Answer ... Invalidity may be relied by way of:
- a counterclaim in an infringement action; or
- an application for revocation.
Infringement proceedings are commenced by issuing summons accompanied by a statement of particulars. The statement of particulars is in the form of a pleading setting out the material facts upon which the plaintiff relies.
The defendant is allowed 10 days in which to deliver a notice of intention to defend.
Thereafter, a defendant shall deliver a plea with or without a claim in reconvention (a counterclaim) within 20 days. A defendant may counterclaim for revocation of a patent and by way of a defence rely upon any ground on which a patent can be revoked.
Within 15 days of service of the plea and counterclaim, the plaintiff, where necessary, shall deliver a replication to the plea as well as a plea to any counterclaim. No replication which will be a mere joinder of issue or bare denial of allegations in the previous pleading is necessary; and at that stage, pleadings are deemed to be closed.
Once pleadings are closed, the parties request discovery. The party required to make discovery shall:
- file a discovery affidavit specifying such documents and tape recordings in its possession; and
- specify such documents and tape recordings in respect of which the party has valid objections to produce.
The main procedural step prior to the hearing is the filing of a summary of the expert’s opinion and the reasons therefor.
An application for revocation is made on a prescribed form and is accompanied by a statement of particulars of the grounds on which the application is based. Within two months of the lodging and service of the application for revocation, the patent holder shall lodge and serve a counterstatement in the form of a plea.
Within two months of the lodging and service of the counterstatement, the applicant shall file and serve its evidence in the form of affidavits. The patent holder may file and serve its answering evidence in the form of an affidavit within two months· of the filing and service of the applicant’s evidence. Thereafter, within two months, the applicant may file and serve replying evidence, in the form of an affidavit, confined to matters strictly in reply.
No further evidence shall be filed by either party, except by leave or direction of the commissioner. All evidence shall be by affidavit unless otherwise directed by the commissioner. If a dispute of fact arises, a party to the proceedings may apply to have one or more issues referred to oral evidence.
Upon completion of the evidence, the applicant – or, if it fails to do so within six weeks of such completion, the opponent – may request a date for the hearing.