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Order 94 - Intellectual Property

Order 94[1]

I. General

1. This Order applies to all intellectual property proceedings including those which relate to–

(1) registered intellectual property rights including – 

(a) patents;

(b) registered designs; and

(c) registered trade marks;

(d) plant breeders rights; and

(e) Community plant variety rights;

(2) unregistered intellectual property rights including –

(a) copyright;

(b) design rights;

(c) the right to prevent passing off;

(d) moral rights;

(e) database rights;

(f) unauthorised decryption rights;

(g) topography rights in semiconductor products;

(h) hallmarks;

(i) the right of confidence in commercial information, including trade secrets; and

(j) rights in protected designations of origin, protected geographic indications and traditional speciality guarantees.

2. In this Order –

the “1992 Act” means the Patents Act 1992;

the “1996 Act” means the Trade Marks Act 1996;

the “2000 Act” means the Copyright and Related Rights Act 2000;

the “2001 Act” means the Industrial Designs Act 2001;

the “Acts” means the 1992 Act, 1996 Act, 2000 Act and 2001 Act;

the “EU (Protection of Trade Secrets) Regulations” means the European Union (Protection of Trade Secrets) Regulations (SI 188 of 2018);

“European Patent Convention” means the Convention on the Grant of European Patents of 5th October 1973 as amended from time to time;

“Community Design Court” means the High Court;

the “Controller” means the Controller of Intellectual Property;

the “Journal” means the Journal published pursuant to section 100 of the 1992 Act;

“patent” means a patent under the 1992 Act or a supplementary protection certificate granted by the Intellectual Property Office of Ireland under Article 10(1) of Council Regulation (EC) No. 469/2009 or of Regulation (EC) No. 1610/96 of the European Parliament and the Council and includes any application for a patent or supplementary protection certificate;

“register” means whichever of the following registers or successor register as is appropriate–

(i) the register of patents maintained by the Controller under section 84 of the 1992Act;

(ii) the register of designs maintained by the Controller under section 30 of the 2001Act;

(iii) the register of trade marks maintained by the Controller under section 66 of the 1996 Act;

(iv) the register of European trade marks maintained by the European Union Intellectual Property Office under Article 111 of Council Regulation (EC) 2017/1001;

(v) the register of Community designs maintained by the European Union Intellectual Property Office under Article 72 of Council Regulation (EC) No. 6/2002;

(vi) the register of plant breeders’ rights maintained by the Controller under section 20 of the Plant Varieties (Proprietary Rights) Act 1980; and

(vii) the register of Community plant variety rights maintained by the Community Plant Variety Rights Office under Article 87 of Council Regulation (EC) No. 2100/94;

“right” means one of the rights specified in rule 1(1) and (2), unless the context or subject matter otherwise requires. 

3.(1) Where any order of the Court affects the validity of an entry in a register, the party in whose favour the order is made must serve a copy of such order on the relevant office within 14 days or such other period as the Court may direct.

(2) Where the order affects more than one party, a copy of the order must be served by such party as the Court directs.

4. This Order shall apply mutatis mutandis to any European Union instrument or enactment other than those mentioned in rule 2 which confers any intellectual property right. Initiating Proceedings

5. Intellectual property proceedings must be initiated by:

(a) a plenary summons or counterclaim in actions which relate to an alleged infringement or breach of a right;

(b) a plenary summons or counterclaim in actions which relate to the alleged invalidity of a right or the entitlement to a right;

(c) a special summons in actions solely seeking amendment or rectification in respect of a right;

(d) a special summons in appeals from decisions of the Controller.

6. In the case of proceedings concerning rights which are entered on a register, the summons or counterclaim must state the registration number of the intellectual property right to which the proceedings relate. Other applications

7. Save as otherwise provided by the Acts or by this Order, every application to the Court in intellectual property proceedings shall be made by special summons. The summons shall be served upon the Controller and upon all other persons (if any) interested.

