Tribunal Patents Manual (online version)

Chapter 1: Standard Procedures

Sections (1.01 - 1.58) last updated: September 2017.

Standard Procedures

Introduction

1.01

The Patent Rules 2007 provide a single, flexible framework for all inter partes patent proceedings before the comptroller. Part 7 of the rules relates to all patent actions before the comptroller apart from reviews of opinions which are subject to separate rules. The rules are intended to improve speed and efficiency in the conduct of proceedings. They also provide for greater flexibility in managing proceedings. The rules apply to all proceedings from 17 December 2007.

1.02

The rules include an explicit statement of the overriding objective for the disposal of proceedings before the comptroller, including criteria corresponding to the overriding objective set out in Part 1 of the Civil Procedure Rules (CPR) (rule 74). As with the CPR, rule 74(4) places an obligation on the parties to help the comptroller to further the overriding objective. However the rule is not intended to change the way cases are dealt with, by, for example Tribunal Section.

1.03

The comptroller and Tribunal Section also deal with certain disputes relating to design right (see Copyright, Designs and Patents Act 1988 sections 246 and 247). Design Right proceedings are governed by the Design Right Rules 1989. The procedures followed are set out in Chapter 15 of this Manual. The rest of this Chapter describes the procedures to be followed when actioning patent proceedings. Annex 1 - Chart Procedure from filing Patents Form 2 to filing of Patents Form 4, Annex 2A and Annex 2b are examples of how the proceedings may progress.

Initial action

Formal Requirements

1.04

Inter partes proceedings are initiated by the filing of a form. For most proceedings under the Patents Act 1977, two copies of Patents Form 2 should be filed. For opposition proceedings, two copies of Patents Form 15 should be filed. Reference should be made to the Act and Rules concerning any time limits restricting the commencement of proceedings. An opposition filed under section 75(2), for example, should be filed within two weeks of the opposition advertisement in the Journal (rule 76(2)(a)). In the case of other oppositions listed in Part 2 of Schedule 3 of the Rules, an opposition needs to be filed within four weeks of the date of the advertisement in the Journal. It is not possible to extend these periods.

1.05

In all cases, the forms should be accompanied by the appropriate fee. If the fee has not been paid or is subsequently cancelled, then the action will be deemed not to have been properly filed. The forms should also be accompanied by two copies of a statement of grounds (rule 76(1)). For proceedings started under section 46(3) by a person other than the proprietor, see Chapter 11 and rule 89.

1.06

On receipt in the Office, the form and accompanying documents will be scanned to the Office’s electronic case management system and an electronic dossier (case file) will be created. Occasionally documents will be received in paper form. The B3 should send the documents to Indexing and Scanning (see Annex 3 - Request form for Indexing and Scanning). An electronic message will be sent to the B3 who will review the dossier, and amend the document codes as appropriate (see list included in Chapter 24). The B3 will carry out an initial check of the case. The check establishes, for example, that the correct section of the Act has been identified, the filing fee has been paid, a statement of grounds has been filed and the correct patent number(s), if appropriate, have been quoted. If these formalities requirements have been met, the B3 should :

  • allocate a B2 Case Officer and HO and enter the case details in the inter partes SharePoint list

The B3 should then carry out an analysis of the statement. If this is in order, the B3 should:

  • filter the Form 2, statement of grounds and attachments into the CLAIM PLEADINGS folder within the Inter Partes procedure in PDAX
  • serve the proceedings
  • make an entry in the register to record the fact that proceedings have been filed
  • minute the case to the B2 and request B2 carries out following actions:
  • arranges for the proceedings to be advertised in the Journal
  • diaries case to await a counter-statement
  • updates the front cover of the dossier with the appropriate labels – eg Litigation Proceedings

1.07

If there are minor problems with the documents, the B3 may resolve these by telephone with the claimant/attorney before serving. If, for example, Patents Form 2 has not been completed properly, the claimant/attorney should be contacted, preferably by telephone, and with his/her agreement any corrections may be made by the B3. These should be initialed and dated and a copy of the corrected documents sent to the claimant.

