Litigation Manual (online version)

Chapter 4: Hearings

Sections (4.01 - 4.95) last updated: March 2016

Introduction

What is a hearing?

4.01

When examining a patent application or granted patent, an examiner might object to certain things about it. A patent applicant will always be given a chance to overcome these objections. Before making any decision that might adversely affect the applicant, where there is an element of discretion, the applicant is entitled to ask for “a hearing” (see section 101 of Patents Act 1977).

4.02

A hearing gives the applicant the chance to explain his or her case in person to a senior officer known as a “hearing officer”. The hearing officer is independent and will look at all sides of the argument before making the final decision about the case. If the applicant doesn’t agree with the decision, he can file an appeal (see Chapter 6).

4.03

Sometimes two or more opposing parties may be in dispute over a patent or patent application. If this happens, we might be able to help settle the dispute, but obviously the parties would need to tell us about it. They may not always agree with what we say. If we can’t overcome these differences, either of those involved may ask us for a hearing. Both sides will be invited to attend the hearing. The hearing officer will listen to both sides of the argument and will give a written decision (see Chapter 5). If one side does not agree with the decision, they can file an appeal (see Chapter 6).

Types of hearing

4.04

There are generally two types of hearings – ex parte and inter partes. There is no fee to pay in relation to either of these. As well as arranging hearings, the hearings clerks may also be involved in arranging Case Management Conferences (CMCs) and Pre-hearing Reviews.

Ex parte hearings

4.05

An Ex Parte hearing is held between a single party (either private individuals or firms) and the Office. An ex parte hearing may be held prior to the comptroller exercising his discretion adversely (see section 101 of the Patents Act 1977); so, for example:

  • where an applicant is in disagreement with an examiner about whether his application meets the requirements of the Act and is patentable, he may request a hearing

    or

  • where an applicant is in disagreement with a case officer concerning whether his granted patent should be restored, he may request a hearing

    or

  • where an ex parte hearing has been requested near the end of the Rule 30 compliance period, extensions are available to the applicant (see 4.88 – 4.94 for further details). If a Form 52 is received by the section in relation to extending the Rule 30 period a message should be sent to the respective Head of Admin so they can deal with the request.

Inter partes hearings

4.06

Inter Partes hearings are held between two parties who are in dispute over a patent. Inter partes hearings may be:

  • Substantive – this is the main hearing held to decide the proceedings
  • Preliminary hearings - these may be held to sort out issues that arise within the proceedings. They may be held at the request of either party or at the suggestion of the Office, but require the agreement of the HO. The procedure for preparing a preliminary hearing is similar to that for the substantive hearing. However it is important that the parties are informed in writing of the exact issue to be determined and what documents need to be supplied (see Annex 3 - Case Management Conference/Pre hearing review and preliminary hearing arrangements letter), HRGCMC CMC/Pre Hearing Review and Preliminary hearing arrangements letter).

Case Management Conference

4.07

The HO has the authority to call a Case Management Conference (CMC) to help clarify the issues or give directions on the future conduct of a case. A conference may be called at any stage in the proceedings, including straight after the filing of a counter-statement. It will probably be unnecessary for the parties to supply the vast number of documents for the CMC as required by the Civil Procedures Rules (see paragraphs 4.8 and 4.9 of the Practice Direction to Part 63). When arranging a CMC, the hearings clerk should liaise with the B2 Case Officer and HO. They will need to write to the parties using a suitable form of letter template, (Annex 3 - Case Management Conference/Pre hearing review and preliminary hearing arrangements letter).

Pre hearing reviews

4.08

These may be held by the HO so he can give directions regarding the hearing. A review is unlikely to be necessary unless the proceedings are complex. The hearings clerk will need to write to the parties using a suitable form of letter template, (Annex 3 - Case Management Conference/Pre hearing review and preliminary hearing arrangements letter).

Is it always necessary to have a hearing

Ex parte cases

4.09

A patent applicant may request that a decision be made by a HO based on the papers he has filed.

