Cymraeg | Access Keys | Site Map | Feedback

The Patents Court

The Patents Court Guide - Issued 12 November 2003

By Authority of the Chancellor of the High Court

1. Introduction

The general guidance applicable to matters in the Chancery Division, as set out in the Chancery Guide, also applies to patent actions unless specifically mentioned below. " PD 63" refers to the Practice Direction - Patents and Other Intellectual Property Claims which supplements CPR Part 63. This Guide applies as appropriate to both the Patents Court and the Patents County Court.

2. General

Actions proceeding in the Patents Court are allocated to the multi-track ( CPR 63.7(1)). Attention is drawn to CPR 63(7) and its associated PD (case management).

3. The Patent Judges

The Patents Judges are their clerks as set out below.

Patten J (Clerk: Anne Bateman - telephone 020 7947 7617, fax 020 7947 6650, email)

Lewison J (Clerk: Temporary Clerk - telephone 020 7947 6039, fax 020 7947 6894)

Mann J (Clerk Amanda Dennis - telephone 020 7947 7964, fax 020 7947 6739, email)

Kitchin J (Clerk Gillian Tarleton - telephone 020 7947 6518, fax 020 7947 6439, email)

I Floyd J (Clerk: Alison Hall - telephone 020 7947 1740, fax 020 7947 6593, email)

4. Patents County Court

The Patents County Court
Claims forms for the Patents County Court and general enquiries relating to procedure, fees and forms may be addressed to:

The Specialist Section
Central London Civil Justice Section
26 Park Crescent
London
W1N 4HT

Tel: 020 7917 7821
Fax: 020 7917 7935

Enquiries relating to listing and existing patents cases may be addressed to:

Clerk His Honour Judge Fysh QC
Field House
15-25 Breams Buildings
London
EC4A 1DZ

Tel: 020 7073 4251
Fax: 020 7073 4253

5. Arrangements for Listing

The Chancery Listing Officer is responsible for the listing of all patents work.

The Chancery Listing Officer and his staff are located in Room WG04 in the Royal Courts of Justice. The office is open to the public from 10.00am to 4.30pm each day. The telephone numbers are 0207 947 6778/6690 and the fax number is 0207 947 7345.

Appointments to fix trials and interlocutory applications are dealt with on Mondays and Thursdays between 11.00am and 12.00 noon. The applicant should first obtain an appointment from the Chancery Listing Officer and notify all interested parties of the date and time fixed.

Short applications (before the normal court day starts at 10.30am) can be issued and the hearing date arranged at any time by attendance at the Chancery Listing Office.

These are listed for hearing before the normal court day starts at 10.30, for instance at 9.30 or 10 a.m. Attention is drawn to PD63.6. Accurate time estimates are essential and a guillotine may be imposed on oral submissions if estimates show signs of being exceeded.

6. September Sittings

The Patents Court will endeavour, if the parties so desire and the case is urgent, to sit in September.

7. Appeals from the Comptroller General of Patents, Trade Marks and Designs

Patents

By virtue of statute these lie only to the High Court and not the Patents County Court. They are now governed by CPR Part 52 (see CPR 63.17). Permission to appeal is not required. Note that the Comptroller must be served with a Notice of Appeal ( CPR 63.17(3)). The appellant has the conduct of the appeal and he or his representative should within 2 weeks of lodging the appeal, contact the Chancery Listing Officer with a view to arranging a hearing date. The appellant shall ensure that the appeal is set down as soon as is reasonably practicable after service of the notice of appeal. Parties are reminded that the provisions about the service of skeleton arguments apply to appeals from the Comptroller.

Trade Marks

These are assigned to the Chancery Division as a whole, not the Patents Court ( CPR 63.17(2)). Permission to appeal is not required.

Appeals on Paper only

The Court will hear appeals on the papers only if that is what the parties desire. If the appellant is willing for the appeal to be heard on paper only, he should contact the respondent and the Patent Office at the earliest opportunity to discover whether such a way of proceeding is agreed. If it is, the Chancery Listing Office should be informed as soon as possible. The parties (and the Chancery Listing Officer if he/she desires) should liase amongst themselves for early preparation of written submissions and bundles and provide the court with all necessary materials.

Appeals concerning Registered Designs

These go to the Registered Designs Appeal Tribunal. This consists of one of the patent judges sitting as a tribunal. The CPR and PD do not apply to such appeals. Where such an appeal is desired, contact should be made direct to the Chancery Listing Officer.

