Section 101: Exercise of comptroller's discretionary powers
Sections (101.01 - 101.45) last updated: April 2017.
This section applies to applications and patents under the 1977 Act. Some requirements relating to hearings are prescribed in Part 7 of the Patents Rules 2007 (Proceedings heard before the comptroller), particularly at rr. 80, 82 and 84 (see 123.05.02 and 123.05.10 – 123.05.13).
[ The Patent Hearings Manual should be consulted for guidance on the conduct of hearings and procedures for appointing and conducting hearings and the giving and issuing of decisions. Some of the relevant parts of that Manual are referred to below. Further information is also given in the Tribunal Patents Manual. ]
|Without prejudice to any rule of law, the comptroller shall give any party to a proceeding before him an opportunity of being heard before exercising adversely to that party any discretion vested in the comptroller by this Act or rules.|
This section applies to both ex parte proceedings (that is, where the proceedings involve no other party than the applicant or proprietor) and inter partes disputes. In particular, before an application for a patent is refused the applicant must be offered an opportunity to be heard; following a hearing (whether attended by the applicant or not) refusal would normally only be made by a formal decision. (See also 18.79-18.80). If a party to any proceedings wishes to be heard, he must be given notice of a date for the hearing.
Anyone is entitled under s.22 of the Welsh Language Act 1993 to have legal proceedings (such as hearings under s.101) which are held in Wales conducted in Welsh without prior notice. Also, if the proceedings are held in Wales then any oath or affirmation can be given in Welsh. S.24 of the Welsh Language Act provides for the use of interpreters in any such proceedings conducted in Welsh.
In the event that a party requests that a hearing should be conducted in Welsh, the hearing officer should ascertain that the party is unwilling to continue in English. If the request is maintained, the hearing officer should adjourn the proceedings until an interpreter can be obtained.
[ There is a list of Office personnel able and prepared to act in this capacity available on Circle. If an interpreter cannot be obtained through ARD, PD/DL should be consulted. ]
A hearing must be before a hearing officer who is authorised to act for the comptroller (see 130.05.1). [ See chapters 4 and 6 of the Patent Hearings Manual regarding the appointment of the hearing officer.]
r.118 is also relevant
A report of a decision of a hearing officer may be published in the Reports of Patent, etc. Cases (RPC) if this is considered to be generally useful or important.
[ A hearing officer may recommend that a particular case should be reported - see chapter 5 of the Patent Hearings Manual. ]
r.107, s.97(1) is also relevant
Once a hearing officer has given a decision it cannot normally be reviewed or reversed within the Office, although exceptionally it may be possible for the hearing officer to re-open issues after judgment, as explained in Interfilta (UK) Ltd’s Patent  RPC 22. The decision can only be referred to the Patents Court on appeal (except where that is precluded - see s.97) or to the Divisional Court.
The way in which hearing officers conduct proceedings before them is subject to the general surveillance of the Administrative Justice and Tribunals Council (previously the Council of Tribunals), who investigate complaints from the public and publish an annual report of their investigations. A member of the Council may attend hearings.
101.08 to 101.45