See also Practice Direction
63
Part
63
PATENTS AND OTHER INTELLECTUAL PROPERTY CLAIMS
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Scope of this Part and interpretation
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63.1 |
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This Part applies to all intellectual property claims
including –
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registered intellectual property rights such as
–
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registered designs; and
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registered trade marks; and
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unregistered intellectual property rights such as
–
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the right to prevent passing off;
and
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the other rights set out in the practice
direction.
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In this Part –
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‘the 1977 Act’ means the Patents Act
19771;
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‘the 1988 Act’ means the Copyright,
Designs and Patents Act 19882;
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‘the 1994 Act’ means the Trade Marks
Act 19943;
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‘patent’ means a patent under the
1977 Act and includes any application for a patent or supplementary protection
certificate granted under –
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the Patents (Supplementary Protection
Certificates) Rules 19974;
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the Patents (Supplementary Protection
Certificate for Medicinal Products) Regulations 19925; and
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the Patents (Supplementary Protection
Certificate for Plant Protection Products) Regulations 19966;
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‘Patents Court’ means the Patents
Court of the High Court constituted as part of the Chancery Division by section
6(1) of the Supreme Court Act 1981Acts7;
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‘Patents County Court’ means a county
court designated as a Patents County Court under section 287(1) of the 1988
Act;
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‘patents judge’
means a person nominated under section 291(1) of the 1988 Act as the patents judge of a patents county court;
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‘the register’ means whichever of the
following registers is appropriate –
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designs maintained by the registrar under
section 17 of the Registered Designs Act 19498;
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trade marks maintained by the registrar
under section 63 of the 1994 Act;
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Community trade marks maintained by the
Office for Harmonisation in the Internal Market under Article 83 of Council
Regulation (EC) 40/949; and
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Community designs maintained by the Office
for Harmonisation in the Internal Market under Article 72 of Council Regulation
(EC) 6/200210; and
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‘the registrar’ means –
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the registrar of trade marks; or
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the registrar of registered
designs,
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whichever is appropriate.
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Claims to which this Part applies are
allocated to the multi-track.
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New (gg) added after (g) in Rule 63.1(2) w/e from 1 October 2005,
Rule 63.1(3) inserted
w/e from 6 April 2006. |
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Application of the Civil Procedure
Rules
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63.2 |
These Rules and their practice
directions apply to intellectual property claims unless this Part or a practice
direction provides otherwise.
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I
PATENTS AND REGISTERED DESIGNS
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Scope of Section I
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63.3 |
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This Section of this Part applies to claims in
–
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a Patents County Court.
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Claims in the court include any claim relating to
matters arising out of –
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the Registered Designs Act 1949; and
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the Defence Contracts Act 1958Acts11.
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Patents Judge
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63.4A |
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Subject to paragraph (2),
proceedings in the patents county court shall be dealt with by the patents judge.
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When a matter needs to be dealt
with urgently and it is not practicable or appropriate for the patents judge to
deal with such matter, the matter may be dealt with by another judge with
appropriate specialist experience who shall be nominated by the
Vice-Chancellor.
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| New Rule 63.4A added w/e from 1 October 2005. |
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Starting the claim
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63.5 |
Claims to which this Section of
this Part applies must be started –
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in existing proceedings under Part 20.
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Defence and reply
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63.6 |
Part 15 applies with the
modification –
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to rule 15.4 that in a claim for infringement
under rule 63.9, the defence must be filed within 42 days of service of the
claim form; and
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to rule 15.8 that the claimant must
–
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file any reply to a defence; and
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serve it on all other parties,
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within 21 days of service of the
defence.
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Case management
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63.7 |
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Part 26 and any other rule that requires a party to
file an allocation questionnaire do not apply.
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The following provisions only of Part 29 apply
–
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rule 29.3(2) (legal representatives to attend
case management conferences);
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rule 29.4 (the court's approval of agreed
proposals for the management of proceedings); and
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rule 29.5 (variation of case management
timetable) with the exception of paragraph
(1)(b) and (c).
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As soon as practicable the court will hold a case
management conference which must be fixed in accordance with the practice
direction.
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Rule 63.7(1) omitted w/e from 6 April 2006,
Rule 63.7(3),
sub-paragraph (a), 'and pre-trial reviews' deleted. In sub-paragraph
(c), 'rule 295.(1)(c) replaced by 'paragraph (1)(b) and (c)' w/e from
1 April 2004. |
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Disclosure and inspection
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63.8 |
Part 31 is modified to the extent
set out in the practice direction.
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Claim for infringement and challenge to
validity
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63.9 |
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In a claim for infringement or an application in
which the validity of a patent or registered design is challenged, the
statement of case must contain particulars as set out in the practice
direction.
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| | (2)
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In a claim for infringement, the period for service
of the defence or Part 20 claim is 42 days after service of the claim
form.
