Patents hearing manual Intellectual Property Office is an operating name of the Patent Office Hearings manual Contents Introduction Chapter 1 Basic legal principles Chapter 2 Inter partes procedures Chapter 3 Evidence Chapter 4 Inter partes hearings Chapter 5 Inter partes decisions Chapter 6 Ex parte hearings Chapter 7 Appeals Chapter 8 Miscellaneous Table of cases Index Introduction Scope and authority of this manual 0.01 This Manual is intended to provide guidance as to the law and procedure concerning patent and design right hearings held in the Patents Directorate (PD) on behalf of the comptroller. It does not provide guidance on matters of substantive patent and design right law. For patents, this is available in the Manual of Patent Practice (MoPP) but there is as yet no corresponding manual covering design right. 0.02 The Directorate's Litigation Section plays an important support role in hearings, but their procedures are covered by a separate Litigation Manual and are only mentioned in this Manual so far as is necessary for completeness. 0.03 This Manual embraces both inter partes and ex parte proceedings. The latter are usually more straightforward and give rise to fewer procedural problems, and because of this the emphasis in Chapters 1 to 5 is very much on the former. For convenience, Chapters 1 to 5 are written primarily in terms of proceedings involving two parties, but of course the same principles apply if more than two parties are involved. 0.04 Much of the guidance in these chapters is nevertheless relevant to ex parte proceedings. Chapter 6 on these does not purport to be a self- contained guide: instead it highlights the differences between ex parte and inter partes proceedings and matters of particular relevance to the former. It should be read in conjunction with Chapters 1 to 5. 0.05 Statements made in this Manual (and also the Manual of Patent Practice and the Litigation Manual) have no legal authority. Authority for any action must come from the law, not this Manual. Further, where the legislation gives the comptroller discretion, official guidelines such as this Manual may not fetter him in the exercise of that discretion by purporting to lay down rigid rules which prevent him responding to the merits of each case. Thus it is always open to a hearing officer to decide, in the light of the facts of a particular case and/or the arguments advanced by the parties, that the guidance in this Manual should not be followed. 0.06 Indeed, this Manual makes no attempt to provide guidance on all the issues that might arise, or that have arisen in the past. Instead, it tries to point to the basic principles that should be followed. It refers to past cases where these help to establish or clarify general principles. Where it seems helpful to do so, it also gives examples of past cases in which the topic in question has arisen. Whilst these examples are never likely to be on all fours with a case currently under consideration, they may provide pointers as to how questions in this area have been tackled in the past. Impact of the reform of civil litigation 0.07 Except where modified or superseded by subsequent changes in practice, this Manual reflects the changes which were introduced as a result of the Office's review of its tribunal functions following Lord Woolf's report Access to Justice (see Tribunal Practice Notices 1/2000 and 2/2000, reproduced at [2000] RPC 587 and 598). Lord Woolf's recommendations are implemented, so far as the courts are concerned, in the Civil Procedure Rules 1998: the relevance of these Rules to proceedings before the Comptroller is explained in Chapter 1. 0.07.1 This manual also reflects changes in case management introduced with the Patents Rules 2007 and those set out in Tribunal Practice Notice 3/2009. Reference material 0.08 Many precedent cases and reference books on intellectual property and other law are available in the Office for the use of hearing officers, and the Office also has access to the Lexis™ database and makes use of public databases such as the British and Irish Legal Information Institute and the Courts Service. References to "Civil Procedure" (also known as the "White Book") containing comprehensive guidance to the Civil Procedure Rules are to the 2009 edition. 0.09 The meanings of legal terms used in precedent cases will sometimes be found in the glossary at the end of the Litigation Manual. Failing that, they can usually be found in legal textbooks or dictionaries. 