1.08

A copy of the corrected Form/document should also be sent to the patent applicant/proprietor except where he is the claimant (rules 77(1) and (2), and every person who it appears is likely to have an interest in the case (rule 77(1)).

1.09

If the proceedings have been filed by two or more claimants who are not professionally represented, each of the claimants need to sign the Form.

This is necessary even though one of the claimants may be shown on the Form as the main contact for the proceedings.

Occasionally, the B3 may request that the B2 review the proceedings and carry out the substantive analysis of the statement and serve.

Actions by B2

1.10

Where proceedings refer to more than one patent/patent application.

  • create a minute for each of the dossiers to identify the lead dossier for the proceedings and list the other cases in the proceedings as follows:

Proceedings under section X LEAD FILE See also: GB XXXXXXX, GB XXXXXXX, LITYYNNNN

  • process the case using the lead dossier rather than all of the dossiers

Where proceedings are filed under various sections of the Act

  • the minutes should be updated to show the relevant sections

Status of proceedings

At all stages during the processing of the case, the B2 should update the minutes to reflect the current status of the proceedings. Any diary date entries should be noted within the relevant minute.

Statement of Grounds

What should the statement of grounds contain?

1.11

When checking the statement of grounds, reference should be made to rule 76(4) of the Patents Rules 2007. This states that the statement of grounds should set out fully:

  • a concise statement of the facts and grounds on which the claimant relies
  • where appropriate, include the period or terms of the licence which he believes are reasonable
  • specify the remedy the claimant is seeking
  • where it accompanies an application under the Community Licensing Regulation, include any information required by the Regulation

and should be verified by a statement of truth so it can be given in evidence. The statement of truth should be signed and dated.

1.12

The B3/B2 should also ensure that any other requirements specified in the rules are complied with.

What happens if the statement of grounds does not comply?

1.13

If it appears that the statement of grounds is inadequate, the B3/B2 should seek to resolve the matter. If appropriate, the B3/B2 may discuss observations and recommendations with a HO. The B3/B2 should subsequently issue a letter pointing out the defects and should invite the claimant to file an amended statement.

1.14

The letter should express a preliminary view only e.g. that the statement of grounds appears inadequate or that the claimant appears to be requesting relief that may not be available. The claimant should be given a period of time in which to respond. The letter, along with a copy of the relevant form and any documents received, should be copied to the patent applicant/proprietor as appropriate and all those likely to have an interest in the case. At this stage the patent applicant/proprietor and others should not be invited to file a counterstatement.

PDAX: Letter is created in Word and imported using manual import (doc code is DEFECT LET)

1.15

If no response is received, the case should be referred to the HO for consideration. If the defects are substantial, a second letter may be sent indicating that, in the absence of a response, the Office proposes to strike out the action or treat it as withdrawn. A copy of this letter should also be sent to all interested parties for information.

PDAX: Letter is created in Word and imported using manual import (doc code is LETTER-IP)

1.16

Sometimes the only defects relate to documents referred to in the statement of grounds, for example, they may not have been filed or where they are filed they are in a foreign language and a translation may be missing. If these are the only defects the B3/B2 may:

  • if it is clear from the statement of grounds that the parties would have access to the missing documents/translations, formally serve the proceedings OR
  • write to the claimant to request that the missing documents are filed in duplicate (see rule 79(2)) and set a time period of not more than one month for a response. The letter should be copied to all interested parties. They should not be invited to file a counter-statement at this time.

PDAX: Letter is created in word and imported using manual import (doc code is LETTER-IP)

1.17

If reference is made within the statement of grounds to without prejudice documents for example resulting from negotiations between the parties, the case should be referred to a HO as it may not be necessary to request copies of such documents (for further details, see Patent Hearings Manual.

1.18

If the claimant does not respond to the official letter, the proceedings should be referred to a HO.

