Patent Office - European National Trade Mark Offices

xxiv Patents and Designs Journal No. 5940 26 March 2003
Notices - cont
4. To enable this change to be made, anyone wishing to propose an amendment under
section 27 or 75 will be required, if reasonably possible, to deliver the amendment (and
where applicable the reasons for making the amendment) to the comptroller electronically.
For section 75 this applies to proposals to amend before the courts of England and Wales
as well as before the comptroller.
Legislative background
5. The Civil Procedure (Amendment No 2) Rules 2002 (SI No 2002/3219) will enter into
force on 1 April 2003. These Rules will provide a new Part 63 of the Civil Procedure Rules
1998, entitled “Patents and Other Intellectual Property Claims”, governing intellectual
property proceedings in the courts of England and Wales. Part 63, together with a
supplementary Practice Direction, will supersede Practice Direction 49E. The SI, Part 63
and the Practice Direction are available from The Stationery Office. They are also
published on the Lord Chancellor’s Department website (www.lcd.gov.uk) at “Civil
Procedure Rules” (see “Statutory Instruments” and “Rules and Practice Directions”).
6. Rule 63.10 introduces a new procedure for making applications under section 75 before
the courts, including “ if it is reasonably possible”, the service of the application notice on
the comptroller electronically; and paragraph 12.2 of the Practice Direction provides that:
“Where the application notice is served on the Comptroller electronically under rule
63.10(3), it must comply with any requirements for the sending of electronic
communications to the Comptroller.”
7. It is anticipated that The Patents Act 1977 (Electronic Communications) Order 2003 and
a parallel Statutory Instrument introducing associated rule changes will also enter into
force on 1 April 2003. Included will be changes to rules 40 and 78 of The Patents Rules
1995 which deal with amendments under section 27 and 75. These changes will, in line
with the new Civil Procedure Rules, require amendments (and where applicable the
reasons therefor) to be delivered to the comptroller electronically if reasonably possible.
8. Under this Order, a new section 124A of The Patents Act 1977 will provide that the
comptroller may make directions as to the form and manner in which documents may be
electronically delivered.
Explanatory notes
9. For proposals to amend under section 75 before the courts, applicants will have to file
an “application notice” under Part 23 of the Civil Procedure Rules. This must include, inter
alia, practice Form N 244 (or the equivalent), the particulars of the amendment, and the
grounds for seeking the amendment. All of this (together with a fee) must go to the court
on paper, and should also be served on the comptroller electronically if reasonably possible
(see rule 63.10 of the Civil Procedure Rules 1998, as amended).
10. For proposals to amend under section 75 before the comptroller, applicants will simply
be required to deliver the proposed amendment to the comptroller electronically if
reasonably possible.