Tribunal Patents Manual (online version)

Glossary of terms and abbreviations used in this Manual

Section last updated: September 2017.

Term Definition
Ab initio From the beginning
AC Appeal Cases
ADR Alternative Dispute Resolution - methods of resolving disputes otherwise than through the normal trial process. See also entries under Arbitration, Early neutral evaluation, Med-arb and Mediation below
Affidavit A written statement made upon oath or affirmation and signed in the presence of a person who is authorised to administer oaths (normally a solicitor). Authority: Civil Procedure Rules - Practice Direction 32
Alternative Dispute Resolution See entry under ADR above
Amendments Alterations sought to specifications or other documents because the drafter has become aware of new facts, circumstances have changed or because he has changed his mind
Anton Pillar Order See entry under Search Order below
Arbitration An alternative method of resolving disputes between parties. The right of Appeal from a decision of the arbitrator is limited by the Arbitration Act 1979. (See also entry under ADR above)
Appeal: Patents Not all decisions of the Comptroller are subject to appeal. In relation to patents, where decisions are open to appeal, appeal may be to the Patents Court (part of the High Court) or (if the proceedings are held in Scotland) to the (Outer) Court of Session. Further appeals, with leave, may lie to the Court of Appeal and the Supreme Court. In October 2008 Scotland, any appeal from the Outer Court of Session lies to the Inner Court of Session. (See section 97 of the Patents Act 1977)
Appeal: Designs Under section 27A(1)of the Registered Designs Act 1949, appeals from the decisions of the Registrar may be made to the Appointed Person or the court. In relation to design right, under section 251 of the Copyright, Designs and Patents Act 1988, appeals on decisions under section 246 of the Act (reference of matter relating to design right), may be made to the High Court or Court of Session or to the Appointed Person. Appeals under sections 247 and 248 (settlement of terms of licence of right) may be made to the Appointed Person.
Assignment The transfer or assignment of intellectual property rights from the owner of such rights to another person or legal organisation
Burden of proof The obligation to prove one’s assertion. In general, the burden (onus) lies on the claimant (plaintiff)
Caveat A request for information filed on form 47 in accordance with Patents Rule 92
CCR County Court Rules
CDPD Chancery Division Practice Direction
Certiorari See entry under Quashing Orders
Civil Procedure Rules See entry under CPR below
Claim A document forming part of the Statement of Case. The Patents Rules 1995, the Registered Designs Rules 1995, and the Design Right Rules 1989, for example, set out detailed requirements regarding the content of such documents. Within the Rules, the term ‘Statement’ = ‘Claim’
Claimant The name, under the Civil Procedure Rules, given to the party filing proceedings ie making a claim
Claim form Under the Civil Procedure Rules, the name given to a Writ/Summons. A claim form is used to commence proceedings in the High Court or the County Court irrespective of the nature of the claim. (For Appeals to Patent Court from the Comptroller see Notice of Appeal below)
CLR Commonwealth (of Australia) Law Reports
CMLR Common Market Law Reports
Compulsory licence Applications from a third party, may be made to the Comptroller to order, for example, the grant of a licence under a patent or to make an entry in the register making licences under a patent available as of right. Any such application must be made on one of the grounds set out in section 48(3) of the Patents Act 1977. Applications may be made after 3 years from the date when notice of grant appears in the Journal, though this period can be altered. In relation to design right, compulsory licences are available in the last 5 years of the design right
Consideration In relation to transferring rights in or under a patent, a clause relating to the amount paid for the rights in the patent
Corrections Alterations sought to a specification or other document so that it better expresses the intention the drafter had at the time of drafting
Costs In proceedings before the Comptroller, costs made be awarded in respect of inter partes proceedings under the provisions of the Patents Acts 1949 & 1977, the Registered Designs Act 1949, the Trade Marks Acts 1938 & 1994 and the Copyright, Designs and Patents Act 1988. The usual practice is to award a contribution to costs guided by a scale published in the various Office Journals and not to award full costs; however, Hearing Officers have a wide discretion when awarding costs. (See also entry under Security for costs)
Counter-Claim A document filed in response to a Claim). The document sets out fully the grounds of opposition or objection ie which allegations in the Claim the opponent disputes and which he does not. The counter-claim forms part of the Statement of Case. In Office proceedings, the counter-claim is known as counter-statement
Counter-statement See entry under Counter-Claim above
CPC Community Patent Convention
CPR Civil Procedure Rules - rules for proceedings in the High Court and County Courts
Damages A sum of money awarded by the Court as compensation to the claimant
De minimis non curat lex The law does not concern itself with trifles. Small departures from the law may be overlooked if not significant
Decisions The exercise in writing or orally by the Comptroller of any discretion vested in him by, for example, the Patents Act 1977 and the Patents Rules 2007
Declaration of non-infringement Request made under section 71 of the Patents Act 1977 for a declaration that an act does not or a proposed act would not constitute an infringement of a patent
Deponent The name given to a person who makes a deposition (ie affidavit) under oath
Disclosure Usually in the form of a request, this relates to the making available of relevant documents believed to be in the possession of the other party in inter partes proceedings
Early neutral evaluation An alternative method of resolving disputes between parties. A neutral evaluator who has legal or other expertise will hear the core evidence from the parties or their legal representative at an early stage in the case. Having listened to the basic evidence, the evaluator will offer a frank assessment of the strengths and weaknesses of the case in the hope that this will lead to a settlement between the parties without further litigation. (See also entry under ADR above).
