Litigation Manual (online version)

Chapter 20: Claim/counterclaim for revocation

Sections (20.01 - 20.19) last updated: January 2015.

Receipt of claim for revocation

20.01

There are two types of revocation at the Court: claim for Revocation and counterclaim for Revocation. The claim/counterclaim for revocation will normally be received together with the grounds of invalidity, an accompanying letter and other documents. A claim for Revocation can be recognised on the dossier by having a claim form, particulars of claim, grounds of invalidity and any supporting evidence. A counterclaim for Revocation can be recognised on the dossier by having a defence and counterclaim, grounds of invalidity and any supporting evidence.

20.02

Once the claim/counterclaim for revocation is scanned, a message is sent to the court work mailbox on PDAX, to be actioned as soon as possible. The application is then entered in the Ex-parte post grant SharePoint list. A free text entry is recorded on Optics as follows:-

Claim/Counterclaim for revocation lodged at the Patents Court on (insert date) (insert Action No).

A Journal entry is then prepared as follows:-

Claim/counterclaim for revocation lodged at the Patents Court on (insert date) (insert Action No.).

Advert is created and imported using manual import (doc code is ADVERT).

20.03

The A3 then sends out a letter (see Annex 1 - Letter acknowledging receipt of claim/counterclaim) and Annex 2 - Letter to proprietor. The letter is copied to the other parties to the proceedings, e.g. proprietor and any other interested parties.

Letter created, locked and imported from PROSE

A file note is then prepared noting all the actions completed.

The A3 will then action as below:

  • for both EP and GB cases, if no dossier exists on PDAX, take the hard copy document to Index and Scanning and request they set up a dossier for this patent

For paper cases attach a request for index and scan to the application and send it to the Index and Scanning section. A message will be sent to the court work mailbox.

The case is then diaried in the court work diary in outlook, setting a six month diary date.

If more than one claim or counterclaim for revocation is filed for the same patent but by another party, each claim or counterclaim should be recorded in the interest of clarity. In this scenario, the A3 should ensure that the register and the Journal advert clearly indicate the details of the party filing the action, e.g. filed by second defendant.

Follow-up procedure

20.04

At approximately six monthly intervals, a follow-up letter Annex 3 - Letter requesting information re progress should be sent by the A3, asking for any further progress.

Letter created, locked and imported from PROSE File note is created in PDAX

Notification of the outcome of the claim/counterclaim

20.05

Notification of the outcome of the claim/counterclaim usually comes in the form of a letter (often from the successful party). This is not sufficient to record the outcome and it will therefore be necessary to contact the party and ask for them to supply you with a copy of the sealed Court Order.

20.06

On receipt of a copy of the sealed Court Order, the A3 should record the outcome of the court proceedings on OPTICS. The outcome should also be advertised in the next available Journal. The entries may read for example as follows:

In an Order of the High Court dated …………. (insert High Court number), the patent was revoked.

In an Order of the High Court dated …………. (insert High Court number), the proceedings were stayed.

Advert is created and imported using manual import (doc code is ADVERT).

A letter should be issued by the A3 acknowledging receipt of the Court Order. This should be copied to the other party involved in the proceedings. For clear records see 20.15 – 20.19.

Letter created, locked and imported from PROSE. File note is created in PDAX.

Stays

20.07

An Order revoking the patent may also contain an Order granting leave to appeal to the Court of Appeal. If this is the case any action may be stayed for 28 days. If an appeal is lodged, the stay may continue until such time as the appeal has been determined. NB If the Order contains notification of a stay it is important that this is included in any notice for the register and Journal since the stay will be suspending the order to revoke. Note on occasion some orders for stays will be Tomlin Orders and in this situation the stay will discontinue the proceedings in the Court. Where such an Order is received, reference should be made to the B3 before records are cleared.

Create minute in PDAX, send a “PSM – Tomlin Order” message to B3. Advert is created and imported using manual import (doc code is ADVERT). Letter created, locked and imported from PROSE. File note is created in PDAX

Appeal to the court of appeal against an order for revocation

20.08

If an appeal is made to the Court of Appeal, the appellant must serve that appeal on the Comptroller. A Journal advert and OPTICS entry should be made accordingly. (For further details and any further appeal to the House of Lords see Chapter 6 on appeals).

Advert is created and imported using manual import (doc code is ADVERT). Letter created, locked and imported from PROSE. File note is created in PDAX

20.09

If the respondent decides not to oppose the appeal, or not to attend the appeal hearing, he must immediately inform both the Office and the appellant. He must also provide the Office with copies of the Claim for Revocation, any Statements of Claim and any written evidence filed with the claim.

20.10

The A3 should inform the appropriate Divisional Director of the appeal as soon as possible, as the Office must then advise the appellant whether or not a representative of the Office will attend the appeal. This should be within 14 days of receiving the notice of appeal. (Note: the appropriate Divisional Director will depend on the subject matter of the patent concerned.)

Create minute in PDAX send a “PSM – Appeal lodged” message to the DD.

20.11

[Deleted]

20.12

If the respondent withdraws his opposition to the appeal during the hearing the Court of Appeal may direct or permit the Office attend the hearing and to oppose the appeal. These circumstances rarely occur.

20.13

The A3 will need to find out when the appeal will be heard either by contacting the Court of Appeal directly or asking the appellants to let us know when they are informed.

20.14

The A3 must then inform the Office representative of the date by sending an appointment. Letter created, locked and imported from PROSE. File note is created in PDAX

Clear records

20.15

A Journal entry is prepared and OPTICS is updated to reflect the outcome of the proceedings as follows:- Claim/Counterclaim for revocation lodged at the Patents Court on (insert date), revoked/stayed/dismissed by court order dated (insert date) (Insert Action No.)

Advert is created and imported using manual import (doc code is ADVERT).

20.16

The A3 should issue a letter to the parties acknowledging receipt of the Court Order and notifying them that the register has been updated and a Journal entry prepared. Letter created, locked and imported from PROSE. File note is created in PDAX

20.17

The Ex-parte post grant SharePoint list is updated to show the outcome of the proceedings.

Amendments Allowed

20.18

If amendments under s75 have been allowed and the claim/counterclaim for revocation dismissed, both proceedings can be completed by referring to the Head of Examination Group of the patent subject matter concerned (refer to chapter 23 for s75 proceedings).

Create a minute in PDAX, send a “PSM – Amendments allowed/Claim/ Counterclaim/dismissed” message to Head of Examination Group.

20.19

The A3 should update the register and prepare a Journal entry as follows:-

Claim/Counterclaim for revocation lodged at the Patents Court on (insert date) dismissed by Court Order allowing amendments on (insert date of Court Order) (Action No.)

Advert is created and imported using manual import (doc code is ADVERT).

Letter created, locked and imported from PROSE. File note is created in PDAX

A separate advert will be required for the s75.

The case should then be referred to Publishing Section.

Create Minute in PDAX, send a “PSM – Amendments allowed” message to the Publishing Team mailbox.