Tribunal Practice Notice (TPN 1/2000)

[Paragraph 42 of this notice has been amended to reflect the introduction of the Patent Office Mediation Service on 3 April 2006]

Practice In Proceedings Before The Comptroller

1. This Practice Notice advises Patent Office customers of changes in practice in the way the Office operates as a tribunal hearing "with notice" (also known as inter partes) and "without notice" (also known as ex parte) proceedings, as well as reaffirming the continuation of certain existing practices. The changes, which are effective for all such proceedings from 26 April 2000, are among a number of measures that are being introduced following the Patent Office’s review of its proceedings following Lord Woolf’s report Access to Justice, which recommended major changes to the administration of civil justice in the courts of England and Wales. Those recommendations have since been implemented in the Civil Procedure Rules 1998. In line with the general principles set down by Lord Woolf, the Office’s measures are intended to simplify and improve the speed of such proceedings before the Comptroller and thereby reduce the cost to Patent Office customers. The Standing Advisory Committee on Industrial Property and other interested parties, including the Council on Tribunals, were consulted about the proposals that emerged from the review and their views were taken into account in settling the final package of changes.

2. Some of the changes required amendment to the statutory rules. In the case of patents, registered designs and design right proceedings, these changes were respectively introduced by the Patents (Amendment) (No 2) Rules 1999, the Registered Designs (Amendment) Rules 1999, and the Design Right (Proceedings Before Comptroller) (Amendment) Rules 1999, all of which statutory instruments came into force on 22 December 1999. (Notices in the Patents & Designs Journal, Trade Marks Journal and Designs in View of 15 December 1999 gave more information about these SIs.) Changes to the trade marks rules were introduced as part of a general consolidation forming the Trade Marks Rules 2000 which came into force on 17 February 2000.

3. Many other of the changes arising from the review can, however, be introduced by altering established formal practice. This Practice Notice sets out how those changes are being made, as well as explaining how certain of the rule changes already implemented are being operated. Except as otherwise stated, this Practice Notice covers the full range of tribunal proceedings before the Comptroller, that is patents, trade marks, registered designs and design right, and references to "the rules" should accordingly be read generically.

4. The general practice with regard to the award of costs is set out in a separate notice TPN 2/2000 entitled "Costs in Proceedings before the Comptroller".

The Overriding Objective

5. In its role as a tribunal, the Office adheres to the same overriding objective as the court for dealing with cases justly, as set out in rule 1.1 of the Civil Procedure Rules 1998. This includes, so far as is practicable:

(a) ensuring that the parties are on an equal footing;

(b) saving expense;

(c) dealing with the case in ways which are proportionate -

• (i) to the amount of money involved;
• (ii) to the importance of the case;
• (iii) to the complexity of the issues; and
• (iv) to the financial position of each party;

(d) ensuring that it is dealt with expeditiously and fairly; and

(e) allotting to it an appropriate share of the court’s resources, while taking into account the need to allot resources to other cases.