8. Applications without Notice

A party wishing to apply without notice to the respondent(s) should contact the Chancery Listing Office. In cases of emergency in vacation or out of normal court hours the application should be made to the duty Chancery Judge. In the Patents County Court, contact should be made with the Court Office.

9. Documents

(a) Bundling is of considerable importance and should be approached intelligently. The general guidance given in Appendix 2 of the Chancery Guide should be followed. Solicitors or patent agents who fail to do so may be required to explain why and may be penalised personally in costs.

(b) Copies of documents referred to in a statement of case (e.g. an advertisement referred to in a claim of infringement form or documents cited in Grounds of Invalidity) should be served with the statement of case. Where any such document requires translation, a translation should be served at the same time.

(c) If it is known which Judge will be taking the case, papers for the case should be lodged directly with that Judge's clerk. Faxed documents of significance (and particularly skeleton arguments) should be followed up by clean direct prints. By agreement documents may also be sent by e-mail to the clerk of the Judge concerned.

(d) It is the responsibility of both parties to ensure that all relevant documents are lodged with the clerk of the Judge who will be taking the case by noon two days before the date fixed for hearing unless some longer or shorter period has been ordered by the judge or is prescribed by this Guide.

(e) The Judges request that all important documents also be supplied to them on disk in a format convenient for the Judge's use (normally Microsoft Word 7 for Windows). These will include skeleton arguments, the witness statements and expert reports.

10. Streamlined Procedure

(a) Nature of a streamlined procedure.

A streamlined procedure is one in which, save and to the extent that it is otherwise ordered:

1. all factual and expert evidence is in writing;
2. there is no requirement to give disclosure of documents;
3. there are no experiments,
4. cross-examination is only permitted on any topic or topics where it is necessary and is confined to those topics;

the total duration of the trial fixed is and will normally be not more than one day;

1. the date for trial will be fixed when the Order for a streamlined trial is made and will normally be about six months thereafter.

A streamlined procedure also includes minor variants of the above (e.g. disclosure confined to a limited issue).

(b) Criteria for a streamlined procedure

The court will order a streamlined procedure by agreement or, in the absence of agreement, where application of the overriding objective indicates that it is appropriate. Particular emphasis will be placed on proportionality, the financial position of each of the parties, degree of complexity and the importance of the case.

(c) When to apply for streamlined procedure

Any party may apply at any time after commencement of the action for a streamlined procedure. Any such application should be made at the earliest time reasonably possible, which will generally be at the case management conference required by PD63 within 14 days after service of the defence.

(d) How to apply for a streamline procedure

A party wishing for a streamlined procedure should, in the first instance, invite the other party(ies) to agree, setting out the proposed procedural steps in a draft Order. If there is agreement, the court will normally make the Order on a written application signed on behalf of each party. The parties should liase with each other and the Chancery Listing Officer or the Patents County court concerning a date for trial so that this can be fixed.

If there is no agreement, the party wishing for a streamlined procedure must make an application for it, setting forth the proposed procedural directions in his application notice and requesting that the application be determined on paper. He should support the application by a witness statement addressing the criteria in CPR Rule 1.1(2). The opposing party must, unless he obtains an extension of time (by consent or from the court) make and serve on the opposite party a witness statement in response within 10 days of service upon him of the application notice.

The court will determine the matter provisionally on paper alone and make a provisional judgment and order accordingly. Unless either side seeks an oral hearing the provisional order will come into effect 7 days after its service on the parties.

If a party is desirous of an oral hearing, it must, within 7 days of service upon it of the provisional order, seek an oral hearing in the immediate future by contacting the Chancery Listing Officer. Such an oral hearing will fixed as soon as is practicable, either by way of a telephone hearing or a short application.

(e) Duty to inform clients

The parties legal advisers' must draw their clients' attention to the availability of a streamlined procedure in the Patents Court and the Patents County Court.

11. Timetable for trial, Reading Guide, Time Estimates, common general knowledge

Attention is drawn to PD 63.7. Further the parties should endeavour to produce a composite document setting forth the matters alleged to form part of the common general knowledge and, where they disagree, what that disagreement is.

12. Narrowing of Issues

As early as possible the patentee should identify which of the claims of its patent are contended to have independent validity and which of those claims are said to be infringed and should communicate a list of those claims to the other party.

