[O

[O. 93, rr. 1-5

ORDER 93

THE PATENTS, DESIGNS AND TRADE MARKS ORDINANCE, CH 31 NO 18

Interpretation

1. (1) In this Order-

"the Ordinance" means the Patents, Designs and Trade Marks Ordinance, Ch 31 No 18;

"the Registrar-General" has the meaning assigned to "the Registrar" by section 2(1) of the Ordinance.

(2) This Order does not apply to trade marks.

Revocation of Patents under Section 10 of the Ordinance

2. (1) Any person presenting a petition under section 10 of the Ordinance for the revocation of a patent must serve with his petition particulars of the objections to the validity of the patent on which he intends to rely.

(2) The respondent to such a petition must serve an answer on the petitioner within 21 days after service of the petition on him.

(3) On the hearing of such petition the respondent shall be entitled to begin and to adduce evidence in support of the patent; and if the petitioner adduces evidence impeaching the validity of the patent, the respondent shall be entitled to reply.

Actions for Infringement: Particulars of Pleading

3. (1) The plaintiff in an action for infringement of a patent must serve with his statement of claim particulars of the infringements relied on.

(2) If a defendant in such an action disputes the validity of the patent, he must serve with his defence particulars of the objections to the validity of the patent on which he relies in support of the allegation of invalidity.

Particulars of Infringements

4. Particulars of infringements of a patent must specify which of the claims in the specification of the patent are alleged to be infringed and must give at least one instance of each type of infringement alleged.

Particulars of Objections

5. (1) Particulars of objections to the validity of a patent must state every ground on which the validity of the patent is disputed and must include such particulars as will clearly define every issue which it is intended to raise.

(2) If the grounds stated in the particulars of objections include want of novelty or want of any inventive step, the particulars must state the manner, time and place of every prior publication or user relied upon and, if prior user is alleged must-

(a) specify the name of every person alleged to have made such user,

(b) state whether such user is alleged to have continued until the priority date of the claim in question of the complete specification and, if not, the earliest and latest date on which such user is alleged to have taken place,

(d) if such user relates to machinery or apparatus, state whether the machinery or apparatus is in existence and where it can be inspected.

(3) If-

(a) one of the grounds stated in the particulars of objection is that the invention, so far as claimed in any claim of the complete specification, is not useful, and

[O. 93, rr. 5-10

(b) it is intended, in connection with that ground, to rely on the fact that an example of the invention which is the subject of any such claim cannot be made to work, either at all or as described in the specification,

the particulars must state that fact and identify each such claim and must include particulars of each such example, specifying the respects in which it is alleged that it does not work or does not work as described.

Amendment of Particulars

6. Without prejudice to Order 20, rule 5, the Court may at any stage of the proceedings allow a party to amend any particulars served by him under the foregoing provisions of this Order on such terms as to costs or otherwise as may be just.

Further Particulars

7. The Court may at any stage of the proceedings order a party to serve on any other party further or better particulars of infringements or of objections.

Restrictions on Admission of Evidence

8. (1) Except with the leave of the Judge hearing any action or other proceeding relating to a patent, no evidence shall be admissible in proof of any alleged infringement, or of any objection to the validity of the patent, if the infringement or objection was not raised in the particulars of infringements or objections, as the case may be.

(2) In any action or other proceeding relating a patent, evidence which is not in accordance with a statement contained in particulars of objection to the validity of the patent shall not be admissible in support of such an objection unless the Judge hearing the proceedings allows the evidence to be admitted.

(3) If any machinery or apparatus alleged to have been used before the date first mentioned in rule 5(2)(b) is in existence at the date of service of the particulars of objections, no evidence of its user before that date shall be admissible unless it is proved that the party relying on such user offered, where the machinery or apparatus is in his possession, inspection of it to the other parties to the proceedings, or, where it is not, did his best to obtain inspection of it for those parties.

Proceedings for Infringement or Revocation: Admissions must be requested

9. (1) In an action for infringement of a patent (whether or not any other relief is claimed) and in proceedings by petition of a patent (whether or not any other relief must, within 14 days after service of a reply or answer or after the expiration of the period fixed for service thereof, write to each other party from whom he requires an admission for the purpose of the action or proceedings requesting him to make the admission, and the party receiving the request must within 14 days after the receipt thereof reply in writing making the admission or stating that he refuses to make it.

