Rules for Proceedings

Question 1

What defines a Calmant

Answer 1

A person who has is or treated as starting proceedings

Question 2

What defines a defendant

Answer 2

A person who files a counterstatement

Question 3

Objective of proceedings

Answer 3

Cases must be dealt with:
Ensure that the parties are on an equal footing
cost effectively
in proportion to
- the amount of money involved
- the seriousness of the case
- the complexity of the issues
- The financial position of each party
Quickly and fairly

Question 4

What is the Comptroller required to advertise

Answer 4

in the OJ Any event that it is possible to object to under the provisions of the rules
INCLUDING
any post grant amendment to a patent during prosecution proceedings
UNLESS
The comptroller deems that no one could reasonably object

Question 5

What is required to start proceedings

Answer 5

IN DUPLICATE
PF2 for starting proceedings or PF15 to oppose
AND
a statement of grounds

Question 6

What is the deadline for starting opposition proceedings and who can do so?

Answer 6

ANY person can start opposition proceedings
WITHIN
2 weeks of S75(2) amendment during infringment or revocation proceedings
OR
WITHIN
4 weeks of any other opposition that starts proceedings SH3 pt 2

S29(2) oppposition to surrender of a patent 4 weeks
S47(6) opposition to cancellation of a license as of right 2 months
S117(2) opposition to correction of an error in patents and applications ??months

Opposition of grant of a license of right S46 is not included in R76 - 2 months

Question 7

What must be included in a statement of grounds?

Answer 7

A concise statement of facts and grounds
specify the remedy sought
be verified by a statement of truth
Submitted on clean A4 white paper suitable for copying

Question 8

What are the notification requirements for proceedings sarting

Answer 8

The comptroller will notify the applicant and the claimant and any further parties likely to have an interest that proceedings have started.
INCLUDING
the PF2 start of proceedings or the PF15 start of opposition
AND
for opposition proceedings the deadline for the applicant to file a counter statement

Question 9

how long will the applicant have to file a counter statement

Answer 9

A period fixed by the comptroller normally 6 weeks
UNLESS
for oppositions begun in response to proceedings where a fixed period of 4 weeks is required.

Question 10

What happens if no counter statement is filed?

Answer 10

It is assumed the applicant agrees with the claimants position!

Question 11

What are the requirements if a document is refered to in a statement

Answer 11

The document must be included with the statement,
UNLESS
the statement is being made to the comptroller and he already has the document.

Question 12

After the counter statement has been filed what occurs

Answer 12

The comptroller sends a copy to the claimant and sets a deadline for the claimant to elect to continue with proceedings
THEN
If he wishes to proceed the Claimant must file FP4 and pay a fee of £350
AND
the comptroller will set deadlines for providing evidence (though may admit evidence at any time)
THEN
A hearing will occur should either party request it
THEN
The comptroller will circulate a decision in light of a hearing if it has been requested

Question 13

Is there any flexibility in time periods during procedings?

Answer 13

The comptroller may extend any time limit during proceedings as he sees fit. This is not a right.

Question 14

What is the penalty for not filing PF4

Answer 14

If the client is late filing the request to proceed then he will be considered to have withdrawn from proceedings

Question 15

What powers does the Comptroller have during proceedings

Answer 15

The comptroller can:
Require documents to be filed or excluded
request translations
direct evidence and how it is submitted
summon a party or representative to attend hearings
Consolidate or split proceedings
suspend proceedings or refer parties to arbitration
The comptroller can impose conditions on proceedings and the consequence of failing to abide by these conditions

Question 16

For what reasons might a comptroller throw out a statement of case?

Answer 16

A party requests for a statement of case to be thrown out
AND
There is no merit to the grounds raised
OR
It appears merely an abuse of process
OR
The other party has failied to comply with part of the proceedings

Question 17

When might a summary judgement be issued by the comptroller

Answer 17

A party requests a summary judgement
AND
The Comptroller believes that either party has no real chance of winning

Question 18

Who is permitted to be present at a hearing?

Answer 18

Hearings are Public
UNLESS
the application has not yet published
OR
either party requests the hearing be private
AND
The comptroller agrees having heard the opinions of all parties

Question 19

When might security be requested from a party?

Answer 19

When they are a foreign entity of certain nationalities
OR
there is a possibility that the party may not pay e.g. They have financial difficulties or are behaving erratically or are of questionable history

Question 20

What power does the Comptroller have over witnesses?

Answer 20

The comptroller has the power of a High Court Judge to compel the attendance of witnesses
HOWEVER
Does not have the power to summarily punish for contempt

Question 21

What is the default for of submitting evidence?

Answer 21

Witness statement including a statement of truth signed by the witness or their representative (in the statement of case)

Question 22

What forms can evidence be submitted?

Answer 22

An affidavit
a statutory declaration
a witness statement including a statement of truth signed by the witness or their representetive

Question 23

Under proceedings under S46 regarding licences of right what is required to start proceedings by a third party?

Answer 23

They must file a PF2
AND
a draft of the proposed license of right