For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Friday, 14 September 2012

London, Ireland

Ushered in with no more hullabaloo than the quiet scratching of a Minister's pen, the IPKat learns that Ireland has quietly acceded to the London Agreement. Even for animals with hearing as sensitive as a Kat, a ministerial pen can be hard to detect, what with the sound insulation provided by all the wooden panelling and heavy velvet curtains in Government buildings. In this case it seems that nobody outside the Government knew the implementing statutory instruments even existed for ten days.

Most readers will not need reminding that the London Agreement is the one where an EPC member country dispenses with the requirement for a translation of a European Patent into a national language. In the case of Ireland, this means that patents granted in French and German will now automatically take effect without the need to translate the description and drawings into English (the claims as most readers will know, are already provided in an English translation in the granted European patent specification).

The IPKat was as surprised as anyone else on
learning that the London Agreement was already in force
The Irish patent profession, which had known that ratification of the Agreement was on the way since earlier in the year, was somewhat surprised to learn on September 12 that the ministerial order to bring the changes into force had been signed on September 2, and took effect on September 3, without any announcement or notification in advance or indeed for a subsequent ten days. Nor had there been any prior consultation about the implementing rules over which a number of questions have been raised since they were circulated.

The effect of the legislation is that as and from the 3rd of September, a European Patent granted in French or German will not be deemed void in Ireland for a failure to file an English translation (or to pay the associated official fee). Because Ireland, uniquely, had a six month period for the filing of such translations, this means that patents granted on or after March 4, 2012 fall inside the terms of the London Agreement.

The stealthy introduction of the legislation means that many patentees filed translations and paid the associated fees for patents granted after March 4, when (it retrospectively turned out) these expenses were unnecessary. No refunds are to be given for those cases as a general rule, the official view being that when the fees were paid, they were validly paid under the law as it stood. However, for translations filed after September 3, i.e. in the period between the legislation coming into force and the Department telling anyone that this had happened, the IPKat understands that refunds are to be provided.

One oversight appears to be the possibility of obtaining restoration of a patent for failure to file a translation which was due before September 3. It used to be possible, in such cases, to restore the patent for up to one year under the "all due care" standard. The statutory instruments (which had not been circulated for comment in advance) have repealed the rule providing for such restorations. This unfortunately means that there is now no provision for patentees to apply for restoration where, in spite of all due care, they failed to file a translation and where the deadline to do so expired less than 12 months ago and before September 3, 2012. It remains to be seen how an application to restore such a patent will be treated if this arises.

2 comments:

Naoise said...

Perhaps the stealthiness has something to do with gubernatorial reticence to be associated with changes to the incumbent IP regime in Ireland (even when where the change is clearly for the better).

Lest we forget, certain Irish ministers were persona non grata in some circles only nine months ago.

Anonymous said...

The Kat new about this back in March, of course ...

http://ipkitten.blogspot.de/2012/03/one-real-amendment-and-more-than-fifty.html

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