Tribunal Patents Manual (online version)

Chapter 6: Appeals

Sections (6.01- 6.42) last updated: September 2017.

Introduction

6.01

If an applicant disagrees with an ex-parte decision, he can take the matter further by filing an appeal. Inter partes decisions can also be appealed.

Rules and appeal periods

6.02

Appeals relating to patents, Supplementary Protection Certificates (SPCs) and Design Right (subsistence/term/identity) are governed by Part 52 of the Civil Procedure Rules and the Practice Direction relating to Part 52. The appeal period as set by the Office is generally 28 days in accordance with Rule 52.4 paragraph (2)(a) unless stated otherwise in the decision document.

6.03

Appeals relating to Design Right Licence of Right cases are governed by the Appointed Person (Designs) Rules 2015.

6.04

Where a hearing has been held in Scotland and a decision is subsequently issued, Court of Session rules will apply.

Where should an appeal be filed?

6.05

Appeals relating to patents and SPCs should be filed at the Chancery Listings Office.

6.06

Due to changes under the Appointed Person (Designs) Rules 2015, the Hearings Clerk should refer to the B2 case officer for details on Design Right appeals relating to matters of subsistence, term and identity.

6.07

Due to changes under the Appointed Person (Designs) Rules 2015, the A3 should refer to the B2 case officer for details on Design Right Licence of Right appeals.

6.08

If a decision is issued following a hearing in Scotland, an appeal may be filed with the Scottish Court of Session. Extending the appeal period

6.09

An application to extend the appeal period must be filed directly with the court. For appeals regarding Design Right, due to changes under the Appointed Person (Designs) Rules 2015, the Hearings Clerk should refer to the B2 case officer for details on appeal periods.

Names of parties

6.10

The person who files the appeal is known as the appellant. The other side is known as the respondent.

How to file an appeal

6.11

For patents and SPCs, three copies of a completed Notice of Appeal (Form N161) together with the current fee must be filed at the Chancery Listings Office.

6.12

The Notice of Appeals form can be obtained from the:
H M Courts & Tribunal Service
Royal Courts of Justice Group
Chancery Listings Office
7 The Rolls Building
Fetter Lane
London
EC4A 1NL
Tel: 020 7947 6890/6294/6243/6690/7121/7717

6.13

Deleted

Additional actions by the appellant

6.14

The appellant is required to send a sealed copy of the Notice of Appeal to all the parties involved in the proceedings, including the comptroller, as soon as practicable and at least within 7 days of filing the appeal.

6.15

Refer to paragraph 6.07.

Checklist of actions relating to appeals

6.16

See Annex 3 - Checklist on receipt of appeal for a full checklist of actions that need to be carried out on receipt of an appeal.

Actions on receipt of a notice of appeal

Initial actions

The hearings clerk will:

6.17

Check the Notice of Appeal has been sealed and has been filed in time. A sealed document should contain a date stamp from the High Court worded “High Court Of Justice – Chancery Appeals”. If the notice has been sealed and filed in time the appeal may proceed. If not, liaise with GLD (Government Legal Department) to see if the appeal is proceeding.

If the Notice is correctly filed

The hearings clerk will:

  • scan the Notice and any associated documents on to the dossier (Doc Code NTC-OF-APP or NTC-OF-AP-IP)
  • send an e-mail to the Divisional Director to appoint a hearing officer (HO) for the appeal. HOs are normally only appointed in Ex Parte cases. If an appeal is filed on an Inter Partes case, check with the Divisional Director to see if they want to appoint an HO
  • send an email and PDAX message to the relevant HO to inform them that an appeal has been filed.
  • if the appeal is in relation to an ex parte case, Counsel will need to be instructed. Email the Notice of Appeal and any supporting documents to GLD. This should be done immediately. GLD will brief Counsel. Counsel will represent us at the appeal

Note: For inter partes appeals it isn’t necessary to email documents to GLD as the comptroller is rarely represented in inter partes matters. Occasionally, however, the DD will advise that Counsel will be required. Update the SharePoint list to show an appeal has been filed, at the High Court. If the appeal is on an SPC case without a BL number, enter the details on the appeals part of the SharePoint list as these will not have been recorded originally.

