A GLOSSARY OF LEGAL TERMS and ABBREVIATIONS
see below Page 1

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25 September 2001
Ab initio
[From the beginning].
AC
Appeal Cases.
ADR
Alternative methods of dispute resolution -
methods of resolving disputes otherwise
than through the normal trial process. See
also entries under `Arbitration', `Early
neutral evaluation', `Med-arb' and
`Mediation' below.
Affidavit
A written statement made upon oath or
affirmation and signed in the presence of a
person who is authorised to administer oaths
(normally a solicitor). Authority: Civil
Procedure Rules - Practice Direction 32.
Alternative methods of dispute resolution
See entry under `ADR' above.
Amendments
Alterations sought to specifications or other
documents because the drafter has become
aware of new facts, circumstances have
changed or because he has changed his
mind.
Anton Pillar Order
See entry under `Search Order' below.
Arbitration
An alternative method of resolving disputes
between parties. The right of Appeal from
a decision of the arbitrator is limited by the
Arbitration Act 1979. (See also entry under
`ADR' above).
Appeal: Patents
Not all decisions of the Comptroller are
subject to appeal. In relation to patents,
where decisions are open to appeal, appeal
may be to the Patents Court (part of the
High Court) or (if the proceedings are held
in Scotland) to the (Outer) Court of Session.
Further appeals, with leave, may lie to the
Court of Appeal and the House of Lords. In
Scotland, any appeal from the Outer Court
of Session lies to the Inner Court of Session.
(See section 97 of the Patents Act 1977).
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Appeal: Designs
Under section 28 of the Registered Designs
Act 1949, appeals from the decisions of the
Registrar lie to the Registered Designs
Appeal Tribunal. In relation to design right,
under section 251 of the Copyright, Designs
and Patents Act 1988, appeals on decisions
under section 246 of the Act lie to the High
Court or Court of Session. Appeals under
sections 247 and 248 lie with the Registered
Designs Appeal Tribunal by virtue of
section 249.
Assignment
The transfer or assignment of intellectual
property rights from the owner of such
rights to another person or legal
organisation.
Burden of proof
The obligation of proving facts. In general,
the burden (onus) lies on the claimant
(plaintiff).
Caveat
A request for information filed on PF47/77
in accordance with Patents Rule 92.
CCR
County Court Rules.
CDPD
Chancery Division Practice Direction.
Certiorari
In connection with judicial review, one of
the remedies available - to bring before the
court some allegedly unlawful/arbitrary
action or decision so that the court might
enquire into its legal propriety and decide
whether or not it should be quashed.
Civil Procedure Rules
See entry under `CPR' below.
Claim
A document forming part of the Statement
of Case. The Patents Rules 1995, the
Registered Designs Rules 1995, and the
Design Right Rules 1989, for example, set
out detailed requirements regarding the
content of such documents. Within the
Rules, the term 'Statement' = 'Claim'.
Claimant
The name, under the Civil Procedure Rules,
given to the party making a claim in the
Courts. (Previous term = plaintiff).
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25 September 2001
Claim form
Under the Civil Procedure Rules, the name
given to a Writ/Summons. A claim form is
used to commence proceedings in the High
Court or the County Court irrespective of
the nature of the claim. (For Appeals to
Patent Court from the Comptroller see
`Notice of Appeal' below).
CLR
Commonwealth (of Australia) Law Reports.
CMLR
Common Market Law Reports.
Compulsory licence
Applications from a third party, may be
made to the Comptroller to order, for
example, the grant of a licence under a
patent or to make an entry in the register
making licences under a patent available as
of right. Any such application must be
made on one of the grounds set out in
section 48(3) of the Patents Act 1977.
Applications may be made after 3 years
from the date when notice of grant appears
in the Journal, though this period can be
altered. In relation to design right,
compulsory licences are available in the last
5 years of the design right.
Consideration
In relation to transferring rights in or under
a patent, a clause relating to the amount paid
for the rights in the patent.
Corrections
Alterations sought to a specification or other
document so that it better expresses the
intention the drafter had at the time of
drafting.
