Monday, 30 August 2010

New Procedure for the Patents County Court

This guest post, authored by Paul Cole*, brings welcome news of some long-awaited reforms in the operation of the Patents County Court for England and Wales (on which see earlier PatLit posts here, here and here). Paul places the new developments within their historical context and explains their significance:


The Patents County Court (PCC), which aims to provide an inexpensive forum for resolution if IP disputes involving SMEs, has had a chequered history.

In its first incarnation under the guidance of Judge Peter Ford its rules aimed to provide a more compact and effective procedure than the High Court, but in high profile cases such as Pavel v Sony control over costs was not achieved, and a number of its decisions were reversed by the Court of Appeal. In a second incarnation under the guidance of Michael Fysh Q.C. and under the rules laid down under the PCC it has lead a quieter and less controversial life, but the number of decisions significant enough to appear on the BAILII website has been small. With the retirement of Judge Fysh, a new attempt is now being been made to reinvigorate the court and to provide it with distinctive rules that differentiate and simplify its procedure compared to that of the High Court.

A final report of a working group on proposals for reform of the Patents County Court was published on 31 July 2010. Unusually for such reports, many of its recommendations were implemented immediately, in the 53rd update to the Civil Procedure Rules (CPR), available here. Links to SI 2010/1953 which amends the CPR Part 63 and to a so-called “making document” which amends Practice Direction 63 can be found at the same link under the heading “preview”. The update comes into force on 1 October. Major changes introduced are that:

· The pleadings are intended to provide the primary basis on which the case will go to trial. A statement of case must set out concisely all the facts and arguments upon which the party serving it relies and must be verified by a statement of truth signed by a person or persons having personal knowledge of the facts alleged so that it can stand in evidence in itself. Where possible the court will determine the claim solely on the basis of the parties’ statements of case and oral submissions.

· The provisions providing for automatic standard disclosure in the Patents Court do not apply in the PCC.

· At the case management conference the court may order any of the following—

(1) specific disclosure;

(2) a product or process description (or a supplementary product or process description where one has already been provided);

(3) experiments;

(4) witness statements;

(5) experts’ reports;

(6) cross examination at trial;

(7) written submissions or skeleton arguments.

However, an order will only be made in respect of specific and identified issues and if the court is satisfied that the benefit of the further material in terms of its value in resolving those issues justifies the cost of producing and dealing with that material .

· The court will strictly control cross-examination.

· The court will endeavour to ensure that trial lasts no longer than two days.

· Costs in the PCC have been capped at £50,000 for liability and at £25,000 for an enquiry as to damages. As in the IP Office, there is now to be a scale of costs for the procedural stages, that for liability being set out below:

Table A

St Stage of Stage of a claim

Maximum amount of costs

Particulars of claim


Defence and counterclaim


Reply and defence to counterclaim


Reply to defence to counterclaim


Attendance at a case management conference


Making or responding to an application


Providing or inspecting disclosure or product/process description


Performing or inspecting experiments


Preparing witness statements


Preparing experts’ report


Preparing for and attending trial and judgment


Preparing for determination on the papers


  • Save for exceptional circumstances an application to transfer the claim to the High Court or to stay proceedings must be made before or at the case management conference. In other respects, s.289 of the Copyright, Designs and Patents Act 1988 remain applicable to transfer of proceedings.
  • A recommendation for a £500,000 cap on damages cannot be implemented because an Order in Council is required, and it is not clear whether it is intended to lay any such order before Parliament and if so when. Until that happens, the jurisdiction of the PCC as to damages remains unlimited.
  • A new Guide is to be published for the PCC. No such Guide is yet available.

The Committee acknowledged concern that, even with a system of scale fees and an overall costs cap, larger litigants might try to gain an advantage over smaller litigants by outspending them. It accepted that this was a valid concern, but believed that the procedures that had been proposed and have now been introduced should minimise it. It commented that when exercising his case management powers, the Judge would have the responsibility of ensuring equality of arms between the parties so far as that is possible.

It remains to be seen to what extent such hopes survive the pressures of litigation: arguments concerning what issues it is appropriate to identify and the costs and benefits of the various possible orders could result in considerable expenditure of effort and considerable cost at the case management stage. Recent developments in the Court of Appeal could prove profoundly unhelpful to the objective of simplicity and straightforward procedure. In its decisions in Molnlycke v Procter & Gamble [1994] R.P.C. 49 and Glaverbel v British Coal [1995] R.P.C. 255, a distinction was made between primary evidence from expert witnesses and secondary evidence e.g. the reactions of particular individuals and commercial success, which it was held should be kept “firmly in its place.” That approach has recently been questioned in Schlumberger v Electromagnetic Geoservices [2010] EWCA Civ 819 (noted on PatLit here) where it was held that it would be wrong to read these decisions as saying that secondary evidence is always of minor importance, that to do so would be to throw away a vast mass of jurisprudence including many House of Lords cases, and that in approaching the secondary evidence with skepticism the judge was making an error of principle. In Schlumberger the decisive factor in favour of patentability was the contemporary reactions of other scientists that the claimed subject matter was “an exciting development.” Against this background it will be very difficult, where inventiveness is in dispute, for the judge at the case management stage to rule out investigation of secondary evidence, with the complexity and cost to the parties that this inevitably involves, without the risk that his decision may be overturned through an error of principle.

* Paul Cole is a Chartered Patent Attorney, Lucas & Co, Professor of IP Law, Bournemouth University and an editor of the CIPA Guide to the Patents Acts.

1 comment:

Norman said...

It is true that ignoring "secondary" evidence would reduce litigation costs, but it would also make obviousness determinations entirely unreliable. The courts have acknowledged the danger of hindsight bias for more than a century, and there is now ample empirical psychological evidence to show that this is one of the most entrenched cognitive biases. To ask a judge to rely solely on the evidence of experts, who are paid to provide a particular opinion, as to what the posita would have thought many years before, is a recipe for arbitrariness. Saving litigation costs is certainly very desirable, but it would be better to do so by excluding expert opinion evidence on obviousness, rather than by excluding objective evidence.

(John Duffy has an interesting article -A Timing Approach to Patentability 12 Lewis & Clark L. Rev. 343 - noting that the term "secondary" originated with the 1966 decision of the USSC decision in Calmar v. Cook Chemical, the companion case to Graham v John Deere, in which the Court misunderstood the state of the prior art. Before that it was more common - and more accurate - to refer to such evidence as “objective” as contrasted with the subjective evidence of experts.