Inter parte cases

4.10

The parties involved in the dispute may request that a HO make a decision on the case based on the papers filed. However both sides involved in the dispute must agree to this – if they don’t, then a hearing will probably be required.

Where are hearings held? What options are available?

4.11

Hearings are usually held at our Newport Office. They may be held at the London office only with the Hearing Officer’s agreement if there are compelling reasons. They may also be held by telephone or video conference link, with the Hearing Officer’s agreement. Where the parties consent and the HO is satisfied that the circumstances justify it, in particular that it will result in an overall saving in time and cost, a hearing may be held at locations other than Newport or London. Preliminary hearings are usually held by video conference link though they may also be held at our London Office.

Case Management Conferences and Pre-hearing reviews

4.12

The hearings clerk should consult the HO about how he wishes to run the CMC / Pre-hearing Review before seeking agreement from the parties. These may be conducted by video conference, telephone, or the parties may appear in person before the HO.

4.13

When arranging a CMC/ Pre-hearing Review, the hearings clerk needs to check with the party(ies) where they would like this held. Any dispute over venue should be referred to the HO. Remember that the HO must give approval to any venue except Newport. However, where counsel is involved, London will probably be the preferred venue.

Arranging an Ex parte hearing (Hearings clerk) - use Ex parte hearings checklist (Annex 2a - Ex parte hearings checklist)

4.14

Most requests to arrange an ex parte hearing will relate to cases on PDAX. The examiner will send a message to the Hearings Team Mailbox requesting that a hearing be arranged.

On receipt of request

The Hearings clerk will:

4.15

Complete as much of the Hearings Arrangement Sheet (Annex 1a - Ex parte hearing arrangement sheet) as possible using information from the PDAX dossier, noting the date that the hearing request was made and the date that the request was received in the section.

4.16

Select a Hearing Officer from the SharePoint Ex Parte List and try to ensure that hearings are allocated on an equal basis.

4.17

On the Ex Parte SharePoint list add “new item” and edit accordingly by entering the case name, patent number, date case received in the section and the allocated hearing officer (HO). Check to see if the applicant has any other hearings outstanding and liaise with the HO’s to see if they can be combined.

4.18

On PDAX create a minute on the dossier and use the create message function to send a message to the hearing officer. Delete the request from PDAX and place the paper file in the ‘Hearing Awaiting Date’ folder.

4.19

Email the allocated Hearing Officer requesting that their Outlook calendar is up to date. From the SharePoint Hearing Assistant list notify the Hearing Officer of the next available Hearing Assistant (HA). When the HO confirms if he requires an assistant, add the assistant to the case details and move the assistant to the bottom of the HA list noting the number of hearings they have assisted on. If no response is received from the HO, the Hearings Clerk will assume the Outlook calendar is up to date and can be used and that the selected HA can be allocated to the HO.

Target for above actions is five days from receipt of the message from examiner

Arranging a hearing date

4.20

A hearing should preferably be held within a month of the notification that the applicant requires a hearing.

The Hearings clerk will:

4.21

Prior to telephoning the applicant or their appointed representative, select the first available date or a date 2 weeks from today in Outlook Calendar (PDHearings). Right click and select ‘New Appointment’, open the ‘scheduling assistant’ and ‘add attendees’, enter the names of the hearing team followed by the HO, examiner, any assistants and the SharePoint calendar. This will allow you to book a time when all required parties are available (the hearing team is selected so that any existing hearings are shown and so that they know of the new hearing through their calendars, they are not expected to attend). Please note that Trademarks block book the room facilities in London. When looking for available rooms where the room is booked as Hearings VC but there is no company name, the room is available.

4.22

When ringing the applicant, firstly ensure that they know the options open to them (hearing in person, by telephone conference, by video conference or a decision on papers) and ensure that they are aware that anything other than a face to face hearing in Newport or a decision on papers requires the agreement of the HO. Select a mutually agreeable date and time and note it on the paper file (hearings are held from 10:30am to 1:30pm and from 1:30pm to 5pm). Inform the applicant that you will be confirming the hearing by post and that one of the team will contact them before the date to check attendees and car details for security if attending on site.