Serving the Statement of Grounds

1.19

If everything is in order or put in order then the B3/B2 should send a copy of the form, the statement of grounds and any other documents filed by the claimant to the patent applicant/proprietor and all those who it appears are likely to have an interest in the case (see Annex 4a - Letter serving statement). In determining who to notify, the B3/B2 should consider those named in the Register of Patents and those named in the statement and should refer any recommendations to the HO. The letter should:

  • indicate that proceedings have started
  • set a date for the filing of a counter-statement
  • request the counter-statement be filed in duplicate
  • request that any correspondence filed should be marked for the attention of the Case Officer

1.20

If the form and documents have already been sent, the letter should advise that the proceedings have formally started and request a counter-statement.

In both instances, correspondence should be copied to the claimant. If appropriate, correspondence sent to all parties may include a reference to mediation Annex 8 - Letter concerning mediation/Preliminary Evaluation; however this will not be appropriate in respect of revocation proceedings. The claimant should also be advised that on receipt of a counter-statement, he will have two weeks to file Patents Form 4 (and fee) to continue the proceedings (see Annex 4b -Copy letter to claimant).

PDAX: Letter is created in Word and imported using manual import (doc code is SERVE LET)

Unpublished patent applications

1.21

Section 118 and rule 55 does not authorise us to inform a claimant of a patent applicants address for service in respect of unpublished patent applications. Consequently, before copying any correspondence sent to a patent applicant who is not a claimant, the following procedures should be followed:

1.22

The patent applicant should be contacted and asked if he is willing for us to disclose his address for service.

1.23

If he is unwilling for us to do so, then we must ensure that we blank out any letter heading indicating the address for service of the patent applicant when copying correspondence to the claimant. Similarly, the claimant should not receive copies of letters sent to the named inventors for the unpublished application.

1.24

If the case has been dealt with by the B3, he/she should then:

  • send the case to the allocated B2 Case Officer
  • highlight any issues that have arisen / are outstanding
  • request the B2 to arrange a Journal advert
  • request the B2 to diary the case to await a counter-statement.

PDAX:The B3 should minute the file with the above information Create and send message to B2 Case Officer. Message = PSM Advert is created and imported using manual import (doc code is ADVERT-IP)

If the case has been dealt with by the B2, he/she should then:

  • arrange a journal advert
  • diary the case to await a counter-statement

PDAX: Advert is created and imported using manual import (doc code is ADVERT-IP)

Counter statement

1.25

If any person who is sent a copy of the appropriate documentation wishes to oppose the proceedings, he must file a counter-statement (in duplicate) within the period specified. If a counter-statement is not filed, the comptroller will take it that the person concerned supports the claimant’s case (rule 77(9)). If various parties such as the patent applicant and named inventors wish to oppose the proceedings, one counter-statement may be filed. However this should include a statement of truth signed by each party (see 1.26 and rule 78(1)). The rules do not prescribe a time period for the filing of a counter-statement but in most cases, six weeks should be allowed. There are however some exceptions. For oppositions under section 47(6), section 52(1) and section 52(2)(b), for example, there is a prescribed period of four weeks (rules 77(6) and (7)).

1.26

The person filing the counter-statement will be known as the defendant.

In the counter-statement, the defendant should state:

  • which of the allegations in the statement of grounds he denies
  • which of the allegations he is unable to admit or deny, but which he requires the claimant to prove
  • which of the allegations he admits

Like the statement, the counter-statement should also contain a statement of truth so that it can be given in evidence (rule 78(1)).

On receipt in the Office, the counter-statement and any accompanying documents will be scanned to the electronic dossier and a message sent to the Team Mailbox. The B3 should check the mailbox on a daily basis and send any messages to the appropriate B2 Case Officer. On receipt of the message the B2 should amend the document codes as appropriate and filter the counterstatement and it’s attachments into the folder entitled DEF PLEADINGS.

Statements of Case

1.27

Taken together, the statement of grounds and the counter-statement which are described generically as ‘statements of case’ show the facts in dispute.

Management of Proceedings

Serving the counter-statement and continuing proceedings

1.28

The B2 should check that the counter-statement has been filed within the prescribed period, including any extension allowed (see Chapter 2 and Chapter 16) and that it complies with the required formalities. If all is in order, a letter should be issued to the claimant enclosing a copy of the counter-statement. The letter should advise the claimant that if he wishes to continue the proceedings, he must file Patents Form 4 and pay the appropriate fee within a specified period (see Annex 5a - Letter serving counter statement and requesting Form 4). A letter should also be issued to the defendant acknowledging receipt of the counter-statement and enclosing a copy of the letter sent to the claimant.

