PA26 – Patent not to be impugned for lack of unity; PR 73-84, 87 Flashcards
what does S26 concern
Patent immune from unity objection
When can a unity objection not be raised
S26
One cannot object to a granted patent on grounds of unity either as the claims currently stand or as proposed to be amended
What is the overriding objective for proceedings heard before the Comptroller
R74(2)
Dealing with a case justly, and in so far as is practical -
a) equitably,
b) cost effectively
c) in proportion to: the amount of money involved; the importance of the case; the complexity of the issues; and the financial position of each party
d) quickly and fairly, and
e) allocating a reasonable proportion of the Comptroller’s available resources to it.
Who is responsible for achieving the overriding objective of Comptroller proceedings
R74(4)
Parties to proceedings are expected to help the Comptroller in achieving the objective
What gets published in the OJ
R75
The Comptroller will advertise any event in the OJ to which it is possible to object to (i.e. any opposition that starts or responds to proceedings), unless the Comptroller can reasonably object
How can a party start proceedings
R76(1)
by filing in duplicate
a) the relevant FORM (and FEE)
b) a statement of grounds
What are the time limits for starting an opposition at the UKIPO
R76(2)
Anyone can start OPPOSITION proceedings within
a) TWO WEEKS for opposing amendment during infringement or revocation proceedings (S75(2))
b) FOUR WEEKS for any other opposition that starts proceedings, from the date of advertising in the OJ, under R75
What should be contained within a statement of grounds filed to start UK opposition proceedings
R76(4)
The statement of grounds must:
a) give a concise statement of facts and grounds
d) specify the remedy sought
f) be verified by a statement of truth, and
g) be submitted on clean white A4 paper suitable for copying
b) if opposing a licence of right under S46(3), include grounds of objection to the licence
c) if appropriate, include proposed alternative periods and terms of licence, and
e) if appropriate, any further information stipulated by the Compulsory Licensing regulation
If relating to an EP(UK) application and English translation will also be required (provided by the person brining proceedings)
Who does the Comptroller notify that proceedings have been started
R77(1)(2)(3)
the proprietor/applicant, and anyone that they deem likely to have an interest (other than the claimant or their supporters)
What does a notification of proceedings to the proprietor/applicant include
R77
(4) the claimant’s FORM and statement of grounds
(5)(6) and a deadline to file a counter-statement in duplicate
What are the time limits for filing a counter-statement to an initiation of proceedings
R77
typically SIX WEEKS
(7)(8) except for oppositions begun as a response to proceedings, where a fixed period of FOUR WEEKS is given
What happens if the applicant/proprietor does not file a counter-statement to the initiation of proceedings
R77(9)
it is assumed they AGREE with the claimant’s position
What must a counter-statement filed by a defendant state
R78(1)
which of the allegations in the statement of grounds
a) they deny
b) they require the claimant to prove
c) they accept,
and must include
d) a statement of truth
What must a defendant do if they deny and allegation
R78(2)
they must
a) give their reasoning, and
b) if desired, propose an alternative version of events
What happens if a defendant does not comment on an allegation
R78
(3) they are assumed to agree with it BUT
(4)if they state their position on matters relevant to that allegation elsewhere in the counter-statement, shall be taken to require that the allegation be proved.
What should always be included in a statement
R79
Any copy of a statement that refers to another document should enclose that document, except where sent to the Comptroller and they already have it.
What happens in proceedings after a counter-statement has been filed
R80
(1) the Comptroller sends a copy to the claimant and sets a deadline for the claimant to elect to continue by filing FORM and FEE, and a deadline within which each party can provide evidence
(2) the Comptroller can however choose to admit evidence at any point
(4) the Comptroller must give the parties an opportunity to be heard
(5) if any party takes this right, the Comptroller circulates a date for the hearing
(6) the Comptroller will circulate a reasoned decision on the proceedings to the parties
When is evidence considered as filed
R80(3)
once received by the Comptroller and sent to all other parties to the proceedings
Can time limits in proceedings be altered
R81
The Comptroller can (further) extend or shorten any period relating to proceedings any number of times, including after the period has expired
What happens if a claimant does not file the FORM within the set period after counter-statements have been filed
R81A
they are deemed to have withdrawn from the proceedings
What are the general powers of the Comptroller in relation to proceedings
R82
the comptroller can
- require documents to be filed or be excluded
- direct what evidence they require and how to submit it
- require translations of documents
- require a party or representative to attend a hearing
- consolidate or split proceedings
- suspend proceedings or refer parties to arbitration
when giving directions:
- impose conditions
- specify the consequence of failure to meet those conditions
When can a statement of case be thrown out
R83
(1) a party can ask
(2) the Comptroller will do it IF
a) there is no merit to the grounds raised,
b) it appears to be merely an abuse of process
c) there has been a failure to comply with part of the proceedings.
When will proceedings be summarily judged
R83
(1) a party can ask
(3) The Comptroller will do it IF they consider that either the claimant or defendant has no real prospects of winning, and that a hearing would not help.
Are hearings open or closed?
R84
(1) hearings are public UNLESS
(2) the party requests all or part of it to be held in private AND
(3) the Comptroller agrees, having heard opinions of the other parties OR
(4) where the relevant patent application has not yet been published
How can evidence be given in proceedings
R87
(1)(2)(5) by affidavit, statutory declaration or any other form acceptable by the court, or a witness statement or statement of case if accompanied by a statement of truth, signed and dated by the person making the statement, or by their representative if it is a statement of case
(3) by default by witness statement
