Cost Effective and Quick Procedure for IP Dispute Resolution
The Intellectual Property Enterprise Court (IPEC) (previously called the Patents County Court) now sits as a specialist listing within the Chancery Division of the High Court. On 12 November 2013, a new judge was appointed, Richard Hacon.
As the December 2012 guide to the court explains, the court "aims to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, are not deterred from innovation by the potential cost of litigation to safeguard their rights". More recently, the Minister for Intellectual Property, Lord Younger, is quoted as saying that the IPEC is "a viable place for businesses of any size to protect their IP and ensure access to justice at a fair cost for all rights holders and other businesses".
As an alternative to litigation in the English Patents Court, or in other jurisdictions, the following are some key characteristics of the IPEC:
- Proceedings are streamlined to save costs. Early on in the proceedings, at the case management conference, the judge will consider whether there is any need for factual or expert witnesses, including cross-examination. In cases where there is to be cross-examination, it is to be confined to particular issues and to time limits. The aim is that the trial itself should last no more than 2 days. Many cases will be concluded within a single day;
- The IPEC Judge has power to grant injunctions and revoke invalid patents;
- A first instance decision in infringement or revocation (nullity) proceedings can be obtained quickly and usually within 12 months, sometimes quicker;
- A first instance finding on inventive step/obviousness will often be difficult to reverse on appeal; the appeal court would need to establish that the IPEC Judge had made an "error of principle"- the appeal is not a re-hearing;
- Proceedings for revocation (nullity) of a European patent (UK) can be brought notwithstanding the fact that the opposition period in the EPO has not expired or there is a pending opposition in the EPO; it is a matter of the court's discretion, depending on the facts of the case, whether or not the national revocation proceedings should continue in parallel with any opposition proceedings;
- The IPEC judge can grant declarations of non-infringement even in circumstances where the patentee has not asserted the patent;
- The unsuccessful parties' liability for the successful parties' costs is limited to £50,000.
- For infringement actions, damages are limited to £500,000.
- initial written statements of case need to set out concisely all facts and arguments relied upon. Unlike in typical Patents Court proceedings, usually individual claim elements are to be addressed at the outset.
It should be noted that the defendant in proceedings in the IPEC has the right to seek to apply to have the proceedings transferred to the Patents Court. In deciding whether or not it is appropriate to transfer, the court will consider a number of factors including the size of the parties, the complexity of the claim, the nature of the evidence, whether there is conflicting factual evidence and value of the claim. Expectations are therefore high that IPEC will in the months and years ahead continue to deliver SME's in particular with timely access to justice at affordable cost.
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