Summary

6. The following main matters are addressed in this Practice Notice:

• The Office and parties should endeavour to complete with notice proceedings within 18 months. (paragraph 7)
• The periods for filing a counterstatement and evidence in patents, registered designs and design right proceedings has been shorted from two months to six weeks except when lodging an opposition, eg. opposition to amend a patent specification under rule 40(2). (paragraph 8)
• The periods for filing a counterstatement and evidence in trade marks revocation (on grounds other than non use), invalidation and rectification proceedings has been shortened to six weeks. However, the period will remain at three months in opposition and revocation on grounds of non use proceedings though an additional "cooling-off" period of three months at the start opposition proceedings will be granted when sought by both parties. (paragraph 9)
• Hearing Officers will have discretion to shorten prescribed periods. (paragraph 10)
• The Office will set a period within which a preliminary (interlocutory) hearing should take place and give parties 14 days to agree a date in that period. The Office will fix a date if after 14 days the parties do not agree a date within this period, although Hearing Officers may override the 14 days if there are genuine difficulties. (paragraph 13)
• At the commencement of the final evidence round, the Office will aim to fix a date for a substantive hearing for approximately four months later. (paragraph 14)
• The party commencing action should provide a statement of case which properly sets out the grounds on which the case against the other side is to be based. If a party fails to provide sufficient information, the Patent Office may challenge the statement. Until the statement of case is in order the proceedings will not be progressed. (paragraphs 15 to 19)
• The Office has provided broad guidelines on how to set out a statement of case. (paragraphs 20 to 25)
• A declaration of the truth of the information in claims and defences is required for trade marks proceedings and encouraged in other proceedings. (paragraph 27)
• The Office will accept a witness statement in evidence although Hearing Officers are authorised to require the filing of an affidavit or statutory declaration if they consider it necessary. (paragraph 30)
• Exceptionally the Office is prepared to accept unsigned witness statements or unsworn statutory declarations or affidavits as meeting time deadlines provided a proper version of the evidence is filed within a specified period. The Hearing Officer may impose a cost penalty if, in the event, the formal evidence is different from that originally filed. (paragraph 31)
• Where a party adduces evidence of a statement made by another person and does not call that person as a witness, the Hearing Officer may permit the other party to call that person and cross examine them. (paragraph 32)
• In deciding whether to grant specific disclosure, Hearing Officers will generally follow principles which mirror those applied by the courts. (paragraphs 33 to 37)
• The Office intends issuing questionnaires on a selective basis prior to evidence rounds. (paragraph 38)
• Hearing Officers will adopt the selective use of "case management conferences" taking into account the circumstances of the case, eg the need to clarify issues, the degree of complexity, any related actions and any wider public interest issues. (paragraphs 39 and 40)
• Hearing Officers are also empowered to call a "pre-hearing review" prior to a hearing which will give them the opportunity to clarify matters and issue directions on the conduct of the hearing. (paragraph 41)
• The Office will routinely ask parties if they have considered Alternative Dispute Resolution (ADR) and Hearing Officers will be prepared to stay proceedings where ADR is being used or seriously considered. They may also take into account a party’s unreasonable refusal to consider ADR when awarding costs. (paragraph 42)
• In patents revocation hearings the applicant will be invited to open proceedings while in trade marks opposition hearings the opponent will be invited to open. (paragraph 43)
• Hearing Officers will retain discretion to deal with excessively long speeches and cross examination. (paragraph 44)
• Parties will generally be expected to supply skeleton arguments and authorities at least two days before a hearing. (paragraph 45)
• Adducing new evidence during a hearing will be discouraged and will only be allowed after the other party has had sufficient time to digest it. As a rule, documents will only be allowed to be introduced in cross examination which are designed to test the honesty and reliability of a witness. (paragraph 46)
• The Office will encourage parties to hold hearings, case management conferences and pre-hearing reviews using telephone conferencing arrangements and video links in suitable cases. (paragraph 47)
• Hearing Officers will offer parties the opportunity for proceedings to be decided without the need for a hearing. (paragraph 48)

Time Related Issues

Timescale for with notice proceedings

7. It has been a central aim of the Patent Office’s response to the Woolf Report that proceedings before the Comptroller should be conducted expeditiously within a reasonable overall time frame whilst still ensuring that parties have a full opportunity to present their case. The Office and parties should aim to complete with notice proceedings within 18 months of commencement, that is to say from the date when proceedings are formally joined by the filing of a counterstatement. Faster handling will be appropriate where a matter of particular public interest arises or when the parties themselves jointly request and work towards this end.

8. A number of rule changes bear on the period for filing pleadings and evidence and harmonise practice where possible across the range of actions handled by the Office. Hence, the relevant patents, registered designs and design right rules have been amended so that the period for filing counterstatements and evidence has been shorted from two months to six weeks except when lodging an opposition, eg. opposition to amend a patent specification under rule 40(2) of the Patents Rules (as amended).

9. The Trade Marks Rules 2000 provide for the six-week period to apply to revocation (on grounds other than non-use), invalidation and rectification proceedings. The corresponding time period for opposition and revocation on grounds of non-use will remain at three months. In addition, there will be provision for a cooling off period of three months at the start of opposition proceedings which will be granted when sought by both parties. This will be extendable (again at the request of both parties) by three months.