ECFI European Court of First Instance
Entitlement An inter partes proceeding relating to who owns a patent or an application for a patent
EOT Extension of time - a request made to extend a time period that has been set by the Office
EPC European Patent Convention. At present the Convention has 38 Contracting States
EP application An application for a patent under the EPC. By means of one application, it is possible to obtain patent protection for an invention in any of the Contracting States by designating that particular state
EPO European Patent Office
EPOR European Patent Office Law Reports
Evidence Information in the form of personal testimony, documents or objects filed in support of the issue in question
Ex nunc [From now] Example: The amendment of a patent application is governed by section 19 of the Patents Act 1977 and takes effect ex nunc, ie from the time the amendment is made
Ex Parte Proceedings Refers to proceedings between one party eg an applicant for a patent, and the Comptroller
Ex tunc From then] Example: The correction of an application or the specification of a patent or of any document filed in connection therewith is governed by section 117 of the Patents Act 1977 and takes effect ex tunc, ie the document is deemed always to have been in the state in which it is after the correction
Exclusive licence A licence that allows, for example, only one person to use a patent ie means that the patent owner no longer has the right to use the patent although he may still collect royalties on the use of the patent
Exhibit Document or object included as part of the written evidence in proceedings before the comptroller. See Practice Direction 32 of the Civil Procedure Rules.
Freezing injunction Issued by the courts, this allows for the freezing of a defendant’s assets to prevent disposal. It can be used to freeze assets worldwide (previously known as Mareva Injunction)
Generalia specialibus non derogant [General things do not derogate from special things]. A principle of statutory interpretation that states that if a matter falls under a specific provision and a general provision it shall be governed by the specific provision
Hearsay evidence Evidence consisting of testimony about other people that is not based on direct or personal knowledge.
HO Hearing Officer
In camera Parts of Hearings held before the Comptroller may, at his discretion, not be open to the public. In addition, certain proceedings are not open to public inspection
Infringement Any act, as defined within intellectual property legislation, carried out by a third party that falls within the scope of the intellectual property rights owned by another and is performed without the authorisation of the owner of those rights
Injunction A court order prohibiting a person from doing something or requiring a person to do something
Inter Partes proceedings Proceedings between two or more parties. Examples in relation to patents include entitlement and revocation proceedings; for design right such proceedings may relate to the subsistence of design right or the term of the design right
Judicial Precedent A judgement of a court of law cited as an authority for deciding a similar set of facts; a case which serves as authority for the legal principle embodied in its decision
Judicial Review A process under which executive and (in some countries) legislative actions are subject to review by the judiciary. Order 53 of the Rules of the Supreme Court introduced a comprehensive system of judicial review. A statutory basis for this procedure also appears in s 31 of the Supreme Court Act 1981. Where no right of appeal is given, it may be possible to challenge the decision of an inferior court or public tribunal by recourse to the supervisory jurisdiction of the High Court. This means that generally only decisions of the Comptroller in respect of which no appeal is available, decisions under the PCT and decisions of the RDAT are likely to be subject to judicial review. An application may cover all the remedies available - certiorari, mandamus, prohibition, declaration and injunction. In practice, only certiorari and mandamus are likely to be relevant to proceedings before the Comptroller, although prohibition could also be so
Jurat The final statement signed by a person who is authorised to administer oaths indicating when the affidavit or statutory declaration was sworn, affirmed or declared
Licence The means by which the owner of a patent grants permission to another to manufacture use or sell the invention protected by his patent whilst at the same time retaining ownership. In return, the owner receives payments known as royalties
