PART 63 - INTELLECTUAL PROPERTY CLAIMS

Contents of this Part

Title Number
Scope of this Part and interpretation Rule 63.1
I PATENTS AND REGISTERED DESIGNS
Scope of Section I and allocation Rule 63.2
Specialist list Rule 63.3
Omitted Rule 63.4
Starting the claim Rule 63.5
Claim for infringement or challenge to validity of a patent or registered design Rule 63.6
Defence and reply Rule 63.7
Case management
Rule 63.8
Disclosure and inspection Rule 63.9
Application to amend a patent specification in existing proceedings Rule 63.10
Court’s determination of question or application Rule 63.11
Application by employee for compensation Rule 63.12
II REGISTERED TRADE MARKS AND OTHER INTELLECTUAL PROPERTY RIGHTS
Allocation Rule 63.13
III SERVICE OF DOCUMENTS AND PARTICIPATION BY THE COMPTROLLER
Service of documents Rule 63.14
Participation by the Comptroller Rule 63.15
IV APPEALS
Appeals from decisions of the Comptroller or the registrar Rule 63.16
V INTELLECTUAL PROPERTY ENTERPRISE COURT
Scope of this Section Rule 63.17
Transfer of proceedings Rule 63.18
Enterprise judges and district judges
judge
Rule 63.19
Statements of case Rule 63.20
Statement of truth Rule 63.21
Defence and reply Rule 63.22
Case management Rule 63.23
Disclosure and inspection Rule 63.24
Applications Rule 63.25
Costs Rule 63.26
Allocation to the small claims track Rule 63.27
Extent to which rules in this Part apply to small claims Rule 63.28

Scope of this Part and interpretation

63.1

(1) This Part applies to all intellectual property claims including –

(a) registered intellectual property rights such as –

(i) patents;

(ii) registered designs; and

(iii) registered trade marks; and

(b) unregistered intellectual property rights such as –

(i) copyright;

(ii) design right;

(iii) the right to prevent passing off; and

(iv) the other rights set out in Practice Direction 63.

(2) In this Part –

(a) ‘the 1977 Act’ means the Patents Act 19771;

(b) ‘the 1988 Act’ means the Copyright, Designs and Patents Act 19882;

(c) ‘the 1994 Act’ means the Trade Marks Act 19943;

(d) ‘the Comptroller’ means the Comptroller General of Patents, Designs and Trade Marks;

(e) ‘patent’ means a patent under the 1977 Act or a supplementary protection certificate granted by the Patent Office under Article 10(1) of Council Regulation (EEC) No. 1768/924 or of Regulation (EC) No. 1610/96 of the European Parliament and the Council5 and includes any application for a patent or supplementary protection certificate;

(f) ‘Patents Court’ means the Patents Court of the High Court constituted as part of the Chancery Division by section 6(1) of the Senior Courts Act 19816;

(g) ‘Intellectual Property Enterprise Court’ means a specialist list established within the Chancery Division of the High Court;

(h) ‘enterprise judge’ means a judge authorised by the Chancellor of the High Court to sit in the Intellectual Property Enterprise Court;

(i) omitted

(j) ‘the register’ means whichever of the following registers is appropriate –

(i) patents maintained by the Comptroller under section 32 of the 1977 Act;

(ii) designs maintained by the registrar under section 17 of the Registered Designs Act 19497;

(iii) trade marks maintained by the registrar under section 63 of the 1994 Act;

(iv) Community trade marks maintained by the Office for Harmonisation in the Internal Market under Article 83 of Council Regulation (EC) No. 207/20098;

(v) Community designs maintained by the Office for Harmonisation in the Internal Market under Article 72 of Council Regulation (EC) No. 6/20029;

(vi) plant varieties maintained by the Controller under regulation 12 of the Plant Breeders' Rights Regulations 199810; and

(vii) Community plant variety rights maintained by the Community Plant Variety Right Office under Article 87 of Council Regulation (EC) No. 2100/94; and

(k) ‘the registrar’ means–

(i) the registrar of trade marks; or

(ii) the registrar of registered designs,

whichever is appropriate.

(3) Save as provided in rule 63.27, claims to which this Part applies are allocated to the multi-track. Rule 26.3(1) applies save for the modification that the court will send the parties a notice requiring the parties to file proposed directions by the date specified in the notice. For a claim which is allocated to the multi-track by this rule, rule 26.3(1B) and rules 26.4 to 26.10 do not apply.

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I PATENTS AND REGISTERED DESIGNS

Scope of Section I and allocation

63.2

(1) This Section applies to –

(a) any claim under –

(i) the 1977 Act;

(ii) the Registered Designs Act 1949;

(iii) the Defence Contracts Act 195811; and

(b) any claim relating to–

(i) Community registered designs;

(ii) semiconductor topography rights; or

(iii) plant varieties.