10. The rules will continue to provide discretion to extend statutory periods in certain circumstances. However, the rules are amended to afford Hearing Officers discretion to shorten many prescribed periods where appropriate. Such circumstances might be expected to arise where both parties to an action seek accelerated processing, or where external factors demand a decision in a shorter time frame than the standard period would permit.

11. Replies to the questionnaire that the Office proposes issuing on a selected basis prior to the evidence round (see paragraph 33 below) should help Hearing Officers decide whether the circumstances in a particular case warrant extending the period for filing evidence.

12. The anticipated benefits of speedier case handling will not be achieved if parties, their professional advisers and the Office do not work within the overall 18-month objective for the completion of with notice proceedings.

Fixing dates for preliminary hearings

13. In the case of preliminary hearings the Office will discontinue its practice in patents, design right and registered designs proceedings of allowing the parties an open-ended window within which to agree a hearing date. Instead, the Office will set a window within which a preliminary hearing should take place and will give the parties 14 days (if possible) within which to notify the Office of their agreed date. Failing such notification, the Office will itself set a date within the window. The Office will, however, endeavour to give minimum periods of notice and Hearing Officers will have discretion to override the 14 days in those cases where a party has a genuine difficulty in agreeing a hearing date. On the other hand, the 14-day period may be abbreviated in exceptional circumstances demanding a very urgent hearing. It is the intention of the Trade Marks Directorate to adopt a similar approach in the fullness of time but in the meantime, because of the backlog of preliminary hearings involving trade mark cases, the Directorate will continue its present practice of fixing dates for such hearings.

Fixing dates for main or substantive hearings

14. At the commencement of the final evidence round, the Office will aim to arrange a date for main or substantive hearings for approximately four months later. The Hearing Officer will, however, have discretion to direct that an earlier date, or exceptionally a later date, be fixed. Parties will be able to offer an alternative agreed date which is no later than that fixed by the Office. In the short term, because of the backlog of substantive hearings involving trade marks cases, the Trade Marks Directorate will continue its present policy of fixing dates.

Statements of Case

Pertinent and adequate statements of case

15. In all proceedings before the Patent Office claimants are required to set out a statement of case on which the action is proceeding. The other party, for example the applicant for registration or the proprietor of the patent or trade mark, is then required to submit a counterstatement setting out the basis of the defence. Over the years a practice has built up, particularly in trade mark proceedings, whereby the statement of case has to a large extent been a recitation of the particular sections of the legislation under which the action is to proceed, with no particularisation of the case. In LIFESAVERS [1997] RPC page 567 the Hearing Officer said that in his view, "the substantive issues in this case and therefore the areas of contention between the parties have not yet been clearly defined. This is not surprising because it is only in the evidence rounds that the nature and areas of conflict are clarified." In recent judgements, the Vice-Chancellor has criticised that approach and in DEMON ALE [2000] RPC 345 Mr Geoffrey Hobbs QC acting as the Appointed Person has stated:

• "Considerations of justice, fairness, efficiency and economy combined to make it necessary for the pleadings of the parties in Registry proceedings to provide a focussed statement of the grounds upon which they intend to maintain that the Tribunal should or should not do what it has been asked to do."

16. It will be necessary therefore in all proceedings before the Comptroller for the party commencing the action to provide (in association with the appropriate form, eg TM7 Notice of Opposition) a statement of case upon which the case against the other side is to be based. This must include all of the grounds which the party intends to pursue and which are to be supported by evidence (where appropriate).

17. In future, the mere recitation of the section of the Act (or the provisions of a Rule) will not be sufficient to mount an action. There must be a sufficient degree of particularisation for the other side (and the Patent Office) to have a clear view of the nature of the dispute and have sufficient detail of, for example, the earlier trade marks or earlier rights and their use, on which the litigant intends to proceed.

