MISCELLANEOUS
Last major update: July 2009
| Proceedings in Scotland | 8.01-8.21 |
| General | 8.01-8.09 |
| Terminology | 8.10 |
| Evidence | 8.11-8.16 |
| Privilege | 8.17 |
| Costs | 8.18 |
| Appeals | 8.19-8.21 |
| Proceedings under the Patent Cooperation Treaty | 8.22-8.24 |
| Administrative Justice and Tribunals Council; Judicial Studies Board | 8.25-2.26 |
| Supplementary Protection Certificate hearings | 8.27-8.30 |
| Provision of evidence by officials | 8.31-8.32 |
| Retention of files in the Office | 8.33 |
Previous chapter: Chapter 7
PROCEEDINGS IN SCOTLAND
General
8.01Inter partes proceedings may be held in Scotland in appropriate circumstances where the proceedings are taking place under sections 8, 12, 37, 40(1) or (2), 41(8), 61(3), 71 or 72, of the Patents Act 1977, as provided in section 123(2)(f).
8.02Rule 88 of the Patents Rules 2007 provides that where there is more than one party to the proceedings, and any party applies to the comptroller, the proceedings will be held in Scotland if all the parties consent or if the comptroller considers it appropriate.
8.03The situation is likely to arise where one party resides in Scotland and all the parties agree to it being held there; or if all the parties reside there and one of them makes the necessary request, unless it is shown that it would be unduly burdensome to any other party.
8.04The comptroller can also agree to the hearing being held in Scotland even where none of the parties resides there, if one party requests it and the balance of convenience is in favour.
8.05An application for a hearing in Scotland should be made in reasonable time to allow the other parties to be consulted and where necessary for the comptroller to decide whether to grant the application. Time will also be needed for the administrative arrangements for the hearing to be made. The party making the application should set out the reasons for the application and should propose a venue on neutral ground or otherwise acceptable to both parties, or a locality for the hearing.
8.06Where the proceedings are to be held in Scotland, the hearing officer should notify the hearings clerk who will then liaise with the parties on the venue and if necessary approach the relevant court authorities with a view to hiring a local courtroom.
8.07There is no appeal from any decision of the comptroller under rule 88 whether to hold hearings in Scotland. However, such a decision would appear to be open to judicial review (see Chapter 7).
8.08Where proceedings are held in Scotland, should it be necessary to have regard to the procedure which would be adopted by the court in the circumstances of the case, the hearing officer should refer to the Rules of the Court of Session which can be found at:
http://www.scotcourts.gov.uk/session/rules/index.aspIn addition, the Civil Evidence (Scotland) Act 1988 applies to civil proceedings before a tribunal and would thus appear to apply to proceedings before the comptroller. However, the provisions of the Patents Act 1977 and Patents Rules 2007 take precedence.
8.09There is no specific equivalent to Patents Rule 88 in the Design Right (Proceedings before Comptroller) Rules 1989. However, it seems clear that proceedings in Scotland are equally contemplated (see rules 18(4) and 22(1)), and thus that similar considerations must apply.
Terminology
8.10There are some differences in terminology in Scottish proceedings from those in England and Wales, for instance:-
- - claimant = pursuer
- - costs = expenses
- - court order = interlocutor
- - defendant = defender
- - disclosure = recovery
- - High Court = Court of Session
- - trial = proof
Evidence
8.11Under rule 86 of the Patents Rules 2007, in Scotland the comptroller has the same powers as a judge of the Court of Session as regards the attendance of witnesses and the discovery and production of documents. The comptroller's powers in relation to the giving of evidence are governed in Scotland by rule 87 as they are in England and Wales. Under rule 18(4) of the Design Right (Proceedings before Comptroller) Rules 1989, in Scotland the comptroller has all the powers of a Lord Ordinary of the Court of Session in relation to the giving of evidence, other than the power to punish summarily for contempt of court, and all the powers of the Court of Session in relation to the attendance of witnesses and the recovery and production of documents.
8.12The powers of the Court of Session in Scotland are set out section 5 of the Court of Session Act 1988.
