Protecting Your Intellectual Property in Ireland
Several general principles are important for effective management of intellectual property (IP) rights in Ireland. First, it is important to have an overall strategy to protect your IP. Second, IP may be protected differently in Ireland than in the United States. Third, rights must be registered and enforced in Ireland under local laws. For example, your United States trademark registrations, design or utility patent titles will not protect you in Ireland without further administrative procedures in the corresponding regional (EU) or local levels.
Most copyrighted works created in the United States will be automatically protected in Ireland from the moment of creation or publication according to international agreements. However, the extension of protection will vary according to the laws of Ireland and of the EU. Protection against unauthorized use will vary depending on the national laws of each country.
Obtaining a utility patent in Member States of the European Union is based on a first-to-file system: the first person or entity to register the patent becomes the title holder. Likewise, most trademark and design rights -similar to a design patent- are based on a first-to-file registration system. Therefore, you should consider how to obtain patent, design, or trademark protection before introducing your products or services into the EU market. Better yet, you should consider having an IP strategy for the whole world even before entering into foreign markets, to ensure that you do not lose the possibility to obtain IP protection outside the United States.
Trademark and design titles can be obtained for the whole of the EU, at the European Union Intellectual Property Office - EUIPO. Individual titles for Ireland can also be obtained at the corresponding IP office. Similarly, a bundle of patent titles can be obtained for various countries through a simplified process at the European Patent Office; an individual patent title can be directly obtained from the patent office of Ireland. A system to obtain a single patent with uniform protection and equal effect in several Member States of the European Union is currently being developed and should be in place by late 2022 or early 2023. There are also other international registration systems like the Patent Cooperation Treaty for patents or the Madrid Protocol for trademarks, that could be useful to facilitate the protection of your IP in many countries of the world, including Ireland.
It is vital that companies understand that intellectual property rights are primarily private rights and that the United States government cannot enforce them for private individuals in the EU. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from local legal counsel or IP consultants who are experts in Irish and EU law. The U.S. Commercial Service can provide a list of local lawyers upon request.
While the United States government stands ready to assist, there is little that can be done if the rights holders have not taken these fundamental steps necessary to secure and enforce their IP in a timely fashion. Moreover, in many countries rights holders who delay enforcement of their rights may find that their rights have been eroded or abrogated due to legal doctrines such as statutes of limitations, laches, estoppel, or unreasonable delay in prosecuting a lawsuit. In no instance should United States government advice be regarded as a substitute for the responsibility of a rights holder to promptly pursue its case.
It is always advisable to conduct due diligence on potential partners. A good partner is an important ally in protecting IP rights. Consider carefully whether to permit your partner to register IP rights on your behalf. Doing so may create a risk that your partner will list itself as the IP owner and fail to transfer the rights should the partnership end. Keep an eye on your cost structure and reduce the margins and the incentive of would-be bad faith actors. Projects and sales in Ireland and the EU require constant attention. Work with legal counsel familiar with EU laws to create a solid contract that includes non-compete clauses and confidentiality/non-disclosure provisions.
It is also recommended that small and medium-size companies understand the importance of working together with trade associations and organizations to support efforts to protect IP and stop counterfeiting. There are a number of these organizations, both Irish and U.S.-based including:
The U.S. Chamber and local American Chambers of Commerce
National Association of Manufacturers (NAM)
International Intellectual Property Alliance (IIPA)
International Trademark Association (INTA)
The Coalition Against Counterfeiting and Piracy
International Anti-Counterfeiting Coalition (IACC)
Pharmaceutical Research and Manufacturers of America (PhRMA)
Biotechnology Industry Organization (BIO)
A wealth of information on protecting IP is freely available to U.S. rights holders. Some excellent resources for companies regarding intellectual property include:
For information about patent, trademark, or copyright issues — including enforcement issues in the US and other countries — call the STOP! Hotline: 1-866-999-HALT or visit https://www.stopfakes.gov/welcome.
For more information about registering trademarks and patents (both in the U.S. as well as in foreign countries), contact the U.S. Patent and Trademark Office (USPTO) at: 1-800-786-9199, or visit https://www.uspto.gov/trademarks.
For more information about registering for copyright protection in the United States, contact the U.S. Copyright Office at: 1-202-707-5959, or visit https://www.copyright.gov/.
For more information about how to evaluate, protect, and enforce intellectual property rights and how these rights may be important for businesses visit the “Resources” section of the STOPfakes website at https://www.stopfakes.gov/business-guide-to-intellectual-property-rights.
For information on obtaining and enforcing intellectual property rights and market-specific IP Toolkits visit: https://www.stopfakes.gov/IPR-Toolkits. The toolkits contain detailed information on protecting and enforcing IP in specific markets (e.g. 2021 Ireland IPR Snapshot) as well as contact information for local IPR offices abroad and U.S. government officials available to assist SMEs.
In any foreign market companies should consider several general principles for effective protection of their intellectual property. For background, please link to our article on Protecting Intellectual Property and Stopfakes.gov for more resources.
The Office of the United States Trade Representative (USTR) publishes the Special 301 Report on an annual basis. This report provides a review of IP protection and enforcement for United States trading partners around the world. In the 2022 edition of the Report, USTR highlights the negative market access implications for U.S. producers due to the EU’s protection of geographical indications (GIs) and third-country markets.
The U.S. Department of Commerce has positioned IP attachés in key markets around the world. Here is the contact information for the European-based IP attachés:
Serving the EU, EFTA, and UK
Serving Central Eurasia and the Western Balkans
World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO) (based in Geneva, Switzerland)
For more information, contact ITA’s Office of Intellectual Property Rights Director, Stevan Mitchell at Stevan.Mitchell@trade.gov.
The Intellectual Property Office of Ireland (IPOI) is the national intellectual property agency responsible for the administration of Intellectual Property (IP) rights in Ireland. Its statutory functions are concerned with the granting of Patents and the registration of Trade Marks and Designs and the administration and maintenance of these industrial property rights (About Intellectual Property). The IPOI operates under the auspice of Department of Enterprise, Trade & Employment which is responsible for Ireland’s policy and legislation on IP that reflects developments in intellectual property policy and practice domestically, at EU level and in terms of international obligations to which Ireland is committed through various international agreements.
To access Ireland’s ICS, which includes information on the protection and enforcement of intellectual property rights, visit the U.S. Department of State Investment Climate Statement website.