Licence of Right See entry under LOR below
Locus standi In law, standing or locus standi is the term for the ability of a party to demonstrate to the court sufficient connection to and harm from the law or action challenged to support that party’s participation in the case
LOR Licence of Right - section 46 of Patents Act 1977. The patent owner may apply to the Office for an entry to be made in the Register that licences, under the patent, are available as of right. This means that the patent owner then cannot refuse to licence the invention and that he pays renewal fees at half the usual rate. The terms of such licences may be settled by the Comptroller if the parties cannot agree. For Design Right, under section 237 of the Copyright, Designs and Patents Act 1988, a third party is entitled as of right to a licence to do in the last 5 years of the design right term anything which would otherwise infringe the design right. The terms of such licences may be settled by the Comptroller if the parties cannot agree. See also licence, compulsory licence,non exclusive licence, exclusive licence
Mandamus A judicial writ issued as a command to an inferior court or ordering a person to perform a public or statutory duty
Manual of Patent Practice Office manual covering procedures and practice in relation to the Patents Act 1977, Patents Rules 2007 and precedents
Mareva Injunction See entry under Freezing injunction above
Med-arb An alternative method of resolving disputes. This is a hybrid process that begins with traditional mediation. However, if the mediation does not result in the dispute being resolved within a given period of time, the process will end with a binding arbitration. (See also entry under ADR above)
Mediation An alternative method of resolving disputes between parties. A mediator is appointed to help both parties reach an acceptable solution. (See also entry under ADR above)
MOPP See entry under Manual of Patent Practice above
Names of parties See table at end of glossary
NMP Nine Mile Point. The Offices warehouse facilities for the storage of files
Non-exclusive licence A licence that allows, for example, both the patent owner and the licensee to use the patent. It also allows the patent owner to agree licences with more than one person
NOPI Not open for Public Inspection
Notice of Appeal Appeals to the Patent Court from the Comptroller must be in the form of a Notice of Appeal
Obiter dictum [A saying by the way]. Something said by the judge, whilst giving judgement, that is not essential to the decision. Therefore not binding as a precedent
OPI Open for Public Inspection. In relation to a patents file, for example, that part which members of the public can inspect as from the date of A publication of the application
Open for public inspection See entry under OPI above
Opponent Name given to person opposing in opposition proceedings
Part 36 offer Under the CPR, applies to either party and thus applies to the Claimant where the relief sought is a payment and in all other instances where the relief sought is not in respect of payment. The Rules provide that the offer must be in writing and can relate to the whole claim or part of a claim. A Claimant, for example in a patent matter, can put in a Part 36 Offer stating that he will accept in compromise of the proceedings, undertakings of a specified nature and in respect of damages
Part 36 payments Under the CPR, relates to payments into court in settlement of a money claim. The money claim may be all or part of the claim. The Defendant, if he wishes to avail himself of the Part 36 process, must actually pay the money into court in settlement of the money claim - it is not sufficient merely to offer to pay a sum in compromise of the money claim
Particulars of case Term used in CPR. They may be included in the claim form or may be serve separately when starting proceedings. Part 16 of the CPR sets out what the particulars of case must include
Patent Co-operation Treaty See entry under PCT below
PCC Patents County Court
PCT Patent Co-operation Treaty. This is administered by the World Intellectual Property Organisation (WIPO), a UN organisation based in Geneva. The Treaty has at present 152 Contracting States
PCT application or filing An application filed under the PCT. By means of one application it is possible to obtain protection for an invention in any of the Contracting States by designating that state in the application
PD Practice Direction supplementing a Civil Procedure Rule
PDJ Patents & Designs Journal
PLT Patent Law Treaty. A treaty to harmonise formal requirements being negotiated under WIPO auspices.
