Statements of case in patent revocation proceedings

Statements of case in patent revocation proceedings, but still only exceptionally

This was a petition to revoke Riker Laboratories Inc's patent. The petitioner applied to the Court under Order 18 Rule 12(3) of the Rules of the Supreme Court (O. 18 R12(3)) for an Order that the patentee serve a Statement of Case setting out its answers to the allegations of invalidity made by the petitioner. The petitioner accepted that it, in turn, should also provide a Statement of Case setting out its arguments for invalidity.

The patentee argued that witness statements and experts reports were nearly due and that preparation of Statement of Case at this stage was simply extra and unnecessary work.

However, the same patent had also been the subject of opposition proceedings before the European Patent Office (EPO) for some time, and the arguments had been well rehearsed there. The Court held that it was well accepted that patent pleadings were somewhat abbreviated and uninformative. However, O 18 R 12(3) should only be invoked if there were special and good reasons why more clarity was needed. In this case, given the long running proceedings before the EPO, the respondents must have some idea of their case. The Court held that this was an appropriate case for Statements of Case, which would ensure that evidence and experts reports was directed to the real issues. The Court ordered short statements of case: not more than four pages of A4 typed in single spacing in font size 12.

It must be very unlikely that this procedure is going to be followed on a regular basis. It goes too close to the Patents County Court procedure which requires detailed statements with pleadings, a procedure which has been criticised for the work required and the "front-loading" of costs.