4.23

On PROSE select the Ex Parte Hearings template HRG EXP, (Annex 6 - Ex parte hearing arrangements letter) and edit as necessary. Import the letter onto the PDAX dossier and annotate. Issue the letter to the applicant.

4.24

Enter the details on the paper diary. E-mail accommodation to secure a parking bay, if required, and inform them that you will supply attendee and car details later.

4.25

On the Ex-Parte SharePoint list enter the date of the hearing.

4.26

The paper file can now be placed in the ‘Ex Parte Arranged Hearings’ folder and an outlook file can be created for the case.

Additional tasks where a video conference is arranged

4.27

If the applicant requests a video hearing, remind the applicant that you must obtain the HO’s approval for the video conference hearing and that you will confirm once the HO has agreed. If the HO agrees to a video conference hearing, there are a few options available. The applicant can use their own facilities and link up with the HO in Newport. If using their own facilities, the applicant must email details of their video conferencing systems so that we can check our systems are compatible. The Hearings Clerk will raise an IT helpdesk call and the applicants video conferencing details will be added to the drop-down list on the screen in 1R32 (1R32 should always be used where available).

4.28

Alternatively, the applicant can opt to use our video conferencing systems in our London office. If this is the case, the V/C rooms in London should be entered into the scheduling assistant to check availability and add rooms using ‘add attendees’. Make the appointment in outlook and complete the arrangements as necessary.

4.29

If the HO prefers not to conduct the hearing by video conference, liaise with the party to arrange a suitable date that they can attend a face to face hearing or other alternatives given by the HO. If the party insists on a video hearing seek instruction on how to proceed from the HO.

Additional tasks where a telephone hearing is arranged

4.30

If the applicant requests a telephone hearing remind the applicant that you must obtain the HO’s approval for the telephone hearing and that you will confirm once the hearing officer has agreed.

4.31

Contact the HO to get confirmation that they are content with the telephone hearing. If so let the party know and complete the arrangements as above.

4.32

If the HO prefers not to conduct the hearing by telephone conference, liaise with the party to arrange a suitable date that they can attend a face to face hearing or other alternatives given by the HO. If the party insists on a telephone hearing seek instruction on how to proceed from the HO.

Additional tasks where a hearing is to be held in London

4.33

If the applicant wishes to attend a face to face hearing in London, the applicant must provide compelling reasons for the HO to consider why a face to face hearing in London is necessary. If the HO agrees to a face to face hearing in London, use scheduling assistant to enter London meeting rooms and make the appointment via outlook.

4.34

Booking the rooms through Outlook will secure the rooms in London but you should also confirm the booking by e-mail with the London Admin team. Complete the arrangements as above.

4.35

If the HO prefers not to attend the hearing in London, liaise with the party to arrange a suitable date that they can attend a face to face hearing or other alternatives given by the HO. If the party insists on a London hearing seek instruction on how to proceed from the HO.

Actions 7 - 2 days before the hearing

The Hearings clerk will:

4.36

Contact the agent/applicant and ask them for a full list of those who are attending. If they are arriving by car ask them for the make and registration. Check if they have sent in any skeleton arguments and that you have received them. E-mail accommodation, telling them that you have a party arriving on site for a hearing and the date and times. Tell them the names of the visitors and the make and registration of any cars, a parking bay should have been reserved earlier (4.24). Ask them to inform security.

Additional tasks where a video conference is arranged

4.37

As above and check that you have the ISDN or IP address of their system. If you require help from IT to make the connection, raise a helpdesk call. Ensure that details of the connection to be made are received in good time and check with IT that the systems are compatible. If possible ask to make a practice connection before the hearing. Remember that the office must always dial out, connections cannot be made by the party dialling in.

