Tribunal Practice Notice (TPN 6/2007)

Practice in Patent Proceedings before the Comptroller

1. Introduction

1.1 This Tribunal Practice Notice (TPN) advises UK Intellectual Property Office customers of changes in the way the Office conducts inter partes patent hearings, other than reviews of opinions. The changes result from the introduction of the Patents Rules 2007. The purpose of the new rules, as far as they relate to inter partes proceedings, is to replace prescriptive rules which vary from one type of action to another, with a single flexible framework which applies to patent actions before the Comptroller. An exception is in the case of reviews of opinions, to which separate rules apply. The changes were the subject of consultation with users and continue recent developments in practice intended to simplify the conduct of hearings. This TPN introduces new practice under the rules intended to deal with proceedings flexibly and on a clear timetable.

1.2 The Patents Rules 2007 come into force on 17 December 2007. Part 7 of the Rules relates to proceedings (other than opinions) before the Comptroller. Part 8 relates to opinions and reviews of opinions. The new rules replace the Patents Rules 1995 as amended. The Patents Rules 2007 apply to all proceedings from 17 December 2007 including those already started. The new practice set out in this TPN will be applied to new proceedings from that date. Existing proceedings will continue on their current track (as is possible given the flexibility of the new rules) but elements of the new practice may be applied to them at the hearing officer’s discretion.

1.3 Practice up to the date of this Notice has been based on TPN 1/2000 together with some more recent developments, all of which have been consolidated from time to time into the Patent Hearings Manual (PHM) and the Litigation Manual. Unless otherwise stated in this Notice the practice in patent proceedings before the Comptroller remains as before.

1.4 The content of the present TPN has been incorporated into the December 2007 versions of the Patent Hearings Manual and the Litigation Manual, which are available from 17 December 2007. Practitioners may consequently rely on the manuals as up to date sources of information on practice, including that in this TPN, while the TPN itself serves the purpose of highlighting the new developments.

2. The New Rules

2.1 The main changes introduced by the new rules, insofar as they relate to patent proceedings before the Comptroller, are as follows:

2.2 The overriding objective. Although the Comptroller's jurisdiction is not governed by the Civil Procedure Rules (CPR), Office practice has been to follow CPR guidance as far as it is relevant to proceedings before the Comptroller, and in particular to adhere to the overriding objective set out in Part 1 of the CPR. New rule 74 introduces an overriding objective, equivalent to that in the CPR, for the disposal of cases before the Comptroller. Case management is not intended to change as a result of this rule but, as with the CPR, it places an obligation on the parties to help the Comptroller further this overriding objective.

2.3 Statements of case. The requirements in relation to starting proceedings do not differ materially from the previous arrangements. However the initiating statement is referred to in the new rules as a "statement of grounds" rather than a "statement of case". The statement of grounds and the counter-statement are now referred to generically as "statements of case". Statements of case are to be verified by means of a statement of truth, in the same way as witness statements, so that they can be given in evidence.

2.4 Oppositions. The rules draw a distinction between two types of opposition. Those (listed in Part 2 of Schedule 3 to the Rules) which start proceedings are launched by filing Form 15, while oppositions (listed in Part 3 of Schedule 3) which arise after proceedings have started in certain licensing actions, are launched by filing a counter-statement.

2.5 Time periods for counter-statement and evidence. For almost all types of proceedings, the new rules no longer prescribe time periods for filing the counter-statement and evidence. Normally 6 weeks will be allowed for the filing of counter-statements. By way of an exception for oppositions under section 47(6), section 52(1) and section 52(2)(b) (listed in Part 3 of Schedule 3 to the Rules) there is a prescribed period of four weeks for filing a counter-statement. Timetables for the filing of evidence will be determined in accordance with one of the prosecution routes set out below.

2.6 Ex parte proceedings. Ex parte proceedings are subject to the overriding objective and to other rules as provided by rule 73(2) and specified in Part 4 of Schedule 3. Practice in relation to ex parte hearings is not affected by this TPN.

2.7 Reviews of opinions. Reviews of opinions are governed by Part 8 of the Rules and Part 4 of Schedule 3. Part 5 of Schedule 3 also applies some provisions of Part 7 to the conduct of reviews. Practice in relation to opinions and reviews of opinions is not affected by this TPN.

2.8 Notifying interested parties. The new rules provide for the Comptroller to notify persons who it appears to him are likely to have an interest in the case. In determining who to notify, the Office will consider names that appear in the Register of Patents in relation to the patent or patent application the subject of the action, parties named in the statement of grounds filed by the claimant, and any other persons who it appears to the Comptroller on a case by case basis are likely to have an interest.

3. Management of proceedings

3.1 In exercise of the flexible case management provisions afforded by the new rules, the Office will manage cases actively in order to meet the requirements of the overriding objective. In every case, after the counter-statement has been received in the Office, the hearing officer will review the case to assess how it can best be resolved in a cost effective manner and without undue delay. Any appropriate procedure may be ordered by the hearing officer, but cases will normally follow one of three main routes, either Alternative Dispute Resolution, a "Standard Procedure" or a Case Management Conference route, details of which are set out below. In any event and whilst recognising the importance of ensuring that parties have a full opportunity to present their case, the Office and the parties should aim to complete inter partes proceedings within 12 months of the date when the proceedings are formally joined by the filing of the counter-statement.

3.2 Under these arrangements a timetable will be set for the filing of evidence and for the date of the hearing. Since timetables will have been determined by agreement with (or at least after representations from) the parties, and the parties will be aware of their deadlines well in advance, they will be expected to use the greater periods of notice this will provide to ensure that they prepare their case in good time and adhere to the deadlines for filing evidence. There will be a presumption against allowing extensions of time to meet deadlines. Where such a request is made, the hearing officer will take all the relevant factors into account in deciding whether to allow it, and will seek to keep delay to a minimum. Hearing officers will be most unlikely to allow postponement of the hearing itself.

