IPEC and the Shorter Trials Scheme Compared

Manchester Civil Justice Centre

 










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 Shorter Trials Scheme".  Cases in that scheme are managed by a designated judge who determines the issues to be tried and fixes a trial date or window that should be no more than 8 months from the date of the first case management conference.  The main differences between the Shorter Trials Scheme and IPEC are that cases in the Shorter Trials Scheme are not limited to intellectual property and there are no costs caps or fixed costs in that Scheme. 

Business and Property Courts

The Business and Property Courts are the Chancery Division, the Commercial Court, the Technology and Construction Court, the Circuit Commercial Court and the Admiralty Court that sit in the Rolls Building in London and the Chancery Division, the Technology and Construction Court and the Circuit Commercial Courts in the Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle District Registries.  I discussed the Business and Property Courts in Manchester in Launch of a Judicial Super Highway? on 12 July 2017 in IP Northwest, Leeds in The Leeds Business and Property Courts on 12 July 2017 in IP Yorkshire and Bristol and Cardiff in Better than the M4 - "The Judicial Superhighway on 2 Oct 2017 in UP Severn/Hafren.  IPEC is one of the Business and Property Courts but it does not participate in the Shorter Trials Scheme for reasons that should become obvious.

Relevant Rules

The Shorter Trials Scheme is governed by the Practice Direction 57AB - Shorter and Flexible Trials ("PD Part 57AB).    The practice in IPEC  is ser out in Section V of CPR Part 63 - Intellectual Property Claims, Section V of Practice Direction 63 - Intellectual Property (PD Part 63) and the IPEC Guide.   CPR45.31 (1) limits the costs that may be recovered on the final determination in relation to liability to £50,000. The same provision limits the costs that can be recovered on an account or inquiry to £25,000.  Section 1V of Practice Direction 45 - Fixed Costs limits the costs that can be recovered at each stage of the proceedings.

Pre-Action Conduct

Unless there is a good reason for not doing so, para 2.17 of PD57AC requires intending claimants to send a letter of claim to prospective defendants.   The letter should contain succinct but sufficient details of the claim to enable the latter to understand and investigate the allegations against him or her. Para 2.18 requires the letter to state the intention to adopt the Shorter Trials Scheme procedure. Defendants are required by 2.19 to respond within 14 days as to whether or not they agree to the proposed procedure or require more information to decide either way.  This procedure is to be substituted for any applicable pre-action protocols.

By contrast, CPR63.20 (2) only requires claimants who have already brought proceedings in IPEC to state in their particulars of claim whether they had complied with para 6 of the Practice Direction (Pre-Action Conduct).  Para 6 provides for the exchange of pre-action correspondence.  The reason for the requirement is that if a claimant has complied with that paragraph a defendant has 42 days in which to serve a defence under CPR 63.22 (2) but if the claimant did not comply with para 6 the defendant has 70 days under CPR 63.22 (3).

Starting Proceedings

A claimant has the first choice as to whether a case should or should not be brought in IPEC or the Small Claims Scheme.   However,  his or her choice can be challenged by defendants. Para 3.2 of the IPEC Guide provides:

"A defendant sued in the general Chancery Division is entitled to apply to have the case transferred to the IPEC, and vice versa. This should be raised in correspondence first. If the parties agree that the case should be transferred, it still requires the approval of a judge in the court in which the case is currently listed but it is likely to happen. If there is no agreement, an application to transfer must be made. This should be done, at the latest, at the case management conference. "

Para 2.30 (a) of PD Part 57A  requires a defendant to include in his or her defence a statement indicating whether it is agreed that the case is appropriate for the Shorter Trials Scheme and, if not, why not. If the suitability of the Shorter Trials Scheme procedure is disputed, para 2.35 provides for that issue to be determined at the first CMC, if not before, and for further directions to be given in the light of that determination. Para 2.9 permits applications for transfer out to be made on paper prior to the CMC if appropriate. 

