A new sub-division of the Commercial Court of the High Court came into operation on 22 October 2021, with the Intellectual Property and Technology List providing for the efficient disposal of Intellectual Property (IP) cases in the High Court.
Key features include:
- An expanded definition of the types of IP disputes that may fall within the definition of commercial proceedings, be admitted to the list and subsequently case managed by a dedicated IP judge. Disputes includes both registered intellectual rights (e.g patents, trade marks, registered designs, etc.) and unregistered intellectual property rights (e.g. copyright, passing off, trade secrets, etc.). The Court also has the authority to admit matters to the Intellectual Property and Technology List which it views as having issues of technological complexity warranting a hearing in the list.
- As with other cases in the Commercial List, proceedings in the Intellectual Property and Technology List will be case managed in order to ensure a speedy resolution and to minimise costs. Each matter within the new list will have a case management conference after the pleadings have closed to ensure “that the proceedings are prepared for trial in a manner which is just, expeditious and likely to minimise the costs of the proceedings”. The case management conference allows the IP judge to deal with numerous pre-trial issues including:
- whether discovery of any documents or an inspection or experiment is necessary
- the need for further particulars, expert evidence, a modular trial or an assessor
- whether evidence is heard on affidavit and whether it is to be determined without discovery or with limited discovery
- the preparation of a document setting out basic undisputed technology.
- The Court is also conferred with a broader discretion to limit discovery obligations for parties to ensure that discovery is ordered where it is necessary to resolve the actual technical issues in dispute and where it is proportionate, given that, in particular, IP disputes, such as patent disputes, are primarily determined based on expert evidence.
IP proceedings in the Circuit Court
IP proceedings can also be brought in the Circuit Court following the extension of its jurisdiction. The Circuit Court can hear such claims with a value of up to €75,000. This development should address concerns raised by smaller organisations who felt that they lacked the financial resources to enforce and defend their IP rights in the Commercial Court. The new rules address the following:
- the particulars to be followed in terms of the form of pleadings to include the nature and
extent of the IP right relied upon and the nature and extent of the alleged infringements of
any IP right
- the procedure for an application for delivery up of infringing articles, copies or devices
- the procedure for an application for erasure, removal or obliteration of offensive material or
for forfeiture or disposal with respect to infringing articles, copies or devices.
The introduction of the new dedicated list follows recommendations made in the Review of the Administration of Civil Justice Report published in October 2020 and chaired by former President of the High Court, Mr Justice Peter Kelly. The creation of the dedicated list and associated streamlined process coupled with Ireland being the only purely common law jurisdiction in Europe, further promotes the jurisdiction as an attractive destination to pursue and defend intellectual property and technology disputes. The advantages of having a dedicated court that deals with complex intellectual property and technology disputes on a regular basis will ensure greater efficiency in managing these disputes so they are resolved in a timely and cost-effective manner.
These measures will not only increase the overall efficiency of such proceedings but will also allow for greater judicial expertise with the appointment of a dedicated IP Judge who will hear and manage these disputes.
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