The Civil Procedure Rules 1998

[F1 I PATENTS AND REGISTERED DESIGNS E+W

Textual Amendments

F1 Pt. 63 inserted (1.4.2003) by The Civil Procedure (Amendment No. 2) Rules 2002 (S.I. 2002/3219), rule 1, Sch.

Scope of Section I E+W

63.3— (1) This Section of this Part applies to claims in—

(a) the Patents Court; and

(b) a Patents County Court.

(2) Claims in the court include any claim relating to matters arising out of—

(a) the 1977 Act;

(b) the Registered Designs Act 1949; and

(c) the Defence Contracts Act 1958.

Specialist list E+W

63.4   Claims in the Patents Court and a Patents County Court form specialist lists for the purpose of rule 30.5.

[F2 Patents Judge E+W

63.4A— (1) Subject to paragraph (2), proceedings in the patents county court shall be dealt with by the patents judge.

(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 matter, the matter may be dealt with by another judge with appropriate specialist experience who shall be nominated by the Vice-Chancellor.]

Textual Amendments

F2 Rule 63.4A inserted (1.10.2005) by The Civil Procedure (Amendment No.3) Rules 2005 (S.I. 2005/2292), rules 1(c), 47

Starting the claim E+W

63.5   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.

Defence and reply E+W

63.6   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.

Case management E+W

63.7—F3 (1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

(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) rule 29.3(2) (legal representatives to attend case management conferences F4 ...);

(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 [F5 paragraph (1)(b) and (c)].

(4) As soon as practicable the court will hold a case management conference which must be fixed in accordance with the practice direction.

Textual Amendments

F3 Rule 63.7(1) omitted (6.4.2006) by virtue of The Civil Procedure (Amendment No.4) Rules 2005 (S.I. 2005/3515), rules 1, 18(b)

F4 Words in rule 63.7(3)(a) omitted (1.4.2004) by virtue of The Civil Procedure (Amendment No. 5) Rules 2003 (S.I. 2003/3361), rules 1(c), 15(a)

F5 Words in rule 63.7(c) substituted (1.4.2004) by The Civil Procedure (Amendment No. 5) Rules 2003 (S.I. 2003/3361), rules 1(c), 15(b)

Disclosure and inspection E+W

63.8   Part 31 is modified to the extent set out in the practice direction.

Claim for infringement and challenge [F6 to] validity E+W

63.9— (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.

Textual Amendments

F6 Word in rule 63.9 heading substituted (1.4.2004) by The Civil Procedure (Amendment No. 5) Rules 2003 (S.I. 2003/3361), rules 1(c), 16

Application to amend a patent specification in existing proceedings E+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 amendment are valid; and

(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 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 made under section 123(6) of the 1977 Act.

Court’s determination of question or application E+W

63.11   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,

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.

Application by employee for compensation E+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) and (3).

(2) 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.

(3) 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 1995, and an application for restoration is made to the Comptroller under section 28 of the 1977 Act, the period prescribed under paragraph (2)—

(a) if restoration is ordered, continues as if the patent had remained continuously in effect; or

(b) 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.]