8.(1) A party seeking a decision of the Court on a dispute under section 77 of the 1992 Act or section 86 of the 2001 Act (other than where validity of the patent or registered design is put in issue, or its revocation is sought by the relevant Minister), shall apply by special summons.

(2) Where the application is by a patentee, or by a proprietor of a registered design, the Minister, head of the Department of State concerned, shall be named as defendant, and the summons shall be served on the Chief State Solicitor.

(3) Where the application is by a Minister, the patentee or the proprietor of the registered design (as the case may be) shall be named as defendant.

9. Where the Attorney General or the Controller under section 81 of the 2001 Act, or the Controller under section 91 of the 1992 Act, section 72 of the 1996 Act or section 364 of the 2000 Act, has made an order that costs be paid by any party, such order may be made a rule of Court on the application of the party to whom such costs are payable. Such application may be made ex parte grounded on an affidavit entitled in the matter of the Act concerned and the proceedings before the Attorney General or Controller (as the case may be). Assessors and Advisers

10.(1) On application by any of the parties or of its own motion the Court may give directions including for – 

(a) the preparation of a document setting out basic undisputed technology;

(b) the appointment of an assessor to assist the Court in accordance with Order 36, rule 41 or, where applicable, section 95 (1) of the 1992 Act.

(2) Order 36, rule 41(4) and (5) shall not apply where the remuneration of the assessor is to be paid out of money provided by the Oireachtas.

 

II. Patent and certain other proceedings

Application of this Part

11. Part II applies to –

(1) any claim under -

(a) the 1992 Act;

(b) the 2001 Act;

(c) the EU (Protection of Trade Secrets) Regulations; and 

(2) any claim relating to–

(a) Community registered designs;

(b) semiconductor topography rights;

(c) plant varieties; or

(d) a right of confidence in commercial confidential information, including trade secrets.

12. Where proceedings relate to a patent which has not been published in either the English or Irish language, a translation of the patent must be delivered with the pleading. Proceedings for infringement or challenges to validity.

13.(1) In proceedings for infringement of a patent the statement of claim or counterclaim must include or be accompanied by particulars which–

(a) state which of the claims in the specification of the patent are alleged to be infringed, and (b) give at least one example of each type of infringement alleged.

(2) Where the validity of a patent or registered design is challenged the statement of claim or counterclaim must include or be accompanied by a document entitled “Grounds of Invalidity” which must –

(a) specify the grounds on which validity of the patent or registered design is challenged, and

(b) include particulars that clearly define every issue (including any challenge to any claimed priority date) which it is intended to raise.

(3) Where, in proceedings in which the validity of a patent or a registered design is challenged, the Grounds of Invalidity include an allegation –

(a) that the invention is not a patentable invention because it is not new or does not include an inventive step, the particulars must specify details of the matter in the state of the art relied on, as set out in rule 13(4);

(b) that the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art, the particulars must state, if appropriate, which examples of the invention cannot be made to work and in which respects they do not work or do not work as described in the specification; or 

(c) that the registered design is not new or lacks individual character, the particulars must specify details of any prior design relied on, as set out in rule 13(4).

(4) The details required under rules 13(3)(a) and 13(3)(c) are –

(a) in the case of matter or a design made available to the public by written description, the date on which and the means by which it was so made available, unless this is clear from the fact of the matter; and

(b) in the case of matter or a design made available to the public by use –

(i) the date or dates of such use;

(ii) the name of all persons making such use;

(iii) the place of such use;

(iv) any written material which identifies such use;

(v) the existence and location of any apparatus employed in such use; and

(c) all facts and matters relied on to establish that such matter was made available to the public.

(5) In any proceedings in which the validity of a patent is challenged, where a party alleges that machinery or apparatus was used before the priority date of the claim, the Court may order inspection of that machinery or apparatus.

(6) If the validity of a patent is challenged on the ground that the invention did not involve an inventive step, a party who wishes to rely on the commercial success of the patent must state in the statement of claim or counterclaim the grounds on which that party so relies.

