In Europe, most patent and trademark attorneys will provide the name and address of their firm as the agent for service during the process of obtaining registered intellectual property rights for their clients. Squire Sanders partner has acted as both solicitor and advocate in a recent case that dealt with service on a defendant’s patent attorney whose address had been recorded in OHIM’s register of Community registered designs.
In Bullitt Mobile Limited v Sonim Technologies [2013] EWHC 3367 (IPEC), Mr. Justice Birss considered the effect of Civil Procedure Rule 63.14(2)(b) which governs the service of claim forms in proceedings started in the UK Patents Court, the Chancery Division or the Intellectual Property & Enterprise Court.
It is clear from the ruling that CPR 63.14(2) has a material hole within it: service on a defendant via his patent attorney, whose address in England or Wales has been stated in OHIM’s registers of Community registered designs or Community trademarks, can be successfully challenged. This hole is only likely to be relevant, however, where the defendant does not have a seat, branch office or establishment in the UK or in the European Community, where he could be personally served under other provisions of CPR part 6.
It may therefore be highly relevant for clients based in Asia or the Americas, who file in Europe but do not actually have a physical or legal presence in Europe themselves. Birss J has, in short, provided yet another good reason for using a patent attorney based in England or Wales.
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