Note: If the proceedings are uncontested, Patents Form 4 and the additional fee are not required.

PDAX: Letters created in Word and imported using manual import (doc code is F4 REQUEST)

Patents Form 4 and fee not filed

If Patents Form 4 and the fee are not filed within the specified time limit, the claimant will be considered to have withdrawn from the proceedings. A letter should be issued to the claimant (copied to the defendant) advising that the Office proposes to deem the proceedings as withdrawn and giving a period of two weeks for a response (see Annex 5b - Follow up letter to claimant).

PDAX:- Letter is created in Word and imported using manual import (doc code is LETTER-IP)

If no response is received, a further letter should be issued to the claimant confirming that the proceedings are to be treated as withdrawn with no matters outstanding. This letter should be copied to the defendant who should be invited to submit comments on the matter see Annex 5c - Letter to defendant inviting comments on withdrawal.

PDAX: Letters created in Word and imported using manual import (doc code is LETTER-IP)

If the claimant confirms in writing that he will not be filing Patents Form 4 or will not be continuing with the proceedings, follow procedures at 16.69.

If Patents Form 4 is filed late, the claimant will need to apply for an extension of time (see Chapter 16).

Patents Form 4 and fee filed

The B2 should action as follows:

PDAX: Letters created in Word and imported using manual import (doc code is LETTER-IP)

Reviewing proceedings

1.29

The case should then be referred to the allocated HO for review along with recommendations as to how the proceedings may subsequently be progressed. In making recommendations, the B2 should consider the following:

  • mediation: whether the issues and circumstances of the proceedings indicate that the matter could be suitable for settlement by alternative dispute resolution, such as mediation. In general, most cases will be suitable for mediation. [Note: in some instances, it may have been appropriate to mention mediation when serving the statement (see paragraph 1.20).

  • Case Management Conference: whether the issues need further clarification and whether a Case Management Conference could be helpful

The B2 should also seek advice on:

  • whether a Preliminary Evaluation is to be issued at this stage in the proceedings and
  • how the HO wishes the evidence rounds to be conducted

PDAX: If appropriate, minute the file to the HO.

Create and send message to HO. Message = PSM

Case Management Conference

1.30

A CMC may be held at any time during the proceedings. If a CMC is to be held, the parties should be informed see Annex 7 - Letter concerning Case Management Conference for suitable paragraphs). The proceedings should be referred to the hearings clerk who will then make the appropriate arrangements. The parties may be invited to attend a CMC at the Office or alternatively the CMC may be conducted by video or telephone. The parties’ legal representatives will normally be expected to attend but it is not necessary for the parties themselves to attend unless they wish to do so.

If the parties disagree that a CMC is necessary, the proceedings should be referred to the HO.

PDAX: Place a minute on the file requesting a CMC.

Create and send message to hearings team. Message = “Arrange CMC”.

Letter is created in Word and imported using manual import (doc code is LETTER-IP)

Preliminary Evaluation

1.31

A Preliminary Evaluation may be issued, for example, either (i) at this early stage in the proceedings or (ii) after the evidence rounds have been completed or (iii) both. A Preliminary Evaluation may set out the Office’s views of the issues in dispute or it may highlight questions both sides need to address.

Issuing early Preliminary Evaluation

1.32

If a Preliminary Evaluation is to be issued at this early stage in the proceedings, the B2 should write to the parties and advise accordingly. If appropriate, the letter should also encourage mediation (see Annex 8 - Letter concerning mediation/Preliminary Evaluation).

