06 November 2008

Practice: New Patents Court Guide

I have just had an email from Richard Miller QC to say that a new Patents Court Guide (dated September 2008) has appeared on HM Courts Service website though the November 2003 guide remains for the time being on another part of the HMCS site. Possibly the reason for keeping the old one is that it contains specimen directions whereas the new one does not.   

On a quick run through I spotted the following changes:
  • a statement of what most practitioners probably already knew, namely that cases of technical difficulty 4 and 5 will normally be tried by Mr Justice Kitchin or Mr Justice Floyd who, of course, came from the patent bar whereas the others practised in general chancery;
  • Kav's full contact details (tel 020 7073 4251, fax 020 7073 4253, (Kav.rekhi@hmcourts-service.gsi.gov.uk) and some practical guidance on issuing and listing;
  • the paragraph on arrangements for sitting outside London (a subject very dear to my heart) has been promoted form para. 18 of the old guide to para. 1.5 of the new (hurrah!);
  • demotion of September sittings from para. 6 to 3.1.7 (it's not as if the courts are overflowing with work as they were in the mid-1990s when this provision was first announced);
  • there is some guidance on pleading though most of that was already in PD63 and CPR Part 63;
  • similarly some of the provisions on case management from the CPR and PD are imported into the new guide;
  • one very welcome new insertion is para. 2.2.4 
    "In accordance with the overriding objective, the court will actively manage the case. In making any order for directions, the court will consider all relevant matters and have regard to the overriding objective with particular emphasis on proportionality, the financial position of the parties, the degree of complexity of the case, the importance of the case and the amount of money at stake."
  • the next paragraph (para. 2.2.5) spells that out in terms: 
    "The parties are reminded of their continuing obligation to assist the court to further the overriding objective. Moreover, it is the duty of the parties’ advisors to remind litigants of the existence of mediation or other forms of alternative dispute resolution as a possible means to resolve disputes. In particular, the parties should consider:
    (a) The need for and/or scope of any oral testimony from factual or expert witnesses. The court may confine cross-examination to particular issues and to time limits. The parties should consider whether oral testimony of witnesses should be given by video facility.
    (b) The need for, and scope of, any disclosure of documents.
    (c) The need for any experiments, process or product descriptions.
    (d) The need for an oral hearing or whether a decision can be made on the papers. If an oral hearing is considered to be appropriate, the court may order that the hearing be of a fixed duration.
    (e) Whether there is a need for a document setting out the basic undisputed technology (“technical primer”), and if so, its scope and the steps to be taken to achieve agreement of it.
    (f) Whether a scientific adviser should be appointed.
    (g)
    Whether a costs-capping order should be made (yea!)
    (h) Whether there should be a stay of proceedings for mediation or other form of alternative dispute resolution"
    and
  • there is actually quite a bit of info on ADR at 2.4 though strangely (well perhaps not all that strangely) the para does not mention IP Office opinions on validity and infringement under s.74A and s.74B of the Patents Act 1977 for £200 which is probably the most useful ADR procedure from the point of view of my clients.
"All good stuff" as Peter Keenan used to say. Foer those who don't know, Peter represented the Union of Democratic Minerworkers during the miners strikein the 1980s when I first returned to Manchester.   

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