  • update the SharePoint list to show an appeal has been filed, at the High Court. If the appeal is on an SPC case without a BL number, enter the details on the appeals part of the SharePoint list as these will not have been recorded originally
  • add a file note to the relevant dossier(s) as follows to show an appeal has been filed: ‘Appeal to the Patents Court filed on ……….(insert date)’. If paper file ask the relevant formalities clerk to add to cover sheet. Pdax message the head of the relevant formalities group to say that an appeal has been received. If the case is an SPC send a copy of the appeal notice to the SPC formalities clerk for the paper file
  • check that the decision being appealed has been entered on to COPS by the B3/B2. If so make a free text register entry on COPS as follows: Notice of Appeal against the decision of the comptroller dated ………(insert date) was lodged with the Patents Court on ……….(insert date)
  • advertise the appeal in the Journal: only where the full office decision is Open to Public Inspection (OPI). (Full details of Journal entries can be found in Chapter 25
  • circulate that a Notice of Appeal has been received by email to the Hearing Officer for the original decision, the appointed Hearing Officer for the appeal, both Divisional Directors, the Patent Head of Admin, Tribunals Technical Co-ordinator and all members of the hearings team Annex 4 - Limited circulation list
  • highlight that an appeal has been filed on the front cover of the dossier

Briefing Counsel

6.18

In ex parte cases, the comptroller will be represented by Counsel, instructed by GLD.

6.19

In general, the comptroller will not wish to be represented in appeals relating to inter partes cases, though he may be represented in exceptional circumstances in the capacity of an intervener.

6.20

If Counsel is to be briefed, they will require copies of certain documents on file. The Hearing Officer will liaise with GLD and may ask for documents to be sent or copied. Occasionally, the hearings clerk may be asked to produce a complete file following the instructions of the Hearing Officer.

6.21

To produce a file:

  • the Hearing Officer will produce an Explanatory Memorandum (template on SharePoint) and a list of documents to be included
  • the hearings clerk will obtain prints of the necessary documents and place them in order on the file, the order should be –
  • explanatory Memorandum
  • notice of Appeal
  • office decision that is being appealed
  • other documents as indicated by the hearing officer in descending date order or as otherwise specified

  • an index should be produced in line with the tagging of the various documents and include a header note (Annex 5 - Listing of documents to be sent to GLD)
  • place a copy of the index and the Explanatory Memorandum on the dossier
  • the Explanatory Memorandum is always NOPI
  • the binder should be sent to GLD with a cover letter (Annex 6 - Letter to GLD)
  • as some of the folder will be NOPI ensure that the folder is sent to GLD by a secure method

Awaiting the appeal date

6.22

We will usually be informed of the date of the appeal by GLD or occasionally by the Patent Court.

The hearings clerk will:

  • in Inter Partes appeals we are usually given a hearing window. As there is not usually any direct involvement with GLD, the hearings clerk should monitor the court website

Click on the ‘Daily court lists’, ‘Patents Court Diary’, ‘Diary section 1’

  • contact the court for information

It is advisable to email the court as the clerks are very busy and are rarely available to answer telephone calls.

Once the date of the appeal is known

6.23

Initially a window of three days may be allocated by the court for the hearing of the appeal.

The hearings clerk will:

  • inform the HO and any other interested party in the Office once the window is known
  • liaise with GLD on a regular basis to obtain a firm date for the appeal. Check the listings on the Court Service website or telephone Chancery Listings (Tel: 0207 947 7383). The exact courtroom and time may not be known until the day before the appeal but once they are known, inform the HO and HA and any other interested party in the Office

Note: The time of the appeal may be found on the Court Service website. The court room number will depend on who is hearing the case.

