Guidance: Notifying the Intellectual Property Office of a court action

Introduction

The Civil Procedure Rules (CPR) set out the rules and procedures for civil litigation in the courts of England & Wales. This includes those for litigation involving intellectual property (IP) rights.

Rule 63.14(3) CPR sets out an obligation to serve documents on the comptroller or registrar in certain cases involving registered IP rights. This means that the Intellectual Property Office (IPO) must be notified of these cases when they begin.

This ensures that the IPO is aware of potential changes to the register that could happen because of the court case. It also gives the IPO the opportunity to take part in the case. This could be because it involves an important point of law or issues of practice or procedure, or to represent the public interest.

We have found that the IPO is not being notified of cases where this rule applies. We believe that parties may be unaware of their obligations under the CPR, or do not know how they should meet them. Failing to meet obligations under the CPR may have a negative impact on your case. This guidance serves as a reminder of these obligations, and to provide a way of meeting their requirements.

Please note that this does not affect how to notify the IPO of amendments that are proposed as part of patent litigation. There are separate directions for that specific process.

When the IPO should be notified

The rule applies to cases involving patents, trade marks, supplementary protection certificates, and registered designs where the outcome may affect what is on the register. Types of cases where it may apply include:

• revocation or invalidity proceedings
• infringement cases, where there is a counterclaim for revocation/invalidity
• entitlement (who owns a right)

Who should notify the IPO, and what should be provided

If you are the party seeking revocation or invalidation, or challenging who owns the right, you are responsible for notifying us. You must notify us even if you are acting in response to someone else starting a case.

If you are using a patent or trade mark attorney, or a solicitor, to represent you, they can notify us instead. (So, when we refer to ‘you’ in this guidance, this can also be your representative.) They will usually be the one to file the claim, and will have the documents that are needed, so may be better placed.

You should notify us as soon as you file your claim with the courts. You must provide the claim form, counterclaim or application notice, and any relevant statement of case, along with any documents that accompany any of those. Please do not provide any other documents.

How to notify us

You must formally serve the documents on the IPO. Service under CPR 63.14(3) can be effected by email, by sending the documents to [email protected]. Please do not send documents by post.

(Please note that this email address is for service under that rule only; it does not constitute an address at which other court papers may be served on the IPO.)

To enable us to properly process these notifications, please indicate clearly in any covering letter and/or the attaching email that these documents are being filed in accordance with CPR 63.14(3).

What happens next

The details of your case will be recorded, and the relevant documents placed on the case file of the IP right in question. Unless the IPO chooses to intervene as a party or seeks additional information, you will not need to copy us in on further correspondence or send any other documents. We may ask you to keep us informed about the progress of your case.