Additional tasks where a telephone hearing is arranged.

4.38

As above and check that you have the telephone number where they wish to be contacted. If dialling abroad, a test connection is suggested ahead of the hearing in case of any potential issues.

Additional tasks where a hearing is to be held in London

4.39

As above but e-mail details of the visitors and of the HO and their team to the London Admin team.

On the day of the hearing

The hearings clerk will:

4.40

Set up the hearings room as necessary.

4.41

If using a digital-recorder check the battery is full and test before use. If the battery is less than full, replace with new battery.

4.42

When the agent/applicant arrives, escort them to the room and settle them before informing the HO and his team of their arrival.

4.43

When the HO arrives, introduce the parties, ensure that the digital-recorder is set up and place the quiet sign outside the door when leaving.

4.44

After the hearing, escort the applicant off-site, clear the room and collect the recorder.

4.45

Take the recorder to the IT helpdesk to have it downloaded to your drive. Send a copy of the recording to the HO and HA. Manually import the recording onto PDAX using code HEARING REC and annotate accordingly. Save the recording to the Hearing Recordings cabinet under Litigation Hearings on Outlook. Also, place a copy of the recording in the outlook file. Once the recording has been placed on the file, delete the recording off the digital recorder.

4.46

Move the paper arrangements file to the Decision file. On the SharePoint list enter the date of the hearing into the ‘Date ready for a decision’ field. This will trigger the timetable for when the decision is due when generating reports. Entering a date into the “date ready for a decision” field will also create tasks for the HO informing them of the due date for the decision. If the HO requests the party to file submissions, the date ready for a decision is the date that the submissions are filed.

Decision based on papers

4.47

An applicant/agent may decide that a decision on papers (their file) will meet their requirements. If so they must advise us of this in writing (an e-mail is sufficient). On the SharePoint list edit the decision type field from a hearing to a decision on the papers and enter the date that the request is received in writing in the ‘date ready for a decision’ field. This should automatically change the ‘Status’ to ‘Ready for a Decision’. This will generate a task for the HO. Minute the dossier with the date that the request has been made. Move the paper arrangements file to the Decision file.

SPC cases

4.48

SPC hearings should always have a transcript writer. See transcript writers 4.67 - 71 and amend the hearing arrangements letter accordingly.

Arranging an Inter partes hearing (Hearings clerk) use Inter partes hearings checklist (Annex 2b - Inter partes hearings checklist)

4.49

Requests for Inter Partes hearings will normally come from the B2 case officer for the case. There may be a preliminary hearing followed by the substantive hearing and possibly CMCs in between. For the substantive hearing the case officer will inform the hearing clerk of what is required and agree a hearing date window. The hearings clerk and the case officer will complete the initial hearing request form. Regardless of the type of hearing, the procedures for arranging them are essentially the same.

The hearings clerk will:

4.50

Using the details provided by the case officer complete a Hearings Arrangement Sheet (Annex 1b - Inter partes hearing arrangements sheet). They will also have instructions on a window for when the hearing will take place and what type of hearing is to be arranged.

4.51

For a substantive hearing the HC should confirm that there is availability in the window week. If not, re-arrange the window week with the case officer. If there is availability then the HC should make an ‘All day event’ appointment through the Outlook ‘PD Hearings’ calendar for the HO and CO for the entire week annotated as ‘GBXXXXXXX window week’. In the individual daily bookings in the calendar the HC should open each appointment and in the text box write ‘GBXXXXXXX HO’, the HO referring to the hearing officer for the case. To close the entry without sending an update, select the close item and select ‘save without sending updates. Following the same procedure as for an Ex Parte hearing (4.21) open an appointment in OUTLOOK and enter all the required parties/rooms. If the arrangements are for the substantive hearing, block book the hearing date window agreed with the case officer. The HC should issue a HRG WINDOW IP (Annex 9 - Hearing window week arrangement letter) letter to the parties confirming the window week. Proceed to 4.54.

