SCHEDULE
Rule 8
SCHEDULE
PART 63
PATENTS AND OTHER INTELLECTUAL PROPERTY CLAIMS
Contents of this Part |
|
Scope of this Part and interpretation |
Rule 63.1 |
Application of the Civil Procedure Rules |
Rule 63.2 |
I PATENTS AND REGISTERED DESIGNS |
|
Scope of Section I |
Rule 63.3 |
Specialist list |
Rule 63.4 |
Starting the claim |
Rule 63.5 |
Defence and reply |
Rule 63.6 |
Case management |
Rule 63.7 |
Disclosure and inspection |
Rule 63.8 |
Claim for infringement and challenge of validity |
Rule 63.9 |
Application to amend a patent specification in existing proceedings |
Rule 63.10 |
Court’s determination of question or application |
Rule 63.11 |
Application by employee for compensation |
Rule 63.12 |
II REGISTERED TRADE MARKS AND OTHER INTELLECTUAL PROPERTY RIGHTS |
|
Allocation |
Rule 63.13 |
Claims under the 1994 Act |
Rule 63.14 |
Claims for infringement of registered trade mark |
Rule 63.15 |
III SERVICE |
|
Service |
Rule 63.16 |
IV APPEALS |
|
Appeals from the Comptroller |
Rule 63.17 |
63.1. Scope of this Part and interpretation
(1) This Part applies to all intellectual property claims including—
(a)
(a) registered intellectual property rights such as—
(i) patents;
(ii) registered designs; and
(iii) registered trade marks; and
(b)
(b) unregistered intellectual property rights such as—
(i) copyright;
(ii) design right;
(iii) the right to prevent passing off; and
(iv) the other rights set out in the practice direction.
(2) In this Part—
(a)
(a) “the 1977 Act” means the Patents Act 19775;
(b)
(b) “the 1988 Act” means the Copyright, Designs and Patents Act 19886;
(c)
(c) “the 1994 Act” means the Trade Marks Act 19947;
(d)
(d) “the Comptroller” means the Comptroller General of Patents, Designs and Trade Marks;
(e)
(e) “patent” means a patent under the 1977 Act and includes any application for a patent or supplementary protection certificate granted under—
(i) the Patents (Supplementary Protection Certificates) Rules 19978;
(ii) the Patents (Supplementary Protection Certificate for Medicinal Products) Regulations 19929; and
(iii) the Patents (Supplementary Protection Certificate for Plant Protection Products) Regulations 199610;
(f)
(f) “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 198111;
(g)
(g) “Patents County Court” means a county court designated as a Patents County Court under section 287(1) of the 1988 Act;
(h)
(h) “the register” means whichever of the following registers is appropriate—
(i) patents maintained by the Comptroller under section 32 of the 1977 Act;
(ii) designs maintained by the registrar under section 17 of the Registered Designs Act 194912;
(iii) trade marks maintained by the registrar under section 63 of the 1994 Act;
(iv) Community trade marks maintained by the Office for Harmonisation in the Internal Market under Article 83 of Council Regulation (EC) 40/9413; and
(v) Community designs maintained by the Office for Harmonisation in the Internal Market under Article 72 of Council Regulation (EC) 6/200214; and
(i)
(i) “the registrar” means—
(i) the registrar of trade marks; or
(ii) the registrar of registered designs,
whichever is appropriate.
Application of the Civil Procedure Rules
63.2. These Rules and their practice directions apply to intellectual property claims unless this Part or a practice direction provides otherwise.
(I)PATENTS AND REGISTERED DESIGNS
63.3. Scope of Section I
(1) This Section of this Part applies to claims in—
(a)
(a) the Patents Court; and
(b)
(b) a Patents County Court.
(2) Claims in the court include any claim relating to matters arising out of—
(a)
(a) the 1977 Act;
(b)
(b) the Registered Designs Act 1949; and
(c)
(c) the Defence Contracts Act 195815.
63.4. Specialist list
Claims in the Patents Court and a Patents County Court form specialist lists for the purpose of rule 30.5.
63.5. Starting the claim
Claims to which this Section of this Part applies must be started—
(a) by issuing a Part 7 claim form; or
(b) in existing proceedings under Part 20.
63.6. Defence and reply
Part 15 applies with the modification—
(a) 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
(b) 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.
63.7. Case management
(1) Claims under this Section of this Part are allocated to the multi-track.
(2) Part 26 and any other rule that requires a party to file an allocation questionnaire do not apply.
(3) The following provisions only of Part 29 apply—
(a)
(a) rule 29.3(2) (legal representatives to attend case management conferences and pre-trial reviews);
(b)
(b) rule 29.4 (the court’s approval of agreed proposals for the management of proceedings); and
(c)
(c) rule 29.5 (variation of case management timetable) with the exception of rule 29.5(1)(c).
(4) As soon as practicable the court will hold a case management conference which must be fixed in accordance with the practice direction.
63.8. Disclosure and inspection
Part 31 is modified to the extent set out in the practice direction.
63.9. Claim for infringement and challenge of validity
(1) 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.
(2) 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.
63.10. Application to amend a patent specification in existing proceedings
(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)
(a) give particulars of—
(i) the proposed amendment sought; and
(ii) the grounds upon which the amendment is sought;
(b)
(b) state whether the applicant will contend that the claims prior to amendment are valid; and
(c)
(c) be served by the applicant on all parties and the Comptroller within 7 days of its issue.
(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 forthwith 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...
