The Claims

The claims (PDF 0.05 MB), which follow the description, define the scope of the invention and the legal protection conferred by the patent when granted.

The claims must define the matter for which protection is sought in terms of its technical features. They must be clear and concise and be supported by the description.

There are two kinds of claim, independent and dependent. An independent claim defines an embodiment of an invention, comprising all its essential features. Dependent claims define further embodiments further characterised by desirable, but non-essential, features or components. These claims are dependent on the independent claim that gives the basic invention.Claims must not speculate on the perceived advantages of the invention, but restrict themselves to embodiments and technical features.

The advantages of the invention may be outlined in the description.The specification may contain independent claims in different categories, e.g., for each of a product, the process for making that product, and specially adapted apparatus used in that process.

However, all the independent claims must relate to the same basic inventive concept to ensure unity of invention.If there are several claims, they should be numbered consecutively.If the claims are not filed with the application they must be filed within 12 months of the filing date or if priority has been claimed within 12 months of the priority date.

Minimum requirements for a Filing Date

It is possible to secure a filing date without a fully completed patent application, as long as each of the following is submitted:

A indication that a patent is sought

Information identifying the applicant

A description of the invention, and
The prescribed fee
An application made in this manner will have to be followed by a formally completed application and no additional subject matter should be added to the application beyond that contained in the original filing.If a patent application does not comply with a requirement of the Act or the Rules the applicant is given an opportunity to meet that requirement within certain time limits e.g. a period of 12 months from the date of filing (or if priority has been claimed, from the date of priority) is prescribed for the filing of the claims and abstract.The consequence of non-compliance with time limits is that the application may be refused or deemed withdrawn. Please note certain time limits are absolute.

How to Apply

How to apply for a patent

A patent application consists of:

A request for the grant of a patent (completing the application Form No.1 issufficient to comply with this requirement).
A specification containing a description of the invention, one or more claims defining the matter for which protection is sought and any drawings needed for the disclosure.
An abstract containing a summary of the matter contained in the specification.
The application must be accompanied by the appropriate application fee.
Patents Application Form No. 1 (PDF 0.01 MB)
Guide to Completing Patent Application Form (PDF 0.02 MB)

Who may apply for a patent?
Any person may make an application for a patent; the right to a patent belongs to the inventor or the inventors' successor in title. However, if an employee makes an invention in the course of his/her employment the right to the patent may belong to the employer. An application may be filed by joint applicants.Where a patent agent is appointed by an applicant, all enquiries should be directed to that agent and all official communications from the Patents Office are with the appointed agent.

Divisional patent application
Applications disclosing more than one invention are said to lack "unity of invention" Where this happens, the applicant must remove all the subject matter that does not relate to the first invention. However, such subject matter may be "divided out" into new patent applications for each such invention. These "divisional applications" keep the filing date of the original application, but are otherwise examined as applications in their own right.

Scope of patent application
Once the application has been filed, the specification may not be amended in any way that extends the scope of the subject matter. While it is possible to to edit a specification - perhaps in the interests of better expressing something that is present from the start, or removing subject matter which the applicant no longer wishes to be part of the protected invention - anything that adds in a substantive way to the original filing will be refused

Excluded Subject Matter

Excluded Subject Matter and exceptions to patentability
Not all inventions qualify for the grant of a patent. The Patents Act specifically excludes the following subjects from patentability:

(i) Discoveries and aesthetic creations:
A discovery, a scientific theory or a mathematical method;
An aesthetic creation;
A scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program; or
The presentation of information.
Although such subject matter or activities are not patentable their use or application may be patentable. For example, a scheme or method for playing a game is not patentable, but it is possible to obtain patent protection for a novel apparatus for playing a game. Also, the exclusion from patentability of computer programs does not prevent the granting of patents for inventions involving the use of such programs, as long as a technical effect is achieved by its implementation.

Software
While it is not possible to obtain a patent on software per se, patents may be granted for inventions requiring the use of software to achieve their purpose. This, however, is conditional on the software having a "technical effect" when the programme is run. Such effect may, for example, be found in the control of an industrial process or in the internal functioning of the computer itself.

(ii) Methods of medical and veterinary treatments:
Methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are not patentable.This exclusion does not apply to products, substances or compositions for use in any of these methods, i.e. medicines or surgical instruments.

(iii) Plant and animal varieties or essentially biological processes for their production.
Plant varieties may be protected by other means, such as through the Office of the Controller of Plant Breeders Rights*. However if the invention concerns plants and animals and if the technical feasibility of the invention is not confined to a particular plant or animal variety, the invention may be patentable.

(iv) Inventions the publication or exploitation of which would be contrary to public order or morality.
This exclusion is subject to the proviso that the exploitation of such inventions is not deemed to be so contrary merely because it is prohibited in law.

Why Patent Inventions?

Since a patent confers legal rights concerning the exploitation of an invention, it allows the owner the best opportunity to profit from the invention by preventing others from copying it. An inventor does not need a patent in order to exploit an invention; but without a patent the inventor would not be able to prevent others from copying the invention.

Inventors are often not in a position to produce or market their invention from their own resources. Patents, being a form of commercial property, provide a basis for owners to negotiate with potential investors or other business partners while preserving their intellectual property rights.The prospect of gaining profits from this special form of protection serves to promote research activity and to give an incentive for new investment. Income derived from a patented invention developed in Ireland may be eligible for special favourable tax treatment.

What is Patentable?

In order to be eligible for the grant of a valid patent the invention must be new, involve an inventive step and be capable of industrial application.

Novelty: An invention is considered new if it does not form part of the state of the art. The state of the art comprises everything made available to the public in any way, anywhere in the world, before the date of filing of the patent application.

