A new division of Ireland’s Commercial Court dedicated to intellectual property cases and disputes about complex technology has been established under a revised Order 63A of the Rules of the Superior Courts (revised Rules). The new Intellectual Property and Technology List (IP & Technology List), a sub-division of the Commercial Court list, comes into operation on 22 October 2021. Judges will be assigned to the IP &Technology List by the President of the High Court.
The introduction of the IP & Technology List follows recommendations contained in a report from a review group established under Mr Justice Peter Kelly to review the administration of civil justice in Ireland (Review Group). The Review Group published its Review of the Administration of Civil Justice Report (Report) in October 2020. The Review Group recognised the likely benefits that would result from the introduction of a “specialised intellectual property list”. It also recommended that appropriate resources be made available to ensure that the Irish courts remain an attractive forum for resolving intellectual property (IP) and technology disputes in as timely and cost-effective manner as possible. The revised Rules implement these recommendations.
What cases will be heard in the IP & Technology List?
Disputes suitable for admission to the IP & Technology List include actions relating to:
- Passing off;
- Protected designations of origin and protected geographical indications;
- Design rights;
- Database rights;
- Supplementary Protection Certificates (SPCs);
- Trade secrets; and
- Issues of technological complexity warranting a hearing in the IP & Technology List.
IP & Technology List Procedures
All cases in the IP & Technology List will be case-managed to minimise costs and prioritise timely resolution. Case management conferences will address issues such as the need for expert or factual evidence; whether an expert assessor is needed to assist the court; and the time likely to be required for advance reading by the judge.
While High Court and Commercial Court trials typically involve live, oral evidence, an IP & Technology List Judge may determine that proceedings should be heard on affidavit only, or on affidavit with oral evidence on specific issues. The IP & Technology List Judge may also decide whether discovery of any documents is necessary, for example, discovery of documents relating to the features of a product or process alleged to infringe the plaintiffs rights, where the plaintiff has notified its intention to provide full particulars of those features to the other side. The revised Rules for IP cases address how parties to patent disputes can rely on alleged commercial success; use of models and experiments; and inspection of confidential information.
Renewed Focus on Resolving IP and Technology Disputes
The IP & Technology List’s inauguration and the introduction of new procedural rules demonstrate a renewed emphasis on ensuring efficient and fair mechanisms exist to resolve IP and technology disputes. The strengthening of such mechanisms before the Irish courts will provide further protection for the enforcement of IP rights in Ireland. It is a welcome development for businesses, particularly high technology, and IP-intensive industries.
Contributed by John Sugrue & Sinéad Cullen