Costs
In proceedings before the Comptroller, costs
made be awarded in respect of
inter partes
proceedings under the provisions of the
Patents Acts 1949 & 1977, the Registered
Designs Act 1949, the Trade Marks Acts
1938 & 1994 and the Copyright, Designs
and Patents Act 1988. The usual practice is
to award a contribution to costs guided by a
scale published in the various Office
Journals and not to award full costs;
however, Hearing Officers have a wide
discretion when awarding costs. (See also
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entry under `Security for costs').
Counter-Claim
A document filed in response to a Claim
(previously known as `Counter-Statement').
The document sets out fully the grounds of
opposition or objection ie which allegations
in the Claim the opponent disputes and
which he does not. The counter-claim forms
part of the Statement of Case (previously
known as the Pleadings).
Counter-statement
See entry under `Counter-Claim' above.
CPC
Community Patent Convention.
CPR
Civil Procedure Rules - new rules for
proceedings in the High Court and County
Courts arising from the Access to Justice
Report of Lord Woolf.
Damages
A sum of money awarded by the Court as
compensation to the claimant.
De minimis non curat lex
[The law does not concern itself with
trifles]. Small departures from the law may
be overlooked if not significant.
Decisions
The exercise in writing or orally by the
Comptroller of any discretion vested in her
by, for example, the Patents Act 1977 and
the Patents Rules 1995.
Declaration of non-infringement
Request made under section 71 of the
Patents Act 1977 for a declaration that an
act does not or a proposed act would not
constitute an infringement of a patent.
Deponent
The name given to a person who makes a
deposition (ie affidavit) under oath.
Disclosure
Usually in the form of a request, this relates
to the making available of relevant
documents believed to be in the possession
of the other party in
inter partes
proceedings.
Discovery
Under the Civil Procedure Rules, discovery
is now known as `Disclosure' - see entry
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above.
Early neutral evaluation
An alternative method of resolving disputes
between parties. A neutral evaluator who
has legal or other expertise will hear the
core evidence from the parties or their legal
representative at an early stage in the case.
Having listened to the basic evidence, the
evaluator will offer a frank assessment of
the strengths and weaknesses of the case in
the hope that this will lead to a settlement
between the parties without further
litigation. (See also entry under `ADR'
above).
ECFI
European Court of First Instance.
Entitlement
An
inter partes
proceeding relating to who
owns a patent or an application for a patent.
EOT
Extension of time - a request made to extend
a time period that has been set by the Office
EPC
European Patent Convention. At present the
Convention has 19 Contracting States.
EP application
An application for a patent under the EPC.
By means of one application, it is possible
to obtain patent protection for an invention
in any of the Contracting States by
designating that particular state.
EPO
European Patent Office
EPOR
European Patent Office Law Reports.
Evidence
Information in the form of personal
testimony, documents or objects filed in
support of the issue in question.
Ex nunc
[From now] Example: The amendment of a
patent application is governed by section 19
of the Patents Act 1977 and takes effect
ex
nunc
, ie from the time the amendment is
made.
Ex Parte Proceedings
Refers to proceedings arising between one
party eg an applicant for a patent, and the
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Comptroller.
Ex tunc
From then] Example: The correction of an
application or the specification of a patent or
of any document filed in connection
therewith is governed by section 117 of the
Patents Act 1977 and takes effect
ex tunc
, ie
the document is deemed always to have
been in the state in which it is after the
correction.
Exclusive licence
A licence that allows, for example, only one
person to use a patent ie means that the
patent owner no longer has the right to use
the patent although he may still collect
royalties on the use of the patent.
Exhibit
Document or object included as part of the
written evidence in proceedings before the
comptroller.
Freezing injunction
Issued by the courts, this allows for the
freezing of a defendant's assets to prevent
disposal. It can be used to freeze assets
worldwide (previously known as Mareva
Injunction).
Generalia specialibus non derogant
[General things do not derogate from special
things].
Hearsay evidence
Evidence as to what someone else has seen,
said or written.
HO
Hearing Officer
In camera
Parts of Hearings held before the
Comptroller may, at her discretion, not be
open to the public. In addition, certain
proceedings are not open to public
inspection.
Infringement
Any act, as defined within intellectual
property legislation, carried out by a third
party that falls within the scope of the
intellectual property rights owned by
another and is performed without the
authorisation of the owner of those rights.
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Injunction
A court order prohibiting a person from
doing something or requiring a person to do
something.
