Sunday 23 September 2012

Driving on the Small Claims Track

The barriers to enforcement of small IP claims will be lifted from 1 October 2012.
If you are an aggrieved designer, photographer or even brand owner, relief is at hand on the Patents County Court Small Claims Track. Question is how do you drive on it.
Are you eligible?:
Your claim must relate to a trademark, passing off, a copyright or unregistered design right and be worth less than £5000 and that presumably includes cases where all you want is an injunction to stop someone trading as you. But note that you must wait for the trial to get that injunction as there is no interim relief on this track.
How do you start?:
First write to the person setting out the problem as you see it and give them time to reply. Tell them what your rights are, what they have done wrong, what you want and when you want it by. The letter should comply with the pre-action protocol and should say so. Be reasonable and polite the court will see this letter.
If you don't get what you want you need to fill in your Claim Form. You need to set out the particulars of your claim and say you want the  claim to be allocated to the small claims track.
What does it cost?:
The fee depends on how much money you are claiming. For a photograph used without permission it only seems likely you will get more than the National Union of Journalist's Guidelines. See a judgement from the Court in Delves- Broughton v House of Harlot. If you want an injunction its £175 and if you want damages it adds from £35 to £120.

Where do I get help?:
From one of the regular readers of this blog who is a solicitor and will offer you a fixed fee deal. However it doesn't have to be a solicitor. You can use pretty much anyone if you are prepared to attend court with them. You can also use the free mediation service provided by the Courts. If you do use a solicitor there is minimal scope for costs recovery so expect to pay a fee for help and do a lot of the work yourself. Finally there is not a lot of court resource for this service so it all may take a bit of time if there has to be a hearing. However because you can have the matter resolved by the Court that is a big incentive for your claim letter not to be ignored as it may have been before.

The above is intended as something of a idiot's guide intended for  users rather than our email subscribers. Lots of lovely detailed chapter and verse can also be found on Jane Lambert's blog. Its also worth reviewing the Government responses to the call for evidence on this as published by the IPO in March 2012.

Tuesday 18 September 2012

Patent Disputes in Proportion

The UK IPO is currently pondering how to expand its Opinion Service after the recent closure of the latest consultation.

I also note from the IPkat's recent post that the Patents County Court is still in full-blown self-congratulatory mode as it prepares to launch its small claims track (Legislation here Rule 10 ) so maybe its time to raise some issues.

There is no doubt that the new regime has made it practical and possible to resolve disputes using the court system. However, to deliver the real cost savings in litigation that make the costs proportionate to the dispute, it is necessary to conduct this type of litigation in a new way. The way I have chosen is to do it single-handed - eliminating the costs of communication between members of the team. Indeed, many litigants in the Patents County Court are representing themselves. These are the difficulties we all face:
  • Communication with the court is a real problem. Phones don't get answered and emails bounce unless the court wants something but not if you do. In-person enquiries tend to be unproductive as well. You are on your own. The best a litigant a person can do is try the Citizens Advice and its current location in the Family Division tends to suggest its focus but they might help you fill an acknowledgement form and there is no-one in the Rolls Building who could even do that for a defendant determined to represent himself this month.
  • The court filing system. It would be nice if there were one. I have never printed so much paper. It seems a waste that it serves no purpose.
  • Application procedures don't quite work in the way described in the Patents County Court guide, where the court itself is supposed to decide whether a hearing is necessary. If you can't agree a date or even availability with the other side, it's a dead end or a long wait.
  •  Time lines are long. The period for a defence was deliberately set long because the idea was as that there should be full pleadings (not just long ones). However, in patent cases where there has been protracted pre-action correspondence another 10 weeks can be a bit of a bitch to say nothing of the wait for a trial date. I was so vexed by the boast that a case could be decided in a day I tracked down the patent on Ipsum where you can find some of the pleadings relating to Invalidity in an infringement case CC11P03258  that actually started in September 2011 so a judgement in a year is nice but not seriously different from the timescale in Big Brother Patents Court. It also seems that these timescales are lengthening.  Let's hope that the fast-track does not put those who are looking to settle patent and trademark disputes into the long grass of several years.  It is inevitable that costs get greater if files are put down and forgotten rather than got on with, to say nothing of the impact on SME business that does not know if it is racking up a damages claim or not.
We might solve some of these issues with a bit of help and collaboration from the IPO. The trademark litigation section cope pretty well with a large number of files and you can contact it by phone and email. Although it doesn't have the ability to post its files to the Internet as the patent side does, hopefully that is coming. Let's see all the Patents County Court documents on line so that we can all know what's going on including the Judge.

Despite this I have managed to achieve quite a lot, but it does help being next door.