The CIPA seminar: Chris Ryan reports

No statements of practice
will be created on the hoof

Chris Ryan, who attended Tuesday evening’s CIPA-organised seminar on the Patents County Court and who penned this report for PatLit, faced delicate challenges (except possibly for the Chair, Vicki Salmon, who was serene throughout).  For the two main presenters, Gareth Morgan (DLA Piper) and experienced patent attorney litigator Nick Wallin (Withers & Rogers), there was the realisation, which they gamely acknowledged, that we were not really there to hear their careful explanation of the rules and the early decisions issued by the court on procedural matters. No, all eyes were on Judge Colin Birss QC, who was sitting alongside them waiting to be cued in for comment on particular issues. And for him there was the difficulty of giving us an indication about the way he planned to run his court, without the perception of informal statements of practice being created on the hoof.

The Judge’s main headline points that Chris picked up were:

• The court was there for patent and trade mark attorneys to use. Any of them who could do an EPO opposition hearing, he said, could do a case in the PCC.
• It was also there for Small and Medium Enterprises, with the emphasis for this purpose on “medium”; a potentially wide user group which would include businesses of greater significance than was sometimes suggested.
• The procedure had deliberately adopted a “paper led” structure with early exposure of each side’s case, including arguments, similar to EPO procedure. So, for example, if a practitioner was in doubt about how much information to include in a Statement of Case he or she should consider how much would be included in an equivalent EPO filing.
• There was no reason why the overlap between the language of a patent claim and a piece of prior art (or an alleged infringement) should not be presented in the form of an integer tick list.
• There would be much more “judge effort” at the case management stage. This was made possible by the greater amount of information that would be available from the new-style Statements of Case (Chris's personal hobby horse intrudes at this stage: this will only work if court administrators cut some slack in the Judge’s workload of trials, once the caseload builds up, to enable him to get right on top of the detail and be able to impose procedural orders on litigants with confidence).

A number of comments and questions came from the audience. But Chris thought that the most incisive contribution was from Keith Hodkinson (Marks & Clerk Chairman) who suggested that persuading Japanese or Korean medium-sized enterprise to prefer the PCC over the court in Dusseldorf would depend on providing satisfactory answers to three questions:

1. What happens if the other side is a much bigger organisation and makes a play to have the case transferred to the High Court?
2. What is the risk of having a (discriminatory) order for security for costs imposed on me?
3. How am I going to have court papers and accompanying advice translated and processed through my company’s decision-making process (possibly a muscle bound one – my words not Keith’s) and then have my instructions translated and passed back to my London advisers, all within the very tight time limits imposed by the rules?

Inevitably the Judge was not willing to provide a definite response to any of the questions, no doubt for fear of those in the audience quoting back at him on some future application whatever he said. And the answer to Keith’s questions will lie, of course, in the track record that the court develops in the next year or two -- not the inevitably general expressions of intent at this stage. The Judge is clearly determined to “make it work” (a phrase he used on several occasions). But before his refreshing approach made Chris too optimistic he had to remind himself of the following, slightly depressing, timeline:

• 2010 – (Chris is playing at least the first part of extra time in his career and) new rules are being tested to address the Jackson Report’s complaint that “SMEs from time to time need to bring or defend IP claims. The costs involved can be crushing”.
• 1970 – (Chris was half way through his articles of clerkship – training contract in less colourful modern terminology – and had just moved from the tedium of conveyancing to the fun of IP when) the Banks Report stated that there had been “concern about the delays, length and expense of patent actions for many years”.
• 1947 – (Chris had just been born and was completely unaware that) the Swan Committee had just reported its finding of “…a widespread, in fact a universal feeling of dissatisfaction” with the method of dealing with patent actions at that time.