Inter Partes proceedings
Proceedings arising between two or more
parties. Examples in relation to patents
include entitlement and revocation
proceedings; for design right such
proceedings may relate to the subsistence of
design right or the term of the design right.
Judicial Precedent
A previous judicial decision or proceeding
that may be relied upon.
Judicial Review
Order 53 of the Rules of the Supreme Court
introduced a comprehensive system of
judicial review. A statutory basis for this
procedure also appears in s 31 of the
Supreme Court Act 1981. Where no right of
appeal is given, it may be possible to
challenge the decision of an inferior court or
public tribunal by recourse to the
supervisory jurisdiction of the High Court.
This means that generally only decisions of
the Comptroller in respect of which no
appeal is available, decisions under the PCT
and decisions of the RDAT are likely to be
subject to judicial review. An application
may cover all the remedies available -
certiorari, mandamus, prohibition,
declaration and injunction. In practice, only
certiorari and mandamus are likely to be
relevant to proceedings before the
Comptroller, although prohibition could also
be so.
Jurat
The final statement signed by a person who
is authorised to administer oaths indicating
when the affidavit or statutory declaration
was sworn, affirmed or declared.
Licence
The means by which the owner of a patent
grants permission to another to manufacture
use or sell the invention protected by his
patent whilst at the same time retaining
ownership. In return, the owner receives
payments known as `royalties'.
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25 September 2001
Licence of Right
See entry under `LOR' below.
Locus standi
[A place of standing]. A right to be heard in
court or other proceeding.
LOR
Licence of Right - section 46 of Patents Act
1977. The patent owner may apply to the
Office for an entry to be made in the
Register that licences, under the patent, are
available `of right'. This means that the
patent owner then cannot refuse to licence
the invention and that he pays renewal fees
at half the usual rate. The terms of such
licences may be settled by the Comptroller
if the parties cannot agree.
For Design Right, under section 237 of the
Copyright, Designs and Patents Act 1988, a
third party is entitled as of right to a licence
to do in the last 5 years of the design right
term anything which would otherwise
infringe the design right. The terms of such
licences may be settled by the Comptroller
if the parties cannot agree.
See also `licence', `compulsory licence',
`non-exclusive licence', `exclusive licence'.
Mandamus
In connection with judicial review, one of
the remedies available - to issue an order of
the court requiring an inferior tribunal to do
something it has previously unlawfully
refused to do.
Manual of Patent Practice
A manual covering procedures and practice
in relation to the Patents Act 1977, Patents
Rules 1995 and precedents.
Mareva Injunction
See entry under `Freezing injunction' above.
Med-arb
An alternative method of resolving disputes.
This is a hybrid process that begins with
traditional mediation. However, if the
mediation does not result in the dispute
being resolved within a given period of
time, the process will end with a binding
arbitration. (See also entry under `ADR'
above).
Mediation
An alternative method of resolving disputes
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between parties. A mediator is appointed to
help both parties reach an acceptable
solution. (See also entry under `ADR'
above).
MOPP
See entry under `Manual of Patent Practice'
above.
Names of parties
See table at end of glossary.
NMP
Nine Mile Point. The Office's warehouse
facilities for the storage of files.
Non-exclusive licence
A licence that allows, for example, both the
patent owner and the licensee to use the
patent. It also allows the patent owner to
agree licences with more than one person.
NOPI
Not open for Public Inspection.
Notice of Appeal
Appeals to the Patent Court from the
Comptroller must be in the form of a Notice
of Appeal.
Obiter dictum
[A saying by the way]. An observation on a
legal question suggested by a case but not
arising in such a manner as to require a
decision. Therefore not binding as a
precedent.
OPI
Open for Public Inspection. In relation to a
patents file, for example, that part which
members of the public can inspect as from
the date of `A' publication of the
application.
Open for public inspection
See entry under `OPI' above.
Part 36 offer
Under the CPR, applies to either party and
thus applies to the Claimant where the relief
sought is a payment and in all other
instances where the relief sought is not in
respect of payment. The Rules provide that
the offer must be in writing and can relate
to the whole claim or part of a claim. A
Claimant, for example in a patent matter,
can put in a Part 36 Offer stating that he
will accept in compromise of the
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25 September 2001
proceedings, undertakings of a specified
nature and £X in respect of damages.
Part 36 payments
Under the CPR, relates to payments into
court in settlement of a money claim. The
money claim may be all or part of the claim.