0.09.1 Where sources are available, hyperlinks have been provided to reference material. However not all document collections or older references are available in electronic form. Corrections and suggestions 0.10 We welcome corrections to the information contained in this Manual, and also suggestions for improvement and information on broken or missing links. They should be addressed to the Editor: Peter Marchant Intellectual Property Office Concept House Cardiff Road Newport South Wales NP10 8QQ E-mail: [email protected] Chapter 1 Basic legal principles The comptroller's tribunal role 1.01-1.03 Jurisdiction 1.04-1.16 1.05- Jurisdiction of the comptroller 1.07.1 Jurisdiction of the courts 1.08-1.10 Jurisdiction between different states: the Brussels and Lugano 1.11-1.16 Conventions Human rights and principles of natural justice 1.17-1.29 Freedom of Information 1.30-1.33 Constraints and powers 1.34-1.39 Exercise of discretion 1.40-1.46 Construction of UK legislation 1.47-1.67 Statutes should be read as a whole 1.48-1.51 Construe words in their ordinary sense 1.52-1.54 Construe in such a way as to avoid absurdity 1.55-1.56 Ejusdem generis rule 1.57 Expressio unius est exclusio alterius rule 1.58 Generalia specialibus non derogant rule 1.59-1.61 Comparison with previous statutes 1.62-1.64 Reference to Parliamentary debate 1.65 Other rules 1.66-1.67 Treaties and International Agreements 1.68-1.69 Construction of European legislation 1.70-1.73 Relevance of the Civil Procedure Rules 1.74-1.77 Office Manuals and Practice Notices 1.78-1.79 Precedents 1.80-1.88 Weight to attach to legal reference books 1.89-1.90 Changes to the law: transitional issues 1.91-1.92 Reference to the European Court of Justice (ECJ) 1.93 Finality in litigation 1.94-1.106 Estoppel 1.94-1.103 Abuse of legal process by relitigation 1.104-1.106 The Comptroller's tribunal role 1.01 The comptroller is an administrative official having regulatory functions in respect of certain types of intellectual property. However, the comptroller also has a tribunal role in respect of patent disputes under the Patents Act 1977 and design right disputes under the Copyright, Designs and Patents Act 1988. 1.02 In practice, the powers of the comptroller sitting as a tribunal to settle disputes are exercised not by the comptroller in person but by officers authorised to act for him. Full details of the authorisation - ie who is authorised to do what - are set out in paragraph 130.05 of the Manual of Patent Practice. This authorisation refers to some officers by their span within the Office's grading structure rather than by a formal job title, and these (eg B3, C2) are used in this Manual where appropriate (C2 includes Senior Patent Examiners). 1.03 The comptroller is listed as a tribunal under direct supervision of the Administrative Justice and Tribunals Council (formerly the Council on Tribunals) in Schedule 1 Part 1 of the Tribunals and Inquiries Act 1992 (as amended by the Tribunals Courts and Enforcement Act 2007). (See Chapter 8 for further information about the Council). Jurisdiction 1.04 For any issue, the legislation may prescribe that jurisdiction lies with the comptroller, the courts or both. Jurisdiction of the comptroller 1.05 In addition to the comptroller's responsibility for resolving matters arising from the search and examination and grant of applications for patents; in the following matters he has first instance jurisdiction, ie proceedings must in general be launched before him, not the court: For patents, proceedings under sections 8, 12, 13 or 37 of the 1977 Act (entitlement and inventorship), sections 27-29 (post-grant amendment, restoration and surrender), sections 46-53 (licences of right and compulsory licences) and section 117 (correction). For design right, proceedings under section 246 of the 1988 Act (subsistence, term or ownership) and sections 237-9, 247-8 (compulsory licences etc). 1.06 In the following matters there is concurrent jurisdiction at the choice of the plaintiff, ie proceedings can be brought in the first instance before either the court or the comptroller: For patents, proceedings under section 40 (employee compensation), section 71 (declaration of non-infringement) and section 72 (revocation). 1.07 Finally, for the following the comptroller only has jurisdiction if both sides agree that the matter should be brought before the comptroller rather than the court (though the comptroller does not have the same powers as the court): • For patents, proceedings under section 61(3) of the 1977 Act (infringement). 1.07.1 The Patents Act 2004 introduced new sections 74A and 74B to the Patents Act 1977, governing the provision of non-binding opinions on validity and infringement by the Office, and reviews of opinions. The comptroller has jurisdiction to conduct reviews under section 74B. In DLP Limited [2007] EWHC 2669 (Pat), Kitchen J confirmed that the hearing officer's role in conducting a review of an opinion was simply to review whether the opinion issued by the examiner was one that could reasonably have been reached in the circumstances, and the hearing officer should only set the examiner's opinion aside if the examiner has made an error of principle or has reached a conclusion that is clearly wrong.