Intellectual property such as trade marks and patents can be important assets to a business. In instances where negotiation or arbitration or mediation are not appropriate a company may need to consider opening litigation proceedings.
As far as intellectual property cases are concerned there can be a perception that such proceedings in the UK are lengthy and costly affairs compared to other jurisdictions, such as Germany. However, there are options available to claimants that can provide litigation that is both quicker and cheaper than may generally be understood. In particular, claimants may take advantage of the streamlined procedures on offer in the Intellectual Property Enterprise Court.
A claimant in the UK has a number of options available when considering litigation proceedings. This is because the UK has a number of specialised IP courts. In England and Wales there is a specialist branch of the High Court (the “Patents Court”) and also the Intellectual Property Enterprise Court (the IPEC, formerly known as the “Patents County Court”). For cases with a Scottish dimension it is also possible to bring proceedings in the Court of Session in Edinburgh. This article will look at the IPEC and proceedings in Scotland will be the subject of another post. (*)The High Court and the IPEC can both handle a range of IP disputes. Both courts are in front of specialist, technically qualified judges (no juries). In both venues, patent infringement matters and patent validity matters are heard together (i.e. the proceedings are not bifurcated as they are in Germany). Appeal from both the High Court and the IPEC is to the Court of Appeal. There are however differences in the procedures in the two venues in terms of costs, damages and length of trial.
The Intellectual Property Enterprise Court was formed in October 2013. Previously it was known as the Patents County Court. The IPEC has jurisdiction to hear trade mark, design, copyright and patent disputes. It is designed to have a more streamlined procedure than the High Court such that it provides a less expensive option for IP disputes.
Damages at the IPEC are capped at £500,000 and there is a cap on recovering costs from the losing party which is set at £50,000. Compared to the Patents Court there are limitations on the extent of discovery, cross examination and citation of evidence.
Trials at the IPEC are constrained in length and last 1 or 2 days. As a result the procedure at the IPEC tends to be front loaded in writing compared to the High Court. Time to trial in the IPEC is around 12 months and the streamlined procedure means that the cost of bringing a case within the IPEC is in the region of £50,000 to £150,000 (compared to £250,000 to £1,000,000 in the High Court).
In the High Court a case is run by a solicitor who instructs a barrister for the court hearing. In comparison, UK patent attorneys have representation rights at the IPEC meaning that they can conduct litigation before this court which may lead to further cost savings.
Mark Richardson 6 April 2016
(*) It is also noted that it is possible to bring limited proceedings before the UK Intellectual Property Office. However, in the context of patent cases, the UKIPO usually only hears validity issues and has no jurisdiction to hear matters such as breach of contract. Furthermore, UKIPO decisions are appealed to the High Court which may negate any perceived benefits of using the UKIPO in terms of cost and complexity of proceedings.