The Defendant, if he wishes to avail himself
of the Part 36 process, must actually pay the
money into court in settlement of the money
claim - it is not sufficient merely to offer to
pay a sum in compromise of the money
claim.
Particulars of case
Term used in CPR. They may be included
in the claim form or may be serve
separately when starting proceedings. Part
16 of the CPR sets out what the particulars
of case must include.
Patent Co-operation Treaty
See entry under `PCT' below.
PCC
Patents County Court.
PCT
Patent Co-operation Treaty. This is
administered by the World Intellectual
Property Organisation (WIPO), a UN
organisation based in Geneva. The Treaty
has at present 100 Contracting States.
PCT application or filing
An application filed under the PCT. By
means of one application it is possible to
obtain protection for an invention in any of
the Contracting States by designating that
state in the application.
PD
Practice Direction supplementing a Civil
Procedure Rule.
PDJ
Patents & Designs Journal.
Plaintiff
Under the Civil Procedure Rules now
known as `Claimant' - see entry above.
Pleadings
Under the Civil Procedure Rules now
known as `Statement of Case' - see entry
below.
PLT
Patent Law Treaty. A treaty to harmonise
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25 September 2001
formal requirements being negotiated under
WIPO auspices.
Practice form
Form to be used for a particular purpose in
court proceedings, the form and the purpose
being specified by a Civil Procedure Rules
Practice Direction.
Pre-action protocol
Statements of understanding between legal
practitioners and others about pre-action
practice and which are approved by a
relevant Civil Procedure Rules Practice
Direction.
Precedent
A previous decision or proceeding which
may be relied upon.
Preliminary hearing
A hearing appointed to decide a point of
procedure, usually in
inter partes
proceedings.
Pre-hearing review
See entry under `PTR' below.
Priority Date
The priority gained by virtue of Article 4 of
the Paris Convention. When applicants file
an application in any Convention country,
they can then file subsequent applications in
any of the other Convention countries
(including the country where first filed) and
claim the earlier date of the first filed
application providing the scope of the later
application is not wider than the original
and providing the later filed application is
made within 12 months of the original in
relation to patents and 6 months in relation
to registered designs.
Priority Document
A document which establishes a priority
date.
Prima facie
[Of first appearance; on the face of it] -
based on a first impression.
Privilege
The right of a party to refuse to disclose a
document or produce a document or to
refuse to answer questions on the ground of
some special interest recognised by law.
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Prohibition
In connection with judicial review, one of
the remedies available - to prevent some
allegedly unlawful/arbitrary action from
taking place.
PHR
Pre-hearing review. The purpose of this is
to ensure that all the issues raised at the
case management conference have been
dealt with and to give any final directions
considered necessary in relation to the
hearing.
Ratio decidendi
[The reason (or ground) for a judicial
decision]. Usually a statement of law
applied to the problems of a particular case.
In essence, the principle upon which a case
is decided.
RDAT
Registered Designs Appeal Tribunal.
Restoration
The proceedings by which a patent which
has lapsed through failure to pay renewal
fees may be restored.
Revocation
A request to have, for example, a patent
revoked (ended) because it is not valid.
Royalties
The name given to the payments made by a
licensee to the owner of a patent - the
licensor.
RPCs
Reports of Patent, Design and Trade Mark
Cases.
RSC
Rules of the Supreme Court. ("The White
Book").
Search Order
Previously known as an `Anton Pillar
Order' taking its name from the first case
that developed the concept (Anton Pillar V
Manufacturing Processes, 1975). Issued by
the High Court, the order allows premises to
be searched and infringing material seized.
Safeguards exist to prevent abuse.
Security for costs
Where a claimant neither resides nor carries
on business in a state that is party to the
Brussels Convention, the Comptroller can,
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25 September 2001
in many proceedings, require them to give
security for costs, for example, under
section 107(4) of the Patents Act 1977 and
rule 22(2) of the Design Right (Proceedings
before the Comptroller) Rules 1989, before
allowing the proceedings to continue.
SI
Statutory Instrument.
SPC
Supplementary Protection Certificate (for
medicinal and plant protection products).
