9.6.3 Statements of case
9.6.3.1 Formal pleadings
Proceedings are commenced by the issue of a claim form with the court.101 The claim form is a short document, no more than around three pages in length, in a format specified by the rules of procedure of the court. It sets out the identities of the claimant and defendant and the relief sought by the claimant. The claim form is issued by electronically filing it with the court.
The claimant must serve the claim form on the defendant within four months of it being issued if the defendant is within the jurisdiction, or within six months if the defendant is outside the jurisdiction.102 Either at the same time as serving the claim form or within 14 days of its service, the claimant must also serve on the defendant the particulars of claim.103 It is best practice for a claimant to serve their particulars of claim with the claim form. The particulars of claim are typically relatively short and give brief details of the parties in the proceedings, the patent in issue, the relief sought and why that relief is justified.
If the claimant is the patentee alleging infringement of its patent(s), the particulars of claim will be accompanied by a particulars of infringement, which sets out the specific acts of infringement complained of and at least one specific example of an infringing act, including when and where it occurred.104 If the claimant is a party seeking to revoke a patent, the particulars of claim will be accompanied by a grounds of invalidity, which specifies and particularizes the grounds on which the validity of the patent(s) is challenged.105
For a lack of novelty or lack of inventive step plea (or both), the grounds of invalidity must identify the item(s) of prior art relied upon, and a copy of each prior art document, with an English translation if necessary, must accompany it.106 No further details need to be provided as to the basis upon which a patent is said to be anticipated or obvious over that item of prior art. Normally, it is advisable to limit the number of items of prior art relied upon to no more than three or four per patent. If a prior use is alleged, details must be given, including the name of the persons making such use, where and when it took place, and how it was made available to the public.107
More detail is generally required for pleas of added matter and insufficiency. An added matter plea should set out the details of the attack being made, with reference to what is said to be disclosed in the patent but not in the application as filed. An insufficiency plea should set out details as to the basis upon which it is said that the patent specification is insufficient, particularly which examples of the invention cannot be made to work and in which respects they do not work or do not work as described in the specification.108
Following service of the particulars of claim, the defendant has 14 days within which to file a defense to the claim or to file an acknowledgment of service indicating if it challenges the jurisdiction of the court and if it intends to contest the claim.109 If an acknowledgment of service is filed, the defendant is given additional time to serve a defense to the claim and must so do within 42 days of service of the particulars of claim.110
In its defense, the defendant will indicate which aspects of the particulars of claim (and, in the particular case, the particulars of infringement or the grounds of invalidity) the defendant admits, denies or requires the claimant to prove. The defendant may also include a counterclaim in its defense. This should follow on from the defense in the same document and should be headed “counterclaim.”111 The defense (and counterclaim) must be served on every other party.112 In the case of an allegation of infringement, the counterclaim will almost always comprise a challenge to the patent’s validity (and therefore be accompanied by the grounds of invalidity, as discussed above).
Where the defendant has included a counterclaim in their defense, the claimant must serve a reply and defense to counterclaim within 14 days of service of the defense and counterclaim. The defense to counterclaim should follow on from the reply in the same document and should be headed “defense to counterclaim.”113 The defense to counterclaim component will indicate which aspects of the counterclaim the claimant admits, denies or requires the defendant to prove. The reply component will additionally provide the claimant an opportunity to respond to any points made in the defendant’s defense to the claimant’s claim.
The defendant will then, should they wish, have the opportunity to file a reply to defense to counterclaim, which will provide the defendant an opportunity to respond to any points made in the claimant’s defense to counterclaim.
9.6.3.2 Requests for further information
Where either party considers that they need additional information or details about one or more aspects of the other party’s case, or require clarification of any matter in dispute in the case, they can serve on the opposing party a request for further information (sometimes called a “Part 18 Request”).114 Such requests should be strictly confined to matters that are reasonably necessary and proportionate to enable a party to prepare their own case or to understand the case they have to meet.115 A request for further information should set out – concisely and in the manner specified in Practice Direction 18 of the CPR – the further information, detail or clarification requested, often by reference to paragraphs of a party’s statement of case.116
The receiving party will typically then respond to that request in the manner specified in the practice direction. However, the receiving party may refuse to respond, for example, on the basis that the information is not necessary or proportionate. If no response is received, the requesting party may seek an order from the court requiring a response by a certain date.
9.6.3.3 Further statements of case
Besides the statements of case (including requests for further information and their responses) referred to above, there can be certain other formal pleadings ordered by the court at the discretion of the court, often at the request of the parties. Examples include statements of case on discrete aspects of a party’s pleaded case, such as a statement of case on infringement by equivalents, a statement of case on priority, a statement of case on plausibility or a statement of case on essentiality or nonessentiality.