This position should be kept under constant review. If there is any alteration in the number of claims said to have independent validity the patentee must forthwith notify the other parties.

13. Admissions

With a view to early elimination of non-issues, practitioners are reminded of the necessity of making admissions in accordance with CPR Rule 32.18 at an early stage. It should be done as early as possible, for instance, in a defence or reply. Thus in a defence a party may admit the acts complained of or that his article/process has certain of the features of a claim. In a reply a patentee may be able to admit prior publication of cited documents.

Parties should also consider making a request to identify points not in dispute. Technically a request seeking admissions in respect of particular integers of a claim may involve a mixed question of fact and law and so not be within the rules about admissions. By asking whether or not the defendant disputes that his article/process has certain features of the claim the real dispute can be narrowed. Thus the ambit of disclosure and of witness and expert statements will be narrowed.

14. Skeleton Arguments, Pre-Trial and after the Evidence

In addition to the Reading Guide parties should lodge skeleton arguments in time for the Judge to read them before trial. That should normally be at least two days before commencement of the trial, but in substantial cases a longer period (to be discussed with the clerk to the Judge concerned) may be needed. It is desirable that each party should summarise what it contends to be the common general knowledge of the man skilled in the art.

Following the evidence in a substantial trial a short adjournment may be granted to enable the parties to summarise their arguments in writing before oral argument.

In trials where a transcript of evidence is being made and supplied to the Judge, the transcript should be accompanied by a version on disk.

15. Jurisdiction of Masters

Masters have only a limited jurisdiction in patent matters (see PD 63.8). Generally it is more convenient for consent orders (on paper or in court) to be made by a Judge even where a Master has jurisdiction to do so.

Where a Master makes a consent order disposing of an action which has been fixed, it is the duty of all the parties' representatives to inform the Chancery Listing Officer that the case has settled.

16. Agreed Orders

The court is normally willing to make consent orders without the need for the attendance of any parties. A draft of the agreed order and the written consent of all the parties' respective solicitors or counsel should be supplied to the Chancery Listing Office. Where a draft has been substantially amended by hand, it is helpful for a disk of the unamended version to be supplied in accordance with paragraph 9.6 of the Chancery Guide. Unless the Judge considers a hearing is needed he will make the order in the agreed terms by initialling it. It will be drawn up accordingly and sent to the parties.

17. Telephone Applications

For short (20 minutes or less) matters, the Patents Judges are willing, unless a matter of general public importance is involved, to hear applications by telephone conference in accordance with the Practice Direction under CPR Part 23.

It is possible for the application to be recorded, and if recording by the Patents Court rather than by British Telecom (or other service provider) is requested arrangements should be made with the Chancery Listing Officer. The recording will not be transcribed. The tape will be kept by the clerk to the judge hearing the application for a period of six months. Arrangements for transcription, if needed, must be made by the parties.

This procedure should be used where it will save costs.

18. Patents Judges able and willing to sit out of London

If the parties so desire, for the purpose of saving time or costs, the Patents Court will sit out of London. Before any approach is made to the Chancery Listing Officer, the parties should discuss between themselves the desirability of such course. If there is a dispute as to venue the court will resolve the matter on an application. Where there is no dispute, the Chancery Listing Officer should be contacted as soon as possible so that arrangements can be put in place well before the date of the proposed hearing. The Patents County Court may also be able to sit out of London.

19. Intellectual Property Court Users' Committee

This considers the problems and concerns of intellectual property litigation generally. Membership of the committee includes the principal Patents Judges, the Patents County Court Judge, a representative of each of the Patent Bar Association, the Intellectual Property Lawyers Association, the Chartered Institute of Patent Agents, the Institute of Trade Mark Agents and the Trade Marks Designs and Patents Federation. It will also include one or more other Chancery Judges. Anyone having views concerning the improvement of intellectual property litigation is invited to make his or her views known to the committee, preferably through the relevant professional representative on the committee. The Patents County Court also has a Users’Committee.

20. Orders following judgment

Where a judgment is made available in draft before being given in open court the parties should, in advance of that occasion, exchange drafts of the desired consequential order. It is highly undesirable that one party should spring a proposal on the other for the first time when judgment is given. Where the parties are agreed as to the consequential order and have supplied a copy of the same signed by all parties or their representatives, attendance at the handing down of the judgment is not necessary.

21. Applications for interim remedies: trial dates

When an application for an interim remedy is made the claimant should, where practicable, make prior investigations as to the estimated length of trial and possible trial dates.