(2) Claims to which this Section applies must be started in –

(a) the Patents Court; or

(b) the Intellectual Property Enterprise Court.

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Specialist list

63.3  Claims in the Patents Court form a specialist list for the purpose of rule 30.5.

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Omitted

63.4

Starting the claim

63.5  Claims to which this Section applies must be started-

(a) by a Part 7 claim form; or

(b) in existing proceedings under Part 20.

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Claim for infringement or challenge to validity of a patent or registered design

63.6  A statement of case in a claim for infringement or a claim in which the validity of a patent or registered design is challenged must contain particulars as set out in Practice Direction 63.

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Defence and reply

63.7  Part 15 applies with the modification –

(a) to rule 15.4(1)(b) that in a claim for infringement under rule 63.6, the period for filing a defence where the defendant files an acknowledgment of service under Part 10 is 42 days after service of the particulars of claim;

(b) that where rule 15.4(2) provides for a longer period to file a defence than in rule 63.7(a), then the period of time in rule 15.4(2) will apply; and

(c) to rule 15.8 that the claimant must –

(i) file any reply to a defence; and

(ii) serve it on all other parties,

within 21 days of service of the defence.

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Case management

63.8

(1) Parties do not need to file a directions questionnaire.

(2) The following provisions only of Part 29 apply –

(a) rule 29.3(2) (legal representatives to attend case management conferences);

(b) rule 29.4 (the parties must endeavour to agree case management directions); and

(c) rule 29.5 (variation of case management timetable) with the exception of paragraph (1)(b) and (c).

(3) As soon as practicable the court will hold a case management conference which must be fixed in accordance with Practice Direction 63.

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Disclosure and inspection

63.9  Part 31 is modified to the extent set out in Practice Direction 63.

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Application to amend a patent specification in existing proceedings

63.10

(1) An application under section 75 of the 1977 Act for permission to amend the specification of a patent by the proprietor of the patent must be made by application notice.

(2) The application notice must–

(a) give particulars of–

(i) the proposed amendment sought; and

(ii) the grounds upon which the amendment is sought;

(b) state whether the applicant will contend that the claims prior to the amendment are valid; and

(c) be served by the applicant on all parties and the Comptroller within 7 days of it being filed.

(3) The application notice must, if it is reasonably possible, be served on the Comptroller electronically.

(4) Unless the court otherwise orders, the Comptroller will, as soon as practicable, advertise the application to amend in the journal.

(5) The advertisement will state that any person may apply to the Comptroller for a copy of the application notice.

(6) Within 14 days of the first appearance of the advertisement any person who wishes to oppose the application must file and serve on all parties and the Comptroller a notice opposing the application which must include the grounds relied on.

(7) Within 28 days of the first appearance of the advertisement the applicant must apply to the court for directions.

(8) Unless the court otherwise orders, the applicant must within 7 days serve on the Comptroller any order of the court on the application.

(9) In this rule ‘the journal’ means the journal published pursuant to rules under section 123(6) of the 1977 Act.

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Court’s determination of question or application

63.11

(1) This rule applies where the Comptroller –

(a) declines to deal with a question under section 8(7), 12(2), 37(8) or 61(5) of the 1977 Act;

(b) declines to deal with an application under section 40(5) of the 1977 Act; or

(c) certifies under section 72(7)(b) of the 1977 Act that the court should determine the question whether a patent should be revoked.

(2) Any person seeking the court’s determination of that question or application must start a claim for that purpose within 14 days of receiving notification of the Comptroller's decision.

(3) A person who fails to start a claim within the time prescribed by rule 63.11(2) will be deemed to have abandoned the reference or application.

(4) A party may apply to the Comptroller or the court to extend the period for starting a claim prescribed by rule 63.11(2) even where the application is made after expiration of that period.

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Application by employee for compensation

63.12

(1) An application by an employee for compensation under section 40(1) or (2) of the 1977 Act must be made –

(a) in a claim form; and

(b) within the period prescribed by paragraphs (2), (3) and (4).

(2) The prescribed period begins on the date of the grant of the patent and ends 1 year after the patent has ceased to have effect.

(3) Where the patent has ceased to have effect as a result of failure to pay renewal fees, the prescribed period continues as if the patent has remained continuously in effect provided that–

(a) the renewal fee and any additional fee are paid in accordance with section 25(4) of the 1977 Act; or

(b) restoration is ordered by the Comptroller following an application under section 28 of the 1977 Act.

(4) Where restoration is refused by the Comptroller following an application under section 28 of the 1977 Act, the prescribed period will end 1 year after the patent has ceased to have effect or 6 months after the date of refusal, whichever is the later.

