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United Kingdom Intellectual Property Office Decisions
You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> Ingenico (UK) Ltd v Newt Ltd (Patent) [2006] UKIntelP o02206 (18 January 2006)
URL: http://www.bailii.org/uk/cases/UKIntelP/2006/o02206.html
Cite as: [2006] UKIntelP o2206, [2006] UKIntelP o02206
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Ingenico (UK) Ltd v Newt Ltd [2006] UKIntelP o02206 (18 January 2006)
For the whole decision click here: o02206
Patent decision
- BL number
- O/022/06
- Concerning rights in
- GB 2360867
- Hearing Officer
- Mr R C Kennell
- Decision date
- 18 January 2006
- Person(s) or Company(s) involved
- Ingenico (UK) Ltd v Newt Ltd
- Provisions discussed
- PA.1977 sections 72, 107; Civil Procedure Rules
- Keywords
- Amendment, Costs, Revocation
- Related Decisions
- None
Summary
Preliminary decision
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.