09 November 2010

Patents: Alk-Abello Ltd v Meridian Medical Technologies

One of my worries when the Intellectual Property Users Committee announced its Proposals for Reform of the Patents County Court was that the proposed costs cap on intellectual property litigation in the PCC would be scuppered by transfers to the High Court or routine arguments that a party had behaved badly. My fears have been allayed to a certain extent by Judge Birrs QC's pledge to make the new Rules and Practice Direction work. Thus it would enable the Patents County Court to achieve its objective of ensuring that
"small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights."
If that comes to pass, I am very glad to hear it. I have to add that I think the judge means what he says. I found myself up against Colin Birrs more than once when he was at the bar and I can say that he was always a fair, reasonable and not an unpleasant opponent.

Having said, the judge did kick this case before him upstairs even though he found it "entirely suitable to be tried in the Patents County Court from the point of view of the issues arising and the case management machinery necessary to deal with them." Now why did he do that? First, Alk-Abello Ltd v Meridian Medical Technologies and Another [2010] EWPCC 14 (9 Nov 2010) was not a battle between a start-up or private inventor and a multinational. Both were or were part of substantial undertakings. Further, in view of Judge Birrs QC's earlier decision in Technical Fibre Products Ltd and Another v Bell and Others [2010] EWPCC 011 (20 October 2010) that the cost capping rules do not apply retrospectively there would not have been a dramatic costs saving had the case stayed where it was. The applicant's solicitors promised to co-operate with the respondent's to fix and early trial in the Patents Court so there was no time saving in keeping the case in Fetter Lane. The decisive factor for His Honour was the commercial value of the claim. US$24 million on the applicant's evidence. It was in short too big for the County Court. It would take up space in a list that was to be used to resolve disputes involving SME.

His Honour also made a point about the prestige of the court:
"I understand that the Defendants, as American corporations, are concerned that their rights might be decided in a lesser court than the High Court. Perhaps the name "Patents County Court" has put them off. Many observers have suggested that the name should be changed. For a start the court is not concerned only with patents and never has been. It is a specialist IP court staffed by a specialist judge. The special jurisdiction of the court relates to patents and designs (s287(1) of the 1988 Act) and the court is competent to hear the full range of patent cases including cases concerning entitlement, infringement and validity. The court is a designated community designs court (Art 80(2) of Council Regulation 6/2002/EC and art. 2(1)(a)(ii) of the Community Designs (Designation of Community Designs Courts) Regulation 2005 (SI 2005/696)), and the court has jurisdiction in trade mark cases and is a designated community trade mark court (Art 91(1) of Council Regulation 40/94/EC (now Art 95(1) of Council Regulation 207/2009/EC by virtue of reg. 12(1)(a)(ii) of the Community Trade Mark Regulations 2006 (SI 2006/1027). The Patents County Court's jurisdiction in copyright and passing off is recognised in CPR 63.13(1)(a) and PD 63 para 16.1. Thus the report of the Intellectual Property Court Users' Committee Working Group on proposals for reform of the Patents County Court, which led to the new rules now in place, suggested it should be renamed the Intellectual Property County Court. The term "county court" is entirely accurate having regard to the way the English legal system is set up but it can also convey an inaccurate impression, particularly to observers from abroad. Although the legislation allows for the creation of multiple Patents County Courts, there is only a single one and it has a territorial jurisdiction the same as the High Court – the whole of England and Wales. The same remedies are available in each court. There is no reason whatsoever why litigants foreign or domestic should be put off from having their intellectual property rights determined in the Patents County Court."
I couldn't resist a smile at that remark. "Good old Colin!" I thought to myself. "We've got a good 'un on the bench."

Even though I once argued that this court should be abolished and its functions merged with the IPO tribunals ("Why not Abolish the Patents County Court?" 15 Jan 2010), I've always had a soft spot for it. I argued for it against Henry Carr QC (as he now is) as long ago as 1988 when I put the case for a PCC in Manchester, Liverpool and Leeds (if anything the case for provincial courts and maybe a Sheriff's Patent Court in Scotland and PCC in Belfast is stronger now). I supported it even when Judge Ford was being knocked back by the Court of Appeal once settling 4 out of the claims that had been issued out of it. And his successor Judge Fysh QC was lovely to me welcoming me back to his court in my first trial after my transition into womanhood - even though he went on to give judgment to my opponent.

So I think the new rules will work. All we want now is some more intellectual property litigation.

If anyone wants to discuss this case with me further, they can call me on 0800 862 0055 or contact me through this form.

3 comments:

Filemot said...

SO SO irritating that all we get is transfer arguments from the beginning and worse still that he hands it over. His reasoning seems to be that the parties are not both SMEs
I was surprised that Hogan Lovells started in the PCC - looks like it was for speed but they clearly did not resist much and cynically I wonder if they like a precedent that says the big court is better.

Jane Lambert said...

That was also my reaction until I read his judgment, particularly the bit about "the decisive factor". The ICUC Working Party proposed a £500,000 limit on PCC claims and that is the subject of a consultation before now (see http://www.ipo.gov.uk/pro-policy/consult/consult-live/consult-2010-pcc.htm).

I also though Colin stuck up for his court very well in the block of text that I quoted extensively.

Jane Lambert said...

P.S. I liked your point about why did Hogan Lovells start this claim in this court. It's not as if the Patents Court is overworked.

If we had a few more Patent County Courts - and I think we now have the best opportunity of getting one for the North since 1988 - we'd be able to develop some IP litigation expertise outside London.

And why aren't the Scottish solicitors and patent agent calling for a Patents Sheriff's Court. And why isn't Eddie calling for a PCC in Belfast?