(Patent) The claimant sought to amend its statement by referring to a further prior art document. The defendant raised no objection, subject to an order for costs wasted in respect of the amendment. However in its subsequent counter-statement, the defendant said that the statement was lengthy, repetitive and could not be succinctly answered, and later sought its re-amendment saying the case it had to answer was not clear. At a preliminary hearing, the defendant objected inter alia that the statement did not comply with the Civil Procedure Rules (CPR), whilst the claimant maintained that it was sufficiently clear and that the defendant, having filed a counter-statement, was well aware of the case it had to answer, but should clarify the counterstatement further.
The hearing officer did not consider himself bound by the CPR, and nor did he accept that Tribunal Practice Notice 1/2000 [2000] RPC 587 was intended to tie the comptroller to court procedures. Basing himself instead on the guidance in the Offices ‘Patent Hearings Manual’ (which updated the Notice) he nevertheless found that the statement was defective, principally in not distinguishing the grounds of novelty, inventive step and excluded subject-matter. He gave the parties an opportunity to reach agreement on amendments, but this having failed he ordered the claimant to file a re-amended statement; the defendant would then have an opportunity to amend its counter-statement. The hearing officer awarded costs to the defendant, but thought that any wasted costs in respect of the amendment were insignificant and were balanced by the defendants significant delay in raising its fundamental objections to the statement.
Citations:
[2006] UKIntelP o02206
Links:
Jurisdiction:
England and Wales
Intellectual Property
Updated: 14 October 2022; Ref: scu.454599