1. In this Order—
“the Act” means the Patents Act 1949(1);
“the Comptroller” means the Comptroller-General of Patents, Designs and Trade Marks;
“the Crown Solicitor” means the Crown Solicitor for Northern Ireland;
“the Journal” means the Official Journal (Patents).
(2) References this Order to an order under section 24 of the Act include references to an order under that section on an application made by virtue of section 25 of the Act.
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2. All proceedings in the High Court under the Patents Acts 1949 to 1961, shall be assigned to the Chancery Division.
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3.—(1) A person intending to apply for an order under section 23 of the Act extending the term of a patent must insert an advertisement giving notice of his intention once in an appropriate trade paper, and once in a newspaper circulating throughout the United Kingdom.
(2) When the applicant sends the advertisement to an appropriate trade paper for insertion therein; he must send a copy of the advertisement to the Comptroller who shall thereupon cause the advertisement to be inserted in two successive issues of the Journal.
(3) The advertisement must state—
(a)the section of the Act under which the petition is to be presented;
(b)the object of the petition;
(c)the number, the name of the grantee and of the patentee, if different, and the title of the patent in question;
(d)the day, being a day fixed for the purpose and not earlier than 8 weeks after the publication of the advertisement for the second time in the Journal, on which the applicant intends to apply to the Court for directions fixing the date of the hearing of the petition and other directions;
(e)that notices of opposition to the petition must be lodged at the Chancery Office not less than 7 days before the day on which the applicant intends to apply to the Court as aforesaid;
(f)the applicant's address for service within the United Kingdom.
(4) In this rule “appropriate trade paper” means a newspaper or other periodical published in the United Kingdom which is appropriate to the art to which the patent in question relates.
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4.—(1) A petition under section 23 of the Act must be presented after the publication of all advertisements required by rule 3 but within 8 weeks from the date on which the first of those advertisements is published.
(2) The Comptroller shall be made respondent to the petition.
(3) The petition shall be made returnable for the day stated in the advertisement as that on which the petitioner intends to apply to the Court for directions.
(4) The petition must be accompanied by an affidavit or affidavits proving compliance with rule 3.
(5) At the time when the petition is presented the petitioner must serve on the Crown Solicitor 3 copies of the petition and of every affidavit accompanying it under paragraph (4).
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5.—(1) Any person who intends to oppose the making of an order under section 23 of the Act, or to claim the inclusion therein of any restrictions, conditions or provisions, must lodge notice of his intention in the Chancery Office not less than 7 days before the day named in the petitioner's advertisements as that on which he intends to apply to the Court for directions and at the same time serve a copy of the notice on the petitioner and 3 copies on the Crown Solicitor.
The notice must state an address for service within the United Kingdom of the person giving the notice.
(2) A petitioner on whom a notice under paragraph (1) is served must forthwith serve a copy of the petition on the person by whom the notice was served.
(3) A person who has under paragraph (1) served notice of his intention to oppose a petition under the said section 23 shall be entitled to be heard oil the petitioner's application for directions.
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6.—(1) On the hearing, on the date fixed for the purpose, of the petitioner's application for directions in proceedings for an order under section 23 of the Act, or a subsequent hearing, the Court shall give such directions for the conduct of the proceedings as it thinks necessary or expedient and, without prejudice to the generality of the foregoing provision, it shall—
(a)specify the period within which each person by whom notice has been served under rule 5(1) must serve particulars of the objections on which he intends to rely;
(b)give directions as to the manner in which the evidence (including any accounts of expenditure and receipts relating to the petition) shall be given at the hearing of the petition and, if the evidence is to be given by affidavit, specify the period within which the affidavit must be filed;
(c)fix the date of hearing of the petition.
(2) Where the petition includes an application for extension of the time allowed by subsection (2) of the said section 23, the Court may, on the application of the petitioner made on the hearing of his application for directions under this rule, and on such terms as to costs or otherwise as it thinks just, give directions for the determination before the hearing of the petition of the application for such leave, and where it does so, it shall give directions as to the manner in which the evidence shall be given at the hearing of the application and fix the date of the hearing.
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7.—(1) Where directions are given under rule 6(1)(a) for the service of particulars of objections to a petition under section 23 of the Act, the person opposing the petition must serve one copy of the particulars on the petitioner and 3 copies on the Crown Solicitor.
(2) The petitioner and every person by whom notice has been served under rule 5(1) shall serve on the Crown Solicitor 3 copies of any affidavit, and as far as practicable any exhibits thereto on which he intends to rely at the hearing of the petition.
(3) On receiving notice in that behalf, the petitioner must give to the Crown Solicitor, or a person deputed by him for the purpose, reasonable facilities for inspecting and taking extracts from the books of account by which the petitioner proposes to verify the accounts mentioned in rule 6(1)(b) or from which those accounts have been derived.
(4) Subject to rule 14, a person who fails to comply with paragraph (1) or the directions referred to therein shall be deemed to have abandoned his opposition to the petition.
(5) A person opposing a petition under the said section 23 shall not be entitled on the hearing of the petition to rely on any ground of objection not specified in his particulars of objection.
