Tuesday, 14 December 2010

PCC Page 10: Do I need to get my skates on? Defending a claim

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 explains about defending a claim brought in the PCC.  nb for more about acknowledgement of service, fast forward to PCC 11.

Readers of previous PCC Pages will be aware that Cautious Co issued (and indeed served) proceedings in the Patents County Court last week. The defendant, IPOff Limited, has written a somewhat irate letter to its solicitors:
“I am astonished that I have now received a letter from some patent attorneys acting for Cautious Co., serving proceedings on us, allegedly in respect of infringement of their EPC patent and unregistered rights. They claim the software we use in our Robot Octopus football results predictor infringes Cautious Co’s patent, and that the design of the Robot Octopus has essentially the same appearance as the their own children’s plastic octopus model. This is clearly ridiculous and we need to be as obstructive as possible. I want to make sure these proceedings are very expensive for them.

The proceedings are being brought in the Patents County Court; they say that we have 42 days to reply because we already knew about these proceedings and Cautious Co. made repeated efforts to settle, without any satisfactory response.

Of course I entirely ignored Cautious's threats. They just did not seem serious. You have always told me that software is not patentable, and octopuses are clearly well known animals. The idea that their appearance is in the least bit distinctive is absurd.

I am on holiday for six weeks over Christmas. It is really not in the least practicable for me to respond within 42 days. I had a quick look on the internet and the PatLit Blog and that explained that the time limit for filing the defence was 70 days as Cautious did not give any sensible reasons. Can you bully the patent attorney? Move it to the High Court, then he can’t act; and make it really expensive.”
Legal research on the internet can be fallible: interestingly, unlike proceedings in the Intellectual Property Court (High Court) IPOff need not apparently file an acknowledgement of service (normally required within 14 days of the service of the particulars of claim) – compare CPR 63.7 which introduces the 42 day time limit only where an acknowledgement of service has been filed, with CPR 15.4(1)(a) and CPR 63.22(1). Secondly, if there is a statement in the Particulars of Claim that the claimant “with paragraph 7.1(1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct”, then the 42 day time limit applies (CPR 63.20(2), CPR 63.23(2)) regardless of whether the defendant thinks enough was done to encourage settlement – the remedy is to apply to the Court for further time (and to provide a rather more convincing reason than that given here). Thirdly, there is always a possibility of applying for transfer – as soon as possible and in any event no later than the Case Management Conference (CPR 63.25(4) – but you will need some convincing reasons: otherwise the Court could decide it, as is its power on all applications, without a hearing (CPR 63.25(3)). The appropriate criteria are set out in PD 30 9(1) and have, of course, been reviewed by HHJ Birss QC in ALK v Meridian Medical Technologies and Dey Pharma [2010] EWPCC 014:

When deciding whether to order a transfer of proceedings to or from a patents county court the court will consider whether:

(1) a party can only afford to bring or defend the claim in a patents county court; and

(2) the claim is appropriate to be determined by a patents county court having regard in particular to:

(a) the value of the claim (including the value of an injunction);

(b) the complexity of the issues; and
(c) the estimated length of the trial.

If this is a case involving SMEs it seems pretty likely that it will stay in place. If the damages or potential damages were very high, then there is a possibility that the case might be transferred on the basis that it is not suitable for the PCC. One clearly has to review that issue on the facts, and the ability to use just a patent attorney could be a good reason for it to be more proportionate to use the PCC.

And even if the PCC were to order transfer (currently only the PCC can order transfer from the PCC (CDPA 1988 s289(1), which has not yet been amended), it might make the order subject to terms which permit the claimant to withdraw without being liable for all the costs incurred up to that time (PD 63 9(2) including “award reduced or no costs where it allows the claimant to withdraw the claim”).

The response to IPOff is that they need to take this issue seriously. Time is short to prepare a proper defence, and the Court will not be very sympathetic if nothing has been done to get things moving.

You have several weeks before you need to learn more. Happy Christmas!

The PCC Pages return on Tuesday 11 January 2011. Meanwhile, a happy Winterval to you all!

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