Tuesday, 19 October 2010

The PCC Page, no.2: "PCC Tips: Is the PCC my cup of tea?"

In this, the second in the series of regular Tuesday features on the new regime for litigation before the recently revamped Patents County Court (PCC) for England and Wales, Chartered Institute of Patent Attorneys (CIPA) President Alasdair Poore explains that the PCC is not suitable for every action -- it is necessary to satisfy yourself that it matches your needs:
"I just read last week's notes about the PCC. A competitor has been getting my goat for some time now but all this litigation business just looked like too much time and money. Is the PCC the place for me?"
You’re not an agony aunt. This is an established client, Cautious Co., and this in your moment to impress. Otherwise, what point is there in all these applications you file? You had better be one step ahead of Cautious reading this column.

Is the PCC the court for you?

The PCC sounds like the suitable forum. Cautious has been deterred from bringing proceedings because of the time and cost – of course, that could be true of many clients, but it’s a good start.

A lot of thought went into what should go into the provisions laying down what was suitable for the High Court and what was suitable for the County Court. And a lot of thought concluded that the less said, the better – at least in the rules. The Intellectual Property County Court Guide will contain more rules, but at present you are flying by the seat of your pants.
• Key is access to justice for small and medium sized enterprises – if it were not for this court, the case would not be going anywhere. That sounds just the ticket, but a bit of critical questioning is in order;
• Second – proportionality: there are lots of cases where the cost of a High Court action would simply swamp the benefits of bringing the case or, if they do not swamp them, at least take a hefty bite out of them. Again this sounds fine, but you need to learn how much is really at stake -- and maybe how complicated the case could be. The aim is that cases in the PCC can be heard in a day or two (with the very streamlined procedure), but some cases may be just too complicated: lengthy expert evidence, essential detailed experiments or difficult evidence of prior use. But proportionality should still rule here. If all that difficult evidence makes it pointless fighting, then a pretty cut-down approach seems fully justified.
• Are the costs rules an issue? Can you realistically take the steps within the costs bands listed (for which click here and scroll down)? If you cannot, is the client happy to bear the brunt? This is difficult, although there will be guidance in the Guide. Even on statements of case this could be difficult – full but concise, no tomes. Perhaps patent attorneys may be in the best position to assess, with their experience of EPO proceedings.
• And damages? Currently there is no limit on recoverable damages – Parliament could not find time yet. However it may still be a factor in relation to proportionality in deciding whether it is a suitable case to be heard in the PCC.
Other factors

Insurance: Don’t forget some other factors: the cap on costs includes any insurance premium, which might limit the enthusiasm of some “after-the-event insurers” for this forum. You had better ask them first, something that you must surely have had in mind! Sources tell me that very few IP disputes get considered for after-the-event insurance although it might be negligent not to. More on that later.

Terrible transfers: what about the possibility that a case is transferred out of the PCC? More on that in later installments, after looking at pre-action activities, forum-shopping and ADR. But you can be pretty sure that the Courts will treat applications rapidly, robustly and skeptically.

AND NOW FOR AN ADVANCE WARNING: On 24 November 2010, at 5.30pm for 6pm, the AIPPI UK Group is hosting a talk. "The Patents County Court is changing". This is "a first dispatch from the coal face by its new judge, His Honour Judge Birss Q.C.". The venue is the London office of Baker & McKenzie LLP. Registration details are not yet available but PatLit will pop them into the side bar when they are known.

No comments: