Managing Patents

Your patent is a valuable IP asset. Managing your Intellectual Property is just as important as managing your business. Properly managing your IP assets including your patent portfolio is essential to ensuring that you extract maximum value from your patents. 

The following are some key management tasks which are important in maintaining, defending and exploiting your patent(s).  While some are reasonably straightforward, others are not and you may need to engage the services of a patent attorney.

Request to rectify or correct an error in the patents register (Section 86, Rule 61)

If you find that details in the patent register are wrong you can apply to have them corrected.  An application for the rectification of the register must state—

( a ) the name and address of the applicant;

( b ) the number of the patent or the patent application in question;

( c ) the exact nature of the amendment of the register for which application is made;

and shall be accompanied by a statement setting out fully the nature of the applicant's interest and the facts upon which he or she relies, and by the prescribed fee (€50).

Request to correct or change a name and address (Rule 57)

You can  request the alteration of a name or nationality or an address or an address for service in an application for the grant of a patent or in the register.  Your application must  state—

(a) the name and address of the person making the request,

(b) the number of the patent or application in question, and

(c) particulars of the alteration desired.

No fee is payable.

Request the recordal of a change of ownership or registration of title (Section 85, Rule 58)

An application for the registration in the register of the title of any person becoming entitled by assignment to a published patent application or a patent, or a share in such an application or patent, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in such an application or patent, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to the instrument by which the assignment is made.

if you’re no longer the owner of a patent, for example, if you’ve sold it or assigned rights in it or you have become entitled by assignment to a published patent application or a patent, or a share in such an application or patent, or entitled by virtue of a mortgage, licence or other instrument to any other interest in such an application or patent, you or the assignor, mortgagor, licensor or other party to the instrument by which the assignment is made can apply to have the change of ownership or interest recorded.

The application must be accompanied by proof of title or, in the absence of such proof, you can state a case setting forth the full particulars of the facts upon which his application or claim is based. Such a statement of case must be verified by a statutory declaration.  A Patent Assignment form must be completed along with the prescribed fee of €50.00 for the first patent and €6.00 for each additional patent on the application form. An original or certified copy of the Deed of Assignment/Transfer Agreement/Licence Agreement/Security Interest evidencing the change of proprietorship must be submitted to support the application.  The Intellectual Property Office of Ireland accepts Licence application forms and documents filed electronically, as far as scanned in colour or certified as true copy.   Security Interest Agreements require wet ink signatures as outlined by Section 10 of the Electronic Commerce Act, 2000.

Licensing

A frequently-used way of commercialising an invention is via a licence. A licence is a legal agreement in which an intellectual property owner (‘licensor’) grants a third party (‘licensee’) certain rights to use its intellectual property. A licence can exclusive or non-exclusive. 

For example, a patent owner and a pharmaceutical company might enter into a licence agreement to enable the company to develop a new drug that is described in the patent. The licence would outline the terms under which the licensee could make use of the patent.

It is recommended that you inform the Intellectual Property Office of Ireland if you have entered into a licensing arrangement and have the details recorded on the Patents Register.  

Licence applications must be completed along with the prescribed fee of €50.00 for the first patent and €6.00 for each additional patent on the application.  An original or certified copy of the Licence Agreement evidencing the agreement between the parties must be submitted to support the applications. The Intellectual Property Office of Ireland accepts Licence application forms and documents filed electronically, as far as scanned in colour or certified as true copy.  Licence Agreements require wet ink signatures as outlined by Section 10 of the Electronic Commerce Act, 2000.

You should always seek professional legal advice when entering into a contract or licensing arrangement.  

Maintaining your patent 

Renewals (Section 36 , Rule 34)

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 and the legal protection your patent provides, annual renewal fees must be paid each year from the third year.

The cost will vary depending on the type of patent and the number of years that have passed since you filed it.  Short term renewal fees are 50% of the fee for full term patents.  Renewal fees are due on or before the anniversary of the filing date of your application. It is up to you to pay on time. Patent protection will stop if the renewal fee is not paid.  If you miss the due date for paying the renewal fee, you can still pay the renewal fee up to 6 months after the due date if you apply for an extension of time and pay an additional fee (€11 for each of the 1st, 2nd and 3rd months and €19 for each of the 4th, 5th and 6th months in addition to the overdue renewal fee.

Renewal fees can be paid online or by telephone by credit or debit card or by EFT.

Restoration (Section 37, Rule 35)

The owner of a patent can apply to restore a patent within two years of the date the renewal payment was due. A fee of €125 is payable with the restoration application. In making the restoration application, the applicant must satisfy the Controller that the lapsing of the patent was unintentional. The restoration application will be published and an opportunity afforded to persons to object to the restoration. If the restoration application is successful the applicant will then be requested to pay the renewal fee and any overdue fees. 

Please see the Guidance Note on Restorations for further information.

Reinstatements (Section 35, Rule 33A)

Where an application for a patent has been refused or deemed withdrawn, the applicant may under certain circumstances apply to have the application reinstated. A fee of €125 is payable with the reinstatement application. In making the reinstatement application the applicant must satisfy the Controller that the withdrawal or refusal occurred despite reasonable care having been taken to so comply. Should the reinstatement application be successful the applicant will be afforded a period not less than 2 months in order to comply with the requirement of the Act or Rules which had led to its removal.

Please see the Guidance Note on Reinstatements for further information. 

Enforcement

The Intellectual Property Office of Ireland does not enforce patents or sort out any problems relating to infringement. If you suspect that someone is infringing your patent rights, it is up to you to take appropriate action. However, we would strongly recommend you get legal advice before making any contact with the alleged infringer.  A patent attorney will be able to advise you on the best course of action and what might be the most cost effective approach.

This might involve trying to put an immediate stop to the infringing activities through cease and desist letters. Another possible solution might be to try to negotiate an agreeable settlement involving a sale of the patent, or a license. An attorney can also provide advice on the costs and benefits of litigation.

Forms

The following forms are available for download

Further links, articles and readings.

World Intellectual Property Office - WIPO Magazine

Knowledge Transfer Ireland's publication - KTI Practical Guide - Managing Intellectual Property