Inventive step: An invention is considered as involving an inventive step if it is not obvious to a person skilled in that area of technology, having regard to the state of the art.

Industrial applicability: The invention must be capable of being made or used in some kind of industry, including agriculture.

Supplementary Protection Certificate

A supplementary protection certificate (SPC) may be obtained in relation to individual medicinal and plant protection products disclosed in a patent. The certificate extends the protection conferred by the patent beyond its 20-year term for a period of up to five years.

Medicinal products, and many agricultural chemicals, require market authorisation before they can be sold commercially. Though this process is independent of the patent granting procedure, the owner of such inventions may find that though they have a patent for their product, they may still have to wait for a number of years before they obtain the necessary authorisation to market it. SPCs compensate the patentee for this loss of time, by extending the patent protection for specific products by up to five years.

An SPC does not extend the duration of the patent itself, but only the protection for the specific product subject to market authorisation.

Search Report/Evidence of Novelty

For a Full-term patent to be granted, the novelty and non-obviousness of the invention must be established. There are two ways of achieving this; by means of a Search Report, or the provision of Evidence of Novelty.

Search Report
A Search Report has to be requested by the applicant to determine the novelty and non-obviousness of the invention of the patent application. An applicant must request it within twenty-one months of the application's filing date or the priority date, if priority was claimed. Otherwise, the application will be refused. The Controller, upon receipt of this request accompanied by the prescribed fee, will have a Search Report on the invention prepared.A Search Report will list published documents considered relevant in assessing whether the claimed invention is new and not an obvious development or adaptation of what is already known. A copy of the Search Report will be issued to the applicant.Unless the patent application is withdrawn within two months of issue of the Report to the applicant, the Report is then published by the Controller; i.e. this means that anyone can view the Search Report. Withdrawal of the application might arise where the applicant, in the light of the Search Report, concluded that there was no point in taking the patent application further. If the patent application is not withdrawn the patent agent acting for the applicant will be required either to make amendments to the application based on the Search Report or provide a statement that no amendment is considered necessary. Failure to comply with these requirements may lead to the refusal of the application.

Evidence of Novelty
There is an alternative to requesting the preparation by the Controller of a Search Report. An applicant who has also applied for a patent for the same invention to the United Kingdom, German or European Patent Offices, or who has applied under the Patent Co-operation Treaty, can submit a statement to that effect; the statement must be submitted within the twenty-one months of the application's filing date or the priority date, claimed. In this situation, a copy of the Search Report prepared in respect of the foreign application, or a copy of the published specification of the patent granted by either the UK or German or the European Patent Office may be submitted to the Controller as evidence of Novelty and must be produced by the applicant within two months of the publication of the search report or grant of the patent, accompanied by the prescribed fee.Evidence of Novelty will be published unless the application is withdrawn.If the application is not withdrawn the patent agent acting for the applicant will be required either to amend the application in the light of the Search Report or the patent specification (whichever applies in the particular case) or to furnish a statement that no amendment is considered necessary. Failure to comply with this requirement may lead to the refusal of the application.

(The procedures relating to the search report/evidence of novelty do not apply to applications for short-term patents)

Types of Patents

(1) Full-term patents
These patents allow the inventor/applicant protection for up to 20 years. For a full-term patent to be granted, the applicant must provide evidence of the invention's novelty. This can be done by requesting a "Search Report" from the Office, or by submitting evidence of novelty.

(2) Short-term patents
Short-term patents are designed to assist smaller inventors. These patents can also suit inventions where a shorter market life is expected, or inventions that are not technologically complex. These patents last for a maximum of ten years, and the applicant does not need to provide evidence of the invention's novelty. This effectively reduces the costs and length of time involved in getting an invention patented.

Because procedures are generally simpler, short-term patents can be granted reasonably quickly and well within 12 months from the filing date if requirements are complied with promptly. If applications are made for both a short-term patent and a full-term patent in respect of the same invention, the short-term patent will become void when the full-term patent is granted.

With some exceptions, the provisions relating to full-term patent applications and patents also apply to short-term patent applications and short-term patents. The main exceptions are:
(i) The specification of a short-term patent application must not include more than five claims. The requirements of novelty and industrial applicability apply but instead of non-obviousness, it is sufficient that the invention be "not clearly lacking an inventive step". Neither a search report nor evidence of novelty in the form of a foreign patent specification is required in order that a short-term patent be granted.

(ii) The filing fee, grant fee and renewal fees are only 50% of those for a full-term patent; and generally the procedures are simpler. This will be of particular interest to small enterprises and single inventors.

(iii) Infringement proceedings can be brought in the Circuit Court (or in the High Court, as is required for full-term patents) irrespective of the amount of a claim.

(iv) Before taking an action for infringement the owner of the short-term patent must either (a) request the Controller to have a search report prepared and send a copy of the report to the alleged infringer or (b) if a foreign search report or patent specification is available, furnish copies of such reports to the Controller as well as the alleged infringer. The reports referred to at (a) or (b) are published by the Controller.

(v) A person other than the owner of the short-term patent whose legitimate business interests require a novelty search and who can show grounds for suspecting that the invention lacks novelty or is clearly lacking in inventive step may also request theController to have a search report prepared. Such a search report is published by the Controller.

What is a patent?

A patent confers upon its holder, for a limited period, the right to exclude others from exploiting (making, using, selling, importing) the patented invention, except with the consent of the owner of the patent.

A patent is a form of 'industrial property', which can be assigned, transferred, licensed or used by the owner.

Patents are territorial, in effect e.g. an Irish patent is only valid in Ireland.

How long does a patent last?
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, annual renewal fees must be paid each year from the third year.

Patent pending
This is a term often used on products to alert competitors that an application has been made to protect the invention.