3.3 Alternative Dispute Resolution (ADR). Where the issues are suitable for settlement by alternative dispute resolution the parties will be required to state whether they have already tried ADR; if not whether they are prepared to do so, and if they are not prepared to do so, to explain (without prejudice to matters of privilege) the reasons why. It is expected that any action brought before the Comptroller will be suitable for ADR apart from those in which there is an issue, such as the validity of a patent, upon which the Comptroller should take an independent view in the public interest. Some considerations in determining suitability for ADR are set out in paragraph 2.61 of the PHM. The Office also offers a mediation service.

3.4 Where the parties agree to use ADR, the Office will require them to set a timetable and to be kept informed of progress, including the dates of mediation activities and progress following those activities. It is expected that a period of two months will normally be sufficient for ADR at this stage.

3.5 The Office will at the same time set a timetable for the filing of evidence and a date for the hearing, using either the standard procedure or the case management procedure below. Then, in the event that mediation is unsuccessful, or it appears that progress is not being made and the hearing officer so directs, the case will revert to the litigation process on that timetable.

3.6 Standard procedure. Where the case appears to be straightforward, the parties will be invited to propose a schedule for the filing of evidence and a date for the hearing. The Office will normally require that the date of the hearing be set no later than 9 months from service of the counter-statement. This will provide a window for ADR if necessary and sufficient time for the usual three rounds of evidence at 6 week intervals, followed by a two to three month period before the hearing date. The parties will therefore have flexibility in setting the periods for preparing evidence, and considerably more notice than was possible in previous practice for fixing the hearing date, in consultation with counsel. Hearing officers will generally accede to proposed timetables within such a timescale.

3.7 The parties are encouraged to agree shorter timetables where possible. Longer timetables will not be permitted without good reason. If the hearing officer is not available at the date suggested for the hearing by the parties, consideration will be given to transferring the case to another hearing officer so that the parties' proposed hearing date can be accommodated.

3.8 Case Management Conference. Where the case is complex, or the issues do not appear to be clear cut, or in other situations where it is appropriate, the hearing officer will arrange a case management conference to determine how events should proceed. The hearing officer's directions for conduct of the proceedings will depend on the particular circumstances, but the usual intention at a case management conference will be to clarify the issues in dispute, to set the timetable for evidence rounds, to identify the issues on which the hearing officer requires evidence, the nature of that evidence and how it should be placed before him, and to set the date for the hearing.

3.9 The hearing officer will arrange for case management conferences to be conducted in person, or by video conference or telephone at his discretion and, if appropriate, in consultation with the parties. The parties' legal representatives will normally be expected to attend, but not the parties themselves unless they wish to do so.

4. Expert witness evidence

4.1 Where both parties appoint expert witnesses to give evidence concerning the technical issues in the action, the expert witnesses may be required to produce between them a statement of agreed and disputed matters and a summary of their reasons for disagreeing. The hearing officer will consider in each case whether such a procedure is likely to reduce the cost and complexity of the proceedings as a whole, for example by reducing the need for cross examination, while bearing in mind the extra cost of producing a joint statement. If the procedure is ordered, the Office will set a date by which the statement must be provided, which will be after the final evidence has been submitted but in good time for the parties to make preparations for the hearing.

5. Negotiations during proceedings

5.1 Stays for negotiation. Hearing officers will generally accede to a short stay in the proceedings in order to allow a negotiated settlement of the dispute, where the parties request one. The parties should consider the prospects for negotiation as early as possible in the proceedings in order to obtain the maximum benefit from early resolution and reduced expense.

5.2 Before a stay is agreed by the hearing officer, the parties will be required to provide information about progress to date, indicating what communications, meetings and other actions have taken place, and whether outstanding issues are substantial matters or minor points of clarification. They must also provide a timescale for future negotiations and when they expect the matter to be resolved. The statement should not disclose without prejudice communications or other privileged information but must show that there is serious and continuing negotiation towards a settlement.

5.3 The hearing officer will not normally permit a stay which extends beyond the date already set for the hearing. In the event that the settlement negotiations are not successful, the action will return to the litigation route with the hearing taking place on its original date. Any events which have yet to be completed, such as the filing of evidence, will have their timetable adjusted, if it is necessary to do so, to permit the hearing to take place on the original date.

5.4 Alternative Dispute Resolution. In addition to the ADR route set out in paragraphs 3.3 to 3.5 above, ADR may also be proposed by the hearing officer at any stage in the action, whether or not proceedings were initiated on the ADR route. ADR may be indicated in the later stages, including in the run up to the hearing when the evidence has been filed and the issues have become clearer. In those circumstances, the hearing date will normally be retained in the diary and the parties will be given a period which expires before the date of the hearing in which to pursue ADR. The Office will require the parties to keep it informed of progress, including the dates of mediation activities and outline results of those activities. If the ADR process is unsuccessful, the action will return to the litigation route and the hearing will take place on its original date.

6. Costs

6.1 Practice with regard to costs is set out in a separate TPN 4/2007 entitled "Costs in Proceedings before the Comptroller".

7. Contacts for enquiries

7.1 Current contact details for enquiries about this Notice are:

Sue Williams
Room 3.Y52
Patents Directorate

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel: 01633 814736
Fax: 01633 814491

Ian Fletcher
Comptroller-General of Patents, Designs and Trade Marks
14 November 2007