14. In proceedings for breach of a right of confidence in commercial information or brought under the EU (Protection of Trade Secrets) Regulations the statement of claim or counterclaim must include or be accompanied by particulars of the commercial information or trade secret which is the subject-matter of the proceedings.

Provision of Product or Process Description

15. Where a party to proceedings notifies another party of its intention to deliver–

(a) full particulars of the features of the product or process alleged to infringe or breach another party’s rights; and

(b) any necessary drawings or other illustrations, it shall not be necessary for the notifying party to make discovery of documents relating to the features of the product or process which is the subject matter of the notification, unless the Court, for special reasons to be set out in the Court’s order, otherwise orders.

Provision of Schedule in respect of Alleged Commercial Success

16. Where a patentee relies upon the commercial success of a patent in proceedings concerned with its validity, unless the Court, for special reasons to be set out in the Court’s order, otherwise orders, it shall not be necessary for the patentee to make discovery of categories of documents related to the issue of commercial success where the patentee has offered to deliver within a reasonable time a schedule containing:

(a) where the commercial success relates to an article or product –

(i) an identification of the particular article or product which the patentee asserts has been made in accordance with the claims of the patent;

(ii) a summary by convenient periods of sales of any such article or product;

(iii) a summary for the equivalent periods of sales, if any, of any equivalent prior article or product marketed before the article or product in paragraph (i); and

(iv) a summary by convenient periods of any expenditure on advertising and promotion which supported the marketing of the articles or products in paragraphs (i) and (iii); or

(b) where the commercial success relates to the use of a process –

(i) an identification of the process which the patentee asserts has been used in accordance with the claims of the patent; 

(ii) a summary by convenient periods of the revenue received from the use of such process;

(iii) a summary for the equivalent periods of the revenues, if any, received from the use of any equivalent prior art process; and

(iv) a summary by convenient periods of any expenditure which supported the use of the process in paragraphs (i) and (iii).

Verification of Particulars

17. The particulars delivered under rule 15 and the schedule delivered under rule 16 must be accompanied by an affidavit which must aver that the deponent –

(1) is personally acquainted with the facts to which the particulars or schedule relate;

(2) verifies, as the case may be, that:

(i) the particulars are a true and complete description of the product or process alleged to infringe or breach the right in question; or

(ii) the schedule represents a true and complete account of the commercial success of the product or process, and 

(3) understands that he or she may be required to attend in Court in order to be cross-examined on the contents of the particulars or schedule.

Experiments

18.(1) A party seeking to establish any fact by experimental proof conducted for the purpose of intellectual property proceedings must, as soon as is practicable after the close of pleadings, serve on all of the other parties a notice– 

(a) stating the facts which the party seeks to establish; and

(b) giving full particulars of the experiments proposed to establish them.

(2) A party served with a notice under sub-rule (1)–

(a) must within 21 days after such service, serve on the other party a notice stating whether or not each fact is admitted; and

(b) may request the opportunity to inspect a repetition of all or a number of the experiments identified in the notice served under rule 18(1).

(3) Where any fact which a party seeks to establish by experimental proof is not admitted, that party must apply to the Court for permission to conduct the experiments and for directions in respect of the conduct thereof, including as to the presence of the parties, the taking of samples or the recording thereof. Use of models or apparatus

19.(1) A party that intends to rely upon any models, drawings, designs or apparatus at the trial shall give notice in writing of such intention to all the other parties. Every other party shall be entitled, within 14 days of the service of such notice or such other time as the Court may direct, to inspect the same and shall be entitled, on request, to be provided with copies or illustrations of such model, drawing, design or apparatus.

(2) No further or other model, drawing, design or apparatus may be relied upon in evidence by any party save by consent of all of the parties or by permission of the Court.

Confidentiality of Documents

20. Where, upon application made in this regard or otherwise, the Court is satisfied that a document may contain confidential information, the Court may by order limit inspection thereof to a limited class of persons, upon such terms or conditions as appear appropriate to it. The Court may make further orders, upon application or of its own motion, varying the class of persons or terms or conditions, or vacating its order. Application to amend a patent specification in existing proceedings

21.(1) An application under section 38 of the 1992 Act by its proprietor for an order to amend the specification of a patent which is the subject of proceedings must be made by motion on notice.