18. As Mr Hobbs stated in the DEMON ALE decision:

• "The statement should not be prolix. It should however, be full in the sense indicated by Mr Simon Thorley QC in COFFEE MIX™ [1998] RPC 717 at 722; it must be full in the sense that it must outline each of the grounds .... relied upon and state the case relied upon in support of those grounds. It should be as succinct as possible but it must be complete."

19. If a party fails to provide sufficient information in the statement of case as to the nature or extent of the grounds upon which the proceedings rely, the Patent Office may challenge the statement and seek to have it put in proper order. In those cases where there may be only some of the grounds of the action fully pleaded, the party or their representative will be asked to provide such further information as may be reasonably required to complete the statement, or to delete the deficient grounds. Until the statement of case is in order, the proceedings will not be progressed and the subsequent delay may be a factor which will be taken into account at the point at which costs are determined.

Presentation of statement of case

20. With a view to fostering greater uniformity of court practice, Lord Woolf's report set out basic requirements for presenting a statement of case. Although proceedings before the Office usually commence with the lodging of an official form, there is considerable variation of practice in framing supporting statements, particularly where private litigants are involved. The Office believes that it would be of assistance to litigants if they were given broad guidelines on how to set out their statements. This should in turn help the Office in identifying the type of action that is being launched.

21. In general the claimant (ie the person initiating the proceedings) should set out in their statement:

• the matter in issue
• the facts to be relied on, and
• the relief sought.

22. Whilst sometimes the matter in issue is implicit in the nature of the proceedings, generally it needs to be set out in detail. For example, the grounds on which revocation of a patent or invalidation of a trade mark is sought must be set out fully. The facts to be relied on (as distinct from the evidence that will later be adduced to prove those facts) should also be set out concisely but fully. Whilst in the past statements filed in proceedings before the Comptroller have sometimes been lacking in real detail as to the facts, statements must now be reasonably detailed. The relief sought should be clearly stated. Costs need be not specifically claimed in a statement, though they usually are.

23. In their counterstatement, the defendant must state:

• which of the allegations in the statement they deny and why (and if they intend to put forward an alternative version of events, what that version is);
• which of the allegations in the statement they are unable to admit or deny but require the claimant to prove;
• which of the allegations in the statement they admit.

24. The purpose of the counterstatement is to narrow down the field of dispute, because the claimant will not need to prove any allegations which the defendant admits. Whilst in the past counterstatements have sometimes been very sketchy, that is no longer acceptable. If a counterstatement leaves uncertainty about what is and is not in dispute, it is inadequate. Thus, the counterstatement must deal specifically with every allegation in the statement. (Indeed, any allegation not dealt with is generally deemed to be admitted by the defendant.) Again, costs need not be specifically claimed, though they usually are.

25. If the presentation of a statement or counter-statement is clearly inadequate, the Comptroller will refuse to serve it. Of course, even when a statement or counter-statement is served that does not mean the Comptroller has decided it is satisfactory, and the recipient is still entitled to object to its adequacy.

Supply of Documents with statements of case

26. The Office considered removing from the patents rules the requirement to supply documents with the statement of case, bearing in mind that the documents would have to be re-filed later as part of the evidence. However, patent practitioners did not consider it unduly burdensome to file such documents twice and to the contrary felt that it was important for the other party in proceedings to have sight of any documents referred to in the statement of case at the earliest opportunity so that they were fully aware of the case against them. It has therefore been decided to maintain present provisions in the rules that requires that copies of any documents referred to in statements of case should be supplied with the statements themselves.

Confirming accuracy and truth of a statement of case

27. The Office has decided to adopt Lord Woolf's recommendation that claims and defences should contain a declaration on behalf of the parties confirming the accuracy and truth of the matter contained in them. Such a declaration is required for trade marks proceedings and encouraged in other proceedings. It should be noted that such a declaration is necessary if a party wanted, in any subsequent appeal to the High Court, a statement of case to be taken into account as evidence.

28. Examples of a declaration that would be acceptable are:

• "I/we confirm that the information contained in this statement of case is true to the best of my/our knowledge and belief."

      or

• "I/we believe the information contained in this statement of case to be true."

