Tuesday, 7 December 2010

PCC Page 9: The time has come to issue proceedings

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 describes the point at which the fictional Cautious Co. decides to issue proceedings.

"Hang on, we've got 42 days minus
two days for Christmas, one for the
New Year, and throw in a week and
a half when the lawyer's on holiday..."
Says Cautious Co "Right, the time has come. Issue those proceedings. We are not making any headway with our competitors, despite all our explanations and threats. They have 42 days to file a defence – 70 days if you do not think we have provided enough of an opportunity for them to respond. I take it this includes weekends and the holidays; that way we can take advantage of the Christmas break while waiting for their reply.”

Indeed Cautious, who is getting rather more aggressive as time moves on, is right. Time limits over five days include non-working days (CPR 2.8). And there is no reason why the steps required by the Protocol on Pre-action Conduct should not have been carried out by Cautious Co themselves. You will need to advise Cautious as to whether sufficient steps have been taken and whether a reasonable period has been allowed for reply (para 7).  Cautious can then sign the statement of truth in respect of the assertion as required by CPR 63.22 and CPR 63.21.

In accordance with CPR 63.2(2), claims in respect of patents (ie under the Patents Act 1977) and UK and Community registered designs (and semiconductor topographies, plant designs and claims under the Defence Contracts Act 1958) must be started in the Patents Court or the Patents County Court. For the Patents County Court, clearly the preferable route is to start them there, rather than to kick off in the Patents County Court and later seek a transfer. Normally such claims are issued in the Central London County Court (for address see the Patents Court User Guide para 4.2).

The proceedings are started by issuing the “Claim Form” (CPR 7.2). As noted previously, the Particulars of Claim may be included in or with the Claim Form CPR 7.4 or served on the defendant within 14 days after service of the claim form – and no later than the time limit for serving the Claim Form (usually no later than four months from issues: see CPR 7.5, 7.6). When the Particulars of Claim are served they must be accompanied by a form for acknowledging service, a form for defence and a form for admitting the claim. The claim form should be marked “Patents County Court” (PD 63 3.1)

In the County Court, the Court will serve the claim form, or the claimant can choose to serve it on the defendant himself. Practically speaking, serving yourself is often more convenient, as it keeps all the time scales under your control. Note that the time limit for the defendant’s defence runs from the service of the Particulars of Claim (not the Claim Form), assuming that the defendant has acknowledged service.

For other claims which are under CPR 63 (trade marks, copyright, and unregistered rights: see CPR 63.1) the claim may be started in either the PCC or, in any other County Court where there is a Chancery District Registry (see PD 63 16.2 for a list), it can be brought (CPR 63.13). If started in the PCC they must be marked “Patents County Court”, otherwise “Intellectual Property” in the top right hand corner.

Historically all claims which relate to intellectual property issues have then been transferred automatically by the relevant County Court to the Patents County Court. This could produce unforeseen consequences since, if the claim proceeded in one of the non-PCC County Courts, it will be subject to the unamended CPR – no limit on costs, no special procedures, and in principle no limit on damages.  In practice however it seems likely that a case involving substantial damages would be transferred to the High Court, since the normal threshold for cases in the County Court is less than £50,000 damages. It could however, lead to arguments in the future as to which procedure should be applied, and it may therefore be safer to issue proceedings in the PCC immediately – added to which, patent attorneys who do not have litigator rights would not be entitled to conduct the proceedings in the other county courts, including, it would appear, issue of the proceedings.

Northampton County
Court: fabled for its
legendary hi-tech
electronic issuing of
There is also a possibility, used apparently in some cases, to issue proceedings electronically. These are issued by the Northampton County Court (PD 7C), and appear to apply to claims for money only – so not where any other relief is sought, but perhaps the sort of case such as National Guild of Removers and Restorers v Christopher Silveria [2010] EWPCC 015 (discussed here), which illustrates one ideal type of case for the PCC, and also one where a money-only judgment might well be applicable.

Final note: some practitioners have apparently sought to avoid issuing proceedings in the Central London County Court. In practice issuing them in another County Court may indeed work. However, I understand that a primary reason, namely concern over delays in, indeed loss of, documentation getting to the Court, does not now apply to initial proceedings. However, note should be taken – more later – that there are provisions for filing subsequent documentation directly at the PCC (see Patents Court User Guide para 4.5: the St Dunstan’s address is about to change), and failure to do so may result in delays.

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