(2) No order shall be made authorising a party to any such action or proceedings to serve any interrogatory on any party unless the first-mentioned party requested that other party in accordance with paragraph (1) to admit the facts sought to be proved by the answer to the interrogatory and the other party refused or failed to comply with the request.

Proceedings for Infringement or Revocation: Summons for Directions

10. (1) In such an action, and in such proceedings, as are referred to in rule 9(1), the plaintiff or petitioner must-

(a) within one month after the date on which the last reply to a request made under rule 9(1) is received or after the date on which the period fixed for making such a reply expires, whichever first occurs, or

(b) if no request for an admission is made by any party to the action or proceedings, within one month after service of a reply or answer or after the expiration of the period fixed for service thereof,

[O. 93, rr. 10-12

take out a summons for directions as to the place and mode of trial returnable in not less than 21 days, and if the plaintiff or petitioner does not take out such a summons in accordance with this paragraph, the defendant or respondent, as the case may be, may do so.

The summons may be heard in chambers or in court as the Court thinks fit.

(2) The Court hearing a summons under this rule may give such directions-

(a) for the service of further pleadings or particulars,

(b) for the discovery of documents,

(d) for the taking by affidavit of evidence relating to matters requiring expert knowledge, and for the filing of such affidavits and the service of copies thereof on the other parties,

(e) for the service on the other parties, by any party desiring to submit experimental proof, of full and precise particulars of the experiments proposed and of the facts which he claims to be able to establish thereby,

(f) for the making of experiments, tests, inspections or reports,

(g) for the hearing, as a preliminary issue, of any question that may arise (including any question as to the construction of the specification or other documents),

and otherwise as the Court thinks necessary or expedient for the purpose of defining and limiting to be tried, restricting the number of witnesses to be called at the trial of any particular issue and otherwise securing that the case shall be disposed of, consistently with adequate hearing, in the most expeditious manner.

Where evidence is directed to be given by affidavit, the deponents must attend at the trial for cross-examination unless, with the concurrence of the Court, the parties otherwise agree.

(3) Order 24, rules 1 and 2, shall not apply in an action for infringement of a patent.

(4) No action for infringement of a patent or petition for the revocation of a patent shall be set down for trial unless and until a summons under this rule in the action or proceedings has been taken out and the directions given on the summons have been carried out or the time fixed by the Court for carrying out has expired.

(5) A petition for the revocation of a patent shall not be tried sooner than 21 days after the petition has been set down for trial.

Appointment of Scientific Adviser

11. (1) In an action for infringement of a patent and in any proceedings under the Ordinance, the Court may at any time, and on or without the application of any party, appoint an independent scientific adviser to assist the Court or to inquire and report on any question of fact or of opinion not involving questions of law or construction.

(2) The Court may nominate the scientific adviser and shall settle the question or instructions to be submitted or given to him.

(3) The remuneration of any adviser appointed under this rule shall be fixed by the Court and shall include the costs of making any report and a proper daily fee for any day on which he is required to attend before the Court.

(4) Order 40, rules 2,3,4 and 6, shall apply in relation to an adviser appointed under this rule and any report made by him as they apply in relation to a Court expert and a report made by him.

Counterclaim for Rectification of Register of Designs

12. (1) Where in any proceedings a claim is made for relief for infringement of the copyright in a registered design, the party against whom the claim is made may in his defence put in issue the validity of the registration of that design or may counterclaim for an order that the register of designs be rectified by cancelling or varying the registration or may do both those things.

[O. 93, r. 12

(2) A party to any such proceedings who in his pleading (whether a defence or counterclaim) disputes the validity of the registration of a registered design must serve with the pleading particulars of the objections to the validity of the registration on which he relies in support of the allegation of invalidity.

(3) A party to any such proceedings who counterclaims for an order that the register of designs be rectified must serve on the Register General a copy of the counterclaim together with a copy of the particulars mentioned in paragraph (2);

(4) and the Registrar General shall be entitled to take such part in the proceedings as he thinks fit but need not serve a defence or other pleading unless ordered to do so by the Court.