Tuesday 14 October 2014

Patents County Court survey: the results

Readers of this weblog may recall the publication of a request for assistance with regard to research undertaken by Kingsley Egbuonu into the Patents County Court for England and Wales. The fruits of Kingsley's research are summarised below, together with a link to his survey results. As Kingsley explains:
In 2010 Lord Justice Jackson published his final report (“The Jackson Review”) which made recommendations for, among other things, the reform of the Patents County Court for England and Wales (“PCC”). One of the recommendations relevant to the PCC was the implementation of the proposals in the Intellectual Property Court Users’ Committee (“IPCUC”) Working Group’s final report. Overall, the main objective of the reform package was to widen access to justice for small and medium-sized enterprises (“SMEs”) and private individuals in intellectual property (“IP”) disputes.

Following various changes to its rules of procedure, the PCC began operating under a new regime on 1 October 2010. The PCC witnessed further changes until 1 October 2013 when it was replaced by the Intellectual Property Enterprise Court (“IPEC”). However, in the year of its abolition, it was possible to find reasonable information which can be used to explain how the PCC’s new regime works in practice (on which see Angela Fox’s book on the IPEC) and/or to assess the extent to which the policy objectives of the reform have been achieved. My research, which was conducted between April 2013 and September 2013, attempted to do both.

The research primarily relied on a body of case law developed under His Honour Judge Birss QC (as he then was) and published by BAILII, legislation, statistics from the Ministry of Justice, existing literature, and empirical evidence from IP practitioners. The empirical evidence was obtained through an online survey which recorded 30 responses. The survey questions were framed based on the Jackson Review recommendations and issues raised in various Consultations relating to it (e.g. see the concerns raised IPCUC Working Group’s final report).

The survey results can be viewed or downloaded here.

The summary of my findings, as of 30 September 2013, are as follows:

  1. Differentiation: Since 1 October 2010, there has been a clear distinction, in practice and procedures, between the PCC (continued by the IPEC) and the Patents Court or Chancery Division of the High Court. This helps the parties, typically claimants, make an informed decision about forum.
  1. Costs capping and financial remedies limit:
    • Generally, both measures were applied consistently, even in peculiar circumstances, in order to reassure prospective litigants. Sample of cases analysed found that average costs award was under £34,000 for liability trial and under £250,000 for damages.
    • The costs capping regime has not deterred parties from incurring own costs above the relevant caps (e.g. see Lumos Skincare Ltd. v Sweet Squared Ltd & Others [2012] EWPCC 28 and Henderson v All Around the World Recordings Ltd & Another [2013] EWPCC 19).
  1. PCC caseload:
    • The statistics on the number of cases issued in the PCC are inconsistent. Nonetheless, it is generally clear that more cases have been issued post-October 2010 than ever before. This view may be supported with the rise in the number of PCC judgments published on BAILII.
    • Further, the uptake of the small claims track was also encouraging: 16 cases were issued in 2012 and 28 as of July 2013. Lastly, the PCC entertained a variety of claims. Overall, the popularity of the PCC post-October 2010 is a clear evidence of success.
  1. Profile of parties:
    • A considerable number of cases involved SMEs and private individuals. Around 63 judgments published by BAILII (between November 2010 and 11 September 2013) involved an SME or private individual as a party. Arguably, this may well be the evidence to support the rationale behind the PCC reform.
    • On the other hand, my research did not find substantial evidence to demonstrate that larger enterprises were abusing or disproportionately using the PCC; equally, there was no evidence to suggest that there was a flurry of litigation against large enterprises by SMEs as a result of the reforms.
    • The PCC served private individuals and SMEs (represented or otherwise) and large enterprises equally.
  1. Length of trial: Cases were generally listed and tried within two days; only a handful lasted longer. There was also an improvement in the length of time cases take to come to trial.
  1. Transfers:
    • My research did not find any evidence to demonstrate that there was a disproportionate number of litigation on transfers between the PCC and the High Court.
    • Statistics revealed that just one case was transferred from the PCC to the High Court, whereas well over 10 were transferred to the PCC from other courts. The overwhelming majority of the PCC’s case load originated and remained there.
Despite the little literature on the subject and difficulty in obtaining reliable statistics -- particularly on the number of cases and the profile of the parties involved -- my research concluded that the reforms generally succeeded. Active judicial case management and consistent application of the rules and case law were crucial to the success of the PCC.

The UK Intellectual Property Office, which should have better access to reliable data, is expected to publish its evaluation report on the PCC reforms this year. 

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