Superior Court Rules

ORDER 94

PATENTS, DESIGNS, TRADE MARKS AND COPYRIGHT

I. General

1. In this Order–

‘the Controller’ means the Controller of Patents, Designs and Trade Marks.

‘the Journal’ means the Official Journal of Industrial and Commercial Property issued by the Controller pursuant to Statute.

2. Where, pursuant to section 129(5) of the Industrial and Commercial Property (Protection) Act, 1927, section 40(4) of the Trade Marks Act, 1963, or section 65(5) of the Patents Act, 1964, an order, rectifying any register kept under the Acts, directs that notice of the rectification be served on the Controller, the applicant shall serve an attested copy of the order on the Controller who upon receipt thereof shall rectify the register accordingly.

3. Every action for or in respect of the infringement of a patent, trade mark or copyright or for relief under section 131 of the Industrial and Commercial Property (Protection) Act, 1927, or section 61 of the Patents Act, 1964, shall be commenced by plenary summons.

II. Actions for infringement of patent

4. In an action for infringement of a patent the plaintiff shall deliver with his statement of claim particulars of the breaches relied upon.

5. Particulars of breaches shall specify which of the claims in the specification of the patent sued upon are alleged to be infringed and shall give at least one instance of each type of infringement of which complaint is made.

6. The defendant, if he disputes the validity of the patent, shall deliver with his defence particulars of the objections on which he relies in support of such invalidity.

7. A defendant who, under section 57 of the Patents Act, 1964, counterclaims for revocation shall deliver with his counterclaim particulars of the objections to the validity of the patent on which he relies in support of his counterclaim.

8. Particulars of objections shall state every ground upon which the validity of the patent is disputed and shall give such particulars as will clearly define every issue which it is intended to raise.

9. If one of the objections taken in the particulars of objections be want of novelty, the particulars shall state the time and place of the previous publication or user alleged, and if it be alleged that the invention has been used prior to the date of the patent, shall also specify the names of the persons who are alleged to have made such prior user and whether such prior user is alleged to have continued down to the date of the patent, and if not, the earliest and latest dates on which such prior user is alleged to have taken place, and shall also contain a description (accompanied by drawings if necessary) sufficient to identify such alleged prior user, and if such user relates to any machinery or apparatus shall specify whether the same is in existence and where the same can be inspected. No evidence at variance with any statement contained in such particulars shall be given in support of any objection, and no evidence as to any machinery or apparatus which is alleged to have been used prior to the date of the patent and which is in existence at the date of the delivery of the particulars shall be receivable unless it be proved that the party relying on such prior user has, if such machinery or apparatus be in his own possession, offered inspection of the same, or if not in his own possession, has used his best endeavours to obtain inspection of the same for the other parties to the proceedings.

10. Particulars of breaches and particulars of objections may from time to time be amended by leave of the court upon such terms as may be just.

11. Further and better particulars of breaches or particulars of objections may at any time be ordered by the court.

12. At the hearing of an action for infringement of a patent or a counterclaim or petition for revocation of a patent, no evidence shall, except by leave of the court (to be given upon such terms as to the court may seem just) be admitted in proof of any alleged infringement or objection not raised in the particulars of breaches or particulars of objections respectively.

13. On the taxation of costs in any such action, counterclaim or petition, the following provisions shall apply:

(1) If the action, counterclaim or petition proceeds to trial on any patent, no costs shall be allowed in respect of any issues raised in the particulars of breaches or particulars of objections and relating to that patent to the parties delivering the same respectively except in so far as such particulars are certified by the court to have been proven and to have been reasonable and proper without regard to the general costs of the case.

(2) Subject as aforesaid the costs of the issues raised by the particulars of breaches and particulars of objections shall be in the discretion of the Legal Costs Adjudicator.

[SI 584/19]

14. If the defendant in an action for infringement of a patent intends to rely on the insertion by the patentee in any contract of any condition which by virtue of section 54 of the Patents Act, 1964, is null and void, he shall deliver with his defence full particulars of the dates of, and parties to, all contracts on which he intends to rely as containing any such condition and of the particular conditions in any such contract on which he intends to rely as being by virtue of that section null and void. Particulars under this rule may be from time to time amended by leave of the court upon such terms as to costs and otherwise as to the court may seem meet.

III. Amendment of specification

15. An application by a patentee under section 32 of the Patents Act, 1964, for leave to amend his specification by way of disclaimer, correction or explanation shall be made by motion in the action or proceedings pending before the court. Notice of such motion together with a copy of the specification certified by the Controller showing in red ink the amendment proposed to be made shall be served on the other party in such action or proceedings, and in the first instance on such party only.

