Tuesday, 23 November 2010

The PCC Page no.7: Cautious first steps -- getting underway

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 focuses on the first few tentative steps taken by our patent litigant company, Cautious Co., in launching proceedings before the PCC.

Pleadings under the old rules
could be quite voluminous ...
Says Cautious Co: “I am ready to go – so let's see what I have to sign up to.”

The Statement of Claim in patent proceedings was always rather unusual. When the PCC started, it was widely acknowledged that statements of claim could be almost entirely uninformative. Indeed, it was not until the experts exchanged evidence that parties would necessarily know much about what they were fighting about.

That state of affairs led to the old PCC rules stipulating that the statement of case should set out all facts, matters and argument. Nturally one should always be careful about giving a lawyer (and perhaps also a patent or trade mark attorney)  a free rein when it comes to argument. One can possibly see the quip “paid by the word” doing sterling service here. As mentioned in last week’s pages, this did not go unnoticed, and in Optical Laboratories v Hayden [1993] RPC 204 the Court of Appeal drew attention to the War and Peace-like scale of the pleadings.

This was a problem which troubled the working group when recommending the new rules. The solution is one word -- “concise” -- and a sensible robust judge. Also, the Patents County Court guide will contain sample/model pleadings to provide some guidance, and we are working on those at the moment.

For the time being however, here is a concise summary.

To initiate the claim Cautious Co needs (a) a claim form, and (b) a statement of case (unless the relevant particulars are included in the claim form, which is relatively unlikely, given the additional matters which must be included for the PCC).

The claim form must have the elements set out in CPR 16.2 (including a concise statement of the nature of the claim, remedy sought, statement of value if it is a money claim, and the particulars required in the practice direction (patent number etc.), and, where the particulars of claim are not supplied with the claim form, the claimant must ensure that they will follow.

The particulars of claim must comply with CPR 16, with the addition that they must set out concisely all the facts and arguments upon which the party serving it relies (CPR 63.20). The following is a summary of what should go in (and some things which should not). I have focused on patent proceedings (and the rules and parts of the Practice Direction relating to them, but the same principles will apply to other IP rights):
1. The patent number – this also needs to go in the claim form: obvious, isn’t it?  But some people seem to have been omitting it (PD 63 3.1 (CPR 63.5))
2. Which claims are infringed (PD 63 4.1(a) (CPR 63.6)).
3. Give at least one example of each act of infringement alleged (PD 63 4.1(b) (CPR 63.6)) – this means each of making, disposing of, offering to dispose of, using, importing or keeping,
4. Provide a copy of each document referred to (PD 63 4.2).
5. Confirm whether the claimant has complied with the Protocol on Pre-action Conduct, para 7 and Annex A.
6. A statement of truth for each person who knows the facts which are asserted in the particulars of claim (CPR 63.21).
The Particulars must also include concise argument (PD 63.20). Both the quantity of detail in evidence and of the argument have been the source of problems previously. Generally however they can be divided into two areas: (i) facts and evidence of the acts of infringement, and (ii) argument (including claim construction) relating to whether the product or process falls within the scope of the claims. The former should not usually require great detail . Pretty bare facts, perhaps supported by invoices, sales contracts, etc. should usually be a good starting point.

The second question ("Does it fall within the scope of the claims?") is often more difficult., Judge Birss QC has indicated that it would be valuable to include a claim table in relation to each claim, which breaks the claim  down into individual elements and provides a comparison with the elements of the alleged infringement.  This should provide a good basis for understanding the arguments.

One aspect which specifically does not need to be included is facts and arguments which are intended to counter a possible defence. Wait until the defence has been filed before putting those in.

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