For a CMC or Preliminary hearing

4.52

Co-ordinate between the parties to arrange a mutually agreeable date and time for the hearing.

4.53

When a date/time is agreed confirm the booking on OUTLOOK ‘PDHearings’ calendar. Note that for a hearing in London, booking the rooms on OUTLOOK will book the rooms in London. Coordinate with the case officer to ensure that the correct letter is sent out. Generally for a CMC the letter in Annex 3 - Case Management Conference/Pre hearing review and preliminary hearing arrangements letter will be issued. Ensure that a copy of the letter is imported to the DOSSIER. Enter the details on to the paper diary and InterPartes SharePoint list.

For a Substantive hearing

4.54

On receipt of the second round of evidence for sequential and the first round of evidence for simultaneous, the CO should liaise with the HC and complete the handover checklist (Annex 8 - Hearings handover checklist). The case officer will instruct the hearings clerk to issue the hearing arrangements letter (Annex 4 - Inter partes hearing arrangements letter), confirming the actual date of the hearing within the previously agreed window. The Hearings clerk and the case officer will liaise to discuss any changes to the standard deadlines or content of the letter. The hearings information sheet (Annex 5 - Hearing information sheet) should be enclosed. Generally inter partes hearings are initially booked for 2 days. The HC should try to book them for Tuesday/Wednesday or Thursday/Friday avoiding Monday in case there are any late issues with skeleton arguments or bundles etc. The Outlook calendar should be updated at this stage, delete the all day appointment and add the HO, CO and HA to the daily appointments – send updates to added attendees only. The HC will then have to amend the subject of the daily appointments and close without sending updates.

For all hearings

4.55

Co-ordinate with the case officer to set up reminders for any dates for the receipt of evidence, bundles or skeleton arguments. Place the paper file in the “IP Arranged Hearings” Folder.

Substantive, Preliminary and CMC’s

Action’s 14 - 2 days before the hearing

4.56

The hearings clerk will:

  • contact the parties to confirm attendees and car registrations if required and forward these to the relevant accommodation section.
  • check if there are any outstanding documents for the hearing such as skeleton arguments or bundles.
  • if the hearing is in London or elsewhere, co-ordinate with the case officer to ensure that all necessary documents are sent to the correct venue.
  • check if same day transcripts are required and make the necessary arrangements.

Actions on the day of the hearing

The hearings clerk will:

If in London or at another venue

4.57

Confirm with the London Admin team, or responsible party, that they have the list of attendees and that all required arrangements are in place.

If in Newport

4.58

Ensure that the hearing room is set up correctly and confirm the layout with the case officer if required. Ensure that any retiring rooms or room for the transcript writer are also prepared.

4.59

If a digital recorder is to be used, change the batteries and check that the date and time are correct.

4.60

On arrival, escort all parties to the hearing room and seek assistance if there is more than one party, as visitors cannot be left unescorted on the premises.

4.61

You may be required to swear in witnesses but usually the hearing assistant will do this. A selection of religious texts are available as well as the relevant oaths. People not wishing to swear on a holy book have the option to make an affirmation instead and the text for this is also available. Check what is needed before the hearing starts. (Refer to the hearings manual, sections 4.72 – 4.79 for the list of suitable oaths and procedures)

4.62

When all parties are settled, call the HO and the team. Ensure that the HO can operate the recorder if required. When leaving the room ensure that the quiet sign is outside the room.

4.63

After the hearing, escort the parties back to reception. Tidy the rooms and collect the recorder, if used.

4.64

Take the recorder to the IT helpdesk to have it downloaded to your drive. Ask them to delete anything on the recorder. Send a copy of the recording to the HO and HA. Manually import the recording onto PDAX using code HEAR-REC-IP and annotate accordingly. Save the recording to the Hearing Recordings cabinet under Litigation Hearings on Outlook.

Additional tasks in Inter partes hearings

4.65

If an Inter Partes hearing requires video or telephone conference links follow the procedures as for ex-parte hearings.