8.13In Scotland, the Rules of the Court of Session 1994 chapter 36.10 provide as follows:
FORM OF OATH FOR WITNESSES
I swear by Almighty God that I will tell the truth, the whole truth and nothing but the truth
FORM OF AFFIRMATION FOR WITNESSES
I solemnly, sincerely and truly declare and affirm that I will tell the truth, the whole truth and nothing but the truth
In accordance with Scottish practice, it is usual for the witness to swear with uplifted hand, and the hearing officer should say the words for the witness to repeat.
8.14The oath taken in the usual manner in Scotland is also acceptable in England and Wales ( Oaths Act 1978, section 3).
8.15The admission of hearsay in civil proceedings in Scotland is governed by section 2 of the Civil Evidence (Scotland) Act 1988 which provides:
2.-(1) In any civil proceedings -
(a) evidence shall not be excluded solely on the ground that it is hearsay;
(b) a statement made by a person otherwise than in the course of the proof shall be admissible as evidence of any matter contained in the statement of which direct oral evidence by that person would be admissible; and
(c) the court, or as the case may be the jury, if satisfied that any fact has been established by evidence in those proceedings, shall be entitled to find that fact proved by the evidence notwithstanding that the evidence is hearsay.
8.16Thus, although the position in Scotland was formerly markedly different to that in England and Wales, this difference has effectively been removed through the introduction of the Civil Evidence Act 1995 in the latter.
Privilege
8.17Express provisions for communications with solicitors or in Scotland relating to patent proceedings and with patent agents are contained in section 105 of the Patents Act 1977 and section 280 of the Copyright, Designs and Patents Act 1988 respectively.
Costs
8.18In a similar manner to that in England and Wales, the hearing officer has the power to award costs (in Scotland termed "expenses") in proceedings before the comptroller under the provisions of the Patents Act 1949, the Patents Act 1977 and the Copyright, Designs and Patents Act 1988.
Appeals
8.19Appeals under section 97(4) of the Patents Act 1977 and section 251 of the Copyright, Designs and Patents Act 1988 (on decisions under section 246) lie to the Court of Session and are heard in the Outer House by a nominated intellectual property judge. However, under section 249 of the 1988 Act, appeals from decisions under sections 247 and 248 on design right licence of right matters lie to the Registered Designs Appeal Tribunal: in Scotland the Tribunal consists of a nominated judge of the Court of Session.
8.20The procedure for appeal is prescribed by chapter 41 part iii of the Rules of the Court of Session 1994 - "Appeals in form 41.19". Chapter 55.14, part of the chapter on "Causes related to intellectual property", overrides some of the general appeal provisions in chapter 41 and provides that appeals from decisions under the Patents Act 1977 or section 246 of the Copyright, Designs and Patents Act 1988 shall be lodged within 14 days in the case of a decision on a matter of procedure, or within 6 weeks on any other matter, taken from the date of the decision. Considerations in relation to appeals from decisions under sections 247 and 248 of the Copyright, Designs and Patents Act 1988 to the Registered Designs Appeal Tribunal are explained in Chapter 7 under "Appeals to the Registered Designs Appeal Tribunal".
8.21As provided by 55.14(10), the appeal is a re-hearing, rather than a review as is the case in England and Wales under Part 52 of the Civil Procedure Rules (see Chapter 7). However, evidence additional to that led before the comptroller may be led only with the leave of the court.
PROCEEDINGS UNDER THE PATENT COOPERATION TREATY
8.22There is no provision in the PCT for hearings in respect of any matters which come before the Office in its capacity as receiving office under the Treaty. However, it is established practice that the applicant should be offered a hearing to determine any dispute which has not been resolved by the International Unit (who act as the receiving office).
8.23Such decisions are not open to appeal but are subject to judicial review (see for example R v The Comptroller-General-General of Patents ex parte Celltech Limited [1991] RPC 475).
8.24Any dispute under section 89, 89A or 89B of the Patents Act 1977 regarding the entry of any application into the national phase or following such entry, is subject to a hearing and appeal as in the case of regular national filing.