16. On the hearing of such motion the court shall decide whether and on what terms as to costs or otherwise the application shall be allowed to proceed. If the application be allowed to proceed the court shall give directions as to whether such application shall be heard on oral evidence or on affidavit and, if on affidavit, shall fix the time within which such affidavits shall be filed by the parties respectively and by any other person entitled to be heard under the Act or this rule.

17. If the application be allowed to proceed the applicant shall forthwith serve on the Controller—

(a) a copy of the notice of motion;

(b) copy specification as aforesaid;

(c) an attested copy of the order allowing the application to proceed;

(d) a note of the name and address of the applicant’s solicitor (if any).

[SI 307/13]

18. The Controller, on receipt of such documents, shall cause to be inserted in the next issue of the Journal an advertisement stating–

(a) the number and title of the patent and the name of the patentee;

(b) the proposed amendment;

(c) that any person desiring to oppose the amendment must within 14 days of the advertisement give to the applicant’s solicitor notice in writing of such desire and must state therein his address for service;

(d) the name and address of the applicant’s solicitor (if any).

[SI 307/13]

19. Any person giving such notice as is mentioned in rule 18 shall be entitled to be heard upon the hearing of the motion.

20. Within seven days after the receipt of any such notice the applicant shall, if the person giving such notice shall have stated therein his address for service, serve on such person—

(a) a copy of the notice of motion;

(b) a copy of the specification as aforesaid;

(c) a copy of the order allowing the application to proceed. Such service may be made by prepaid registered letter sent to such person through the post to his address for service.

[SI 307/13]

21. Where the court allows the specification to be amended the applicant shall forthwith lodge with the Controller an attested copy of the order allowing such amendment. The applicant shall also if required to do so by the court or the Controller, leave at the Patents Office a new specification and drawings as amended, the same being prepared so far as may be in accordance with the Industrial Property Rules for the time being in force.

22. The Controller shall cause the said order to be advertised at least once in the Journal.

IV. Petition for revocation of a patent

23. Any person presenting a petition for revocation of a patent under section 34 of the Patents Act, 1964, shall deliver with his petition particulars of the objections to the validity of the patent on which he relies in support of his petition.

24. The provisions of rules 8 to 13 inclusive in regard to particulars of objections shall apply mutatis mutandis to such a petition and the particulars to be delivered therewith.

25. The respondent to such petition shall be entitled to begin, and to give evidence in support of the patent and, if the petitioner gives evidence impeaching the validity of the patent, the respondent shall be entitled to reply.

V. Petition for extension of the term of a patent

26. A patentee who intends to present a petition to the court under section 27 of the Patents Act, 1964, praying that his patent may be extended for a further term shall advertise his intention to do so twice in Iris Oifigiúil and once in at least two daily newspapers published in Dublin.

27. Such a petition may relate to more than one patent.

28. The advertisement shall state—

(a) the number and title of the patent and the name of the patentee;

(b) that the object of the petition is to obtain an extension of the patent for a further term;

(c) the date on or before which the petition is to be presented to the court;

(d) that any person desirous of objecting must within 14 days from such date lodge in the Central Office written notice that he intends to lodge objections and must in such notice give an address for service;

(e) the name and address of the patentee’s solicitor (if any) and the patentee’s address for service.

[SI 307/13]

29. When the first advertisement appears in Iris Oifigiúil the patentee shall send a copy thereof to the Controller for insertion in the next issue of the Journal.

30. A patentee intending to present such petition shall, if he requires an extension of the period within which such petition may be presented apply to the court ex parte for an order extending such period. The application may be made before or after the time limited for presentation of the petition and shall be supported by an affidavit to the patentee or his solicitor stating the reasons for the delay. If the court shall extend the period it shall in such order fix the date on or before which the petition shall be presented to the court, and such date shall be stated in the said advertisements.

31. The petition shall be lodged in the Central Office on or before the date stated in the advertisements for presentation of the petition.

32. Within four days of lodging the petition the patentee shall serve a copy thereof on the Controller.

33. There shall be lodged along with the petition—

(a) an affidavit by the petitioner, or his solicitor, that the advertisements prescribed above have been duly published;

(b) a copy of each issue of Iris Oifigiúil and of each of the said newspapers, containing such advertisements;

(c) two printed copies of the specification of the patent.

34. A copy of the petition shall be served on every person who has lodged notice that he intends to lodge objections.

35. Every such person shall within three weeks after the service of a copy of the petition upon him—

(a) lodge in the Central Office particulars of the objections upon which he intends to rely against the granting of the prayer of the petition;

(b) serve upon the petitioner a copy of such particulars;

(c) send to the Chief State Solicitor two copies of such particulars. Any such person who fails to comply with this rule shall be deemed to have abandoned his objections. No person shall be entitled to oppose the granting of the prayer of the petition on any grounds not stated in such particulars.

