Faster, cheaper IP litigation?

From 1 October 2010, a new procedure becomes available in the English Patents County Court (‘PCC’). It is intended to permit more efficient and cost-effective IP litigation and (despite its name) to promote the PCC as a viable alternative to the High Court for disputes concerning all types of IP, including patents, trade marks, copyright and designs.

The PCC already has equivalent powers to the High Court, including the ability to grant injunctions and to award unlimited damages. The PCC is also designated as a Community Trade Mark court, meaning that brand owners can use it to protect their UK and Community trade marks in the same claim.

The key features of the new procedure are:

Streamlined procedure and case management

• Claims will (where possible) be determined on the basis of the parties’ statements of case, e.g. the claim form/defence, plus the advocate’s oral submissions only. Witness cross-examination (if any) will be strictly controlled
• There will be no automatic standard disclosure – specific disclosure is available but only where the exercise is warranted
• The case timetable and progress will be closely regulated
• Trial should not last more than 2 days

Limited costs recovery

• Parties will be able to recover a maximum of £50,000 for costs relating to liability. These will be awarded on a scale for each procedural stage in the claim – for example, up to £6,125 for the particulars of claim. Costs for an enquiry as to damages or an account of profits will be limited to £25,000. Limited costs recovery may make the PCC less appropriate for large scale IP disputes.

Colin Birss QC, a specialist IP barrister at 3 New Square chambers, is the PCC’s new judge and has been appointed to oversee this robust procedure.

The costs of UK litigation can force businesses to make a difficult decision between bottom line expenditure and the value of protecting their IP assets. This new procedure presents a significant opportunity for rights owners to bring less complex IP cases to trial more quickly and cheaply than in the High Court. Although actual costs may exceed the costs caps, the streamlined procedure should allow significant savings over High Court litigation.

Some of our clients have already expressed a keen interest in the new procedure and we are discussing a number of claims which may be appropriate to bring in the PCC. If you would like to know more about this procedure and how it may help you in protecting your IP, please contact us.

Lawyers Jason Rawkins, Damian Simpson