PDAX: Letter is created in Word and imported using manual import (doc code is LETTER-IP)

1.33

On receipt of the Preliminary Evaluation from the HO, the B2 should add the Preliminary Evaluation to the PDAX file and filter into the Determinations Folder and write to the parties as follows:

  • enclose the Preliminary Evaluation
  • inform the parties how evidence rounds are to be conducted (see Chapter 3)
  • invite the parties to file evidence and set out timetable
  • advise the parties that where they both appoint expert witnesses to file evidence, the witnesses may need to file a joint statement of agreed and disputed matters if the HO considers this is likely to save time
  • iaise with the Hearings Clerk to establish a week in which the hearing will be held. The Hearings Clerk will check the Hearing Officer’s calendar to ensure their availability for that week. The week should be no later than eight months from the date Patents Form 4 has been received in the Office. The aim is to conclude proceedings within 10 months of the date Patents Form 4 has been received. The week should be communicated to both parties in the timetable letter giving them a period of two weeks to respond if the date is inconvenient for them (see Annex 9 - Letter issuing Preliminary Evaluation and concerning evidence/expert witnesses/hearing date).

PDAX: Letter is created in Word and imported using manual import (doc code is TIMETABLE)

Preliminary Evaluation imported (doc code is PRELIM EVAL)

1.34

The period for the parties to consider the Preliminary Evaluation runs concurrently with the filing of the first round of evidence.

Preliminary Evaluation not issued

1.35

If the HO advises that a Preliminary Evaluation is not to be issued at this time, the B2 should write to the parties (see Annex 10 - Letter concerning mediation/Preliminary Evaluation/evidence/expert witnesses/hearing date) as follows:

  • encourage mediation
  • advise parties Preliminary Evaluation is not to be issued at this time
  • inform the parties how evidence rounds are to be conducted (see Chapter 3)
  • invite the parties to file evidence and set out timetable
  • advise the parties that where they appoint expert witnesses to file evidence, the witnesses may need to file joint statement of agreed and disputed matters if the HO considers this is likely to save time
  • liaise with the Hearings Clerk to establish a week in which the hearing will be held. The Hearings Clerk will check the Hearing Officer’s calendar to ensure their availability. The week should be no later than eight months from the date Patents Form 4 has been received in the Office. The aim is to conclude proceedings within 10 months of the date Patents Form 4 has been received. This week should be communicated to both parties in the timetable letter giving them a period of two weeks to respond if the date is inconvenient for them (see Annex 9 - Letter issuing Preliminary Evaluation and concerning evidence/expert witnesses/hearing date).

PDAX: Letter is created in Word and imported using manual import (doc code is TIMETABLE)

Actioning response from the parties

1.36

If one of the parties are unable to make the proposed week the case officer should liaise with the parties, the HO, and the Hearings Clerk to find an alternative. The new hearing date should be communicated to all parties.

1.37

If the HO is not available on the alternative hearing week, consideration may be given to transferring the case to another HO so that the parties’ agreed hearing date can be accommodated. In such a case, the B3 should be asked to allocate another HO and should update the Hearings SharePoint list.

If neither side responds on the suitability of the hearing week then the case officer will assume that both sides are happy with the proposed date and should set a diary to await the first round of evidence.

Mediation

If both parties have agreed to mediate, a letter should be issued asking them to confirm whether the proceedings are to continue OR whether they have been suspended pending the outcome of the mediation. See Annex 11 - Letter concerning hearing date/mediation.

All documents relating to the mediation should be placed in the MEDIATION folder.

PDAX: B2 to create a letter in Word and imported using manual import (doc code is LETTER-IP)

1.38

Once all actions have been completed, the proceedings may be diaried to await the outcome of the mediation (if appropriate) or the filing of evidence.

Failure to file a counter-statement

1.39

Failure to file a counter-statement (except where the claimant has withdrawn unconditionally) will lead to the proceedings being treated as unopposed. Any interested party will forfeit the right to take any further part in them (see Chapter 16). This should be confirmed by letter (see Annex 12 - Letter concerning no counter statement filed). A reference under section 37 of the Patents Act 1977, for example, will be considered by the HO as if each specific fact set out in the statement were conceded, except in so far as it is contradicted by other documents available to the comptroller.

1.40

If, on this basis, such a reference is successful, then a decision will be issued accordingly.

PDAX: Create a minute to the HO. Create a minute and message the HO to advise that counter statement has not been filed. Message = “PSM”

The HO will send a decision and abstract to the hearings team by email with a message that the decision should be issued.

