Tuesday, 30 August 2011

PCC Page 37: The Octopus – keeping documents up its sleeve

Cautious's list of desired documents--
does it match IPOff's deliverables?
Elegantly embroidered by the Chartered Institute of Patent Attorneys (CIPA), the PCC Pages seek to explain how litigation works in the recently-revamped Patents County Court (PCC) for England and Wales, taking as its theme a dispute between Cautious Co and IPOff Ltd as to whether IPOff has infringed the IP rights of Cautious in its robotic octopus. In this episode, the 37th, former CIPA President Alasdair Poore considers whether IPOff has complied with an order to give specific disclosure of certain documents relevant to this dispute ...
In the patent and design right infringement proceedings brought by Cautious against IPOff in the PCC, IPOff was ordered to give specific disclosure.  This was limited to documents relevant to IPOff’s allegation that they had independently developed the designs of the Robot Octopus (which, Cautious alleges, infringe Cautious’s unregistered design right).  The form of the order was the standard form of order, as provided in the PCC Guide (currently, as noted in last week’s PatLit Blog, bizarrely to be found under “Patents Court Guide” in the “Patents Court” page on the Justice web site):

The parties will make and serve on the other of them a list in accordance with form N265 of the documents in their control which relate to [issue X] by [date].

IPOff served the list of documents in accordance with the Order. IPOff’s solicitor also supplied copies of relevant documents with a covering letter saying that, in order to save time and effort, they had made copies of the documents as well as supplying the list in accordance with the Order.  Could Cautious's patent attorney please confirm that they would meet the costs of copying?

Cautious's patent attorney’s assistant has reviewed the documents and list.  His conclusion is that there is something fishy going on.  Cautious's patent attorney is more reserved about whether there is something fishy, but there do seem to be some problems.  He writes to IPOff’s solicitor:

“Dear xxx, thank you for your client’s list of documents and also for sending us copies of the relevant documents.  We will revert on the question of costs in due course.

In the meantime, we are concerned that there appear to be some significant gaps in the disclosure you have given.  For example, in relation to the creation of your client’s alleged independent design, you are relying on  it having been created by an independent design agency.  The disclosed documents include a note of a meeting between your client and the design agency, Fishy Designs.  The note refers to the “5th draft of the drawings emailed to us earlier in the week”.  Clearly (a) there have been earlier drafts which have not been listed; (b) there also appears to have been email correspondence with Fishy Designs – you state that such email correspondence was in the possession of your client but is not any longer as it has now been deleted from the system; (c) there is no reference in the list to any instructions provided to the design agency; and (d) there is no reference to other documents created by the design agency.  We remind you of your duties in relation to proper disclosure as set out in the Practice Direction PD31A 4.4 the legal representative must endeavour to ensure that the person making the disclosure statement … understands the duty of disclosure under Part 31”.  It is quite apparent from the extent of disclosure made that your client does not understand what these duties are or is deliberately concealing relevant documents.  Please can you make clear these duties and serve an amended list within 7 days including all the documents in your client’s control which relate to the allegation that the design made by your client was made independently. Please can you also emphasise the serious consequences which attach to making a false disclosure statement [The party making disclosure is required to include in it a ‘Disclosure Statement’.  The form of this is set out in the Annex to PD31A.]  In particular, please point out to your client that making a false disclosure statement is contempt of court and your client could be sent to prison for breach.  [See Civil Procedure Rules CPR 31.23 and PD31A 8.  A slight overstatement.  The failure is “without an honest belief in its truth”, but still a point to make to a clientWe also remind you of your duty to explain to your client that it should ensure that that it preserves all documents.  This is additionally made quite clear in PD31B 7, and please let us know specifically when these emails were deleted and how this came about. [PD31B relates to disclosure of Electronic Documents]…”

Some comments on the disclosure process: 
·         The rules on disclosure are set out in Part 31.  The general procedure for standard disclosure is set out in Part 31.10.  Although, in the PCC, disclosure is not “standard disclosure”, but specific disclosure limited to particular issues, it is as well to understand the overall procedure. 
·         Disclosure is carried out by preparing a list of documents (see PD31A 3).  It is easy for clients to become confused as to what disclosure is.  It is rather natural for them to understand that it is supplying copies of relevant documents – rather than preparing the list (see CPR 31.2).  It is possible (and may be convenient in simple cases) for parties to agree to disclose documents without making a list (CPR 31.10(8)(a)). 
·         The list of documents must (usually – see CPR 31.10(8)(b)) contain a disclosure statement (CPR 31.10(5) to (7))).  The content of disclosure statement is set out in PD31A 4.2, and the specific form is set out in PD31A Annex.  The standard form of disclosure list is set out in form N265, as noted above, and conveniently this includes the form of disclosure statement (which rather suggests that IPOff has been rather careless in signing it, given the current state of play). 
·         Obtaining copies, or seeing the documents, is called inspection. The right to inspection is set out in CPR 31.3, and the procedure for inspection in CPR 31.15.  In this case, as provided in the form of order in the PCC Guide (see Annex A to the Guide): “If any party wishes to inspect or have copies of such documents as are in another party's control it shall give notice in writing that it wishes to do so and such inspection shall be allowed at all reasonable times upon reasonable notice and any copies shall be provided within 14 days of the request, upon the undertaking of the party requesting the copies to pay the reasonable copying charges” (note that the wording of this is slightly different to CPR 31.15). 
·         It is always worth considering whether you want inspection, as opposed to just receiving copies.  In some cases seeing the actual document, especially if it has manuscript markings on it, may be important.  Could IPOff be trying to do something underhand here? 
·         As noted above, and is made clear in the disclosure statement, a party has a duty to make proper disclosure (see CPR 31.23), and its legal advisor has a duty to make clear the extent of the client’s obligations in making disclosure (PD31A 4.4).
Next week:  Turning the magnifying glass on the Octopus sleeve ...

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