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II REGISTERED TRADE MARKS AND OTHER INTELLECTUAL PROPERTY RIGHTS

Allocation

63.13  Claims relating to matters arising out of the 1994 Act and other intellectual property rights set out in Practice Direction 63 must be started in–

(a) the Chancery Division;

(b) the Intellectual Property Enterprise Court; or

(c) save as set out in Practice Direction 63, a County Court hearing centre where there is also a Chancery District Registry.

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III SERVICE OF DOCUMENTS AND PARTICIPATION BY THE COMPTROLLER

Service of documents

63.14

(1) Subject to paragraph (2), Part 6 applies to service of a claim form and any document in any proceedings under this Part.

(2) A claim form relating to a registered right may be served –

(a) on a party who has registered the right at the address for service given for that right in the appropriate register at—

(i) the United Kingdom Patent Office; or

(ii) the Office for Harmonisation in the Internal Market,

provided the address is within the United Kingdom; or

(b) in accordance with rule 6.33(1) or 6.33(2) on a party who has registered the right at the address for service given for that right in the appropriate register at–

(i) the United Kingdom Patent Office; or

(ii) the Office for Harmonisation in the Internal Market.

(3) Where a party seeks any remedy (whether by claim form, counterclaim or application notice), which would if granted affect an entry in any United Kingdom Patent Office register, that party must serve on the Comptroller or registrar –

(a) the claim form, counterclaim or application notice;

(b) any other statement of case where relevant (including any amended statement of case); and

(c) any accompanying documents.

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Participation by the Comptroller

63.15  Where the documents set out in rule 63.14(3) are served, the Comptroller or registrar –

(a) may take part in proceedings; and

(b) need not serve a defence or other statement of case unless the court orders otherwise.

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IV APPEALS

Appeals from decisions of the Comptroller or the registrar

63.16

(1) Part 52 applies to appeals from decisions of the Comptroller and the registrar.

(2) Appeals about patents must be made to the Patents Court, and other appeals to the Chancery Division.

(3) Where Part 52 requires a document to be served, it must also be served on the Comptroller or registrar, as appropriate.

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V INTELLECTUAL PROPERTY ENTERPRISE COURT

Scope of this Section

63.17  This Part, as modified by this Section, applies to claims started in or transferred to the Intellectual Property Enterprise Court.

63.17A

(1) In proceedings in the Intellectual Property Enterprise Court in which a claim is made for damages or an account of profits, the amount or value of that claim shall not exceed £500,000.

(2) In determining the amount or value of a claim for the purpose of paragraph (1), a claim for—

(a) interest, other than interest payable under an agreement; or

(b) costs,

shall be disregarded.

(3) Paragraph (1) shall not apply if the parties agree that the Intellectual Property Enterprise Court shall have jurisdiction to award damages or profits in excess of £500,000.

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Transfer of proceedings

63.18

(1) Rule 30.5 applies save for the modifications—

(a) a judge sitting in the County Court or the general Chancery Division may order proceedings to be transferred to the Intellectual Property Enterprise Court; and

(b) an application for the transfer of proceedings from the County Court or the general Chancery Division to the Intellectual Property Enterprise Court may be made to a judge sitting in the County Court or the general Chancery Division respectively.

(2) When considering whether to transfer proceedings to or from the Intellectual Property Enterprise Court, the court will have regard to the provisions of Practice Direction 30.

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Enterprise judges and district judges

63.19

(1) Subject to paragraph (2), proceedings in the Intellectual Property Enterprise Court will be dealt with by an enterprise judge.

(1A) For the purposes of the Practice Direction 52A – Appeals: General Provisions, a decision of the enterprise judge shall be treated as a decision by a Circuit Judge hearing a specialist claim in the County Court.

(2) Unless the court otherwise orders, the following matters will be dealt with by a district judge—

(a) allocation of claims to the small claims track or multi-track in accordance with rule 63.27(3);

(b) claims allocated to the small claims track; and

(c) all proceedings for the enforcement of any financial element of an Intellectual Property Enterprise Court judgment.

(3) For the purposes of the Practice Direction 52A – Appeals: General Provisions, a decision of a district judge shall be treated as a decision by a district judge hearing a specialist claim in the County Court. An appeal from such a decision shall be heard by an enterprise judge.

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Statements of case

63.20

(1) Part 16 applies with the modification that a statement of case must set out concisely all the facts and arguments upon which the party serving it relies.

(2) The particulars of claim must state whether the claimant has complied with paragraph 7.1(1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct).

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Statement of truth

63.21  Part 22 applies with the modification that the statement of truth verifying a statement of case must be signed by a person with knowledge of the facts alleged, or if no one person has knowledge of all the facts, by persons who between them have knowledge of all the facts alleged.