4.66

Sometimes a witness may be unable to attend a hearing in person. In these cases the HO may allow cross examination by video link. It is up to the party whose witness it is to make the necessary arrangements. Ensure that details of the connection to be made are received in good time and check with IT that the systems are compatible. If possible ask to make a practise connection before the hearing. Remember that the office must always dial out, connections cannot be made by the party dialling in.

Transcripts and transcript writers

4.67

In Ex Parte hearings it is usual to use the digital recorder unless the HO requests otherwise. In SPC cases a transcript writer must be used. In Inter Partes hearings the digital recorder is usually used in CMC and preliminary hearings while a transcript writer will usually be used for the substantive hearing. Check with the case officer or HO to find out what is required.

4.68

To book a transcript writer, e-mail the contracted supplier giving details of the date, starting time, venue and case number. When confirmation is received keep a printout with the paper arrangements file.

4.69

The case officer will inform you if any special arrangements are required, for example, same day transcription service. If so advise the transcription service in good time, check costs and enquire whether they will require a room at the hearing venue.

4.70

Transcripts are now normally received electronically. Convert the file to a PDF if required. Send a copy to the HO and HA and import onto PDAX using the code HEAR-TRANS for ex parte or HEAR-TRAN-IP for inter-partes cases.

4.71

Transcripts, whether audio or pdf, may be requested by the parties. If they are NOPI they must be sent by recorded post, otherwise they may be sent by e-mail.

Skeleton arguments

4.72

A skeleton argument is an outline of the submissions a party proposes to make at a hearing. The purpose of the skeleton argument is to assist the HO and the parties, prepare for, and ensure the efficiency of the hearing. They are merely an aid and are not to be read out verbatim at the hearing. They could provide:

  • an agenda for the hearing
  • a summary of the main points
  • propositions and arguments to be developed orally
  • a useful way of noting citations and reference
  • a convenient place to make cross references
  • a time saving means of avoiding laborious note taking

4.73

The skeleton argument will normally be sent to the hearings clerk. In all cases it should be received 7 clear days before the hearing. When received transfer it to the dossier and contact the HO, HA and case officer, if applicable, to let them know.

Bundles

4.74

It is unlikely for a party to provide bundles at Ex Parte hearings, it is more usual in Inter Partes cases. Bundles consist of copies of all the papers filed in the proceedings. It is the responsibility of the claimant’s representative to compile them. Copies should be provided to the other side in good time so that both parties can use them effectively during the hearing and should be filed 7 days in advance of the hearing. At least two copies should be supplied to the Office (one for the Hearing Officer and one for the shorthand writer), and a further copy should be produced for use by any witnesses who are due to be cross-examined. If there is to be cross-examination and bundles are not used, the parties still need to ensure between them that they have a spare set of all documents for the witness. In inter partes proceedings, the parties should be instructed to send bundles directly to the hearings venue however one copy should be sent to the Office for the Hearing Officer. If they are sent to the hearings clerk then ensure that they are forwarded securely to the venue if it is not in Newport.

Authorities

4.75

These are precedent cases/decisions that a party may refer to in the course of a hearing. They are usually Reported Patent Cases or Fleet Street Reports. Copies of both can be found in Legal Section or electronically using online services such as Westlaw and Bailii if they have not been supplied and are required by the hearing officer. In both inter partes and ex parte proceedings, the party(ies) involved should supply the authorities and, they at the same time as the bundles (4.74)

4.76

Deleted

4.77

Deleted

4.78

Deleted

Cancelled/postponed hearings

4.79

If a hearing is cancelled, notification must be received in writing, verbal instruction is not sufficient. Cancelling a hearing on Outlook will notify all the parties attending the hearing from the office however an e-mail should also be sent to those involved and the SharePoint list updated.

