NIPC Law

Rolls Building Author  Boggling2019   Licence  CC BY-SA 4.0   Source  Wikimedia Commins Jane Lambert On 1 Oct 2010, the Patents County Court was overhauled by a new set of rules and practice directions which I discussed in New Patents County Court Rules   on 31 Oct 2010.  One of the main planks of the new rules was that the costs that could be recovered in an action before that court were to be limited to £50,000 for the trial and £25,000 for an account of profits and an inquiry.  The costs for steps in the litigation were also capped by a scale that I mentioned in my article. The Patents County Court was abolished by the Courts and Crime Act 2013 and replaced by the Intellectual Property Enterprise Court ("IPEC") (see Jane Lambert  What does the Intellectual Property Enterprise Court mean for Litigants in the North West?   12 Oct 2013 IP Northwest ). The new court inherited the rules and practices of the Patents County Court including ...

Manchester Civil Justice Centre Photo Michaelmazr   Licence CC BY-SA 4.0   S ource Wikimedia Commons   Jane Lambert Since the 1 Oct 2010, intellectual property claims of £500,000 or less that can be tried in no more than 2 days have been eligible to proceed in what was previously the Patents County Court and is now the Intellectual Property Enterprise Court ("IPEC)  (see New Patents County Court Rules   31 Oct 2010). The advantages of litigating in IPEC are that parties know from an early stage precisely when their trial will take place and judgment be delivered and their maximum liability for the other side's costs. The timetable is strictly enforced and the work that has to be done on case preparation is controlled. Shorter Trials Scheme Some of those advantages are now available for claims for more than £500,000 in the Business and Property Courts that have been issued on or after 1 Oct 2015 and can be tried in 4 days or less under a regime known as "the Shor...

Author Aurelien Guichard   Licence  CC BY-SA 2.0   Source Wikimedia   Jane Lambert Intellectual Property Enterproise Court (HH Judge Hacon)  NAH Holdings Ltd and another KBF Enterprises Ltd and another [2022] EWHC 323 (IPEC) (16 Feb 2022) The latest definition of a trade mark is  "any sign which is capable-  (a) of being represented in the register in a manner which enables the registrar and other competent authorities and thepublic to determine the clear and precise subject matter of the protection afforded to the proprietor,and  (b) of distinguishing goods or services of one undertaking from those of other undertakings" (see s.1 (1) of the Trade Marks Act 1994  as amended).  One of the grounds for refusing registration of a sign as a trade mark is that it does not satisfy the requirements of that section. Unsurprisingly there are very few cases on that point but one in which it was raised was  NAH Holdings Ltd and another v KBF...

Author Thewub   Licence CC BY-SA 4.0   Source Wikimedia Commons   Jane Lambert Patents Court (Mr Justice Mellor) Anan Kasei Co. Ltd and another v Neo Chemicals & Oxides (Europe) Ltd and others [2021] EWHC 1972 (Pat) (13 July 2021) Much of the expense of civil litigation in England and Wales arises from disclosure and inspection of documents.  "Disclosure" means stating whether a document exists or has existed.  With a number of exceptions.  CPR 31.3 (1) entitles a party to whom a document has been disclosed to inspect that document. Unless the court orders otherwise, each party must disclose the documents on which it relies and the documents that adversely affect its own case, adversely affect or support another party’s case or documents that are required to be disclosed by a relevant practice direction (see  CPR 31.5 (1) (b) and CPR 31.6 ).  "Document" for these purposes means "anything in which information of any descript...

Manchester Civil Justice Centre Author Skip88  Reproduced with kind permission of the author Wikipedia   Jane Lambert The Practice Direction - Pre-Action Conduct and Protocol s has been updated with effect from 9 Oct 2019.  It was last updated on 29 April 2015 and I wrote about the changes in What to do about the new Practice Direction - Pre-Action Conduct on 6 May 2015.   I explained the importance of the Practice Direction in Pre-Action Correspondence - Not Just a Box to be ticked or a Hoop to be jumped through   2 Aug 2017. The updated Practice Direction contains the following paragraphs: Title Number Introduction Para. 1 Objectives of pre-action conduct and protocols Para. 3 Proportionality Para. 4 Steps before issuing a claim at court Para. 6 Experts Para. 7 Settlement and ADR Para. 8 Stocktake and list of issues Para. 12 Compliance with this practice direction and the protocols Para. 13 Limitation Para. 17 Prot...

Interior of the Royal Courts of Justice Author Aurelien Guichard Licence Creative Commons Attribution Share Alike 2.0 Generic Source Wikipedi a Jane Lambert Just over 6 years ago the Patents County Court Small Claims Track was launched (see my article Soon there will be a Remedy if Someone steals your Idea   19 Sept 2012 NIPC Inventors Club). I was very enthusiastic about the new court and wrote a lot about it as you can see from the bibliography in Small IP Claims   31 Jan 2017 NIPC News).  The reason for my enthusiasm was that it seemed to make IP litigation affordable for thousands of start-ups and other small businesses that felt that the law provided no effective protection for their investments in branding, design, technology and creativity  because enforcement  of their rights was too expensive and too uncertain.  Before the Civil Procedure Rules came into force in 1999 claims often began with an application for inter...

Manchester Civil Justice Centre Author Skip88 Licence  Copyright waived by the author Source  Wikipedia Jane Lambert According to TaylorWessing's Patent Map , England and Wales remains the most expensive country in Europe in which to contest a patent action. The European Patent Office reports that the UK lay 9th in the number of European patent applications that were filed in 2017 trailing not just the USA, Japan, China and Germany which are considerably bigger in population and GDP than the UK but France, South Korea, Switzerland and the Netherlands that are the same size or smaller (see  European patent filings per country of origin ). It seems likely that the UK's relatively lacklustre performance in the number of European patent applications is connected to the high cost of enforcement.  I have plenty of anecdotal evidence from my practice, patent clinics and inventors' clubs to support that contention. One of the reason...