The certificate is intended to compensate a
patentee for the loss of effective protection
arising out of the time taken to obtain
regulatory approval to place on the market
as either a medicinal or plant protection
product a product which is protected by a
patent (`the basic patent'). The basic patent
may protect the product as such, a process
to obtain the product or an application of
the product. A certificate takes effect at the
end of the lawful term of the basic patent
but does not extend the term of the patent
itself. It extends the protection conferred by
the patent in respect of the product covered
by the authorization to place the
corresponding medicinal or plant protection
product on the market, and any use of the
product as a medicinal or plant protection
product that has been authorized before
expiry of the certificate. Subject to the
payment of renewal fees, the term of a
certificate is equal to the period which
elapsed between the filing date of the patent
and the date of first authorization in the EC
reduced by a period of 5 years. The term of
a certificate may not exceed 5 years.
Statement
See entry under `Claim' above.
Statutory Declaration
A written declaration agreed in the presence
of a Justice of the Peace or a person who is
authorised to administer oaths, but not made
upon oath or affirmation. (Statutory
Declaration Act 1835).
Statement of Case
The statement and the counter-statement
filed in inter partes proceedings are each a
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25 September 2001
statement of case. Taken together, these
documents indicate the facts that are in
dispute between the parties and the relief
sought.
Statement of Truth
All statements of case, witness statements
and applications to the court must contain a
statement by the parties that they believe
the facts they have set out to be true
Stay
A stay imposes a halt on proceedings.
Within the courts, although proceedings
may be stayed, any steps allowed by the
Civil Procedure Rules or the terms of the
stay, may be taken. Proceedings may
continue once a stay is lifted.
Subpoena
A writ ie a document which requires a
person to do or to refrain from doing
something. The Comptroller does not have
authorisation to issue writs though under
Rule 103 of the Patents Rules 1995, the
Comptroller in relation to the giving of
evidence, the attendance of witnesses and
the disclosure and production of documents,
has all the powers of a High Court judge
other than to punish summarily for
contempt of court.
Substantive Hearing
The final hearing in
inter partes
proceedings following which the
Comptroller will issue a decision on the
main matter in dispute.
Supplementary Protection Certificate
See entry under `SPC' above.
Summons
See entry under `Claim form' above.
Tribunals
Bodies outside the hierarchy of the courts
with administrative or judicial functions.
The Patent Office is a Tribunal, monitored
by the Council on Tribunals established in
1958.
Third party terms
Conditions placed on the reinstatement of
an application or patent which are designed
to protect a third party who may have
started to work the invention.
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TRIPS
Trade Related Aspects of Intellectual
Property Matters. (Part of GATT - General
Agreement on Tariffs and Trade).
Ultra vires
[Beyond the powers]. Term relates
generally to the excess of legal powers or
authority.
Witness statement
A signed written statement equivalent to the
oral evidence which that witness would, if
called, give in evidence at the hearing.
Writ
See entry under `Claim form' above.
Names of Parties in inter partes proceedings
Pre-Civil Procedure Rules:
Type of Proceeding
Owner/patent
applicant
Third Party
Entitlement
Opponent
Referrer
a) Revocation
b) Declaration of Non-Infringement
c) Compulsory Licence
Proprietor
Applicant
Oppositions to amendments/corrections
Proprietor
Opponent
Compensation for Employee
Employer
Employee
Design Right Proceedings/ LOR
proceedings (s246 CDP ACT 1988)
Respondents
Applicants
Registered Design Right Proceedings
Proprietor
Applicant
Post-Civil Procedure Rules:
Type of Proceeding
Owner/patent
applicant
Third Party
All proceedings
Defendant
Claimant

 

 
25 September 200
After you have browsed our legal glossary, please feel free to learn the secrets of Freemasonry, from the mother of all Masonry talks. A former 32nd degree Mason explores the history, secrets, and political impact of the Masonic Lodge and then compares it to the Bible. He shows why the Bible condemns Masonry and gives indisputable reasons for leaving the Lodge. This history of the Craft is discussed and its long association with pagan fertility cults and the Illuminati is explored. Additionally, Bill explains and demonstrates many of the secret signs and tokens by which Masons can recognized one another and can manipulate the business and legal world to their advantage. 'Take heed that no man deceive you.'; Matt. 24:4.' Subject Classifications: HRB Christianity, HRBQ Christian theology, JBMV1 - Freemasonry, secret societies, HRBD - Roman Catholicism, GZC - Conspiracy theories...