The new Patent County Court Rules are now in full swing in the Patent County Court.
Why have these changes been made?
The point of the Patent County Court is to make litigation more accessible to Parties (especially SME’s) and to reduce their overall exposure to legal costs if unsuccessful. The key features of the new rules are the Court’s permission is needed in almost every step of the proceedings after the submission of the Parties initial statements of case.
These features were highlighted by His Honour Colin Birss QC (the presiding Patents Court Judge) in the Case Management Conference (“CMC”) in the matter of Dame Vivienne Westwood OBE v Anthony Edward Knight [2010] EWPCC 16. The case identified the necessity of including all elements (factual and legal) that the Parties are intending to rely upon when drafting the initial statements of case. This is because the Court has the discretion, should it choose to do so, to prohibit the parties from relying upon any other standard litigation requirements and make its decision on the matters before it. The requirements that could be excluded are:
- The exchange of witness statements;
- Expert evidence;
- Written submissions, skeleton arguments
- A trial
In order to have one of the requirements referred to above (or indeed any other litigation requirements) it is necessary for the Parties to make an application which will be dealt with at the CMC. The CMC is scheduled for 2 to 4 weeks after the submission of the pleadings.
If an application is made by one or both Parties, the Court will only make an Order granting leave when it is satisfied that the benefits of the further materials and the cost associated with that work assist the Parties in resolving the dispute.
As established in Westwood, irrespective of an application being made, the Court may still consider whether or not those ‘requirements’ should be granted as failure to do so may result in an injustice.
High Court v Patents County Court?
The Patents County Court is capable of hearing the same technical and complex legal disputes that the High Court is. The difference between using them lies with the value of the claim alongside the size of the Parties. There are a number of other elements that the Court will consider in determining which Court is appropriate as trials within the Patent County Court will be limited to 2 days albeit that trial will be held quicker than in the High Court. In some instances however, that time limit may not be sufficient.
The discretion to transfer matters to the High Court is provided by the Civil Procedure Rules. When considering transfers, the Court will consider the size and wealth of the Parties. This was established in the case of Alk – Abello Limited v Meridian Medical Technologies & Dey Pharma LP [2010] EWPCC 14. In this instance, the Patent Couny Court considered that the Parties were not SME (and should therefore not benefit from the Patent County Court rules) and referred the matter to the High Court.
Under the current costs guidelines, the Patent County Court has set a costs recovery limit of £50,000.00 for liability claims. That sum is inclusive of disbursements, success fees and insurance policies. If the Claimant seeks an account of profits or damages, that sum is capped £25,000.00.
Costs Recovery for permitted stages is also limited. Current guidelines state:
- Settling of Particulars of Claim is capped at £6,125.00;
- Drafting of Witness Statements is £5,000.00;
- Experts are capped at £7,500.00; and
- Inspection or Performance of experiments is £2,500.00.
There is also the possibility that legislation may be passed which caps any damages to £500,000.00. This is still under consultation.
In conclusion, the principle point of the Patent County Court is to streamline litigation to make it more cost effective and to afford the smaller businesses to defend their rights without being burdened by expensive and lengthy Court proceedings.
On a side note, the Court may also change its name to the Intellectual Property County Court in an attempt to evidence that it deals with all aspects of Intellectual Property law and not just patents.
For more information or advice on patents, please contact
Iain Colville on 01926 880753.
