New rules govern appeals in intellectual property proceedings

United Kingdom

The Civil Procedure (Amendment 2) Rules have come into force. The rules introduce into the Civil Procedure Rules 1998 a new Part 63, entitled "Patents and other Intellectual Property Claims". The new rules supersede the provisions for trademark and patent appeals in Practice Direction 49E; appeals against Trademark Registry and patent comptroller decisions to higher courts are now governed by Part 52 of the Civil Procedure Rules. Trademark and copyright appeals will come before the Chancery Division of the High Court, while patent appeals must be made to the Patents Court. (The new rules do not apply to appeals to the Registered Designs Appeal Tribunal.)

The automatic periods of appeal (28 days for trademark appeals) are abolished. Under the new rules, notice of appeal must be filed within 14 days of the decision in all cases unless the trademark registrar or patent comptroller directs otherwise. A longer period will be allowed "only for good reasons" and is "most unlikely" to exceed 28 days. Exceptionally, a period of less than 14 days may be directed where time is of the essence. Submissions on the appeal period should therefore form part of the parties' written or oral submissions. The appeal notice must be served on each respondent and on the registrar or comptroller as soon as practicable and, in any event, not later than seven days after it is filed. The old 21-day period is abolished.

Under the new rules, application to extend time for appeal must be made to the relevant court; the period cannot be extended by agreement between the parties. A party, who at the start of the proceedings envisages a need for an appeal period longer than 14 days, is well advised to give reasons as part of the written or oral submissions, rather than leave it to the discretion of the court in an application for extension.

Appeals to a higher court against registrar or comptroller decisions are normally limited to a review (as opposed to re-hearing) of those decisions.

Colleen Donovan, Hammonds, London

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