  • update the SharePoint list with the appeal date
  • create a file note as follows: “Appeal to be held on ……….. (insert date)” and add to the appropriate file. Import to dossier or place on the file cover
  • enter date of appeal in the electronic diary

After the appeals hearing

6.24

Following the appeal hearing, the hearings clerk will:

  • diary the case for one month to await a copy of the Court Judgement and Court Order

Initial actions

On receipt of the Court Judgement and/or Court Order the hearings clerk will:

  • scan the Court Judgement and/or Order to dossier or copy and place on file

Further actions

On receipt of the Court Judgement/Order, the hearings clerk will:

  • copy the Judgement/Order on to the dossier
  • message the HO through PDAX to let them know that the Judgement/Order has been received
  • send a copy of the Order to Finance
  • action any instructions received from the hearing officer and circulate that the Court Judgement/Order has been received see (Annex 8 - Full circulation list]). Even if the appeal has been withdrawn, the Judgement/Order must still be circulated. Send B2 a pro-forma indicating that an Order/Judgement has been received (Annex 9 - COPS entry Proforma). When the Judgement/Order reaches the B2 they will review the Order and will make an appropriate register entry on COPS
  • prepare a Journal advert based on the register entry. (see Chapter 26)
  • import the advert on to the dossier
  • add the PRECEDENT label to the front cover of the PDAX dossier
  • update SharePoint

6.25

The Court Judgement may grant a party leave to appeal to the Court of Appeal. However, if leave to appeal is not granted, a party may still approach the Court of Appeal directly and request leave to appeal.

6.26

Only when it is clear that no appeal has been filed, should the case proceed to the clear records stage. See Chapter 5 and Chapter 26

Court of appeal

6.27

If an appeal has been refused, the appellant may wish to take the matter further. For patent cases, this may mean filing an appeal at the Court of Appeal. Permission to appeal must be obtained from the Patents Court judge. If he refuses to grant leave to appeal, the appellant may apply directly to the Court of Appeal for permission to appeal.

Actions on receipt of Notice of Appeal to Court of Appeal

Initial actions

6.28

On receipt of a sealed copy of a Notice of Appeal to the Court of Appeal, the hearings clerk will:

  • scan to dossier or attach copies to the relevant paper files. (Doc code – NTC-OF-APP or NTC-OF-AP-IP, annotate as Notice of Appeal)

Further actions

The hearings clerk will:

  • update the SharePoint list to show an appeal has been filed at the Court of Appeal
  • add a file note to the relevant file(s) as follows to show an appeal has been filed: ‘Appeal to the Court of Appeal filed on ……….(insert date)’. Inform formalities that a further appeal has been made
  • make a free text register entry in COPS (where appropriate) as follows: Notice of Appeal against decision of the High Court dated………… (insert date) lodged with the Court of Appeal on ……….. (insert date)
  • advertise the appeal in the Journal. [Full details of Journal entries can be found in Chapter 25
  • import the advert to dossier
  • send an email and/or PDAX message to the HO and to GLD to let them know that a further appeal has been filed
  • circulate the Notice of Appeal and any supporting papers as before
  • contact the parties or the Registry at the Court of Appeal (Tel: 0207 947 6890) to obtain a date for the Court of Appeal hearing since we will not always be told unless we are a party to the proceedings. Or liase with GLD. check the file regularly and inform all interested parties in the Office of any developments
  • liaise with the Court of Appeal as to procedure

6.29

Liaise with GLD and follow the instructions of the HO if any further action is required.

After the court of appeal hearing

The hearings clerk will:

6.30

On receipt of the Judgement and/or Order from the Court of Appeal, follow the procedures outlined above for appeals to the High Court see 6.24.

6.31

The Court Judgement may grant a party leave to appeal to the Supreme Court. However, if leave to appeal is not granted, a party may still approach the Supreme Court directly and request leave to appeal.

