A Look Back ' The Last 12 Months In Intellectual Property

Published date09 March 2022
Subject MatterIntellectual Property, Copyright, Patent, Trademark
Law FirmArthur Cox
AuthorMs Olivia Mullooly, Gavin Woods, Naoise Cosgrove, Alison Peate, Isabel Cooke (Trainee) and Shannon Buckley Barnes

New legislation in 2021

Digital Single Market (DSM) Copyright Directive: On 12 November 2021 the European Union (Copyright and Related Rights in the Digital Single Market) Regulations 2021 (the "DSM Regulations") were signed into Irish law. They became effective on the same date, implementing the DSM Copyright Directive in Ireland. The DSM Directive was designed to provide a framework for a more modern copyright legislation that will strengthen the rights and protections afforded to various categories of rights holders in the digital economy. Arthur Cox has published a number of articles on the DSM Directive, available in parts one, two, three, and four.

New IP Court Lists

The Irish Court system underwent a number of changes in 2021 to enhance procedures for intellectual property actions brought in this jurisdiction. The goal of these changes is to ensure that such disputes are dealt with as efficiently, expeditiously and as cost effectively as possible.

The Commercial Court, available for accelerated hearing of significant commercial disputes, will now have a separate Intellectual Property and Technology List sub-division with a number of key new features. In addition, the Circuit Court Rules have been amended to extend its jurisdiction to a range of IP disputes. The Circuit Court's jurisdiction is for claims up to ?75,000. A full briefing on the changes is available here.

Case law update


Gilead Sciences Inc & Gilead Biopharmaceuticals Ireland UC -v- Mylan SAS Generics (UK) Ltd & Anor [2021] IECA 22

The Irish Court of Appeal upheld the decision of the High Court revoking Gilead Sciences' supplemental protection certificate (SPC) for Truvada, a combination therapy used to treat HIV. SPCs provide an additional period of patent protection (to a maximum of 5 years) for a medicinal product, to compensate for the time that may be required to obtain permission to market a regulated product. This case concerned the validity of the SPC, which the High Court had found against, ruling that the underlying patent is relevant to not just HIV but to a number of important viruses and had "very good activity" against hepatitis B. The High Court did not accept Gilead's claim that HIV is the principal or most important focus of the patent, and as such the subsequent SPC was revoked. The Court of Appeal upheld this, finding the judgment of the High Court to be "unimpeachable".

Novartis Pharma AG v Eli Lilly Nederland BV & Ors [2021] IEHC 814

The High Court refused an application by Eli Lilly to modularise the trial of the issues the subject of the proceedings. The judgment arose in the context of an ongoing dispute between the parties regarding firstly, a European patent owned by Novartis which Eli Lilly alleges should not have been granted as it lacks novelty and secondly, patent infringement proceedings taken by Novartis against Eli Lilly in relation to a competing product which it alleges infringes its patent. The patent the subject of the proceedings is due to expire on 2 June 2024. The Court refused the application for modularisation on the basis of the risk of prejudice to Novartis. The Court concluded that if modularisation was granted and if Novartis succeeded in its infringement action, it was likely that the patent would have expired before Novartis would have had an opportunity to apply for an injunction. The Court also held that on the balance of probabilities the primary reason for the application was not for the benefit of both parties as is required but rather for the tactical advantage that would accrue to Eli Lily as Novartis would likely miss the opportunity to seek injunctive relief.

In the course of its judgment the Court emphasised the strong public interest in saving Court time through modularisation and commented that were it not for the particular facts of the present case which did not favour the grant of a modularisation order, "...

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