Last major update: July 2009
0.01This Manual is intended to provide guidance as to the law and procedure concerning patent and design right hearings held in the Patents Directorate (PD) on behalf of the comptroller. It does not provide guidance on matters of substantive patent and design right law. For patents, this is available in the Manual of Patent Practice (MoPP) but there is as yet no corresponding manual covering design right.
0.02The Directorate's Litigation Section plays an important support role in hearings, but their procedures are covered by a separate Litigation Manual and are only mentioned in this Manual so far as is necessary for completeness.
0.03This Manual embraces both inter partes and ex parte proceedings. The latter are usually more straightforward and give rise to fewer procedural problems, and because of this the emphasis in Chapters 1 to 5 is very much on the former. For convenience, Chapters 1 to 5 are written primarily in terms of proceedings involving two parties, but of course the same principles apply if more than two parties are involved.
0.04Much of the guidance in these chapters is nevertheless relevant to ex parte proceedings. Chapter 6 on these does not purport to be a self-contained guide: instead it highlights the differences between ex parte and inter partes proceedings and matters of particular relevance to the former. It should be read in conjunction with Chapters 1 to 5.
0.05Statements made in this Manual (and also the Manual of Patent Practice and the Litigation Manual) have no legal authority. Authority for any action must come from the law, not this Manual. Further, where the legislation gives the comptroller discretion, official guidelines such as this Manual may not fetter him in the exercise of that discretion by purporting to lay down rigid rules which prevent him responding to the merits of each case. Thus it is always open to a hearing officer to decide, in the light of the facts of a particular case and/or the arguments advanced by the parties, that the guidance in this Manual should not be followed.
0.06Indeed, this Manual makes no attempt to provide guidance on all the issues that might arise, or that have arisen in the past. Instead, it tries to point to the basic principles that should be followed. It refers to past cases where these help to establish or clarify general principles. Where it seems helpful to do so, it also gives examples of past cases in which the topic in question has arisen. Whilst these examples are never likely to be on all fours with a case currently under consideration, they may provide pointers as to how questions in this area have been tackled in the past.
Impact of the reform of civil litigation
0.07Except where modified or superseded by subsequent changes in practice, this Manual reflects the changes which were introduced as a result of the Office's review of its tribunal functions following Lord Woolf's report Access to Justice (see Tribunal Practice Notices 1/2000 and 2/2000, reproduced at [2000] RPC 587 and 598). Lord Woolf's recommendations are implemented, so far as the courts are concerned, in the Civil Procedure Rules 1998: the relevance of these Rules to proceedings before the Comptroller is explained in Chapter 1.
0.07.1This manual also reflects changes in case management introduced with the Patents Rules 2007 and those set out in Tribunal Practice Notice 3/2009.
Reference material
0.08Many precedent cases and reference books on intellectual property and other law are available in the Office for the use of hearing officers, and the Office also has access to the Lexis™ database and makes use of public databases such as the British and Irish Legal Information Institute and the Courts Service. References to "Civil Procedure" (also known as the "White Book") containing comprehensive guidance to the Civil Procedure Rules are to the 2009 edition.
0.09The meanings of legal terms used in precedent cases will sometimes be found in the glossary at the end of the Litigation Manual. Failing that, they can usually be found in legal textbooks or dictionaries.
0.09.1Where sources are available, hyperlinks have been provided to reference material. However not all document collections or older references are available in electronic form.
Corrections and suggestions
0.10We welcome corrections to the information contained in this Manual, and also suggestions for improvement and information on broken or missing links. They should be addressed to the Editor:Peter Marchant
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
E-mail: peter.marchant@ipo.gov.uk