14 January 2013

The New Patents Court and Patents County Court Guides

For several months the "Patents Court Guide" link on the Justice Ministry website led not to a guide to the  practice of the Patents Court but to a guide to the new practice in the Patents County Court. Between the 23 April 1999 and the 30 Sept 2010 that would not have mattered because the rules and practice directions for the Patents Court and the Patents County Court were essentially the same. Since the 1 Oct 2010 the practices of the Patents Court and Patents County Court have diverged once more and there is now a small claims track in the Patents County Court where the claim for pecuniary relief (damages or profits) is less than £5,000. For more information on those developments, read "The New County Court Rules" 31 Oct 2010 and "Patents County Court - The New Small Claims Track Rules" 30 Sept 2012.

We now have a plethora of new practice guides:
Not to be outdone, the Scots have also been busy with their Act of Sederunt (Rules of the Court of Session Amendment No. 5) (Miscellaneous) 2012 which seems to have borrowed extensively from CPR Part 63 and the Part 63 Practice Direction (see Chapter 55 of the Court of Session Rules for the consolidated practice).  The Patents County Court Small Claims Track Guide was published in October and I mentioned it briefly in "Patents County Court: More on the Small Claims Track" on 13 Oct 2012 but the other two guides appeared just before Christmas.

This multiplicity of court guides may be confusing for those who do not specialize in intellectual property litigation so here are 10 short tips to commercial litigators who find themselves with an intellectual property case and also perhaps for intellectual property practitioners who try to steer clear of litigation.

  1. Intellectual property litigation is a little bit different from other types of civil litigation and it has its own rules and practices which are to be found in Part 63 of the Civil Procedure Rules and the Part 63 Practice Direction.
  2. The cases that are governed by those rules are those that fall within CPR 63.2 or para 16.1 of the Part 63 Practice Direction.
  3. A distinction is to be drawn between cases in the first category (essentially patents and registered designs which are sometimes called "hard IP") and everything else which is disparagingly called "soft IP".
  4. One consequence of the distinction between hard and soft IP is that cases in the High Court that fall within the first category are assigned to the Patents Court while everything else proceeds in the Chancery Division. Another consequence is that cases in the second category are eligible for the small claims track but cases in the first category are not.
  5. The Patents Court is the collective name of a group of Chancery judges (also referred to occasionally as "the assigned judges") who hear cases in the first category. The judge in charge of that list is Mr. Justice Floyd.   He and Mr. Justice Arnold hear cases that are thought to have technical difficulty because both of those judges specialized in intellectual property law before their elevation to the bench. They are assisted by a number of other judges who practised in other fields before their appointment. The Patents Court is part of the Chancery Division.
  6. The Patents County Court is theoretically part of the Central London County Court but it was detached from the rest of the court by HH Judge Fysh QC some years ago and now reposes in the Rolls Building which also houses the Patents Court and the rest of the Chancery Division.   It has one judge, HH Judge Birss QC and a number of district judges who hear cases in the small claims track.  It is likely to change its name to "the Intellectual Property County Court" in the not too distant future.
  7. It was once possible to issue claims that fall within para 16.1 in the Part 63 Practice Direction out of the Manchester, Liverpool, Leeds, Newcastle, Preston, Bristol, Birmingham, Cardiff, Caernarfon or Mold District Registries and County Courts and theoretically, it still is.   However, there is now very little point in doing so as the Patents County Court has rules specially designed for IP litigation, a specialist judge and controls on the time that can be spent and the costs that can be incurred whereas these other courts do not.
  8. Both the Patents Court and the Patents County Court Guides say that the judges are ready and willing to sit outside London but that has hardly ever happened.  There are a number of reasons for that which I don't really want to go into because it would upset a lot of people but here is what happened the other day. I represented a client from Liverpool while the other side was represented by solicitors in Leeds. As we had the burden of proof I wanted to make it as easy as possible for out witnesses to testify so I asked for a trial in the North, preferably in Liverpool or Manchester. The other side said that their witnesses came from Leeds and London and that a trial anywhere but Leeds would be at least as much trouble and just as expensive for them as a trial in London.   The judge was sceptical.   He said that he would not order a trial outside London without the agreement of all the parties.   As Leeds is a lot cheaper and easier to reach than London I agreed to Leeds which was the other side's home turf and also, incidentally, mine.   The judge remarked that it was one thing to order a trial in Leeds but quite another thing for it to happen and that everything would depend on court avaiolability.   As soon as the case management conference was over our side called Leeds Chancery listing and booked a court room.  Once they knew that they would not have to provide a judge and that the case would still be managed from London the Leeds District Registry could not have been more helpful.
  9. The case management conference is very important in both the Patents Court and Patents County Court.   It is taken by a judge and not a district judge or master.   Decisions are taken at the CMC which will affect the subsequent course of the litigation.   You should prepare for it thoroughly and field your best team for the hearing.
  10. Although the cost of IP litigation has come down dramatically in recent years it is still not cheap.  It is always worth considering alternatives such as examiners' opinions on whether a patent is valid and whether it has been infringed, the ICANN Uniform Domain Name Dispute Resolution Policy and Nominet's Dispute Resolution Service for domain name disputes and the Intellectual Property Office's mediation service.
Should amplification or clarification be required on any of those points, please do not hesitate to call me on 0161 850 0080 or send me a message through my contact form. You can also follow me on Facebook, Linkedin, twitter and Xing.

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