(2) The notice of motion must–

(a) give particulars of–

(i) the proposed amendment sought, and

(ii) the grounds upon which the amendment is sought;

(b) state whether the applicant will contend that the claims prior to the amendment are valid, and

(c) be served by the applicant on all parties and the Controller within 7 days of it being filed.

(3) Unless the Court otherwise orders, the Controller will, as soon as practicable, advertise the application to amend in the Journal.

(4) The advertisement will state that any person may apply to the Controller for a copy of the notice of motion.

(5) Within 14 days of the first appearance of the advertisement, any person who wishes to oppose the application must file and serve on all parties and the Controller a notice opposing the application which must include the grounds relied on.

(6) Within 28 days of the first appearance of the advertisement, the applicant must apply to the Central Office for a return date for the hearing of the application and the applicant shall notify the Controller and all persons opposing the application of that date, upon which the Controller and the persons opposing the application shall be entitled to appear and be heard.

(7) The Controller shall be entitled to appear and be heard on the hearing of the application and shall so appear if so directed by the Court.

(8) Unless the Court otherwise orders or the Controller appears, the applicant must within seven days serve on the Controller any order of the Court on the application.

Court’s determination of question or application

22.(1) This rule applies where the Controller under section 57(6)(b) of the 1992 Act certifies that the Court should determine the question whether a patent should be revoked.

(2) Any person seeking the Court’s determination of that question or application must initiate proceedings for that purpose within 14 days of receiving notification of the Controller's decision.

(3) A person who fails to initiate proceedings within the time prescribed by rule 22(2) will be deemed to have abandoned the reference or application.

(4) A party may apply to the Court to extend the period for initiating proceedings prescribed by rule 22(2) even where the application is made after expiration of that period. Request to limit a European patent designating the State under the European Patent Convention

23.(1) Rules 23(2) to 23(3) apply where there are proceedings before the Court in which the validity of a European patent designating the State may be put in issue.

(2) Where the proprietor of the European patent designating the State intends to file a request under Article 105a of the European Patent Convention to limit the European patent designating the State by amendment of the claims, the proprietor must serve on all the parties to the proceedings a copy of the intended request (including a copy of the intended complete version of the amended claims and, as the case may be, of the amended description and drawings) at least 28 days prior to filing the request with the European Patent Office.

(3) Where a copy of an intended request is served on the party in accordance with rule 23(2), any party may apply to the Court for such directions or other order as may be appropriate. Communication of information to the European Patent Office

24.(1) The Court may authorise the communication of any such information in the Court file in any intellectual property proceedings as the Court thinks fit to –

(a) the European Patent Office; or

(b) the competent authority of any country which is a party to the European Patent Convention.

(2) Before authorising the communication of information under rule 24(1), the Court will permit any party who may be affected by the disclosure to make submissions, in writing or otherwise as the Court directs, on the question of whether the information should be disclosed.

European Community designs

25.(1) Notwithstanding Order 21, where any defence and counterclaim in intellectual property proceedings before the Court sitting as the Community Design Court includes a claim for a declaration of invalidity of a registered Community design:

(a) the defence and counterclaim shall be filed in the Central Office together with a letter stating that the defence and counterclaim is filed for the purpose of enabling notification in accordance with Article 86(2) of Council Regulation (EC) 6/2002, and

(b) the proper officer in the Central Office, on behalf of the Court sitting as the Community Design Court will inform the European Union Intellectual Property Office of the date on which the counterclaim was filed, in accordance with Article 86(2) of Council Regulation (EC) 6/2002.

(2) On filing a counterclaim under rule 25(1) the party filing it must inform the Community Design Court in writing that it is a counterclaim to which rule 25(1) applies and that the European Union Intellectual Property Office needs to be informed of the date on which the counterclaim was filed.

