04 December 2007

Patents: New Patent Rules and Tribunal Practice Notice

One of the recommendations of the Gowers Report on Intellectual Property was for the Ministry of Justice (as the Department of Constitutional Affairs is now called) to "review the issues raised in relation to IP cases and the fast track and seek views in the context of its forthcoming consultation paper, which will consider the case track limits, and how the claims process can be made more timely, proportionate and cost-effective. It should bring forward any proposals for change by the
end of 2007" (Recommendation 54).

Like much of the report this recommendation was based on the false premise that "many of the benefits of the fast track system, such as capped costs, limited trial length and limited disclosure, do not apply to IP cases" (para 6.30). Nobody seems to have mentioned to them the streamlined procedure in the Patents Court and Patents County Court:


"A streamlined procedure is one in which, save and to the extent that it is otherwise ordered:
(i) all factual and expert evidence is in writing;
(ii) there is no requirement to give disclosure of documents;
(iii) there are no experiments,
(iv) cross-examination is only permitted on any topic or topics where it is necessary and is confined to those topics;
the total duration of the trial fixed is and will normally be not more than one day;"
(para 10 Patents Court Guide).


Nor does anyone seem to have mentioned the very extensive jurisdiction of the IP Office hearing officers who decide many cases on written evidence and submissions and award costs on a fixed scale.

IP Office tribunal procedure will be simplified greatly from 17 Dec 2007 by the new
Patent Rules 2007 which were made on 19 Nov 2007. Unlike the Patents Rules 1995 which they replace all the rules on tribunal proceedings are concentrated in one place. The new rules are divided into Parts and the Part that deals with proceedings before the Comptroller (that is to say, hearing officers acting for the chief executive of the IP Office) is Part 7. Rule 74 of the 2007 Rules imports the concept of the "overriding objective" from CPR 1.1 as ell as much of the terminology like "claimants" and "statements of case".

Much of this was introduced into IP Office practice in 2000 by the very first tribunal practice notice (
TPN 1/2000 Practice In Proceedings Before The Comptroller). The accompanying practice note (TPN 2/2000) provided for costs to be awarded to successful parties on a fixed scale. The reasoning was set out in paragraph 6 of that practice notice:

6. It is the long-established practice that costs in proceedings before the Comptroller are awarded after consideration of guidance given by a standard published scale and are not intended to compensate parties for the expense to which they may have been put. Rather, an award of costs is intended to represent only a contribution to that expense."

This scale is now about to be increased by a new TPN on costs (TPN 4/2007) whihc comes into effect on the same day as the new rules. For instance:
- Preparing a statement and considering the other side’s statement goes up from £200 to £600 depending on the nature of the statements, their complexity and relevance.
- Preparing for and attending a hearing goes up to £1,500.


No success fee is granted if a party is mean enough to enter a CFA and there are some changes to the off the scale fees and hearing officers' discretion. Hearing officers do have jurisdiction to hear patent infringement cases if all the parties agree. During the consultations on the Patents Bill the IP Office canvassed abolition of the requirement of all party consent, but that suggestion was opposed by the judges. Pity the government didn't stand firm on that one.

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