Intellectual property ("IP") litigants in the UK have access to a court which caters for smaller disputes of the less complex variety, handing out prompt and relatively inexpensive judgments. The modern and practical procedures of the new Intellectual Property Enterprise Court (“IPEC”) and the focused approach of its judges can significantly reduce the cost of litigation and allow a speedy resolution of IP cases.

Intellectual Property Enterprise Court

The former Patents County Court (the “PCC”) underwent a restructure and, on 1 October 2013, was converted to become the IPEC. The re-branding reflects the fact that the Court is there to deal with the whole spectrum of IP cases, such as trade mark, design, copyright and passing off cases, in addition to patent cases. As well as its jurisdiction over claims relating to UK IP rights, the IPEC is also designated under EU legislation as a 'Community trade mark court' and as a 'Community design court'. Accordingly, many of the cases before it concern alleged infringements of these EU-wide rights.

Along with a new name, the IPEC has been upgraded from being a County Court, and is now part of the High Court. The practical effect of this is minimal, but it does iron out some of the minor jurisdictional problems caused by its former status as a County Court.

Building on the success of the PCC

In 2010, the then named PCC underwent very welcome, extensive reforms. The changes were stark, and the court became a highly effective forum for dealing with smaller and less intricate IP disputes. The success of the Court as a venue for resolving IP disputes is highlighted by a substantial increase in the number of claims issued before the court since the reforms (double to date, and counting). Many perceive the Court’s success to be founded upon its costs cap structure, short trial lengths of approximately two days and active case management by the judges.

Under its new branding as the IPEC, the key features of the Court are as follows:

      • Specialist judges sit in the IPEC, who can provide the requisite knowledge for IP disputes.
      • Parties’ pleadings, which can be used as evidence, are far more detailed than those used in other branches of the High Court. In practice, this means that the claimant must set out his case at the outset of the matter, thereby avoiding costly and time consuming tactical battles.
      • There is no standard rule of disclosure (and no US-style discovery). Instead, documentary disclosure and other forms of pre-trial investigations are subject to the discretion of the Court. The judge will use his expertise and discretion to control the use of evidence, by stating, for example, which issues the parties should address.
      • Other key aspects of the case, including the issues that may be addressed in witness and expert evidence and the number of witnesses/experts, the use of surveys and experiments and other evidentiary issues are all subject to the approval by the Court.
      • The trial procedure is condensed and the trial judge takes a pro-active role in case management. As a direct result, trials are expeditious, often lasting no more than a day.
      • Caps on damages and recoverable costs deter “gratuitous” or disproportionate litigation and appear to encourage early settlement: The current caps being relatively low at £500,000 on the maximum amount of damages that can be awarded (although this can be waived if agreed between the parties) and, discounting exceptional circumstances, £50,000 on costs recoverable by the successful party.

Who benefits?

In short, all those wanting to either defend or assert their IP rights in the UK.

The IPEC represents an ideal venue for smaller and less complex cases of IP litigation: SMEs who may have in the past been deterred from enforcing and defending their rights now have a platform to gain relatively quick, but informed, decisions, and sidestep the uncertainty of adverse costs orders. This comes as positive news and displays a real progression in the UK, especially in light of the Digital Opportunity report prepared by Professor Ian Hargreaves, which reviewed IP and growth in the UK in 2010/2011 and found that one in five SMEs had decided against defending their IP rights.

This said, such advantages are not limited to individuals and SMEs. The UK’s IP Minister, Lord Younger, said: “The changes make [the UK] a viable place for businesses of any size to protect their IP and ensure access to justice at a fair cost for all rights holders and other businesses.” Larger enterprises, who may have neglected to pursue their rights with regards to smaller IP matters, if, for example, the value of the claim made conventional court proceedings uneconomic, have an effective means in the IPEC to do so. Analysis shows that one in five claimants appearing in the IPEC are, indeed, large entities.

Summary

Litigating is of course not the only means to enforce IP rights; more often than not parties can negotiate some form of licence or other means by which to strike a settlement, rather than litigating in court. However, whether as a driver to achieve a satisfactory settlement or for those cases where settlement cannot be achieved, businesses in the UK have, in the IPEC, a specialised forum in which to resolve IP disputes and enforce their rights in an efficient, timely and cost effective manner.

Trainee Solicitor Aidan Colclough provided significant assistance in the creation of this article.