Tuesday 25 January 2011

PCC Page 13: Snails and Octopuses

In this, the latest episode on the revamped Patents County Court for England and Wales --supplied by the Chartered Institute of Patent Attorneys (CIPA) through the kind offices of its President, Alasdair Poore -- we continue the saga of Cautious v IPOff with further discussion of the issues of delay and timing.
Last week IPOff’s solicitor wrote to IPOff, seller of the Robot Octopus football results predictor, explaining that an extension of time for filing the defence would be necessary as Innocent (IPOff’s Director) was off, having an extended Christmas holiday snorkelling and studying octopuses.  He has asked the Cautious’ patent attorney if an extension of time would be agreeable and the company indicated that, in view of the holiday period, and because its client was generous, it would agree an extension of time of two weeks, if the judge were minded to order that.  IPOff’s solicitor is concerned at the lackadaisical approach of its client and that he still has not returned to the UK, so it proposes to ask for a longer extension.

“Dear Innocent, we last wrote to you explaining that we would need to apply for an extension of time.  You responded “Too **** right, and pull your finger out.”  It would have been helpful if you had provided slightly more extensive reasons for seeking an extension. 

You also suggested that we make the application as expensive as possible and hire a silk and junior to appear in the Court.  Please bear in mind that (a) the judge may decide that no hearing is necessary – the draft User Guide says on making applications is that normally they will be decided without a hearing unless the judge decides one is necessary; (b) making it expensive for yourself does not necessarily make it expensive for the other side – you certainly will not be able to recover any more costs: the cap does not mean that you can recover as much as the cap (and I remind you that they apply to each stage), and it is unlikely that the other side will be put to greater expense in arguing their position on an extension; and (c) the judge will certainly not be impressed – the Court is specifically designed as a forum for proportionately low cost proceedings, which can be argued in a straightforward manner [see eg ALK-Abello v Meridian, para 32], and the idea of using a silk on such an application, or indeed generally, will not give you any benefit.

Turning therefore to the substance of why an extension might be appropriate, you require good reasons [CPR63.22(6)]: Firstly you have said that the proceedings had come as a complete surprise to you, you had specifically planned this holiday of a lifetime – why octopuses? – months in advance, communications with you are fairly difficult, and you are essential to preparing the defence, both because you are the only person who knows details of the software you are using, and you would not trust anyone else to sign the statement of truth.

I have also looked at the “letter before action” etc. from Cautious’ patent attorneys on the matter.  To say the least it is somewhat obscure.  There is no suggestion that proceedings are going to be brought against you.  What it does do is ask you who the manufacturer or importer are and goes into some discussion about the arguments on infringement. We will therefore also rely on the fact that insufficient warning of the proceedings was in fact given, and although the Particulars of Claim assert that there is compliance with the Practice Direction on Pre-action Conduct, that is not in fact the case.

Finally, I would like you to give some urgent attention to the questions I asked in my last letter, and also to the question of infringement of unregistered design right by your designs of Robot Octopus.  .  I should specifically add that if your position is that you reached the design of the Robot Octopus independently, please provide me with full details [CPR63.20, Draft User Guide].

As noted last week, it seems likely that the judge will have some sympathy with a limited request for an extension of time bearing in mind the intervening holiday period.  The question in relation to compliance with the Practice Direction on Pre-action conduct is not so clear.  Readers will be aware that, under the Patents Act 1977 s 70 (as amended), the provisions related to threats have become somewhat wider but much more convoluted.  They now mean that if you know that the potential defendant is a manufacturer or importer (and a threat is made against them as such, and also may extend to other acts of infringement), there is no risk of a threats action s70(4)(b).  However, if you do not know that the potential defendant is a manufacturer or importer, then you run the risk of a threats action unless the threats are very clearly limited to making or importing (or using a process) (s70(4)(a)) – see PCC Pages No 3, for further discussion and cases).  You can, however, write putting the potential defendant on notice of the patent (s70(5)(a)), and ask for details of who the manufacturer or importer is (70(5)(b)).  In order to do this, you may also provide an explanation of the basis for saying that the product infringes (70(5)(c)). 

Cautious’s patent attorney stuck to the framework in the Act.  Its letter does not make clear that proceedings are imminent; the object of the threats provision is that the recipient should not perceive that it needs to stop because it might be sued.  We will have to wait to see what the Judge says about such letters.  The protocol contemplates that the recipient acknowledge it and give a full written response.  However the response to a letter under Patents Act s70(5) is not going to be addressed to the infringement issues, but just to answering the questions about maker or importer.  Each case will turn on its facts.  IPOff’s solicitor is cautiously optimistic that it will obtain an extension to 70 days plus a further 14 days while its client has been on holiday.  After all, there is no point in the judge insisting on too short a period with the risk that further material will turn up later.

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