22. Specimen minute of order for directions

The general form minute of order for directions annexed to this practice direction has the approval of the Patents Judges. It is intended only as a guide and may need adaptation for particular circumstances.

Annex - Standard form of order for directions

(* indicates a provision which may be necessary when a rule has not been compiled with, for example, standard disclosure in accordance with the Practice Direction supplementing CPR Part 63.)

[Recitals as necessary]

Transfer

1. [This Action and Counterclaim be transferred to the Patents County Court.] (If this order is made, no other Order will generally be necessary, though it will generally be desirable for procedural orders to be made at this time to save the costs of a further conference in the County Court.)

Proof of Documents

2. Legible copies of the specification of the Patent in suit [and any patent specifications or other documents cited in the Particulars of Objections] may be used at the trial without further proof thereof or of their contents.

Amendments to Pleadings

3. The Claimants have leave to amend their Claim Form shown in red on the copy [annexed to the Application Notice/as signed by the solicitors for the parties/annexed hereto] and [to re-serve the same on or before [date]/and that re-service be dispensed with] and that the Defendants have leave to serve a consequentially amended Defence within [number] days [thereafter/hereafter] and that the Claimants have leave to serve a consequentially amended Reply (if so advised) within [number] days thereafter.

4.(a) The Defendants have leave to amend their Defence [and Part 20 Claim and Grounds of Invalidity] as shown in red on the copy [annexed to the Application notice/as signed by the solicitors for the parties/annexed hereto] and [to reserve the same within [number] days/on or before[date]] [and that re-service be dispensed with] and that the Claimants have leave to serve a consequentially amended Reply (if so advised) within [number] days thereafter.

(b) The Claimants do on or before [date] elect whether they will discontinue this Claim and withdraw their Defence to Part 20 Claim and consent to an Order for the revocation of Patent No. ….. ("the patent in suit") AND IF the Claimants shall so elect and give notice thereof in the time aforesaid IT IS ORDERED THAT the patent in suit be revoked [and that it be referred to the Costs Judge to assess the costs of the Defendants and this Action and Grounds of Invalidity up to and including [date] being the date of service of the [amended] Grounds of Invalidity and Part 20 Claim to the date of this Order [except so far as the same have been increased by the failure of the Defendants originally to deliver the Defence and Grounds of Invalidity in its amended form], and to assess the costs of the Claimants in this Action and Part 20 Claim from [date] [insofar as they have been increased by the failure of the Defendants aforesaid] AND IT IS ORDERED that the said Costs Judge is to set off the costs of the Defendants and of the Claimants when so assessed as aforesaid and to certify to which of them the balance after such set-off is due.]/[Order for payment of sums determined by the Court on a summary assessment].

Further Information and Clarification

5. (a) The [Claimants/Defendants] do on or before [date] serve on the [Defendants/Claimants] the Further Information or Clarification of the [specify Statement of case] as requested by the [Claimants/Defendants] by their Request served on the [Defendants/Claimants] on [date] [and/or]

(b) The [Claimants/Defendants] do on or before [date] serve on the [Defendants/Claimants] a response to their Request for Further Information or Clarification of the [identify statement of case] served on the [Defendants/Claimants] on [date].

Admissions*

6. The [Claimants/Defendants] do on or before [date] state in writing whether or not they admit the facts specified in the [Defendants'/Claimants'] Notice to Admit facts dated [date].

Security

7. The Claimants do provide security for the Defendants' costs in the sum of £[state sum] by [specify manner in which security to be given] and that in the meantime all further proceedings be stayed.

Lists of Documents*

8. (a) The Claimants and the Defendants respectively do on or before [state date] make and serve on the other of them a list in accordance with form N265 of the documents in their control which they are required to disclose in accordance with the obligation of standard disclosure in accordance with CPR Part 31 as modified by paragraph 5 of the Practice Direction - Patents etc. supplementing CPR Part 63.

(b) In respect of those issues identified in Schedule [number] hereto disclosure shall be limited to those [documents/categories of documents] listed in Schedule [number].

Inspection*

9. If any party wishes to inspect or have copies of such documents as are in another party's control it shall give notice in writing that it wishes to do so and such inspection shall be allowed at all reasonable times upon reasonable notice and any copies shall be provided within [number] working days of the request upon the undertaking of the party requesting the copies to pay the reasonable copying charges.

