# The Rules of the Supreme Court (Amendment) 1995, Article 48: Patents proceedings


For Order 104, rule 11 there shall be substituted the following—
“11 (1) Order 24, rules 1 and 2 shall apply in an action for infringement of a patent or a declaration of non-infringement of a patent or any proceedings where the validity of a patent is in issue, except that—
(a) the list of documents must be served by each party within 21 days after service of the notice of admissions under rule 10(2), or within 21 days after the close of pleadings; and
(b) documents from the exempt classes shall not be listed.
(2) For the purposes of paragraph (1)(b), the exempt classes are—
(a) documents relating to the infringement of a patent by a product or process if, before serving a list of documents, the party against whom the allegation of infringement is made has served on the other parties full particulars of the product or process alleged to infringe, including if necessary drawings or other illustrations;
(b) documents relating to any ground on which the validity of a patent is put in issue, except documents which came into existence within the period beginning two years before the earliest claimed priority date and ending two years after that date; and
(c) documents relating to the issue of commercial success.
(3) Where the issue of commercial success arises in any proceedings specified in paragraph (1), the patentee shall, within the time limit specified in paragraph (1)(a), serve a schedule containing the following details—
(a) where the commercial success relates to an article or product—
(i) an identification of the article or product (for example by product code number) which the patentee asserts has been made in accordance with the claims of the patent;
(ii) a summary by convenient periods of sales of any such article or product;
(iii) a summary for the equivalent periods of sales, if any, of any equivalent prior art article or product marketed before the article or product mentioned in sub-paragraph (i); and
(iv) a summary by convenient periods of any expenditure on advertising and promotion which supported the marketing of the articles or products mentioned in sub-paragraphs (i) and (iii),
(b) where the commercial success relates to the use of a process—
(i) an identification of the process the patentee asserts has been used in accordance with the claims of the patent;
(ii) a summary by convenient periods of the revenues 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 mentioned in sub-paragraphs (i) and (iii).
(4) Notwithstanding paragraphs (1) and (2), any party may apply under Order 24 for further and better discovery or specific discovery of any document in an exempt class, but the Court shall only order such discovery if it is satisfied that justice is unlikely to be done unless the discovery is ordered.
(5) Paragraphs (1) and (2) shall not create any privilege in a document in an exempt class.
(6) If, notwithstanding paragraphs (1) and (2), a party produces for inspection a document from an exempt class, that party shall, if so requested in writing by any other party, serve on the requesting party, within 14 days of such a request, a supplementary list of all the other documents within the same class as the document so produced, unless the Court otherwise orders.
(7) This rule is without prejudice to the Court’s power to limit discovery on any other ground.”.

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Source: https://www.legislation.gov.uk/uksi/1995/2206/article/48 (the official version)
Page: https://openlegislation.uk/rules-of-the-supreme-court-amendment-1995/article-48
Contains public sector information licensed under the Open Government Licence v3.0. Source: legislation.gov.uk, The National Archives.