Patent litigation in Ireland: revocation, experts and discovery

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• Patent litigation in Ireland: Irish patent system
• Patent litigation in Ireland: pre-action steps and initiating proceedings
• Patent litigation in Ireland: patent infringement and preliminary injunctions

Five grounds of revocation

Under Section 58 of the Patents Act 1992 (as amended) (Irish Patents Act), an application for revocation of a patent may be sought on the basis that:

• the subject-matter of the patent is not patentable under the Irish Patents Act - namely, that the patent lacks novelty, inventive step or is not capable of industrial application
• the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art
• the matter disclosed in the specification of the patent extends beyond that disclosed in the application as filed, or, if the patent was granted on an application which by virtue of a divisional application or entitlement to a patent is deemed to have been filed on the date of filing of an earlier application, it extends beyond that disclosed in the earlier application as filed
• the protection conferred by the patent has been extended by an amendment which should not have been allowed
• the proprietor of the patent is not entitled thereto under section 16 (1) of Patents Act 1992.

Under Section 16 (1), the right to a patent belongs to the inventor or his successor in title but if the inventor is an employee, the right to the patent will be determined by the law in the State in which the employee is wholly/mainly employed.

Grounds of invalidity

The validity of a patent can be challenged by way of stand-alone patent revocation proceedings or raised as a defence to patent infringement proceedings. In either case, the statement of claim or counterclaim, as the case may be, must include or be accompanied by a document entitled “grounds of invalidity” which must specify the grounds on which validity of the patent is challenged, and include particulars that clearly define every issue - including any challenge to any claimed priority date - which it is intended to raise.

The grounds of invalidity must specify the manner in which the patent in dispute is invalid. For example, if it is alleged that the patent is not patentable 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 that they rely upon to demonstrate this lack of novelty and/or inventiveness.

Any person is entitled to request an order to cancel the patent, except when the grounds concern ownership rights.

Defence to revocation proceedings

In defending revocation proceedings in Ireland patentees should follow the rules for service of the defence set out in Order 21 of the Rules of the Superior Courts. Whilst there is a prescribed deadline for the delivery of a defence, in practice submission of a defence will depend on the court’s directions. If the defendant plans or wants to use expert evidence at the trial, the defence must disclose this intention and should specify the area of expertise involved and the issues on which expert evidence is planned or wanted to be used. There is no requirement to deny damages claimed or their amount; but they shall be deemed to be put in issue in all cases, unless expressly admitted.

The burden of proof rests with the applicant for revocation. Therefore, if the applicant cannot prove their case on the balance of probabilities, the application for revocation will not be successful.

Where invalidity is a defence to infringement, and when a patentee fails to prove the case of infringement, it will not be necessary to consider invalidity.

Assessing validity

The patentability of an invention is considered as at the date of filing or at its priority date if priority has been claimed. A disputed invention may be assessed by reference to prior art and common general knowledge at this specific date.

Section 13 of the Irish Patents Act provides that an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. One of the grounds for an application for revocation of a patent set out in Section 58 of the Irish Patents Act is that the specification of the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Therefore the “person skilled in the art” and identification of the “person skilled in the art” are key to assessing inventiveness and sufficiency as at the patent filing date or priority date.

Expert evidence

In most patent cases, expert witnesses will be engaged by the parties to provide expert reports and give evidence at trial. It is the duty of an expert to assist the court as to matters within his or her field of expertise. This duty overrides any obligation to any party paying the fee of the expert. Experts are required to be independent, and to acknowledge their primary obligation to the court in their reports. They must also disclose any financial or economic interest they may have which is relevant to the parties and the proceedings in being. The Court of Appeal recently stressed the importance of objectivity and impartiality on the part of an expert.

The primary function of the expert in patent litigation is to educate the court in the technical field of the invention, and to perform the role of the hypothetical “person skilled in the art”. Expert evidence may be relevant in assessing novelty, inventiveness, sufficiency, the meaning of technical terms, terms of art, and the state of the common general knowledge at the date of filing/priority date of the patent.

The court may direct that any expert witnesses consult with each other for the purposes of identifying the issues on which they intend to give evidence and where possible, reaching agreement on the evidence they intend to give.

