October 2021 has seen the most significant ever changes in how the Irish Courts will deal with IP and technology disputes. These welcome changes aim to ensure that such disputes are dealt with as efficiently, expeditiously and as cost effectively as possible. These changes herald a new era for the resolution of IP and technology disputes in this jurisdiction.
The Intellectual Property and Technology List
The Commercial Court will now have a separate Intellectual Property and Technology List 1 with a number of key new features:
- An expanded definition of the types of IP disputes that may fall within the definition of commercial proceedings, be admitted to the list and thereafter be case managed by a dedicated IP Judge. These include disputes concerning statutory IP rights, unregistered rights, passing off, unfair commercial practices, right of confidence in information and two catch all's where it is considered the proceedings are sufficiently concerned or connected to IP proceedings or involve issues of technological complexity.
- Additional pre-trial procedures including a case management
conference after the close of pleadings to ensure that each of the
manner in which the proceedings are prepared for trial, the manner
in which evidence to be presented at trial is identified and
gathered and the manner in which the proceedings are to be heard
are just and proportionate in the circumstances as well as
sufficiently cost effective and timely. At the case management
conference the IP Judge will address matters including:
- whether discovery of any documents or an inspection or experience is necessary;
- the need for further particulars, expert evidence, a modular trial or an assessor;
- whether evidence is heard on affidavit and whether it is to be determined without discovery or with limited discovery; and
- the preparation of a document setting out basic undisputed technology.
- The new rules also confer a broader discretion on the court to limit discovery obligations for parties to ensure that discovery is ordered where it is necessary to resolve the actual technical issues in dispute and where it is proportionate, given that, in particular, IP disputes, such as patent disputes, are primarily determined based on expert evidence.
The specialised Intellectual Property and Technology List will not only increase the overall efficiency of such proceedings but will also allow for greater judicial expertise with the appointment of a dedicated "Intellectual Property and Technology List Judge" who will hear and manage these disputes.
The Circuit Court as an IP Court
The Circuit Court Rules have been amended to extend its jurisdiction to a range of IP disputes to access 2. The Circuit Court's jurisdiction is for claims up to €75,000. This addresses the concerns of smaller organisations who may have considered they were unable to enforce and defend their IP rights due to the expense of pursuing those disputes in the Commercial Court. The new rules address the following:
- the particulars to be followed in terms of the form of pleadings to include the nature and extent of the IP right relied upon and the nature and extent of the alleged infringements of any IP right;
- the procedure for an application for delivery up of infringing articles, copies or devices; and
- the procedure for an application for erasure, removal or obliteration of offending sign or for forfeiture or disposal with respect to infringing articles, copies or devices.
Why is this happening?
A number of these changes implement recommendations made in the "Review of the Administration of Civil Justice Report" published in October 2020 and chaired by former President of the High Court, Mr. Justice Peter Kelly. The changes also reflect the intention of the Courts Service and legal practitioners involved in IP disputes to ensure that the civil procedural rules reflect the particular nature of IP disputes and provide an effective process and remedies for rights holders.
What does this mean?
The procedural changes along with Ireland being the only remaining exclusively common law jurisdiction in the EU, further cements this jurisdiction as an attractive forum to pursue and defend intellectual property and technology rights.
1. Rules of the Superior Courts (Intellectual Property Proceedings) – S.I. No. 530 of 2021
2. Circuit Court Rules (Intellectual Property) 2021 – S.I. No. 499 of 2021
This article contains a general summary of developments and is not a complete or definitive statement of the law. Specific legal advice should be obtained where appropriate.