UK IPO provides crucial update on court case notification guidance
The Intellectual Property Office (UK IPO) has released new guidance on notifying court cases involving registered IP rights, addressing significant underreporting and emphasising legal obligations.
On 3rd September 2024, the UK IPO issued updated guidance regarding the notification of court cases involving registered intellectual property (IP) rights. This development is crucial for legal professionals and representatives engaged in IP litigation.
The new guidance provides detailed information on how and when to notify the UK IPO of cases involving patents, trade marks, supplementary protection certificates, and registered designs. This update comes in response to the UK IPO's estimate that only about 20% of the 200-250 relevant cases each year are currently being reported.
Under the Civil Procedure Rules, legal professionals are obligated to inform the IPO of such cases. This ensures that any potential changes to the IP register are accurately reflected and allows the IPO to engage in cases where appropriate.
James Porter, the IPO's Chief Hearing Officer, emphasised the importance of compliance, he said: "Keeping the IPO informed about court cases involving registered IP rights is vital for ensuring the IP register remains accurate and up to date. Timely reporting is not just a procedural step; it helps prevent potential negative impacts on your case while ensuring that important legal issues are properly managed."
Key points from the updated guidance include:
- Scope of notification: The guidance clarifies which types of cases require notification, including revocation or invalidity proceedings, infringement cases with counterclaims for revocation/invalidity, and entitlement disputes.
- Responsibility for notification: The party seeking revocation, invalidation, or challenging ownership is responsible for notifying the UK IPO, even if acting in response to another party's action.
- Timing and documents: Notification should occur as soon as the claim is filed with the courts. Required documents include the claim form, counterclaim or application notice, and any relevant statement of case.
- Notification process: Documents must be served on the UK IPO via email to [email protected], clearly indicating that they are being filed in accordance with CPR 63.14(3).
We encourage all members to review this guidance.
For the full guidance and more detailed information, please click here to refer to the official UK IPO documentation.