ADMINISTRATIVE JUSTICE AND TRIBUNALS COUNCIL; JUDICIAL STUDIES BOARD
8.25The Administrative Justice and Tribunals Council has a statutory duty to keep under review the constitution and working of the tribunals under its supervision. As a result, from time to time a member of the Council (or its Scottish Committee, or its Welsh Committee) may attend a hearing. The Divisional Director responsible for litigtion should be informed when this occurs.
8.26The Council also seeks to ensure that tribunals are open, fair, impartial and accessible to users. To that end it promotes the provision of appropriate guidance and the sharing of best practice (see, eg, its publication "Framework of Standards for Tribunals"). The Council works closely with the Judicial Studies Board, a non-departmental public body whose Tribunals Committee has responsibility for supervising training for tribunal chairmen and members. The Board has published guidance on tribunal competence; "Tribunal Competencies; Qualities and Abilities in Action". The standards in these framework documents apply where relevant to the comptroller's tribunal functions and, based on these standards, the Patents Directorate has drawn up a framework of competences for hearing officers (see Chapter 4).
SUPPLEMENTARY PROTECTION CERTIFICATE HEARINGS
8.27Supplementary Protection Certificates (SPCs) are issued under Council Regulation (EEC) No.1768/92 for medicinal products and Regulation (EC) No.1610/96 of the European Parliament and of the Council for plant protection products. Extensions to SPCs are issued under Regulation (EC) No.1901/2006 of the European Parliament and of the Council for medicinal products that are tested for paediatric use. Most disputes will arise ex parte during the examination of the application for a SPC or for a paediatric testing extension. Hearings are therefore taken by the Deputy Director of the examining group in which SPCs are examined (presently PD/Ex06) or another DD familiar with them, and the guidance in Chapter 6 for ex parte hearings applies mutatis mutandis.
8.28Article 15(2) of 1768/92, Article 15a(2) of 1768/92 inserted by Article 52(8) of 1901/2006 and Article 15 (2) of 1610/96 allow any person to bring an action for a declaration of invalidity of a granted supplementary protection certificate, or revocation of a paediatric extension, before the body responsible under national law for the revocation of the corresponding basic patent. Thus, it is possible for the Office to be involved in inter partes proceedings in respect of SPCs but to date this has not happened.
8.29The headnote to a decision issued in respect of a SPC should identify the legislation as:
- COUNCIL REGULATION (EEC) NO. 1768/92
- and/or
- REGULATION (EC) NO. 1901/2006 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL
- or
- REGULATION (EC) NO. 1610/96 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL
and should identify the application or certificate by its normal identifying number following the format; "SPC/GB/yy/abc" (the granted certificate retaining the same number as the application).
8.30It follows from rules 63.1(2)(e) and 63.17 of the Civil Procedure Rules 1998 that appeals against Office decisions are heard before the Patents Court in the same manner as for national patents. Because the Regulations are Community legislation, the question of reference to the European Court of Justice (see Chapter 1) may be more likely to arise than in other Office proceedings.
PROVISION OF EVIDENCE BY OFFICIALS
8.31From time to time the Office is asked to provide a witness statement for use in court proceeding. For example, it may be asked to explain the normal Office procedures for processing patent applications or what happened on a particular case. Any such request should be notified to Legal Division, who keep a file of statements supplied in the past.
8.32As with any evidence to be used in legal proceedings, it is important to ensure that the officer who provides the witness statement can speak with authority and personal knowledge of the facts in question.
RETENTION OF FILES IN THE OFFICE
8.33Normally the official files of patents and patent applications are disposed of 5 years after the last action or renewal. However, Litigation Section will automatically arrange for the files of all inter partes cases on which a decision has been issued, and all ex parte cases for which there has been a court judgment on appeal, to be retained as "precedent cases". These will be retained indefinitely subject to periodical confirmation. For other ex parte cases the decision and any published patent specification should normally suffice. The file will therefore be retained as a precedent case only for exceptional reasons, and in such cases the hearing officer should instruct Litigation Section accordingly. The Office now operates electronic case files on the Patents Electronic Case System (PECS) and in due course all litigation files will be PECS files.
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