D03.5 Court proceedings

Date Published

Examination of a design must not occur, or continue, if relevant proceedings in relation to the design are pending – unless the court orders the examination to start or continue [s.63(3) & (4)]

Relevant proceedings are court proceedings in respect of infringement, of revocation, or in which the validity of the design is in dispute. [see definition in s.5]. Other court proceedings involving the design (for example, contractual disputes over assignments and licences) are not relevant proceedings, and do not trigger the operation of s.63(3) & (4).

Accordingly, in any examination of a Certified design the owner will be requested to confirm that there are no relevant proceedings pending – both prior to the commencement of examination, and when responding to each examination report.

Some guidance about court directed examination might be gained from Capral v Koutsoukos (2005) 63 IPR 254 – which dealt with a similar provision in the Patents Act 1990.

See also D03.12 Interface with Court Proceedings