Practice form Form to be used for a particular purpose in court proceedings, the form and the purpose being specified by a Civil Procedure Rules Practice Direction 4
Pre-action protocol Statements of understanding between legal practitioners and others about preaction practice and which are approved by a relevant Civil Procedure Rules Practice Direction
Precedent In common law legal systems, a precedent or authority is a legal case that establishes a principle or rule. This principle or rule is then used by the court or other judicial bodies when deciding later cases with similar issues or facts
Preliminary hearing A hearing appointed to decide a point of procedure, usually in inter partes proceedings
Pre-hearing review See entry under PHR below
Priority Date The priority gained by virtue of Article 4 of the Paris Convention. When applicants file an application in any Convention country, they can then file subsequent applications in any of the other Convention countries (including the country where first filed) and claim the earlier date of the first filed application providing the scope of the later application is not wider than the original and providing the later filed application is made within 12 months of the original in relation to patents and 6 months in relation to registered designs
Priority Document A document which establishes a priority date
Prima facie The term prima facie is used in modern legal English to signify that upon initial examination, sufficient corroborating evidence appears to exist to support a case. Most legal proceedings, in most jurisdictions, require a prima facie case to exist, following which proceedings may then commence to test it, and create a ruling
Privilege The right of a party to refuse to disclose a document or produce a document or to refuse to answer questions on the ground of some special interest recognised by law
Prohibition In connection with judicial review, one of the remedies available - to prevent some allegedly unlawful/arbitrary action from taking place
PHR Pre-hearing review. The purpose of this is to ensure that all the issues raised at the case management conference have been dealt with and to give any final directions considered necessary in relation to the hearing
Quashing Orders A remedy available under judicial review that quashes the ultra vires decision as if it were never made.(previously known as certiorari)
Ratio decidendi [The reason (or ground) for a judicial decision]. Usually a statement of law applied to the problems of a particular case. In essence, the principle upon which a case is decided
RDAT Registered Designs Appeal Tribunal
Restoration The proceedings by which a patent which has lapsed through failure to pay renewal fees may be restored
Revocation A request to have, for example, a patent revoked (ended) because it is not valid
Royalties The name given to the payments made by a licensee to the owner of a patent - the licensor
RPCs Reports of Patent, Design and Trade Mark Cases
RSC Rules of the Supreme Court. SI 1603/2009
Search Order Previously known as an Anton Pillar Order taking its name from the first case that developed the concept (Anton Pillar V Manufacturing Processes, Limited [1976] Ch 55. Issued by the High Court, the order allows premises to be searched and infringing material seized. Safeguards exist to prevent abuse
Security for costs Where a claimant neither resides nor carries on business in a state that is party to the Brussels Convention, the Comptroller can, in many proceedings, require them to give security for costs, for example, under section 107(4) of the Patents Act 1977 and rule 22(2) of the Design Right (Proceedings before the Comptroller) Rules 1989, before allowing the proceedings to continue. May also be requested where a defendant has a reasonable apprehension that its legal costs will not be paid for by the plaintiff if the defendant is successful.
SI Statutory Instrument
SPC Supplementary Protection Certificate (for medicinal and plant protection products). The certificate is intended to compensate a patentee for the loss of effective protection arising out of the time taken to obtain regulatory approval to place on the market as either a medicinal or plant protection product a product which is protected by a patent (the basic patent). The basic patent may protect the product as such, a process to obtain the product or an application of the product. A certificate takes effect at the end of the lawful term of the basic patent but does not extend the term of the patent itself. It extends the protection conferred by the patent in respect of the product covered by the authorization to place the corresponding medicinal or plant protection product on the market, and any use of the product as a medicinal or plant protection product that has been authorized before expiry of the certificate. Subject to the payment of renewal fees, the term of a certificate is equal to the period which elapsed between the filing date of the patent and the date of first authorization in the EC reduced by a period of 5 years. The term of a certificate may not exceed 5 years
Statement See entry under Claim above
Statutory Declaration A written declaration agreed in the presence of a Justice of the Peace or a person who is authorised to administer oaths, but not made upon oath or affirmation. (Statutory Declaration Act 1835)
Statement of Case The statement and the counterstatement filed in inter partes proceedings are each a statement of case. Taken together, these documents indicate the facts that are in dispute between the parties and the relief sought
Statement of Truth All statements of case, witness statements and applications to the court must contain a statement by the parties that they believe the facts they have set out to be true. It must be signed
Stay A stay imposes a halt on proceedings. Within the courts, although proceedings may be stayed, any steps allowed by the Civil Procedure Rules or the terms of the stay, may be taken. Proceedings may continue once a stay is lifted
Subpoena A writ ie a document which requires a person to do or to refrain from doing something. The Comptroller does not have authorisation to issue writs though under Rule 86 of the Patents Rules 2007, the Comptroller in relation to the giving of evidence, the attendance of witnesses and the disclosure and production of documents, has all the powers of a High Court judge other than to punish summarily for contempt of court
Substantive Hearing The final hearing in inter partes proceedings following which the Comptroller will issue a decision on the main matter in dispute
Supplementary Protection Certificate See entry under SPC above
Summons See entry under Claim form above
Tribunals Bodies outside the hierarchy of the courts with administrative or judicial functions. The Office is a Tribunal, monitored by the Council on Tribunals established in 1958
Third party terms Conditions placed on the reinstatement of an application or patent which are designed to protect a third party who may have started to work the invention
TRIPS Trade Related Aspects of Intellectual Property Matters. (Part of GATT - General Agreement on Tariffs and Trade)
Ultra vires [Beyond the powers]. Term relates generally to the excess of legal powers or authority. (A ground for judicial review)
Witness statement A signed written statement equivalent to the oral evidence which that witness would, if called, give in evidence at the hearing
Writ See entry under Claim form above