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| Minor alteration to
heading of Rule 63.9 inserted w/e from 1 April 2004. |
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Application to amend a patent specification in
existing proceedings
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63.10 |
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An application under section 75 of the 1977 Act for
permission to amend the specification of a patent by the proprietor of the
patent must be made by application notice.
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The application notice must –
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give particulars of –
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the proposed amendment sought; and
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the grounds upon which the amendment is
sought;
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state whether the applicant will contend that
the claims prior to amendment are valid; and
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be served by the applicant on all parties and
the Comptroller within 7 days of its issue.
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The application notice must, if it is reasonably
possible, be served on the Comptroller electronically.
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Unless the court otherwise orders, the Comptroller will forthwith advertise the application to amend in the journal.
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The advertisement will state that any person may
apply to the Comptroller for a copy of the application notice.
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Within 14 days of the first appearance of the
advertisement any person who wishes to oppose the application must file and
serve on all parties and the Comptroller a notice opposing the application
which must include the grounds relied on.
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Within 28 days of the first appearance of the
advertisement the applicant must apply to the court for directions.
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Unless the court otherwise orders, the applicant must
within 7 days serve on the Comptroller any order of the court on the
application.
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In this rule, ‘the journal’ means the
journal published pursuant to rules made under section 123(6) of the 1977
Act.
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Court's determination of question or
application
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63.11 |
Where the Comptroller –
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declines to deal with a question under section
8(7), 12(2), 37(8) or 61(5) of the 1977 Act;
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declines to deal with an application under
section 40(5) of the 1977 Act; or
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certifies under section 72(7)(b) of the 1977
Act that the court should determine the question whether a patent should be
revoked,
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any person seeking the court's
determination of that question or application must issue a claim form within 14
days of the Comptroller's decision.
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Application by employee for
compensation
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63.12 |
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| | (1)
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An application by an employee for compensation under
section 40(1) or (2) of the 1977 Act must be made –
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within the period prescribed by paragraphs (2)
and (3).
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| | (2)
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The prescribed period begins on the date of the grant
of the patent and ends one year after the patent has ceased to have
effect.
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Where a patent has ceased to have effect as a result
of failure to pay the renewal fees within the period prescribed under rule 39
of the Patents Rules 199512, and an
application for restoration is made to the Comptroller under section 28 of the
1977 Act, the period prescribed under paragraph (2) –
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if restoration is ordered, continues as if the
patent had remained continuously in effect; or
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if restoration is refused, is treated as
expiring one year after the patent ceased to have effect, or six months after
the refusal, whichever is the later.
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II
REGISTERED TRADE MARKS AND OTHER INTELLECTUAL PROPERTY
RIGHTS
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Allocation
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63.13 |
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| | (1)
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This Section of this Part applies to –
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claims relating to matters arising out of the
1994 Act; and
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other intellectual property rights as set out
in the practice direction.
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| | (3)
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Claims to which this
Section of this Part applies must be brought in –
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the Chancery Division;
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a Patents County Court; or
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a county court where there is also a Chancery
district registry.
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| Paragraph (2) omitted and in Paragraph (3) word "Other" is omitted from before "Claims"
w/e from 1 April 2005. |
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Claims under the 1994 Act
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63.14 |
In a claim under the 1994 Act, the
claim form or application notice must be served on the registrar where the
relief sought would, if granted, affect an entry in the United Kingdom
register.
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Claim for infringement of registered trade
mark
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63.15 |
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In a claim for infringement of a registered trade
mark the defendant may –
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in his defence, challenge the validity of the
registration of the trade mark; and
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apply by Part 20 claim for –
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revocation of the registration;
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a declaration that the registration is
invalid; or
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| | (2)
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Where a defendant applies under paragraph (1)(b) and
the relief sought would, if granted, affect an entry in the United Kingdom
register, he must serve on the registrar a copy of his claim form.
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III
SERVICE
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Service
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63.16 |
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Subject to paragraph (2), Part 6 applies to service
of a claim form and any document under this Part.
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A claim form relating to a registered right may be
served –
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on a party who has registered the right at the
address for service given for that right in the United Kingdom Intellectual
Property Office register,
provided the address is within the United
Kingdom; or
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in accordance with rule 6.32(1),
6.33(1) or 6.33(2) on a party
who has registered the right at the address for service given for that right in
the appropriate register at –
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| | (i)
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the United Kingdom Intellectual
Property Office; or
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the Office for Harmonisation in the
Internal Market.
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| Text substituted in Rule 63.16(2)(a), Rule 63.16(2)(b) and Rule 63.16(2)(b)(i) w/e from 1 October 2008. |
IV
APPEALS
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Appeals from the Comptroller
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63.17 |
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| | (2)
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Patent appeals are to be made to the Patents Court,
and other appeals to the Chancery Division.
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| | (3)
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Where Part 52 requires a document to be served, it
must also be served on the Comptroller or registrar, as appropriate.
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