The Civil Procedure Rules 1998

[F1I PATENTS AND REGISTERED DESIGNSE+W

Textual Amendments

Scope of Section I and allocationE+W

63.2.—(1) This Section applies to—

(a)any claim under—

(i)the 1977 Act;

(ii)the Registered Designs Act 1949;

(iii)the Defence Contracts Act 1958; and

(b)any claim relating to—

(i)Community registered designs;

(ii)semiconductor topography rights; or

(iii)plant varieties.

(2) Claims to which this Section applies must be started in—

(a)the Patents Court; or

(b)a patents county court.

Specialist listE+W

63.3.  Claims in the Patents Court and a patents county court form specialist lists for the purpose of rule 30.5.

Patents judgeE+W

63.4.—(1) Subject to paragraph (2), proceedings in a patents county court will be dealt with by the patents judge of that court.

(2) When a matter needs to be dealt with urgently and it is not practicable or appropriate for the patents judge to deal with such a matter, the matter may be dealt with by another judge with appropriate specialist experience nominated by the Chancellor of the High Court.

Starting the claimE+W

63.5.  Claims to which this Section applies must be started—

(a)by a Part 7 claim form; or

(b)in existing proceedings under Part 20.

Claim for infringement or challenge to validity of a patent or registered designE+W

63.6.  A statement of case in a claim for infringement or a claim in which the validity of a patent or registered design is challenged must contain particulars as set out in [F2Practice Direction 63].

Textual Amendments

Defence and replyE+W

63.7.  Part 15 applies with the modification—

(a)to rule 15.4(1)(b) that in a claim for infringement under rule 63.6, the period for filing a defence where the defendant files an acknowledgment of service under Part 10 is 42 days after service of the particulars of claim;

(b)that where rule 15.4(2) provides for a longer period to file a defence than in rule 63.7(a), then the period of time in rule 15.4(2) will apply; and

(c)to rule 15.8 that the claimant must—

(i)file any reply to a defence; and

(ii)serve it on all other parties,

within 21 days of service of the defence.

Case managementE+W

63.8.—(1) Parties do not need to file an allocation questionnaire.

(2) The following provisions only of Part 29 apply—

(a)rule 29.3(2) (legal representatives to attend case management conferences);

(b)rule 29.4 (the court’s approval of agreed proposals for the management of proceedings); and

(c)rule 29.5 (variation of case management timetable) with the exception of paragraph (1)(b) and (c).

(3) As soon as practicable the court will hold a case management conference which must be fixed in accordance with [F3Practice Direction 63].

Textual Amendments

Disclosure and inspectionE+W

63.9.  Part 31 is modified to the extent set out in [F4Practice Direction 63].

Textual Amendments

Application to amend a patent specification in existing proceedingsE+W

63.10.—(1) 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.

(2) The application notice must—

(a)give particulars of—

(i)the proposed amendment sought; and

(ii)the grounds upon which the amendment is sought;

(b)state whether the applicant will contend that the claims prior to the amendment are valid; and

(c)be served by the applicant on all parties and the Comptroller within 7 days of it being filed.

(3) The application notice must, if it is reasonably possible, be served on the Comptroller electronically.

(4) Unless the court otherwise orders, the Comptroller will, as soon as practicable, advertise the application to amend in the journal.

(5) The advertisement will state that any person may apply to the Comptroller for a copy of the application notice.

(6) 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.

(7) Within 28 days of the first appearance of the advertisement the applicant must apply to the court for directions.

(8) Unless the court otherwise orders, the applicant must within 7 days serve on the Comptroller any order of the court on the application.

(9) In this rule “the journal” means the journal published pursuant to rules under section 123(6) of the 1977 Act.

Court’s determination of question or applicationE+W

63.11.—(1) This rule applies where the Comptroller—

(a)declines to deal with a question under section 8(7), 12(2), 37(8) or 61(5) of the 1977 Act;

(b)declines to deal with an application under section 40(5) of the 1977 Act; or

(c)certifies under section 72(7)(b) of the 1977 Act that the court should determine the question whether a patent should be revoked.

(2) Any person seeking the court’s determination of that question or application must start a claim for that purpose within 14 days of receiving notification of the Comptroller’s decision.

(3) A person who fails to start a claim within the time prescribed by rule 63.11(2) will be deemed to have abandoned the reference or application.

(4) A party may apply to the Comptroller or the court to extend the period for starting a claim prescribed by rule 63.11(2) even where the application is made after expiration of that period.

Application by employee for compensationE+W

63.12.—(1) An application by an employee for compensation under section 40(1) or (2) of the 1977 Act must be made—

(a)in a claim form; and

(b)within the period prescribed by paragraphs (2), (3) and (4).

(2) The prescribed period begins on the date of the grant of the patent and ends 1 year after the patent has ceased to have effect.

(3) Where the patent has ceased to have effect as a result of failure to pay renewal fees, the prescribed period continues as if the patent has remained continuously in effect provided that—

(a)the renewal fee and any additional fee are paid in accordance with section 25(4) of the 1977 Act; or

(b)restoration is ordered by the Comptroller following an application under section 28 of the 1977 Act.

(4) Where restoration is refused by the Comptroller following an application under section 28 of the 1977 Act, the prescribed period will end 1 year after the patent has ceased to have effect or 6 months after the date of refusal, whichever is the later.]