PDAX: HO will create a minute to the B2 case officer. Decision is imported using manual import (doc code is DECISION-IP) and filtered into the DETERMINATIONS folder

However, if it is the preliminary opinion of the Office that the grounds have not been made out, then the claimant should be informed by the B2 of this preliminary view and offered a hearing before the reference is dismissed by a decision of the HO.

PDAX: Create a minute to the HO. Create and send message to HO. Message = PSM Letter created in Word and imported using manual import (doc code is LETTER-IP)

Evidence Rounds

1.41

The evidence rounds may be conducted sequentially or simultaneously. The HO will advise. Either way, both parties will need to send a copy of the evidence to the other side and to the Office.

Evidence filed sequentially

1.42

The usual procedure involves three rounds of evidence, each of six weeks. The first and third rounds of evidence will be filed by the person who did NOT file a counter-statement (but see also Chapter 3). The second round of evidence is usually filed by the defendant.

  • claimant to file main evidence
  • defendant to file main evidence and file evidence in response to the claimant’s evidence
  • claimant to file evidence strictly in reply to the defendant’s evidence

Evidence filed simultaneously

1.43

Evidence may also be filed simultaneously. In this case, the procedure will involve two rounds of evidence, each of six weeks

  • both sides to file main evidence
  • both sides to file evidence in reply

Format of evidence (see Chapter 3)

1.44

Evidence should preferably be in the form of a witness statement though affidavits or statutory declarations are acceptable. If the comptroller thinks fit, evidence may be given orally at the hearing. Every document or article submitted by either party in support of his case must be made as an exhibit to an affidavit or witness statement if it is to have the force of evidence. This does not apply to documents submitted with a statutory declaration. No further evidence may be filed by either party except by leave or direction of the comptroller.

Expert witness evidence

1.45

Where both parties appoint expert witnesses to give evidence concerning the technical matters at issue in the proceedings, the expert witnesses may be required to produce between them a statement of agreed and disputed matters if the HO considers this will save time overall.

Action on receipt of evidence

1.46

On receipt of evidence from both sides, the B2 should:

  • check evidence has been scanned correctly to the electronic dossier and annotate accordingly. Each witness statement received, for example, should have been indexed separately and should be annotated to show who has filed it. Each exhibit should also have been scanned and indexed separately and should be annotated accordingly (see 1.49 for physical exhibits)
  • the B2 should filter the evidence into the correct folder within the Inter Partes procedure and change the document code if necessary
  • refer evidence to the HO (send message)
  • check following the second round of evidence, if filed sequentially or the final round if filed simultaneously, whether a Preliminary Evaluation is to be issued prior to the hearing (see 1.31)
  • check following receipt of final evidence whether it is necessary to request a joint statement from expert witnesses (see 1.45)
  • issue letter to the parties (see Annex 13 - Letter concerning evidence/Preliminary Evaluation/expert witnesses) which will: -
  • acknowledge receipt of evidence
  • remind parties to copy to other side if not clear this has been actioned
  • confirm the date for the next evidence round
  • advise parties where appropriate that a Preliminary Evaluation will be issued prior to the hearing
  • request parties file a joint statement from their expert witnesses. Set deadline of 1-2 weeks prior to hearing
  • send message to hearings clerk following second round of evidence if filed sequentially or the first round if filed simultaneously in order for arrangements for the hearing to be confirmed.

PDAX: The B3 should send a message to the B2. Message = “New Docs” Letter created in Word and imported using manual import (doc code is LETTER-IP)

Physical exhibits should be taken to the manager of Indexing and Scanning to be recorded on PDAX (see 1.49 below).

If the physical exhibit is an audio or visual cd/dvd then check with the Head of Index & Scanning whether it can be stored as an electronic file within the dossier.

Issuing later Preliminary Evaluation

1.47

If a later Preliminary Evaluation is to be issued following completion of the evidence rounds, on receipt from the HO, the B2 should add the Preliminary Evaluation to the PDAX file and send this to the parties. The letter may also request, if appropriate, that the parties file a joint statement from the expert witnesses (see Annex 9 - Letter issuing Preliminary Evaluation and concerning evidence/expert witnesses/hearing date and Annex 13 - Letter concerning evidence/Preliminary Evaluation/expert witnesses).

