Tuesday, 12 October 2010

The PCC Page, no.1: "All change at the Patents County Court"

Starting today, PatLit is delighted to host a regular Tuesday feature on the new regime for litigation before the recently revamped Patents County Court for England and Wales. This feature is an initiative of the Chartered Institute of Patent Attorneys (CIPA), a body which, in conjunction with others, has taken a close and active interest in the direction of patent litigation reform in the UK. It is intended to provide a clear, concise explanation of how the court now works and will also comment on actual cases as they go through the new procedures and reach their resolution.  The first article in this new series, written by CIPA President Alasdair Poore, goes like this:
All change at the Patents County Court

Two weeks of change: new rules, an exceptional judge, His Honour Judge Fysh, retiring, and an exceptional member of the Bar, His Honour Judge Birss (right), replacing him.

The new rules have been well flagged in advance. They make a step change in procedure and its consequences for clients. IP advisors need to understand these changes: they open up avenues for clients which have for a long time been closed; and they open up opportunities for patent and trade mark attorneys to use these avenues, especially with procedures closer to those they already work with.

But like all procedures, there are rules, they need to be complied with, and jumping in without learning what they are could lead to rather burned feet.

More detail on these in weeks to come, but first the key elements (and one elements which has not quite made it) for those who have slept through the changes.

The headlines are (i) the written pleadings; (ii) the procedure up to and at trial; (iii) costs you can recover and (iv) damages you can recover:

Written pleadings set out CONCISELY as much of the case as possible

• Full statements of case including all facts and arguments – full but concise. No repetition of some of the mountainous statements under the original pre-Woolf rules. We can expect a pretty firm hand here – and some guidance soon in a revised PCC Guide.
• Statements of case signed with a statement of truth from someone who ACTUALLY knows the facts. It makes for more commitment (and identifies who might need to be cross-examined, should that be permitted).

Procedure up to and including trial is short and sharp, with bells and whistles silenced:

• 6 weeks or 10 weeks are allowed for a defence to be filed (depending on whether the claimant has complied with the required pre-action steps – more on this later) and 2 weeks for a reply, so you need to be on the ball here.
• A case management conference just a few weeks after the last statement of case, where the judge sets out the procedure, but almost certainly with a view to limiting disclosure (only for specifically identified items), cross examination, expert evidence etc. WHEREVER POSSIBLE the trial will go ahead just on the statements of case, and the parties may consent to a decision on the papers.
• Trial will be soon, and should not last more than one or at the most two days.

Costs under control:

• Costs recovery is limited – not necessarily what you spend, but what you can get back from the other side or they from you,. Of course you can’t play the fool. Abusive behaviour will be penalized by abusive costs.
• BE WARNED: everyone talks of a cap of £50,000 for a full case and £25,000 for enquiry into damages. That is a maximum and each stage has its own maximum (eg particulars of claim = £6,125, preparing witness statements = £5,000, preparing experts reports = £7,500 (including what you pay the expert), etc.

Damages you can recover:

• This one hasn’t made it yet. Damages are intended to be limited to £500,000. But Parliament could not run fast enough – so for at least the first six months, the proposed rule to limit damages will not be in effect.

More on the details in due course. For those who cannot wait, they are here, but make sure you read them with the other bits.
CIPA welcomes all comments and feedback. You can contact CIPA directly here or post a comment at the end of this article.


MaxDrei said...

If this can be pushed through, it could attract much of the non-pharma litigation currently done in Germany.

Litigants from Asia and mainland Europe prefer Germany for engineering cases because i) its procedural law is so much like theirs at home, ii) it caps their cost liability, and iii) its patent attorneys are engineers and share the running of the litigation. For those comforts, that they are willing to litigate in two courts (Duesseldorf for infringement and Munich for validity) in the German language.

England is a victim of the more or less immovable prejudice around the world, that patent litigation is slow, grotesquely expensive and in the hands of lawyers who are not engineers.

The English litigation community should be emphasising i) how slow and uncertain Germany is, when you factor in the inevitable appeal process and ii) use of the English first instance decision as an early "road map" to settle the case all over EPC-land.

Germany's patent litigation system is more like ADR (with injunctive relief in there somewhere) than adversarial. Perhaps that is why the Asians like it so much.

Filemot said...

Since much of the procedure takes place before proceedings begin, claimants do not need to use a solicitor or IPReg regulated litigator at all. This may or may not provide cheaper support services to consumers. Hopefully future posts will discuss the pre-action procedure and economical sources of essential ADR.
So far there are only two providers
Nipclaw and the IPO

Jane Lambert said...

Thanks for mentioning us, Barbara.

We offer specialist low cost mediation and arbitration of intellectual property and technology disputes. If you consult our rules and costs schedule you will find that both service are designed for disputes involving start-ups and other small businesses.

The mediation site is as http://www.nipc-mediation.co.uk/ and the arbitration site at http://www.nipcarb.co.uk/

The IPO offers mediation and, of course, advisory opinions on validity and infringement pursuant to s.74A of the Patents Act 1977 but it does not offer arbitration. The WIPO offers arbitration, mediation and expert determination of IP disputes. Also, it has resolved a large number of generic and country code top level domain name disputes over the last 11 years