ILPTO updates: Markman-style hearings in ILPTO proceedings and other noteworthy changes

The ILPTO has just published for public comments a new Draft Circular concerning judicial proceedings before the Office. While much of the document deals with the usual formal and procedural minutiae, it also includes several significant substantive proposals.

The most notable change is the proposed introduction of preliminary hearings in pre-grant oppositions and revocation proceedings, including Markman-style hearings to determine the scope and meaning of patent claims. The draft does not elaborate on the specific procedures for such hearings, which will likely be determined on a case-by-case basis.

Another proposal allows the parties – the Applicant and the Opposer – to jointly appoint a single expert to provide an opinion on technical disputes, subject to cross-examination by both sides. We find it doubtful that litigants will often make use of this option.

Interestingly, in several recent decisions, the Patents Commissioner has suggested the possibility of appointing a “neutral court expert” even without the parties’ consent. It remains unclear whether the new draft guidelines actually authorize such appointments. In any event, this would represent an unwelcome development, inconsistent with the adversarial nature of opposition proceedings and with the ILPTO’s unique role as a specialized tribunal possessing its own independent technical expertise – something that sets it apart from the “regular” courts.

This update article is provided for general information only and is not in lieu of legal advice. Please contact us directly for any required advice on specific matters.