The Patents County Court Small Claims Track

Jane LambertSheffield Inventors Group

1 Oct 2012

Why am I giving this talk now?

• The Civil Procedure (Amendment No. 2) Rules 2012 come into force today.

• Rule 10 of those Rules introduces a new rule 63.27 and 63.28 into the Civil Procedure Rules.

• Those new rules allow claims for injunctions and damages up to £5,000 to be brought in the Patents County Court with very little risk as to costs.

• For the first time individuals and small businesses have a cost-effective remedy for infringement of their intellectual property rights.

Why is this important?

• Protecting research and development encourages economic activity.

• The UK lags behind many of its competitors in the number of applications for European patents and Community trade marks and designs.

• One obvious reason is that the cost of enforcement in England and Wales has been higher than in almost any other developed country.

• Both Gowers and Hargreaves recommended a low cost forum for the settlement of IP disputes in their reports on Intellectual Property as did Sir Rupert Jackson in his review of the costs of civil litigation.

New Patents County Court Rules

• On 1 Oct 2010 Colin Birss QC was appointed as the Judge of the Patents County Court.

• New rules were introduced that limit trials to 2 days and costs to a fixed scale.

• Total costs are limited to £50,000 for determination of whether an intellectual property right has been infringed and £25,000 as to the amount of damages or profits.

• However, even these costs are too high for many businesses and individuals.

Small Claims Track

• Claims for the infringement of any IPR other than patents, registered designs, registered Community designs, semiconductor topographies and plant breeders’ rights may be brought in the small claims track.

• Claims for breach of non-disclosure agreements and infringement of design rights, copyright and trade marks can be brought in this track.

• Claims for monetary relief ate limited to £5,000 (soon to increase to £15,000) but injunctions and orders for delivery up are available.

• Procedure simplified and recoverable costs are limited to £260 plus issue fees and loss of earnings and travelling expenses of parties and witnesses.

How to make a small claim.

• Procedure designed to help parties represent themselves without the need for a lawyer or a patent or TM attorney.

• Complainant must write a letter before claim in accordance with Practice Direction – Pre-Action Conduct.

• If parties cannot reach a settlement in correspondence, complainant (“claimant”) must issue a claims form out of the Public Counter of the Rolls Buildings in London for which there will be a fee of between £35 and £120.

• Claim form must be accompanied by particulars of claim and a response pack.

Particulars of Claim

• Statement of the facts and a summary of the legal arguments relied upon.

• Statement whether the claimant has written a letter before claim in accordance with the Practice Direction – Pre-Action Conduct.

• A request for the action to proceed in the small claims track.

• A prayer for the relief sought, such as an injunction, delivery up, damages limited to £5,000, interest and costs.

What to do if you are a defendant

• Take legal advice from a specialist barrister or solicitor or from a patent or trade mark agent with experience of litigation in the Patents County Court.

• Write a letter of response in accordance with Practice Direction – Pre-Action Conduct either admitting claim and offering amends or setting out reasons for resisting claim with suggestions for resolving dispute.

• Consider IPO’s or NIPC Ltd.’s dispute resolution services.

• If a claim is issued acknowledge service and file a defence or defence and counterclaim within 42 days (or 70 if PD - Pre-Action Conduct) stating whether the case should proceed in the small claims track.

What happens next

• If both parties agree to the case’s proceeding in the small claims track, the court will give directions and fix a date for trial.

• If a party objects he or she must complete an allocation questionnaire to enable the court may determine the track or fix a preliminary hearing.

• A preliminary hearing can also be held if one party wants unusual directions such as disclosure of documents or expert evidence.

• Trials will take place in the Thomas Moore Building in the Royal Courts of Justice.

Final Hearings• Conducted by District Judge or Deputy District Judges

• Court may adopt any procedure that it thinks just.

• Strict rules of evidence do not apply.

• Testimony not necessarily taken on oath.

• Cross-examination may be limited.

• Lay representatives may be heard.

• Dispute may be resolved on paper if all the parties agree.

Appeals

• Appeals lie to the judge of the Patents County Court.

• Permission to appeal must be sought from the District or Deputy District Judge or the Judge of the Patents County Court.

Useful Information

• The Patents County Court Guide and the Guide to the Small Claims Track of the Patents County Court can be downloaded from http://www.justice.gov.uk/courts/rcj-rolls-building/patents-county-court

• Clerk to Judge Birss QC: Christy Irvine at The Rolls Building, 7 Rolls Building, Fetter Lane, London, EC4A 1NL

• http://nipclaw.blogspot.co.uk/

What about Patents?

• Patents, registered design, registered Community design, semiconductor topography and plant breeders rights claims have to be brought in the multitrack but there is nothing to prevent the court from disposing of such claims in the same way (see Sullivan v Bristol Film Studios Ltd [2012] EWCA civ 570).

• Claimant must apply for a case management conference within 14 days of receiving the defence or defence and counterclaim.

• Judge will determine the issues and decide the directions necessary to resolve the dispute.

Alternatives to Litigation

• Proceedings that can be brought before the Comptroller or Registrar in the IPO include applications for declarations of non-infringement, revocation of a patent and invalidation of a patent or registered design.

• An examiner’s opinion can be sought as to whether a patent is valid or whether it has been infringed.

• Domain name dispute resolution procedures for generic, UK, EU and many other top level domains for a few hundred pounds.

Tips

• Take out insurance against the costs of IP litigation before a dispute arises.

• It may be possible to obtain after-the-event insurance or other third party funding later but it will be very expensive.

• Consider mediation or some other form of ADR early in the dispute.

• Seek specialist legal advice as early as possible.

Any Questions

Jane LambertNIPCThe Media Centre7 Northumberland StreetHuddersfieldHD1 1RLT 0800 862 0055www.nipclaw.com