Expert reports and any applicable factual witness statements are exchanged in advance of the oral hearing of the matter, either simultaneously or sequentially, after pleadings have closed. This is done either together with or following discovery of relevant documents. It is common for several rounds of expert reports to be exchanged prior to the hearing.

Experts are often subject to rigorous cross examination in Irish patent proceedings. As patent proceedings are heard in open court, useful information might be obtained on cross examination in Ireland, which can then be referred to in litigation relating to equivalent patents in other jurisdictions.

In an action or proceedings for infringement or revocation of a patent, the court may also call on an assessor, as an independent expert, to assist the judge in understanding the case before the court.

Discovery overview

Discovery, interrogatories and inspection are governed by Order 31 of the Rules of the Superior Courts. These Rules contain specific provisions that allow for parties to request access to information without the need for formal discovery.

Interrogatories may be delivered by the plaintiff at any time after delivering the statement of claim and by the defendant at the time of or after delivery of the defence. Leave of the court is not required with respect to commercial court proceedings. The Irish courts encourage the use of interrogatories as a means of reducing costs and time spent on discovery.

Discovery

Discovery of documents tends to occur when pleadings have closed. In the first instance a voluntary request for documents is made by the parties who write to each other and try to agree on the categories of “voluntary” documents to be discovered. Failing agreement, the parties can make an application to the court for an order requiring the other party to make discovery of the categories of documents in dispute. There is an ongoing obligation to discover documents falling within the scope of the discovery order or the agreed discovery that are in the power, possession or procurement of a party. The principles in the Supreme Court decision in Tobin v Minister for Defence apply to patent cases and should be considered when deciding the scope of a discovery request. The Commercial Court has confirmed that the principles that apply in non-patent cases equally apply to patent cases.

Either party is entitled to seek discovery of documents from the other side which are or have been in the possession, power or procurement of the other party, are relevant to the issues in the case; and are necessary for the fair disposal of the case or for saving costs.

The definition and potential scope of discovery is extremely broad and extends to documents which as a matter of probability may lead the requesting party on a train of inquiry and includes all electronic information.

There is an obligation to preserve relevant evidence where the possibility of litigation is anticipated. Typically, a litigation hold notice will be issued to relevant custodians within the companies that are parties to the dispute requiring them to pause any routine document destruction processes and to preserve potentially relevant documents.

It is also possible to obtain Norwich Pharmacal Orders which enable a party to obtain pre-action disclosure of documents identifying alleged infringers from third parties. Any requests for discovery must be made by reference to the pleadings.

Confidentiality clubs

Confidentiality clubs are often entered into where documents disclosed on discovery include confidential and commercially sensitive information. Depending on the circumstances of the case and the type of material concerned, access to documents may be limited to specific groups.

Disclosure of  experiments

When a party wishes to prove a fact by the use of experiments, it must first give the other party a notice stating the facts that those experiments aim to show, and provide full details of the experiments planned. The notice should be served as soon as practicable after close of proceedings.

A recipient of such a notice must within 21 days after such service, serve on the other party a notice stating whether or not each fact is admitted; and may request the opportunity to inspect a repetition of all or a number of the experiments identified in the notice. The obvious benefit of these disclosure provisions means that the requirement to provide extensive discovery is circumvented.

Procedure for disclosure of a product or process

A party may notify the other party of its intention to deliver full particulars of the features of the product or process alleged to infringe or breach the other party’s rights. In those circumstances, it is not necessary for the notifying party to make discovery of documents relating to those features of the product or process, except if the court orders otherwise.

Irish proceedings and European proceedings

In multi-jurisdictional patent proceedings, it is common that the patent in suit will be subject to opposition proceedings at the European Patent Office (EPO) at the same time.

The Irish Courts have broad discretion in relation to whether, and to what extent a stay will be granted in the Irish proceedings pending the outcome of the proceedings before the EPO, in these circumstances. Typically, to avoid wasted time and costs in the Irish proceedings, if the parties are not prejudiced, and a relatively quick decision is expected from the EPO, the Irish proceedings will be stayed.

However, in the Eisai case for example, the court ordered a stay on the hearing of the Irish proceedings, subject to all the remaining pre-trial preparations, including discovery, proceeding. The court was influenced by the fact that the drug concerned was targeted at Alzheimer's disease, and the court considered that there was a public interest in ensuring that any risk of delay in the supply of a potential treatment for such a disease should be minimised.