IP Handbook - Home
The comprehensive guide to the world's leading tax firms

At-a-glance: Irish Patents Office Government Buildings, Hebron Road, Kilkenny, Ireland Tel: +353 56 7720111, Fax: +353 56 7720100 Email: patlib@patentsoffice.ie Website: www.patentsoffice.ie The prognosis for Ireland's IP market is generally g... [more]

The prognosis for Ireland's IP market is generally good. With a new government in place for more than two years and the economy on the road to stability, confidence is slowly seeping back into the market. So much so that some CEOs at domestic multinationals have been willing to look at expanding and further protecting their businesses' brands abroad. "Confidence among the Irish international companies is returning. We've seen several clients of this type do major rebranding exercises in most of the continents around the world," says one trade mark partner.

In patents too, the picture is far from gloomy, with plenty of PCT work available. "Patent work is starting to grow again. People are doing it more for the right reasons – they see economic value in it, particularly in these hard economic times," explains one managing partner. A change in mentality is noted among clients. Whereas previously their approach was often reactionary, they are now considering IP strategically. "They're getting savvier about IP. Why are we doing this? Where do we see value? How does the IP fit our business plan?" adds the managing partner.

While the international aspect of the prosecution business has been slightly improving, or at worst remaining steady, domestic filing numbers are dropping. On the trade mark side, this can be attributed to a preference for the Community trade mark. There is, however, a more distinct reason for the decline in national patent applications. "There used to be a personal tax break where you could get income received under a patent tax-free. That was abolished overnight. As a result, if you look at the Irish office statistics, they've been dropping on the patent side," says one partner. Although the reform was implemented in November 2010, attorneys note there has been "a lag" in its true effect. Despite the demise of this benefit, there are other incentives that are encouraging Irish businesses to acquire and generate intellectual property. "In Ireland there's special treatment of intangible assets. I see it a bit like depreciation. If an Irish company acquires an IP portfolio, or any other intangible asset, it can effectively write down the cost of it in the books in the same way as if it bought a photocopier, so it effectively gets a tax off-set," says one partner.

The only recent amendment to Ireland's IP legislation was the removal of the requirement to file English translations of European patents granted in French or German, so the country could join the London Agreement. The protracted change saw Ireland accede to the Agreement in September 2012, but it is yet to have any tangible affect, with firms reporting no change in numbers and that "people are still recoding addresses for services in Ireland". "We haven't seen it have any dramatic impact on our filing numbers because it only applies to patents that were granted from September onwards. We are only just getting to the threshold of cases to which that applies. Probably the next six months will tell us whether it's having a positive or negative impact on the amount of people validating patents in Ireland," contemplates one attorney.

A further legislative development relevant to the IP community occurred in 2012. Following on from decisions in the UPC piracy case in 2010, where a judge was unable to place an injunction on the ISP (internet service provider) under Irish legislation despite the fact its customers were found to be downloading illegal content, the government introduced a statutory instrument permitting such action.

Elsewhere, the Law Society of Ireland has taken steps to ensure IP is high on the country's agenda, establishing the Intellectual Property Law Committee in 2012. A similar government-led initiative launched the previous year, The Copyright Review Committee, has stalled somewhat. The findings of the Committee, which was established to look at how the country's existing legislation might be improved, were due in January but are yet to be seen. "It's more a lack of resources than a lack of will," is one partner's explanation. One thing which it is reputedly considering is how to make litigation cheaper.

Historically, Ireland is not a particularly litigious country when it comes to IP, because the costs are so prohibitive. "There tends to only be one or two cases a year and that tends to be pharma. There are a lot of threats of initiations of proceedings and warning letters, but very few of those make their way to a full court hearing. Often the costs are going to be on a par with, or of a multiple of the value in the case, so it's often not worth it," says one managing partner.

Relatively, however, trade mark contentious work is on the rise. "We are doing a lot more cease and desist work. I would say each week one or two are sent out on behalf of clients that are either settled or we have a couple which have progressed to litigation," says one partner, reasoning: "Companies are more conscious of their IP and prepared to do what's necessary to protect it." The McCambridge bakeries passing-off case, which was the first matter of this kind to reach the Supreme Court in 30 years, and Ryanair's "screen-scraping" disputes with various online competitors, are two prominent, recent examples.