6.32

Only when it is clear that no appeal has been filed, should the case proceed to the clear records stage. See Chapter 5 and Chapter 26

Appeal to the Court of Appeal against an order of the High Court for revocation of a patent (CPR part 52 Practice Direction paragraph 21.2)

6.33

Where an appeal lies to the Court of Appeal from an Order for revocation of a patent, the appellant must send a copy of the Notice of the Appeal to the other side (the respondent) and also to the comptroller. If the respondent decides not to oppose the appeal or attend the appeal hearing, he must serve a notice of that decision (together with the other papers in the Appeal) on the comptroller.

6.34

On receipt of the Notice from the respondent, the Hearings Team will:

  • contact the Deputy Director and enquire whether he will be attending the appeal hearing
  • within 14 days of receipt of the Notice, send a letter to the appellant advising him whether the comptroller will be attending the hearing and import to dossier

6.35

The comptroller may attend the appeal hearing and oppose the appeal in any case where he has written to the appellant informing him that he will be attending the appeal and in any other case (including a case where the respondent withdraws his opposition to the appeal during the hearing) if the Court of Appeal directs or permits.

The Supreme Court

6.36

The procedure will be similar to that for Court of Appeal hearings, except that all contact will be made with the Offices of the Supreme Court (Tel: 0207 960 1991) and normally the HO and HA will attend the sitting. (NB. A special pass will be needed to gain access to the Supreme Court). If at any time before the hearing of the appeal the respondent(s) decide not to appeal or to oppose the appeal, they may be required to serve notice on the comptroller and the appellants.

Leapfrog procedure

Where in any proceedings in the High Court a person appeals or seeks permission to appeal to a court other than the Court of Appeal, that person must obtain a “leapfrog” certificate in order to bypass the Court of Appeal and appeal directly to the Supreme Court. The relevant conditions are that a point of law of general public importance is involved in the judge’s decision. (Supreme Court Practice Directions para 3.6.4). An application for a certificate may be made by any of the parties to any civil proceedings in the High Court. The application should be made immediately after the trial judge gives judgement in the proceedings. The judge may grant a certificate if he is satisfied that the relevant conditions are fulfilled and that all parties consent to the grant of a certificate. Notice of intention to present an appeal, with a copy of the petition to appeal, must be served on the comptroller as well as on the respondents. If at any time before the hearing of the appeal the respondents decide not to file an acknowledgement to oppose the appeal, they must without delay serve notice of their decision on the Comptroller and on the appeal court. Any such notice served on the Comptroller must be accompanied by a copy of the petition under section 32 of the 1949 Act or of the statements of case in the claim and the affidavits filed therein. The Comptroller must, within 14 days of receiving notice of the respondents’ decision, serve on the appellant and file a notice stating whether or not he intends to file an acknowledgement. The Comptroller may appear and be heard in opposition to the appeal in any case where he has given notice of his intention to appear, and in any other case (including a particular case where the respondents withdraw opposition to the appeal during the hearing) if the court so directs or allows. Supreme Court Practice Directions – 8.11.3 to 8.11.5

Judical review

6.38

Judicial review is another route by which decisions of the comptroller can be challenged. (For example, B Knight v Comptroller [2007] EWHC 2264). Applications for judicial review are dealt with in the High Court and require leave (permission) of the court. The court will not normally grant leave where there is another avenue of appeal.

6.39

The initial procedures are generally similar to those for ex parte appeals.

Initial actions on receipt of application for judicial review

Initial actions

6.40

When an application is received the hearings clerk will:

  • scan to dossier or attach copies to the relevant paper files

Further actions

6.41

The hearings clerk will:

  • notify the relevant HO immediately and enquire whether the documents received should be emailed to GLD
  • update the SharePoint list to show that a judicial review has been filed
  • make a free text register entry on COPS as follows: “Application for judicial review lodged with the Patents Court on …………”.
  • advertise the application in the Journal
  • ensure regular instruction is taken from the HO

6.42

When the review is finalised, the hearings clerk will

  • update the SharePoint list with the outcome and add a file note to the file
  • make a register entry and prepare and arrange an advert for the patents & designs journal and import to dossier. The B3 will advise