Tuesday, 9 November 2010

The PCC Page, no.5: taking a look at the road map

Navigating the PCC's new rules --
not a subject to take 'lightly'
The PCC Pages is a series of Tuesday features on the new regime for litigation before the recently revamped Patents County Court  (PCC) for England and Wales, hosted by PatLit but furnished by the Chartered Institute of Patent Attorneys (CIPA). In this post, CIPA President Alasdair Poore summarises the topics covered so far.

Time to get on with it then? Cautious Co is on holiday. Unlike most clients, he did not send fresh instructions just as he was leaving. Your advice has left him thinking, and left you some revision time. This note provides you with a quick series of links and reminds you of the speed limits on the way.

The starting point is the amendments to Part 63 of the Civil Procedure Rules (CPR). PatLit provided a neat summary of the effect of the changes. The amendments tie into other provisions of the CPR, and this note provides links to those, as well as flagging up those costs limits again.

When you look at those costs limits again you might get pretty nervous – they look very tight (just look at the actual costs on a pre-New Rules application in Beechwood (II), where summarily assessed costs came to £16,000, admittedly for summary judgment, so not just a straightforward application (para 13)).  Then compare it to the present limit, £2,500 (also interesting in that it sets out a order in full, although under the old rules). But remember:
• these are not limits on what you can spend -- just on what you recover from the other party or pay him. But make sure Cautious Co understands this;
• there are exceptions: conduct amounting to an abuse of the Court’s process (CPR 45.41(2)(a)), or a Certificate of Contested Validity issued by a court (but not the Intellectual Property Office?) (CPR 45.41(2)(b))
• Patent attorneys have better experience than other practitioners: working on cases in the EPO.
Another word of caution first. All the Civil Procedure Rules (CPR) are relevant – and it takes several volumes of the White Book to summarise those. But here are the references to the New Rules and bits referred to in them.

A good place to start is CPR 63 rules 17 to 26. They say that CPR 63 applies generally except to the extent modified, so you need to understand CPR 63. And there is a Practice Direction covering CPR 63. This sets out both useful information as well as specific provisions applicable to intellectual property cases. For example where to issues proceedings – more on that in a later note.

Starting a claim: A claim must be started in accordance with Part 7 (or Part 20 – where you are counterclaiming against the claimant or making any claim against a person who is not a party to the proceedings). Among other things, Part 7 explains that the claim must be issued with or followed within a short time by the particulars of claim.

Transfers: in the wrong place – CPR 63.18 applies and refers to Practice Direction 30.

Setting out the details: Particulars of Claim (speed limit £6,125 – including starting the claim). CPR 63.6 applies to the particulars of claim – it refers to Part 16, but adds some modifications. Then CPR 63.20 adds additional modifications for the PCC – the requirement that all facts and arguments be set out concisely, and confirming whether the claimant has complied with the Direction on Pre-action Conduct.

Statements of Truth (which need to be added to each statement of case and the claim form) – Part 63.21 applies and refers to the general requirements in Part 22 (and Practice Directions), but adds that a statement of truth must be given by the person or people who actually know the facts set out in the statement of case.

Defence (limit £6,125): CPR 63.22 provides that Order 63(7) does NOT apply to the defence; Part 15 applies with modifications set out in Order 63.22.

Case Management (limit for attendance £2,500). CPR 63.23 applies and refers to the Practice Direction on Part 63.

Disclosure and Inspection (limit £5,000): CPR 63.25 applies Part 31, and PD31A (general) and PD31B (electronic disclosure) with modifications, which mean that much will be of little interest.

Costs: there are other elements of costs you can claim. CPR 63.26 sets out all the details: where the Court makes a summary assessment of costs, it will do so in accordance with Section VII of Part 45. CPR 45 provides that in most cases the PCC will make a summary assessment of costs LIMITED on a scale basis (ie you may get less). As a reminder the scale is set out in the Costs Practice Direction at Section 25C. The scale is repeated below for quick reference. Note that the total of the figures adds to more than £50,000 – that does not mean you can get more than the limit set out in CPR 45.42 (£50,000 for the main proceedings; £25,000 for enquiry into damages).
Main proceedings: stage of a claim (maximum amount of costs)
Particulars of claim £6,125
Defence and counterclaim £6,125
Reply and defence to counterclaim £6,125
Reply to defence to counterclaim £3,000
Attendance at a case management conference £2,500
Making or responding to an application £2,500
Providing or inspecting disclosure or product/process description £5,000
Performing or inspecting experiments £2,500
Preparing witness statements £5,000
Preparing experts’ report £7,500
Preparing for and attending trial and judgment £15,000
Preparing for determination on the papers £5,000 
Enquiry into damages: stage of a claim (maximum amount of costs)
Points of claim £2,500
Points of defence £2,500
Attendance at a case management conference £2,500
Making or responding to an application £2,500
Providing or inspecting disclosure £2,500
Preparing witness statements £5,000
Preparing experts’ report £5,000
Preparing for and attending trial and judgment £7,500
Preparing for determination on the papers £2,500

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