Page 1195 - IOM Law Society Rules Book

PART 13: SPECIAL TYPES OF CLAIM

(iv) a summary by convenient periods of any expenditure on advertising
and promotion which supported the marketing of the articles or
products in (i) and (iii) above; or
(b) where the commercial success relates to the use of a process —

(i) an identification of the process which the patentee asserts has been
used in accordance with the claims of the patent;
(ii) a summary by convenient periods of the revenue received from the
use of such process;
(iii) a summary for the equivalent periods of the revenues, if any,
received from the use of any equivalent prior art process; and
(iv) a summary by convenient periods of any expenditure which
supported the use of the process in (i) and (iii) above.
5. Claim for infringement and challenge to validity (63.9, PD63.11)

(1) In a claim for infringement, the statement of case must —
(a) show which of the claims in the specification of the patent are alleged to be
infringed; and
(b) give at least one example of each type of infringement alleged;
and a copy of each document referred to in the statement of case, and where
necessary a translation of the document, must be served with the statement of
case.
(2) In a claim for infringement, the period for service of the defence or additional
claim is 42 days after service of the claim form.
(3) Where the validity of a patent or registered design is challenged —
(a) the statement of case must contain particulars of —
(i) the relief sought; and

(ii) the issues except those relating to validity of the patent or registered
design;
(b) the statement of case must have a separate document annexed to it headed
‘Grounds of Invalidity’ specifying the grounds on which validity of the patent
is challenged;

(c) a copy of each document referred to in the grounds of invalidity, and where
necessary a translation of the document, must be served with the grounds of
invalidity; and
(d) the Comptroller must be sent a copy of the grounds of invalidity, and where
the grounds of invalidity are amended, a copy of the amended document, at
the same time as the grounds of invalidity are served or amended.
(4) Where, in an application in which validity of a patent or a registered design is
challenged, the grounds of invalidity include an allegation —
(a) that the invention is not a patentable invention because it is not new or does
not involve an inventive step, the particulars must specify such details of the
matter in the state of art relied on, as set out in sub-paragraph (5);
(b) that the specification of the patent does not disclose the invention clearly
enough and completely enough for it to be performed by a person skilled in
the art, the particulars must state, if appropriate, which examples of the
invention cannot be made to work and in which respects they do not work or
do not work as described in the specification; or
(c) that the registered design is not new, the particulars must specify such details
of the matter in the state of art relied on, as set out in sub-paragraph (5).

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