29. If, in the event, a statement or counterstatement proves to be inaccurate or untrue then, in the absence of any clear and justified explanation for the breach, the Hearing Officer will take this into account when making an award for costs.

Evidence

Witness Statements

30. The rules have been amended to permit as an alternative to sworn evidence the filing of evidence in the form of a "witness statement" verified by a statement of truth. Hearing Officers are also authorised to require the filing of an affidavit or statutory declaration instead of a witness statement if they consider such a sworn statement to be more appropriate in a particular case. A witness statement must be in writing and signed and dated and should contain the evidence which the person signing it would be allowed to give orally. It should also contain a statement by the witness that he believes the facts in it are true.

Filing evidence not in proper form

31. The Office intends continuing with its existing practice of requiring receipt of formally correct affidavits, statutory declarations or witness statements to trigger subsequent evidence stages. The Office will not normally accept the receipt of unsigned witness statements or unsworn affidavits or statutory declarations as meeting time deadlines, but exceptionally the Hearing Officer will be prepared to do so provided a proper version of the evidence is filed within a period the Office may specify. If, in the event, the formal evidence was shown to be inconsistent with the previously filed informal evidence, the Hearing Officer may impose a cost penalty on the party concerned when deciding on the award of costs. Parties should take care to ensure that evidence filed by facsimile transmission is received by the Office in its entirety and is legible.

Witness evidence

32. The rules have also been amended so that where a party adduces evidence of a statement made by a person otherwise than while giving oral evidence in proceedings and does not call that person as a witness, the Hearing Officer may permit any other party to call that person as a witness and cross-examine them on their statement.

Disclosure

33. Disclosure is not common in proceedings before the Comptroller and the Office does not expect that to change. However, parties do seek it from time to time, and the principles the Office will apply in deciding whether to grant it will mirror those applied by the courts.

34. The principles the Office has traditionally applied reflected Order 24 of the old Rules of the Supreme Court, and this approach was endorsed by Aldous J in Merrell Dow Pharmaceuticals Inc’s (Terfenadine) Patent [1991] RPC 221. Thus the questions the Office has considered are whether the documents concerned relate to the matters in question in the proceedings and whether their disclosure is necessary to dispose fairly of the proceedings or to reduce costs. As in the courts, even if these tests were satisfied there was always discretion to refuse to order specific disclosure, for example if the value of the material to the applicant was outweighed by the burden it would impose on the opponent, as discussed in Molyncke AB v Proctor and Gamble Ltd (No 3) [1990] RPC 498, or if the categories of documents were in such general terms as to amount to a "fishing discovery", as discussed in British Leyland Motor Corporation v Wyatt Interpart Co Ltd [1979] FSR 39.

35. Under the Civil Procedure Rules 1998 the courts can order either "standard" disclosure (ie all relevant documents in a party’s control) or "specific" disclosure (usually, an order to disclose specific documents or classes of documents). It is unlikely a Hearing Officer would ever order standard disclosure, but he or she may order specific disclosure. The court’s Practice Direction on specific disclosure says that:

• "the court will take into account all the circumstances of the case and, in particular, the overriding objective described in Part 1."

36. The Office will follow these principles when considering requests for disclosure in the future. It takes the view that this does not involve discarding the old tests because they are still a sensible part of considering all the circumstances of the case. However, the Office will now additionally put greater emphasis on the principle of proportionality and on the need to ensure proceedings are dealt with expeditiously.

37. A party applying for specific discovery must explain its reasons in full and must identify the documents or classes of documents it seeks as clearly as is reasonably possible. Vague or excessively broad requests are unlikely to be granted.

Case Management

Questionnaires

38. The Office intends issuing questionnaires on a selective basis, prior to the evidence rounds, which should help parties and Hearing Officers gain a clearer appreciation of the issues.

Case Management Conferences

39. The Office has decided to adopt the selective use of case management conferences. A decision on whether or not to hold such a conference will rest with the Hearing Officer taking into account the circumstances of the case including, for instance, the need to clarify the issues, the degree of complexity, any related actions between the parties and any wider public interest issues. The rules have been amended to give the Office the necessary powers.

