Litigation Manual (online version)

The Litigation Manual explains the Intellectual Property Office's practice under the Patents Act 1977.

This manual is primarily intended to provide guidance to Patents Directorate staff in Litigation Section. The manual contains detailed, up-to-date desk instructions on the practice and procedures Litigation Section staff should follow in the formal examination and processing of statements and evidence filed in inter partes proceedings before the comptroller, the formal processing of ex parte proceedings including restoration applications and in arranging hearings, issuing decisions and carrying out any subsequent actions. Most of the circumstances that staff can expect to encounter are covered. However situations may arise which are not addressed in the manual. In such cases, advice should be sought from line management or a Hearing Officer as appropriate.

The guidelines contained in the manual do not constitute legal provisions and as such are not authority for any action by the Office, nor do they impose any particular line of action. The ultimate authority on practice and procedures relating to patents is the Patents Act 1977 (as amended) and the Patents Rules 2007 (as amended). For design right, the ultimate authority is the Copyright, Designs and Patents Act 1988 and the Design Right (Proceedings before the Comptroller) Rules 1989. For advice on the interpretation of the provisions of the Patents Act and Rules, reference should be made to the Manual of Patent Practice. There is as yet no corresponding manual covering design right.

Further guidance on matters relating to proceedings before the comptroller can also be obtained from the Patents Directorate’s, Patent Hearings Manual. It may also be appropriate to refer to the Civil Procedure Rules 1998 and associated Practice Directions.

This manual is divided into chapters covering different types of proceedings dealt with by the comptroller and distinct topics. Each chapter is further divided into subtopics identified by sub-headings. The paragraphs are numbered sequentially with each number starting with the number of the chapter.

A list of commonly used terms and abbreviations is included together with a full index.

The manual is updated as appropriate to reflect changes in practice and to correct any errors. A schedule of the latest amendments is included below.

We welcome corrections to the information contained in this manual and also suggestions for improvement. They should be addressed to:

Mandy Screen
Litigation Section
Patents Directorate
Room 2G33
Intellectual Property Office
Cardiff Road
Newport
NP10 8QQ
Tel - 01633 814617

E-mail:Litigation Manual Editor

  1. Changes to the Litigation Manual This section details the recent main changes to the manual.
  2. Glossary of terms and abbreviations used in this Manual Section last updated: March 2016
  3. Chapter 1: Standard Procedures Sections (1.01 - 1.58) last updated: June 2016
  4. Chapter 2: Statements of case Sections (2.01 - 2.31) last updated: March 2016
  5. Chapter 3: Evidence Sections (3.01 - 3.33) last updated: March 2016
  6. Chapter 4: Hearings Sections (4.01 - 4.95) last updated: March 2016
  7. Chapter 5: Decisions Sections (5.01 - 5.39) last updated: March 2016
  8. Chapter 6: Appeals Sections (6.01- 6.42) last updated: March 2016.
  9. Chapter 7: Sections 8, 10, 12, and 37 entitlement Sections (7.01 - 7.35) last updated: March 2016
  10. Chapter 8: Section 13 mention of inventor Sections (8.01 - 8.32) last updated: March 2016
  11. Chapter 9: Oppositions Sections (9.01 - 9.38) last updated: January 2015.
  12. Chapter 10: Section 40 compensation of employees for certain inventions Sections (10.01 to 10.15) last updated: March 2016
  13. Chapter 11: Section 46 settlement of terms of licence of right Sections (11.01 to 11.25) last updated: March 2016
  14. Chapter 12: Section 48 compulsory licences Sections (12.01 to 12.27) last updated: March 2016
  15. Chapter 13: Section 71 declaration as to non infringement Sections (13.01 to 13.20) last updated: March 2016
  16. Chapter 14: Section 72 application for revocation Sections (14.01 - 14.50) last updated: October 2016
  17. Chapter 15: Design Right Sections (15.01 to 15.28) last updated: March 2016
  18. Chapter 16: Complex problems Sections (16.01 to 16.78) last updated: March 2016
  19. Chapter 17: Application to amend the specification under section 27 Sections (17.01 to 17.89) last updated: March 2016.
  20. Chapter 18: Section 29 Surrender of patents Section (18.01 to 18.21) last updated: March 2016
  21. Chapter 19 Section 47 cancellation of licence of right Sections (19.01 - 19.31) last updated: January 2015.
  22. Chapter 20: Claim/counterclaim for revocation Sections (20.01 - 20.19) last updated: January 2015.
  23. Chapter 21: Revocation on the Comptrollers initiative Section 73(1) Sections (21.01 - 21.30) last updated: March 2016
  24. Chapter 22: Section 46 settlement of terms of licence of right Sections (22.01 - 22.30) last updated: March 2016
  25. Chapter 23: Section 75 Amendment of patent infringement or revocation proceedings before the court Sections (23.01 - 23.29) last updated: March 2016
  26. Chapter 24: Section 117 corrections of errors Sections (24.01 - 24.94) last updated: March 2016
  27. Chapter 25: Making up new cases Sections (25.01 to 25.16) last updated: March 2016
  28. Chapter 26: Preparation of Patents and Designs Journal entries Sections (26.01 to 26.12) last updated: March 2016
  29. Chapter 27: Clear records Sections (27.01 to 27.17) last updated: January 2015
  30. Chapter 28: Restorations Sections (28.01 to 28.72) last updated: March 2016
  31. Chapter 29: Section 74A Requests for opinions Sections (29.01 to 29.42) last updated: March 2016
  32. Chapter 30: Section 74B Reviews of opinions Sections (30.01 to 30.21) last updated: March 2016
  33. Chapter 31: Miscellaneous Sections (31.01 to 31.10) last updated: June 2011
  34. Chapter 32: Revocation on the comptroller's initiative Section 73(1A Sections (32.01 to 31.30) last updated: October 2016.
  35. Index Chapter to be deleted.