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Defence and reply

63.22

(1) Rule 63.7 does not apply and Part 15 applies with the following modifications.

(2) Where the particulars of claim contain a confirmation in accordance with rule 63.20(2), the period for filing a defence where the defendant files an acknowledgment of service under Part 10 is 42 days after service of the particulars of claim unless rule 15.4(2) provides for a longer period to do so.

(3) Where the particulars of claim do not contain a confirmation in accordance with rule 63.20(2), the period for filing a defence where the defendant files an acknowledgment of service under Part 10 is 70 days after service of the particulars of claim.

(4) Where the claimant files a reply to a defence it must be filed and served on all other parties within 28 days of service of the defence.

(5) Where the defendant files a reply to a defence to a counterclaim it must be filed and served on all other parties within 14 days of service of the defence to the counterclaim.

(6) The periods in this rule may only be extended by order of the court and for good reason.

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Case management

63.23

(1) At the first case management conference after those defendants who intend to file and serve a defence have done so, the court will identify the issues and decide whether to make an order in accordance with paragraph 29.1 of Practice Direction 63.

(2) Save in exceptional circumstances the court will not permit a party to submit material in addition to that ordered under paragraph (1).

(3) The court may determine the claim on the papers where all parties consent.

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Disclosure and inspection

63.24

(1) Rule 63.9 does not apply.

(2) Part 31 applies save that the provisions on standard disclosure do not apply.

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Applications

63.25

(1) Part 23 applies with the modifications set out in this rule.

(2) Except at the case management conference provided for in rule 63.23(1), a respondent to an application must file and serve on all relevant parties a response within 5 days of the service of the application notice.

(3) The court will deal with an application without a hearing unless the court considers it necessary to hold a hearing.

(4) An application to transfer the claim to the Patents Court or general Chancery Division or to stay proceedings must be made before or at the case management conference provided for in rule 63.23(1).

(5) The court will consider an application to transfer the claim later in the proceedings only where there are exceptional circumstances.

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Costs

63.26

(1) Subject to paragraph (2), the court will reserve the costs of an application to the conclusion of the trial when they will be subject to summary assessment.

(2) Where a party has behaved unreasonably the court may make an order for costs at the conclusion of the hearing.

(3) Where the court makes a summary assessment of costs, it will do so in accordance with Section IV of Part 45.

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Allocation to the small claims track

63.27

(1) A claim started in or transferred to the Intellectual Property Enterprise Court will be allocated to the small claims track if–

(a) rule 63.13, but not rule 63.2, applies to the claim;

(b) the value of the claim is not more than £10,000;

(c) it is stated in the particulars of claim that the claimant wishes the claim to be allocated to the small claims track; and

(d) no objection to the claim being allocated to the small claims track is raised by the defendant in the defence.

(2) Omitted.

(3) If either –

(a) the requirements of rule 63.27(1)(a), (b) and (c) are satisfied, but in the defence the defendant objects to the claim being allocated to the small claims track; or

(b) the requirements of rule 63.27(1)(a) and (b) are satisfied, but not (c), and in the defence the defendant requests that the claim be allocated to the small claims track,

the court will allocate the claim to the small claims track or the multi-track in accordance with Part 26 (case management – preliminary stage). For that purpose the court will send the parties a directions questionnaire and require them to file completed directions questionnaires and to serve them on all other parties within 14 days.

(4) Part 27 (small claims track) shall apply to claims allocated to the small claims track in the Intellectual Property Enterprise Court with the modification to rule 27.2(1)(a) that Part 25 (interim remedies) shall not apply to such claims at all. Section IV of Part 45 (scale costs for claims in the Intellectual Property Enterprise Court) shall not apply to claims allocated to the small claims track in the Intellectual Property Enterprise Court.

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Extent to which rules in this Part apply to small claims

63.28

(1) To the extent provided by this rule, this Part shall apply to a claim allocated to, or requested to be allocated to, the small claims track in the Intellectual Property Enterprise Court.

(2) Rules 63.1, 63.13, 63.18, 63.20, 63.21, 63.22, 63.25, 63.26(1) and (2), and 63.27 shall apply to the claim.

(3) No other rules in this Part shall apply.

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Footnotes

  1. 1977 c. 37. Back to text
  2. 1988 c. 48. Back to text
  3. 1994 c. 26. Back to text
  4. OJ No L182, 2.7.1992, p.1. Back to text
  5. OJ No L198, 8.8.1996, p.30. Back to text
  6. 1981 c. 54. Back to text
  7. 1949 c. 88. Back to text
  8. OJ No L11, 14.1.1994, p.1. Back to text
  9. OJ No L3, 5.1.2002, p.1. Back to text
  10. S.I. 1998/1027. Back to text
  11. 1958 c. 38. Back to text
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