40. The legal and technical nature of intellectual property disputes means that they are usually conducted by professional representatives. Case management conferences should be attended by these representatives. The parties themselves will not be expected to attend but should be invited to do so if they so wish.

Pre-Hearing Reviews

41. The rules have been amended to give Hearing Officers power to call a "pre-hearing review" prior to a hearing if they consider it appropriate. Such reviews will provide Hearing Officers with an opportunity to clarify issues, particularly in complex cases, and issue directions on the conduct of hearings. This should help the parties focus on matters of most relevance.

Alternative Disputes Resolution (ADR)

42. The Patent Office views mediation as a particularly appropriate and effective form of ADR for a range of IP disputes and has now established a Mediation Service to assist parties in this form of dispute resolution. The Office will routinely ask parties whether they have considered mediation and will, where appropriate, direct them to the Patent Office Mediation Service. The Office will be prepared to stay proceedings in those cases where mediation is being used or seriously considered. Hearing Officers may also take into account a party's unreasonable refusal to consider mediation when awarding costs.

Conduct of Hearing, Issuing of Decisions

Order for presenting case

43. The normal practice in with notice hearings is that the right to open is vested in the party who bears the initial burden of proof, eg the referrer in patent entitlement proceedings. The exception has been in applications to revoke a patent where the opponent to the application is invited to open. The Office has decided that henceforth the applicant will be invited to open proceedings at revocation hearings. Also, in trade mark opposition hearings, the opponent will now be invited to open the proceedings.

Time spent on hearing and cross examination

44. The Patent Office does not, as a rule, intend imposing time limits on the length of hearings and the time spent on cross-examination. However, Hearing Officers will retain discretion to deal with excessively long speeches and cross-examination.

Supply of skeleton arguments prior to hearing

45. The Office is keen to encourage the use of skeleton arguments at hearings as they can be of considerable benefit in organising submissions and making efficient use of hearing time. Moreover, they help focus the mind and enable the Hearing Officer and the parties and their representatives to gain a better appreciation of the issues and arguments. Therefore, Hearing Officers will generally expect parties, particularly those that are represented by professional practitioners, to supply skeleton arguments, together with authorities, at least two days before the date of a hearing.

Presentation of new evidence at a hearing

46. The practice of adducing new evidence during a hearing is to be discouraged as it can spring surprises. Even if a Hearing Officer decides to admit such evidence it will generally be allowed only after the Hearing Officer and the other party have had sufficient time to read and digest it. Hearing Officers will however, as a rule, allow documents to be introduced in cross-examination which are designed to test the honesty or reliability of a witness.

Use of telephone and video conferencing for hearings

47. The Patent Office recognises that the use of telephone and video conferencing facilities is likely to have little application for substantive hearings, However, the scope of their use in procedural hearings can be significant by saving costs and making better use of time for both the parties and the Hearing Officer. The Office accepts that such facilities must be used with care so as not to disadvantage either party. In this respect, the Office has taken account of the firm line taken by the Patents Court on the use of telephone summonses (eg Robert Hewitt v P McCann Ltd, 30 March 1998, in which Laddie J gave the clear reminder that telephone summonses exist to save costs, that their availability must not be ignored, and that doing so could be reflected in cost orders). In view of this, and bearing this in mind Lord Woolf’s encouragement of greater use of IT in legal proceedings, the Office intends encouraging parties to hold suitable hearings, case management conferences and pre-hearing reviews using telephone conferencing arrangements and video links.

Deciding cases without a hearing

48. The Office will adopt a proactive stance towards settling dispute cases without the need for hearings whilst retaining the fundamental right of parties to be heard. Parties will at least be offered the opportunity of a decision in this way.

49. Current contact details for enquiries about this notice are:

Sue Williams
Patents and Designs Directorate

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel 01633 814736
Fax 01633 814491

Raoul Colombo
Trade Marks Directorate

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

Tel 01633 811407
Fax 01633 811175

A Brimelow
Comptroller-General of Patents, Designs and Trade Marks
19 April 2000