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 Report
A 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withdrawn within two months of issue of the Report to the applicant, the Report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 If the patent application is not withdrawn the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 Novelty
There 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)
There are two types of Irish
patents available.
(1) Full-term patents
These 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 patents
Short-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.
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 pending
This is a term often used on products to alert competitors that an application
has been made to protect the invention.