Guidance

Patent disputes resolution: hearings

Guidance on patents hearings and how to appeal against an outcome.

Overview

More often there are two types of dispute that you might find yourself in:

  • a disagreement with us about an objection raised against your patent application or patent
  • a disagreement with someone else about a patent, for example an act of infringement or dispute about ownership

There are several ways in which we can help you resolve your dispute, including:

  • request an ex parte hearing – to resolve a dispute between you and the office
  • request an inter parte hearing – to resolve a dispute between you and someone else
  • request an opinion
  • mediation

Ex parte hearings

This is the name given to hearings held between a single party (either private individuals or firms) and the office.

An ex parte hearing is a way of taking things forward with your patent application or granted patent. It gives you the chance to explain your case in person to one of our senior officers known as a ‘hearing officer’. The hearing officer is trained to be independent and to look at all sides of the arguments. They will then make the final decision about your case.

Although you can represent yourself at a hearing, we advise you to contact a patent attorney or solicitor.

Further guidance on ex parte hearings is available.

Requesting a hearing

Most hearings are arranged following rounds of correspondence with us. If a disagreement has not been settled through the correspondence, you can request a hearing by simply putting your request in writing and sending it to us. All correspondence from yourself, the Office and any third parties will be open to public inspection, including on our website, once your application is published. We do not charge for hearings

Alternatively, if we think it appropriate, we may offer you a hearing.

Inter partes hearings

These are hearings held between two or more parties who are in dispute over something to do with a patent. In the hearing, both sides will put their case to one of our senior officers known as a ‘hearing officer’. The hearing officer is trained to be independent and to look at all sides of the arguments. They will then make the final decision about the case.

In these kinds of disputes, it may be necessary to hold a preliminary hearing to sort out any problems that might happen along the way.

There does not have to be a hearing. If both sides agree, the hearing officer can decide the matter using the paper evidence both sides have filed.

Hearings, particularly preliminary hearings, may be held by telephone or video conference link. We may also hold hearings at our London or Newport offices and can hold them elsewhere if necessary.

We have produced further guidance to help you file proceedings with us.

Patent hearings diaries

If your application has been published, the hearing date will be added to our hearings diary.

Appealing a patent decision

After the hearing, the hearing officer will issue a formal decision. The decision may be given orally at the end of the hearing but usually issued later in the form of a written decision.

Results of past decisions are available.

If you do not agree with the decision you can file an appeal at the Patents Court, part of the High Court.

You need to send 3 copies of your notice of appeal to the High Court Appeal Office together with a fee of GBP £235 within the period set out in the decision. This will usually be 28 days. If you need more time to file your appeal, you need to contact the court to request an extension of time.

Further information about the appeal process is available from:

H M Courts & Tribunal Service
Royal Courts of Justice Group
Chancery Appeals Office
7 The Rolls Building
Fetter Lane
London
EC4A 1NL

Telephone: +44 (0)20 7947 7383

You also need to send us a copy of the Notice of Appeal within 7 days of the filing date.

Professional help

If you would like more information on procedures, please contact us. But if you would like to discuss the merits of your case, you should contact a solicitor or patent attorney.

For a list of solicitors in your area, you should check your local phone book or contact:

The Law Society
113 Chancery Lane
London
WC2A 1PL

Telephone: +44 (0)20 7242 1222
Fax: +44 (0)20 7831 0344
Email: contact@lawsociety.org.uk
Website: Law Society

For a list of attorneys in your area, contact:

The Chartered Institute of Patent Attorneys
95 Chancery Lane
London
WC2A 1DT

Telephone: +44 (0)20 7405 9450
Fax: +44(0)20 7430 0471
Email: mail@cipa.org.uk
Website: CIPA

Published 2 May 2014
Last updated 21 May 2015 + show all updates
  1. The appeal process address updated.
  2. First published.