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Particulars of objections to validity of patent in originating claim

Supreme Court of Judicature (Intellectual Property) Rules 2022

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—(1) If the claimant in an originating claim intends to put in issue the validity of a patent, the claimant must serve with its statement of claim the particulars of its objections to the validity of the patent.(2) If the defendant in an originating claim intends to put in issue the validity of a patent by way of defence or counterclaim, the defendant must —(a)within 14 days after being served the statement of claim, give prior notice of that intention; and(b)within 42 days after being served the statement of claim, serve —(i)the defence or counterclaim, as the case may be; and(ii)particulars of its objections to the validity of the patent.(3) The particulars of objections must —(a)state every ground on which the validity of the patent is put in issue; and(b)include particulars that clearly define every issue that is intended to be raised.(4) If the grounds stated in the particulars of objections include want of novelty or want of any inventive step, the particulars must —(a)state the manner, time and place of every prior publication or user relied upon; and(b)if prior user is alleged —(i)specify the name of every person alleged to be a prior user;(ii)state whether the prior use is alleged to have continued until the priority date of the claim in question or of the invention, as may be appropriate, and, if not, the earliest and latest date on which the prior use is alleged to have taken place;(iii)contain a description accompanied by drawings, if necessary, sufficient to identify the prior use; and(iv)if the prior use relates to machinery or apparatus, state whether the machinery or apparatus is in existence and where the machinery or apparatus can be inspected.(5) If in the case of an existing patent —(a)one of the grounds stated in the particulars of objections is that the invention, so far as claimed in any claim of the complete specification, is not useful; and(b)it is intended, in connection with that ground, to rely on the fact that an example of the invention that is the subject of any such claim cannot be made to work, either at all or as described in the specification,the particulars must —(c)state that fact and identify each such claim; and(d)include particulars of each such example, specifying the respects in which it is alleged that the invention does not work or does not work as described.(6) If the validity of a patent is put in issue on the ground of obviousness, a party that wishes to rely on the commercial success of the patent must state in that party’s pleadings the grounds upon which that party so relies.(7) Except with the permission of the Court, no evidence may be given of any objection to the validity of a patent raised in an originating claim, if —(a)the objection was not raised in the particulars of objections; or(b)the evidence is not in accordance with a statement in the particulars of objections.(8) If any machinery or apparatus alleged to have been used before the priority date mentioned in paragraph (4)(b)(ii) exists at the date of service of the particulars of objections, no evidence of its user before that date may be given.(9) Paragraph (8) does not apply if it is proved that the party relying on the user —(a)being in possession of the machinery or apparatus, offered inspection of the machinery or apparatus to the other parties to the proceedings; or(b)not being in possession of the machinery or apparatus, used all reasonable endeavours to obtain inspection of the machinery or apparatus for those parties.

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