(3) Where a Community Design Court has given a judgment which has become final on a counterclaim for a declaration of invalidity of a registered Community design, the registrar on behalf of the Court sitting as the Community Design Court will send a copy of the judgment to the European Union Intellectual Property Office, in accordance with Article 86(4) of Council Regulation (EC) 6/2002.

(4) The party in whose favour judgment is given under rule 25(3) must inform the Community Design Court at the time of judgment that rule 25(3) applies and that the European Union Intellectual Property Office needs to be sent a copy of the judgment.

 

III REGISTERED TRADE MARKS

26. Except as where otherwise specified, this Part applies to registered trade marks.

Reference to the Court by the Controller

27.(1) This Rule applies where an application is made to the Controller under the 1996 Act and the Controller refers the application to the Court.

(2) Where rule 27(1) applies, the applicant must cause the issue of a special summons seeking the Court's determination of the reference within 14 days of receiving notification of the decision to refer.

(3) If the person referred to in rule 27(2) does not initiate proceedings within the period prescribed by that rule, that person will be deemed to have abandoned the reference.

(4) The period prescribed under rule 27(2) may be extended by –

(a) the Controller; or

(b) the Court,

where a party so applies, even if the application is not made until after the expiration of that period. Application to the Court under section 23 of the 1996 Act

28. An application under section 23 of the 1996 Act must be on notice to all identifiable persons having an interest in the goods, materials or articles. European Union trade marks

29.(1) Notwithstanding Order 21, where any defence and counterclaim in intellectual property proceedings before the Court sitting as a European Union Trade Mark Court of first instance for the purposes of Article 123 of Council Regulation (EC) 2017/1001, includes a claim for revocation or for a declaration of invalidity of a European Union trade mark:

(a) the defence and counterclaim shall be filed in the Central Office together with a letter stating that the defence and counterclaim is filed for the purpose of enabling notification in accordance with Article 128(4) of Council Regulation (EC) 2017/1001 and

(b) the proper officer in the Central Office, on behalf of the Court sitting as the European Union Trade Mark Court will inform the European Union Intellectual Property Office of the date on which the counterclaim was filed, in accordance with Article 128(4) of Council Regulation (EC) 2017/1001.

(2) Where Court sitting as the European Union Trade Mark Court has given a judgment which has become final on a counterclaim for revocation or for a declaration of invalidity of a European Union trade mark, the registrar on behalf of the Court sitting as the European Union Trade Mark Court will send a copy of the judgment to the European Union Intellectual Property Office, in accordance with Article 128(6) of Council Regulation (EC) 2017/1001.

(3) The party in whose favour judgment is given under rule 29(2) must inform the European Union Trade Mark Court at the time of judgment that rule 29(2) applies and that the European Union Intellectual Property Office needs to be sent a copy of the judgment.

(4) The provisions of this rule shall apply mutatis mutandis to the Court of Appeal (or, as the case may be, the Supreme Court) sitting as a European Union Trade Mark Court of second instance.

 

IV REMEDIES

30. Except as is otherwise specified or context requires, this Part applies generally to intellectual property proceedings. 

Claim for exemplary or aggravated damages

31. Where a party claims exemplary or aggravated damages under section 128(3) or section 304(3) of the 2000 Act, or section 59 of the 2001 Act, or under common law, the statement of claim or counterclaim must include –

(1) a statement to that effect; and

(2) the grounds for claiming such damages. Applications for delivery up, forfeiture or destruction

32.(1) A party who applies under section 131 or 255 of the 2000 Act for delivery up or disposal, or under section 61 or 72 of the 2001 Act for delivery up, or under Regulation 14 of the European Union (Protection of Trade Secrets) Regulations 2018 for delivery up or destruction, or for the destruction or recall or removal from channels of commerce under Regulation 4 of the European Communities (Enforcement of Intellectual Property Rights) Regulations 2006 must serve the summons on all identifiable persons who have an interest in either: (i) the goods, material or articles within the meaning of sections 131 or 255 of the 2000 Act or section 61 of the 2001 Act; or (ii) all or part of any document, object, material, substance or electronic file containing or embodying the trade secret under Regulation 14 of the European Union (Protection of Trade Secrets) Regulations 2018, or (iii) goods or materials or implements used in the manufacture of goods within the meaning of Regulation 4 of the European Communities (Enforcement of Intellectual Property Rights) Regulations 2006. (2) The Court may, insofar as it is appropriate, make provision for the hearing of any person to whom the summons is served under rule 32(1).