PDAX: Letter is created in Word and imported using manual import (doc code is LETTER-IP) Preliminary Evaluation imported (doc code is PRELIM EVAL)

Receipt of joint statement from expert witnesses

1.48

On receipt of the agreed statement, the B2 should:- * check status of document on dossier * refer statement to the HO (send message) * acknowledge receipt

PDAX: The B3 should send a message to the B2. Message = “New Docs”

Physical exhibits for PDAX cases

1.49

Where a physical exhibit is filed in evidence, the B2 should take this to the Head of Index and Scanning. A Non Scan code will be imported by Indexing and Scanning with an appropriate annotation. The physical exhibit should be retained by the B2. The claimant may also provide an exhibit for the proprietor. However, if the case is served on any other interested parties, they should be notified of the existence of the exhibit and advised that it may be viewed at the Office. Alternatively they may contact the claimant to arrange a suitable time and place to view the exhibit. If an exhibit is referred to but not provided by the claimant, the claimant may be requested to make arrangements for the proprietor, any interested parties and the Hearing Officer to view the exhibit. Once proceedings are concluded however, the exhibit should be sent to the Head of Index and Scanning so that records can be updated and the exhibit stored appropriately.

Non-filing of evidence (see Chapter 16)

Sequential

1.50

Where evidence is to be filed sequentially, if the claimant informs the Office that he does not wish to file evidence, the B2 should direct that the period allowed for the defendant to file evidence should begin immediately.

1.51

If the defendant informs the Office that he does not intend to file evidence, the B2 should inform the claimant that as there is no evidence to reply to, the third round of evidence will not take place.

Simultaneous

1.52

Where evidence is to be filed simultaneously, if the claimant informs the Office that he does not wish to file evidence, the B2 should inform the defendant. If the defendant files his main evidence, the claimant should be invited to file evidence strictly in reply.

1.53

If the claimant files main evidence but the defendant informs the Office that he does not wish to do so, the B2 should inform the claimant and should invite the defendant to file evidence strictly in reply.

Decision

1.54

Following the substantive hearing, a decision is issued. Occasionally a decision on the papers may be issued. The decision will be circulated to HOs and Tribunal Section for information. The hearings clerk will manually import the decision into the dossier and if OPI will arrange for an unsigned version of the decision to be published on the Office’s website and added to Ipsum as appropriate (see Chapter 5). The Hearings Clerk will also filter the decision so it appears in the SUB HEARING folder.

1.55

He will send a copy of the decision to the B3/B2 with a Clear Records ProForma along with a paper copy of the decision. On receipt, the B3/B2 should update the register, if appropriate, with the result of the decision and return the form to the Hearings Clerk. The pro forma advises the Clerk of any subsequent action that should be taken

Clear records action

1.56

Once the appeal period has expired, the B2 should arrange for clear records action to be carried out as follows:

  • arrange Journal entries and if appropriate, make arrangements to update the A &/or B specification front pages. A message should be sent to Publishing after the appeal period has passed.
  • where decision has been issued, add ‘Precedent’ label to front cover of dossier
  • update the Inter Partes SharePoint List with the outcome of the decision
  • record all ‘clear record’ actions have been carried out on the minute sheet
  • send a PDAX message to Formalities if the proceedings relate to a GB patent application to inform them of the result of the proceedings

PDAX: Advert for Journal is created in Word and imported using manual import (doc code is ADVERT-IP)

Exchange of information - Patents County Court (PCC)

1.57

Where parties have filed proceedings at the Office and have informed us that they have also filed proceedings in the PCC, the PCC should be informed of the following:

  • the nature of the proceedings before the comptroller
  • the parties involved and their addresses
  • the patent number(s)
  • the date the proceedings were filed
  • the Patents County Court reference number(s) if provided

The B2 should inform the Hearings Team of the above. The hearings clerk has the relevant PCC contact details and should then pass the information to the Clerk of the PCC.

1.58

Where proceedings have been filed in the PCC relating to a patent, the Clerk of the PCC will inform us.