particular interest to small enterprises and single inventors.(iii) Infringement proceedings can be brought in the Circuit Court (or in the High Court, as is required for full-term patents) irrespective of the amount of a claim.(iv) Before taking an action for infringement the owner of the short-term patent must either (a) request the Controller to have a search report prepared and send a copy of the report to the alleged infringer or (b) if a foreign search report or patent specification is available, furnish copies of such reports to the Controller as well as the alleged infringer. The reports referred to at (a) or (b) are published by the Controller.(v) A person other than the owner of the short-term patent whose legitimate business interests require a novelty search and who can show grounds for suspecting that the invention lacks novelty or is clearly lacking in inventive step may also request theController to have a search report prepared. Such a search report is published by the Controller.

What is a Patent ?

A patent confers upon its holder, for a limited period, the right to exclude others from exploiting (making, using, selling, importing) the patented invention, except with the consent of the owner of the patent.A patent is a form of 'industrial property', which can be assigned, transferred, licensed or used by the owner.Patents are territorial, in effect e.g. an Irish patent is only valid in Ireland.How long does a patent last?Irish patents, in common with most jurisdictions, have a maximum life span of twenty years. Ireland also offers a "short-term" patent, valid for a maximum of ten years. To maintain a patent in force, annual renewal fees must be paid each year from the third year.Patent pendingThis is a term often used on products to alert competitors that an application has been made to protect the invention.

Disputes regarding the payment of royalties in the area of public performance of sound recordings

Under the legislation persons playing sound recordings in public or including a sound recording in a broadcast or cable programme service must agree to make payments in respect of such playing or inclusion in a broadcast to each licensing body concerned and comply with the requirements of the legislation.Where the person intending to play sound recording in public or to include sound recordings in a broadcast or cable programme service and the licensing body fail to reach agreement as to the payment due, the terms of the proposed agreement may be referred to the Controller for the determination of the amount and terms of payment. It should be noted that in cases where an application has been made to the Controller to determine a dispute, that the party playing sound recordings must pay to the licensing body such amount as he or she considers reasonable and must notify the licensing body and the Controller of his or her intention to do so.No statutory rules have yet been made setting out the procedures to be followed relating to such disputes. In the interim, the application to the Controller for a determination, should contain a statement of case setting out the precise nature of the dispute and any other relevant information.

Disputes regarding the payment of royalties in the area of public performance of sound recordings

Under the legislation persons playing sound recordings in public or including a sound recording in a broadcast or cable programme service must agree to make payments in respect of such playing or inclusion in a broadcast to each licensing body concerned and comply with the requirements of the legislation.Where the person intending to play sound recording in public or to include sound recordings in a broadcast or cable programme service and the licensing body fail to reach agreement as to the payment due, the terms of the proposed agreement may be referred to the Controller for the determination of the amount and terms of payment. It should be noted that in cases where an application has been made to the Controller to determine a dispute, that the party playing sound recordings must pay to the licensing body such amount as he or she considers reasonable and must notify the licensing body and the Controller of his or her intention to do so.No statutory rules have yet been made setting out the procedures to be followed relating to such disputes. In the interim, the application to the Controller for a determination, should contain a statement of case setting out the precise nature of the dispute and any other relevant information.

References and applications relating to licensing schemes

Copyright licensing societies -also known as collective management organisations - acting on behalf of their members have as their main objective the negotiating or granting of copyright licences which authorise the terms of use of a work of more than one copyright owner. In broad terms, the principle role of the Controller as laid down in the Copyright and Related Rights Act, 2000 (No. 28 of 2000) is to decide, where the parties cannot agree between themselves, the terms and conditions of licences offered by, or licensing schemes operated by, collective licensing bodies in the copyright and related rights area. In addition, the terms of a licensing scheme proposed to be operated by a licensing body may be referred to the Controller for determination, by an organisation which claims to be representative of persons who claim that they require licences. Furthermore, anyone who considers that they have unreasonably been refused a licence by a collecting society or considers the terms of an offered licence to be unreasonable may refer the matter to the Controller.The Controller's statutory responsibilities in relation to references and applications relating to copyright licensing schemes are set out in Chapter 16 of the Copyright and Related Rights Act 2000 and in particular in Sections 149 to 166.

Search Report/Evidence of Novelty

For a Full-term patent to be granted, the novelty and non-obviousness of the invention must be established. There are two ways of achieving this; by means of a Search Report, or the provision of Evidence of Novelty.Search ReportA Search Report has to be requested by the applicant to determine the novelty and non-obviousness of the invention of the patent application. An applicant must request it within twenty-one months of the application's filing date or the priority date, if priority was claimed. Otherwise, the application will be refused. The Controller, upon receipt of this request accompanied by the prescribed fee, will have a Search Report on the invention prepared.A Search Report will list published documents considered relevant in assessing whether the claimed invention is new and not an obvious development or adaptation of what is already known. A copy of the Search Report will be issued to the applicant.Unless the patent application is withdrawn within two months of issue of the Report to the applicant, the Report is then published by the Controller; i.e. this means that anyone can view the Search Report. Withdrawal of the application might arise where the applicant, in the light of the Search Report, concluded that there was no point in taking the patent application further. If the patent application is not withdrawn the patent agent acting for the applicant will be required either to make amendments to the application based on the Search Report or provide a statement that no amendment is considered necessary. Failure to comply with these requirements may lead to the refusal of the application.Evidence of NoveltyThere is an alternative to requesting the preparation by the Controller of a Search Report. An applicant who has also applied for a patent for the same invention to the United Kingdom, German or European Patent Offices, or who has applied under the Patent Co-operation Treaty, can submit a statement to that effect; the statement must be submitted within the twenty-one months of the application's filing date or the priority date, claimed. In this situation, a copy of the Search Report prepared in respect of the foreign application, or a copy of the published specification of the patent granted by either the UK or German or the European Patent Office may be submitted to the Controller as evidence of Novelty and must be produced by the applicant within two months of the publication of the search report or grant of the patent, accompanied by the prescribed fee.Evidence of Novelty will be published unless the application is withdrawn.If the application is not withdrawn the patent agent acting for the applicant will be required either to amend the application in the light of the Search Report or the patent specification (whichever applies in the particular case) or to furnish a statement that no amendment is considered necessary. Failure to comply with this requirement may lead to the refusal of the application.(The procedures relating to the search report/evidence of novelty do not apply to applications for short-term patents)