October 2021 was a big month for legal changes in the Intellectual Property arena, with numerous changes to legislation coming into effect. Most significantly, the Rules of the Superior Courts (Intellectual Property Proceedings) 2021 (S.I. 530 of 2021)Opens in new window has amended Order 63A (Commercial Proceedings) and Order 94 (Patents, Designs, Copyright), including by establishing a dedicated Intellectual Property and Technology List within the Commercial Division of the High Court.
Order 63A RSC is amended to enable a judge to assign Intellectual Property proceedings or proceedings involving issues of "technological complexity in any field of industry" to this list. This may include Intellectual Property disputes below a value of ?1 million, which is the usual threshold value for entry to the Commercial List (though not disputes with a value of less than ?75,000, which will fall to be dealt with by the Circuit Court, as outlined below). This statutory instrument applies to any proceedings commenced from 22 October 2021.
Additionally, the Circuit Court Rules (Intellectual Property) 2021 (S.I. No. 499/2021)Opens in new window (operational from 12 October 2021) extend the jurisdiction of the Circuit Court to ?75,000 in order to enable it to hear a wider range of Intellectual Property disputes of a lesser value.
These reforms give effect to recommendations which were proposed in the " Review of the Administration of Civil Justice Report" which was published in October 2020 by a team chaired by former High Court President, Mr Justice Peter Kelly.
High Court Intellectual Property Proceedings
Order 63A (Commercial Proceedings) is substituted by Schedule 1 of S.I. No 530 of 2021. Under Schedule 1, Intellectual Property proceedings are defined to include proceedings instituted, applications made or appeals lodged under a range of legislation including the Trade Marks Act 1996, the Copyright and Related Rights Act 2000, the Patents Act 1992, the Industrial Designs Act 2001, and the European Union (Protection of Trade Secrets) Regulations 2018 (S.I. 188 of 2018). Proceedings commenced to seek relief in respect of unregistered Intellectual Property rights and to prevent unfair commercial practices are also included.
There is provision for the judge in Intellectual Property and Technology List proceedings to schedule a case management conference at any time. The purpose of this case management conference is to ensure that evidence is gathered and proceedings are prepared, heard and determined in a way that is just, proportionate, expeditious and likely to minimise costs . At the case management conference, the Intellectual Property and Technology List Judge may address a range of matters relating to the conduct of the proceedings in order to ensure an efficient handling of the proceedings .
Substitution of Order 94 (Patents, Designs, Copyright)
The previous Rules of Court relating to Intellectual Property proceedings, Order 94 (Patents, Designs, Copyright), which were some 35 years old, have been substituted by Schedule 2 of S.I. No 530 of 2021. Schedule 2 makes provision for the procedure for commencing Intellectual Property proceedings . On application by a party or on the basis of its own initiative, the Court is permitted to give directions regarding preparation of a document which sets out the basic undisputed technology or can direct the appointment of an assessor to assist the Court on technical matters. There is also scope for the Court to limit inspection of any confidential information to a limited class of persons on the terms or conditions the Court considers appropriate .
Additionally, any party who seeks to establish a fact by experimental proof must serve on all other parties a notice (a) stating the facts the party seeks to establish and (b) providing full particulars of the experiments proposed . Any party receiving this notice may request an opportunity to inspect a repetition of the experiments identified in the notice. Parties must apply to the Court for permission to conduct any such experiments and for directions regarding their conduct.
For Intellectual Property disputes of a lower value, the newly-introduced Circuit Court Rules (Intellectual Property) 2021 (S.I. No. 499 of 2021) enable applications to be made to the Circuit Court for delivery up of infringing products, goods, material, copies, devices or articles, and illicit recordings, articles or devices under the Trade Marks Act 1996, the Copyright and Related Rights Act 2000, and the Industrial Designs Act 2001. Such applications may be made ex parte (ie, without notice to the opposing party) where such infringing items are believed to be in any person's possession, custody or control . Provision is also made for the procedure to be followed when commencing such claims . Under the new rules, it is now possible for the Circuit Court to hear Intellectual Property disputes valued at a maximum of ?75,000.
Matheson Comment - Impacts of these Reforms
These new High Court / Circuit Court rules are to be welcomed and should assist in making Ireland more attractive as a venue for dispute resolution relating to Intellectual Property and matters involving "technological complexity". The specialised Intellectual Property and Technology List and the provisions for directions to be made to ensure proceedings are dispensed with in a just and expeditious way should help increase efficiency in Intellectual Property proceedings in both the Circuit Court and High Court. A focus on minimising costs where possible will hopefully also reduce the cost burdens parties will face arising from the resolution of disputes. In addition, the planned specialisation of judges hearing these proceedings will facilitate additional Intellectual Property and technology expertise among the judiciary, which is likely to further enhance the efficiency of proceedings.
In terms of the new Circuit Court rules, by providing more cost effective forums in which lower value Intellectual Property claims can be resolved, these changes should similarly increase the number of Intellectual Property proceedings which are commenced in Ireland into the future. This may see more claims being commenced by SMEs, for example, which previously may not have had the appetite for what were relatively more expensive and complex court processes. Cumulatively, we expect that the changes outlined above should make Ireland a more attractive jurisdiction within which to litigate Intellectual Property disputes, big or small.
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