Experiments*

10. (a) Where a party desires to establish any fact by experimental proof, including an experiment conducted for the purposes of litigation or otherwise not being an experiment conducted in the normal course of research, that party shall on or before [date] serve on all the other parties a notice stating the facts which it desires to establish and giving full particulars of the experiments proposed to establish them.

(b) A party upon whom a notice is served under the preceding sub-paragraph shall within [number] days, serve on the party serving the notice a notice stating in respect of each fact whether or not that party admits it.

(c) Where any fact which a party wishes to establish by experimental proof is not admitted that party shall apply to the Court for further directions in respect of such experiments.

[Or where paragraph 9 of the Practice Direction - Patents etc. supplementing CPR Part 63 has been complied with.]

11. (a) The Claimants/Defendants are to afford to the other parties an opportunity, if so requested, of inspecting a repetition of the experiments identified in paragraphs [specify them] of the Notice[s] of Experiments served on [date]. Any such inspection must be requested within [number] days of the date of this Order and shall take place within [number] days of the date of the request.

(b) If any party shall wish to establish any fact in reply to experimental proof that party shall on or before [date] serve on all the other parties a notice stating the facts which it desires to establish and giving full particulars of the experiments proposed to establish them.

(c) A party upon whom a notice is served under the preceding sub-paragraph shall within [number] days serve on the party serving the notice a notice stating in respect of each fact whether or not that party admits it.

(d) Where any fact which a party wishes to establish by experimental proof in reply is not admitted the party may apply to the Court for further directions in respect of such experiments.

Notice of Models, etc.

12. (a) If any party wishes to rely at the trial of this action upon any model, apparatus, drawing, photograph, cinematograph or video film whether or not the same is contained in a witness statement, affidavit or expert's report that party shall on or before [date] give notice thereof to all the other parties; shall afford the other parties an opportunity within [number] days of the service of such notice of inspecting the same and shall, if so requested, furnish the other party with copies of any such drawing or photograph and a sufficient drawing photograph or other illustration of any model or apparatus.

(b) If any party wishes to rely upon any such materials in reply to any matter of which notice was given under sub-paragraph (a) of this paragraph, that party shall within [number] days after the last inspection to be made in pursuance of the said sub-paragraph (a) give to the other parties a like notice, and if so requested within [number] days of delivery of such notice shall afford like opportunities of inspection which shall take place within [number] days of such request; and shall in like manner furnish copies of any drawing or photograph and illustration of any such model or apparatus.

(c) No further or other model apparatus drawing photograph cinematograph or video film shall be relied upon in evidence by either party save with consent or by leave of the Court.

Written Evidence

13. (a) Each party may call up to [number] expert witnesses in this Action and Part 20 Claim provided that the said party:

(i) supplies the name of such expert to the other parties and to the Court on or before [date]; and

(ii) no later than [date/[number days] before the date set for the hearing of this Action and Part 20 Claim] serve upon the other parties a report of each such expert comprising the evidence which that expert intends to give at trial.

(b) Each party shall on or before [date] serve on the other parties [signed] written statements of the oral evidence which the party intends to lead on any issues of fact to be decided at the trial, such statements to stand as the evidence in chief of the witness unless the Court otherwise directs;

(c) The parties shall [here insert the particular directions sought, e.g. within 21 days after service of the other party's expert reports and written statements state in writing the facts and matters in those reports and statements which are admitted].

Admissibility of Evidence

14. A party who objects to any statements of any witness being read by the Judge prior to the hearing of the trial, shall serve upon each other party a notice in writing to that effect setting out the grounds of the objection.

Non-Compliance

15. Where either party fails to comply with the directions relating to experiments and written evidence it shall not be entitled to adduce evidence to which such directions relate without the leave of the Court.

Trial Bundles

16. Each party shall no later than [number] days before the date fixed for the trial of this Action and Counterclaim serve upon the parties a list of all the documents to be included in the trial bundles. The Claimants shall no later than [number] days before the date fixed for trial serve upon the Defendants …. sets of the bundles for use at trial.

Trial

17. The trial of these proceedings shall be before an Assigned Judge alone in [London], estimated length [number] days and a pre-reading estimate for the Judge of [number] days.

Liberty to Apply

18. The parties are to be at liberty on two days' notice to apply for further directions and generally.

Costs

19. The costs of this Application are to be costs in the Action and Part 20 Claim.