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Most general counsel ‘on the fence’ on UPC
(L to R): Gerard Kelly and Hazel McDwyer of MCH LLP

01 May 2024 / ip Print

Most general counsel ‘on the fence’ on UPC

A survey of in-house lawyers carried out by Mason Hayes & Curran (MHC) has found that two-thirds (66%) remain undecided on how they would vote in a referendum on a Unified Patent Court (UPC).

A referendum is needed to approve the insertion of a new sub-section in the Constitution, allowing the transfer of jurisdiction in patent litigation from the Irish courts to the EU’s UPC, which has been in force in 17 member states since June 2023.

The vote had been planned for June, but has now been postponed by the Government – although it has said that it still believes that joining the court is “essential”.

‘Robust discussion’

The law firm says that its survey of 240 lawyers underscores the “pervasive uncertainty” surrounding the referendum.

Gerard Kelly (partner and head of intellectual-property law, MHC) said that the findings suggested that the decision to defer the referendum was the right move.

“With two-thirds of in-house lawyers still on the fence, it's clear there is a pressing need for more robust discussion on the pros and cons of joining the UPC.

“Before Ireland is asked to vote on such a significant legal reform, it is crucial that the electorate is aware of the implications for our national legal system and for businesses operating within it,” Kelly stated.

AI challenges

The MHC survey also found that nine out of ten businesses (90%) were not prepared (31%) or only ‘somewhat prepared’ (59%) to handle intellectual property (IP) challenges related to artificial intelligence (AI).

Kelly described the integration of AI into business processes as “inevitable”, adding that it brought several IP challenges.

“For example, last year the US District Court determined that an AI-generated artwork could not be protected by copyright, because it was not made by a human. This is consistent with findings in respect of inventions made solely by AI,” he said.

“Given our legislative requirements, it is unlikely that copyright or patent protection will be granted to works or inventions generated solely by AI in Ireland,” Kelly continued.

“From a client perspective, we might start to see more disputes in the European courts in respect of AI-generated works and the outputs used from AI models, so some care will be needed on how businesses embrace that change,” he concluded.

Copyright complexity

The law firm’s survey also highlighted broader enforcement challenges, with 32% of respondents saying that copyright was the most difficult type of IP protection to enforce.

This was followed closely by trademark (26%), and patent protection (22%).

Trade-secret protection was also noted as difficult by 20% of the surveyed lawyers.

This was followed closely by trademark (26%) and patent protection (22%).

Trade-secret protection was also noted as difficult by 20% of the surveyed lawyers.

Hazel McDwyer (intellectual-property law partner, MHC) said that the complexity of enforcing copyright protection was a growing concern for many of the firm’s clients.

“As content becomes increasingly digital, traditional enforcement mechanisms struggle to keep pace and legislation continues to play catch-up,” she stated.

Asked about the main issues faced by companies in managing IP, 44% of respondents identified keeping up with legislative changes as their main challenge. Other concerns included protection against infringement (25%), cost management (18%), and international enforcement (13%).

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