Procedural improvements - quicker, easier, again
For some years the Patents court has been
streamlining and speeding up its procedure under the twin pressures
of the Patents County Court (which has had little to do in 1997)
and the general reforms of Civil Procedure proposed by Lord Woolf.
During 1997 the Patents Court has continued with its progress and
is one of the most, if not the most, progressive Court in England.
In November it issued a Consolidated Practice Direction pulling
together a number of earlier directions, the last made in October
The highlights are:-
- The Patents Judges are able and willing to sit out of London in
any intellectual property case.
- The Patent's Court will now sit in September, the month being
reserved for trials and applications, including pre-reading, of 5
days or less.
- The Practice of sitting at 10.00am on most days of the week to
deal with short applications will continue. In addition there will
be a 2 hour slot, 9.00am to 11.00am, on Tuesday mornings so as to
speed up the hearing and disposition of slightly more lengthy
Parties and their representatives will be expected
to continue to assist the efficiency of the Court in providing by
not later than 4.00pm on the preceding working day all necessary
documents, skeleton arguments and drafts of any Order which the
Court will be invited to make.
It is important for the Court to be provided with
accurate time estimates so that, where possible, more than one
application can be listed for hearing before 10.30am. To keep to
this guillotines are likely to be imposed on oral submissions.
- Telephone summonses are available for matters lasting less than
- Experiments done in other jurisdictions and experiments not
done as part of normal research can be relied upon to prove any
point. An expert's report must, however, state that he knows of no
experiment inconsistent with his report.
- The Patents Court is able and willing to hear actions on
affidavit evidence. Refusal to agree to a simplified trial can
result in an adverse order on costs.
- Documents must be provided for pre-reading by the judge, and in
substantial matters documents must also be supplied on disc
including the patent, the witness statements and the experts
- Parties must provide the judge with a non-contentious guide,
preferably agreed, and all the documents to be used at trial at
least four days before trial. A skeleton argument should be lodged
at least two days before trial.
- The Patents Court is willing to make immediate assessments of
costs and has done so, avoiding the need for taxation and saving
Sensible decisions on the rules of
Under the rules of discovery in patent actions in
the UK (Order 104 Rules 11(1) and (2)) no discovery is required of
documents relating to a party's product or process provided that
the party gives full particulars of that product or process under
Rule 11(2)(a). The question arose as to whether those particulars
attracted the benefit of the implied undertaking given to discovery
documents, that they may not be used save for the purposes of the
litigation in which the discovery is given.
The Court held that it would be ludicrous if those
particulars, which were provided to avoid the expense to the
parties of going through the full discovery process, did not
attract the benefit of the undertaking; because it would force
parties to refuse to adopt the simplified procedure to give
particulars and make them give full discovery in order to take the
benefit of that undertaking. The Court, sensibly, held that the
particulars attracted the benefit of the undertaking.