If a claimant chooses not to bring a case in IPEC, a defendant can ask a judge of the Chancery Division or County Court to order a transfer to that court under CPR 63.18 (1).  Similarly, if the claimant decides not to bring a case within the Shorter Trial Scheme, a defendant may apply to a judge (or, in the Chancery Division, master or district judge) to order a transfer under para 2.11 of PD Part 57AB,  Para 2.12 adds that an application for transfer should be made promptly and normally not later than the first CMC. The court may, of its own initiative, suggest that a case be transferred into the Shorter Trials Scheme pursuant to para 2.13. In deciding whether to transfer a case into or out of the Shorter Trials Scheme, the court will have regard to the type of case the Scheme is for, the suitability of the case to be a part of the Scheme and the wishes of the parties.

Statements of Case

The rules on statements of case (or pleadings) for the two regimes are very different.

CPR 63.20 (1) requires a statement of case for IPEC to set out concisely all the facts and arguments upon which the party serving it relies as well as comply with all the other requirements of CPR Part 16.  Consequently, CPR 63.21 modifies CPR Part 22 by requiring the statement of truth to be signed by a person with knowledge of the facts alleged, or if no one person has knowledge of all the facts, by persons who between them have knowledge of all the facts alleged.   That is because the court will determine the claim solely on the basis of the parties’ statements of case and oral submissions where possibly in accordance with para 31.1 of PD Part 63.

In the Shorter Trials Scheme, para 2.20 of PD Part 57AB requires particulars of claim to be served with the claim form.  The particulars must include a brief summary of the dispute, identify the anticipated issues and state all relief or remedies claimed with detailed calculations of any sums claimed pursuant to para 2.21.  They must also be accompanied by a bundle of core documents (para 2.22).   In addition to a statement as to whether or not it is agreed that the case is suitable for the Shorter Trials Scheme which I mentioned above, para 2.30 requires a defence to include a summary of the dispute and identification of the anticipated issues (if different to that of the claimant).  It should also be accompanied by a bundle of any additional core documents on which the defendant intends to rely.

Case Management

A claimant has a duty to call a CMC at an early stage in both regimes.   If the case is in IPRC para 6.3 of PD Part 63 obliges him or her to call it within 14 days of the date when all defendants who intend to file and serve a defence have done so.   If it is in the Shorter Trials Scheme, the claimant must promptly after serving the claim form and particulars of claim, take steps to fix a CMC for a date approximately (but not less than) 12 weeks after the defendant is due to acknowledge service of the claim form.

The matters to be determined at the first CMC are very similar in both regimes.   Annexe B of the IPEC Guide contains a specimen order.  The court fixes a date for trial and determines the issues to be tried. It directs the disclosure to be made and the evidence to be served in accordance with a strict timetable.  Similarly, para 2.38 of PD Part 57AB states that at the CMC in the Shorter Trial Scheme the court will:

"(a) review the issues;
(b) approve a list of issues;
(c) consider ADR;
(d) give directions for trial;
(e) (if it has not already been done before the CMC,) fix a trial date (or window), which should be no more than 8 months after the CMC and with a trial length of not more than 4 days (including reading time);
(f) fix a date for a Pre-Trial Review."

Costs

Unlike proceedings in IPEC, there are no costs limits or fixed costs in the Shorter Trials Scheme.  The costs management provisions of CPR 3.12 do not apply unless the parties choose otherwise.  Instead, para 2.57 of PD Part 57A requires the parties to exchange schedules of costs within 21 days of the conclusion of the trial to which the judge will refer to make a summary assessment in the successful party's favour under para 2.59.

Appeals

Para 2.60 of PD Part 57AN warns that the Court of Appeal will seek to take into account the fact that a case was in the Shorter Trials Scheme and the desire for expedition in deciding when applications for permission to appeal will be considered and when appeals will be listed.

Further Information

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form at any other time.

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