4.80

Import the notice of cancellation onto the dossier. If a transcript writer has been booked e-mail them and make sure that confirmation of cancellation is received. Check if the hearing is withdrawn or if a decision on papers has been requested, update the SharePoint list accordingly and let the HO know if it is a decision on papers. If a decision on papers is requested the HO may wish to offer the parties time for submissions, use the date of the request or the closing date for submissions as appropriate to complete the ‘Date decision issued’ column on the spreadsheet. Mark the hearing as cancelled in the paper hearings diary.

4.81

If a hearing is postponed and the date of the new hearing is known, change the date of the hearing on OUTLOOK. This will update the calendars of the office participants. If the original hearing was in the next few days, e-mail the HO/HA etc so that they are aware. Send the parties involved a new letter with the new dates/venues and import on to the dossier. Update the SharePoint list and hearings diary as necessary.

4.82

If the new date of a hearing is not known, cancel the hearing on OUTLOOK, update the SharePoint list and return the paper file to the ‘Hearings awaiting date’ folder. Treat the case as a “hearing to be arranged”. See 4.21- 4.35 for ex-parte hearings and 4.49 - 4.55 for inter parte hearings.

Hearings diary

4.83

A diary of all Patent hearings is published on the external website. The hearings clerk should update this weekly on a Thursday when there are updates to be made.

4.84

The hearings diary is located in the SharePoint hearings library. The last update should be in the folder, open it in Excel and ‘save as’ with the current date.

4.85

The hearings diary spreadsheet should be updated as hearings are booked. Only current hearings should be on the spreadsheet, hearings that have already been held or cancelled should be deleted. Updates should be checked against the ‘Arranged Hearings’ folder.

Note that only hearings open to PUBLIC INSPECTION should be put on the diary.

4.86

In rare occasions, the case officer may instruct you to put NOPI proceedings on the diary. If this is the case check which dates are to be placed on the diary as the hearing may still be closed for some dates.

4.87

Send the update to webmaster and check that their return e-mail is correct. Delete previous updates on SharePoint.

Correspondence received

4.88

All correspondence received on a case should be imported onto the dossier. The hearing officer and case officer should also be notified, especially if any key dates are approaching.

Compliance periods and hearings

4.89

The compliance period for putting a patent application in order ends the later of 4 ½ years from the filing/priority date or 12 months from the issue of the first report under s 18(3).

4.90

The compliance period may be extended in 2 month tranches. R108(2) allows an of right extension of 2 months and must be requested using form 52 and by paying a fee before the end of two months from the compliance period. R108(3) allows further discretionary two month extensions and must be requested using form 52 and by paying a fee before the expiry of 2 months after the previously extended period. Evidence must be filed to support the request – each discretionary extension is likely to require more robust evidence than the previous discretionary extension allowed.

4.91

If the end of the compliance period is imminent and a hearing is necessary then ideally the hearing should be held before the end of the compliance period (or any extended period). A period of less than the minimum of 14 days notice usually given is appropriate if this means that the hearing could be conducted before the end of the compliance period.

Hearing before end of compliance period

4.92

If the hearing is conducted and the decision issued before the end of the period then the applicant still has an opportunity to amend his application after an adverse decision.

Hearing before the end of two months after the compliance period

4.93

If the hearing results in an adverse decision and the applicant wishes to amend his patent accordingly, he must apply for a two month automatic extension under rule 108(2) using form 52 and paying a fee. Amendments should then be made before expiry of the extended compliance period unless it is further extended.

Hearing after the end of two months after the compliance period

4.94

If the compliance period has not been extended under rule 108(2) then under rule 108(7) no further extension to the compliance period is allowed under rule 108(3) and amendments following an adverse decision will generally not be possible.

4.95

If the compliance period has previously been extended (under rule 108(2) or 108(3)) then a discretionary extension of two months may be available. This must be requested on form 52, paying the fee and providing evidence supporting the request, all within two months of the previously extended period. Amendment following an adverse decision can then be effected. If the discretionary extension is not allowed then amendment is not generally possible.