36. Within six weeks after presentation of the petition the petitioner shall—

(a) lodge in the Central Office an affidavit by the petitioner or his solicitor that a copy of the petition has been served on the Controller and every person who lodged notice of his intention to lodge objections;

(b) lodge in the Central Office two copies of the balance sheet of expenditure and receipts relating to the patent, which accounts are to be proved on the hearing of the petition;

(c) send two copies of the said balance sheet to the Controller.

37. The petitioner shall on receiving two days notice give to the Controller or to any person deputed by him for the purpose reasonable facilities for inspecting and making extracts from the books of accounts by reference to which it is proposed to verify the said balance sheet or from which the materials for making up the same have been derived.

38. Any person who has duly complied with rule 35 shall be entitled at his own expense to obtain from the petitioner copies of the said balance sheet.

39. After the expiration of six weeks from the presentation of the petition the petitioner shall apply to the court by motion for directions as to the proceedings (if any) to be taken preliminary to the hearing of the petition and as to the mode of trial thereof or otherwise with reference thereto and as to the date on which the petition shall appear in the list for hearing. Notice of this motion shall be served on the Controller and on all persons who have duly complied with rule 35.

40. Upon the hearing of such motion the court shall fix a date for the hearing of the petition and shall give such further or other directions in regard to advertisement, service or otherwise as it may deem necessary or expedient.

41. The Controller, if he elects or is directed to appear on the question of granting the prayer of the petition, shall not be required to give notice of any objection he may think fit to take.

42. The court may in cases where opposition has been entered to the prayer of a petition give costs to or against the opponents, but in the event of the court refusing the prayer of the petition it shall not except under special circumstances give more than one set of costs amongst all the opponents.

43. The Controller shall not be liable in, or entitled to, any costs or expenses.

44. Service of any document which may be required to be served under this part of this Order may be effected by registered post addressed to the person to be served at his address for service.

VI. Appeals to the court

45. Every appeal to the court from an order or decision of the Controller or from the award of an arbitrator under section 45 of the Patents Act, 1964, or section 41(3) of the Copyright Act, 1963, shall be made by special summons. The summons shall be served upon the Controller and upon all other persons (if any) interested.

46. The 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.

47. The summons shall be issued within one calendar month from the date of the order or decision of the Controller, or the award of the arbitrator (as the case may be) appealed against, or within such further time as the Controller may have allowed for the purpose.

48. Every such appeal to the court shall be by way of rehearing; and, subject to the provisions of the Act, every appeal under section 25 of the Trade Marks Act, 1963, shall be heard on the materials stated by the Controller to have been used by him in arriving at his decision, and every other appeal shall be heard on the same evidence as that used at the hearing before the Controller. No further evidence shall be given nor further material brought forward for the consideration of the court on the hearing of any appeal without the special leave of the court granted on an application made at or before the hearing; but nothing herein contained shall be deemed to prevent the submission to the court of a statement in writing by the Controller in pursuance of section 143 of the Industrial and Commercial Property (Protection) Act, 1927, section 56(2) of the Trade Marks Act, 1963, or section 65(3) of the Patents Act, 1964.

49. Where under section 26(10)(b) of the Trade Marks Act, 1963, an applicant becomes entitled and intends to withdraw his application, he shall give notice in writing of his intention to the Controller and to the other parties (if any) to the appeal within one calendar month after the leave referred to in those subsections has been obtained.

VII. Other applications to the court

50. Save as otherwise provided by the Acts or this Order every application to the court under the Industrial and Commercial Property (Protection) Acts, 1927–1958, the Trade Marks Act, 1963, the Copyright Act, 1963, or the Patents Act, 1964, shall be made by special summons. The summons shall be served upon the Controller and upon all other persons (if any) interested.

51. Where the Controller, under section 75 of the Industrial and Commercial Property (Protection) Act, 1927, refers an application to the court for trial, the applicant or appellant (as the case may be) shall within one calendar month from the date of such reference apply to the court by special summons to hear and determine such application or appeal, and unless he so applies he shall be deemed to have abandoned the application or appeal.

52. A party seeking a decision of the court on a dispute under section 130 of the Industrial and Commercial Property (Protection) Act, 1927, or under section 92 of the Patents Act, 1964, shall apply by special summons. 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. 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.

53. Where the Attorney General under section 133 of the Industrial and Commercial Property (Protection) Act, 1927, or the Controller or the Minister for Industry, Trade, Commerce and Tourism under section 135 of the Industrial and Commercial Property (Protection) Act, 1927, or the Controller under section 51 of the Trade Marks Act, 1963, section 37 of the Copyright Act, 1963, or section 72 of the Patents Act, 1964, 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 and the proceedings before the Attorney General, Controller or Minister (as the case may be).

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