V SERVICE OF DOCUMENTS AND PARTICIPATION BY THE CONTROLLER

Service of documents

33.(1) A summons relating to a registered right may be served –

(a) on a party who has registered the right at the address for service given for that right in the appropriate register at—

(i) the Intellectual Property Office of Ireland; or

(ii) the European Union Intellectual Property Office, provided the address is within the State; or

(b) in accordance with Order 11A on a party who has registered the right at the address for service given for that right in the appropriate register at–

(i) the Intellectual Property Office of Ireland; or

(ii) the European Union Intellectual Property Office.

(2) Where a party seeks any remedy (whether by summons or counterclaim) which would if granted affect an entry in any Intellectual Property Office of Ireland register, that party must serve on the Controller–

(a) the summons or counterclaim;

(b) any statement of claim where relevant (including any amended statement of claim); and

(c) any accompanying documents.

Participation by the Controller

34. Where the documents set out in rule 33(2) are served, the Controller –

(a) may take part in proceedings; and

(b) need not serve a defence or other statement of case unless the Court orders otherwise.

 

VI APPEALS

35.(1) Every appeal to the Court from an order or decision of the Controller or from the award of an arbitrator under section 74(3) of the 1992 Act, or section 367 of the 2000 Act, shall be made by special summons. The summons shall be served upon the Controller and upon any other interested persons.

(2) Every appeal to the Court from an order of the Minister under section 168 or section 169 of the 2000 Act shall be made by special summons. The summons shall be served upon the Minister and upon any other interested persons.

(3) Subject to the provision of statute providing for any such appeal, every such appeal to the Court shall be by way of rehearing.

36. The special summons shall state whether the appeal is from the whole or part only, and if so what part, of the order, decision or award, and shall also state concisely the grounds of the appeal. No grounds other than those so stated shall, except with the leave of the Court to be given on such terms and conditions as may seem just, be allowed to be taken by the appellant at the hearing.

37. The special summons shall be issued within such period as is prescribed by the provision of statute providing for such appeal or, in the absence of such provision prescribing a period for appeal, within one calendar month from the date of the order or decision of the Controller, the award of the arbitrator or the order of the Minister (as the case may be) appealed against, or within such further time as the Controller may have allowed for the purpose.

[1]     Order 94 substituted in its entirety by SI 530 of 2021, effective 22 October 2021.

Superseded amendments:

Order 94 rule 17(d) amended by SI 307 of 2013, effective 26 August 2013.  This substituted “the name and address in the City of Dublin of the applicant’s solicitor” with “the name and address of the applicant’s solicitor (if any)”.

Order 94 rule 18(c) amended by SI 307 of 2013, effective 26 August 2013.  This deleted the words “within the jurisdiction” following “address for service”.

Order 94 rule 18(d) substituted by SI 307 of 2013, effective 26 August 2013.  This substituted “the name and address in the City of Dublin of the applicant’s solicitor” with “the name and address of the applicant’s solicitor (if any)”.

Order 94 rule 20 amended by SI 307 of 2013, effective 26 August 2013.  This deleted the words “within the jurisdiction” following “address for service”.

Order 94 rule 28(d) amended by SI 307 of 2013, effective 26 August 2013.  This substituted the words “an address within the jurisdiction at which he can be served with any document” with “an address for service”.

Order 94 rule 28(e) substituted by SI 307 of 2013, effective 26 August 2013.