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8.—(1) A petition under section 23 of the Act shall be set down for hearing not less than 7 days before the date fixed for the hearing but before it is set down a certificate signed by the petitioner or his solicitor certifying that copies of the petition and notice of the said date have been served on every person opposing the petition and on the Crown Solicitor must be lodged in the Chancery Office together with a bundle consisting of one copy of each of the documents to be used at the hearing arranged in the proper chronological order on numbered pages.
(2) Unless the Court otherwise directs, the petition shall be set down in the same manner as a witness action.
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9.—(1) Rules 3 to 8 shall, with the necessary modifications, apply in relation to an application to the High Court by petition for an order under section 24 of the Act extending the term of a patent.
(2) If any person wishes to apply both for an order under section 23 of the Act and for an order under section 24 thereof, he may apply for both orders by the same petition, and rules 3 to 8 shall, with the necessary modifications, apply in relation to the application.
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10.—(1) Where an application to the High Court for an order under section 24 of the Act extending the term of a patent is made by originating summons, the Comptroller shall be made defendant to the summons and the summons must be served on the Crown Solicitor.
(2) Not less than 7 days before the day fixed under Order 28, rule 2, for the hearing of the summons the plaintiff must file an affidavit of the facts on which the plaintiff relies, and serve 3 copies on the Crown Solicitor.
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11.—(1) On the first or any adjourned hearing of an originating summons for extension of the term of a patent, the Court shall give directions for advertisement of the application for extension and shall adjourn the hearing to a specified day (in this rule and rules 12 and 13 referred to as “the appointed day”) fixed in accordance with paragraph (5).
(2) The advertisement required by this rule shall, unless the Court otherwise directs be inserted at least twice in the Journal, and before insertion its contents shall be approved by the Court.
(3) Subject to any directions given by the Court, the advertisement must state—
(a)the section of the Act under which the originating summons has been issued;
(b)the object of the originating summons;
(c)the number, the name of the grantee and of the patentee if different, and the title of the patent in question;
(d)the appointed day;
(e)that notices of objections to the summons must be lodged in the judge's chambers not less than 7 days before the appointed day;
(f)the plaintiff's address for service within the United Kingdom.
(4) Within 3 days after the advertisement has been approved by the Court, the plaintiff must serve a copy thereof on the Comptroller, and, subject to any directions of the Court under paragraph (2), the Comptroller shall thereupon cause the advertisement to be inserted in two successive issues of the Journal.
(5) The appointed day shall be a day not less than 4 weeks after the estimated date of publication of the advertisement for the first time in the Journal.
(6) Except with the leave of the Court, no affidavit shall be filed by the plaintiff between the publication of the advertisement for the first time in the Journal and the appointed day.
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12.—(1) Any person who intends to oppose the making (on application by originating summons) of an order under section 24 of the Act, or to claim the inclusion therein of any restrictions, conditions or provisions, must, not less than 7 days before the appointed day, lodge notice of his intention in the Chancery Office and at the same time serve a copy of the notice on the plaintiff and 3 copies on the Crown Solicitor.
The notice must state an address for service within the United Kingdom of the person giving the notice.
(2) A plaintiff on whom a notice under paragraph (1) is served must forthwith serve a copy of the originating summons and of any supporting affidavit filed by him on the person by whom the notice was served.
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13. On the hearing on the appointed day or a subsequent hearing the Court shall give directions for the service of particulars of objections by any person who has lodged a notice under rule 12(1) and for the filing of any affidavits and as to further conduct of the proceedings.
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14. The Court may, on sufficient reason being shown for doing so, excuse an applicant for an order under section 23 or 24 of the Act and any person opposing the application from compliance with any obligation imposed on him by rule 3, 4, 5, 6, 7, 8, 10, 11 or 12.
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15. Where the Comptroller elects, or is required by the Court, to appear on the hearing of an application under section 23 or 24 of the Act, he shall not be required to give notice of the grounds of any objection he may think fit to take or of any evidence he may think fit to submit to the Court, but he may give the applicant written notice before the hearing of any observations on the applicant's petition or originating summons, as the case may be, and on the applicant's evidence and accounts which he may think fit to make at the hearing.
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16.—(1) Where an application for an order under section 24 of the Act, is made to the Comptroller and the Comptroller decides to refer the application for decision by the Court, he shall give notice of his decision to the applicant and to any person opposing the making of the order or claiming the inclusion therein of any restrictions, conditions or provisions.
(2) Within 28 days after receipt of such notice the applicant may apply by originating motion for an order under the said section 24 and notice of the motion must be served on the Crown Solicitor and on any such person as is referred to in paragraph (1).
The applicant must also serve on the said solicitor 3 copies of any evidence filed in support of or in opposition to the application.
(3) An applicant who fails to serve notice of the motion in accordance with paragraph (2) shall be deemed to have abandoned his application.
(4) Within 14 days after service of notice of the motion on the Crown Solicitor the Comptroller shall send his file of the proceedings in the matter to the Master together with a statement to the Court of his reasons for referring the application to the Court.
(5) Subject to any directions given by the Court, the procedure on an application for an order under the said section 24 referred to the Court by the Comptroller shall be the same as on an application for such an order made to the Court by originating summons and rules 11 to 15 shall, so far as applicable, apply with the necessary adaptions.
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