E- Filing at The Intellectual Property Enterprise Court and a plea for sensible fees

Electronic working with IPEC - wonderful I thought last November (Friday 13th) when I saw that a new Practice Direction had been issued to say that all Rolls Building Courts could be accessed electronically and not just by the fortunate few, such as myself, who have offices round the corner.

The scheme had been piloted through the Technology and Construction Court but I don't have friends who practise there. Wandering aimlessly round the Internet I discovered C-Track™ E-Filing, developed by Thomson Reuters Court Management Solutions. I wasn't at the time quite sure that was the thing but I registered anyway.  Fortunately now there is more information to help us on Judiciary.gov.uk website so start here. There is link to the Practice Direction and to the Home Page of CE-File which is the name for the new service. The Judiciary claim this puts them in the forefront of modern technology around the world - a bold claim indeed.

The CE-File home page contains a link to a USER GUIDE. If all else fails read the guide and wandering aimlessly in CE-File is not a rewarding experience, trust me, but the user guide is very straightforward. Unfortunately there doesn't seem to be a demo option so you can test drive without the stress of a live case. The system is available for Litigants in Person as well as Solicitors and Patent and Trademark Agents.

How are you going to pay the fees. Credit Card is an option here as is Fee Account with the Court Service. Now fees can be rather large and my business credit card doesn't go very high and a £10000 fee might be OK on your card but I don't have American Express so that won't do nicely.  Accordingly I explored the possibility of a Fee Account. Normally I pay fees with a debit card at the counter at the Rolls Building.

Here is the page on Justice for fee accounts. The link to the terms and conditions sends you here which provides an application form and a leaflet explaining the system but no ts & cs. I have emailed the designated address to ask for them since in this case I felt that I probably would Be considered to have read them when I tick the box to say that I had on the application form. As a consumer, of course, I blithely tick I have read terms and conditions boxes without doing so but in this case I'm acting in my professional capacity and I can't treat the court service the same way as I do Apple.

The application form for a fee account presented no particular difficulties and I hope that it will get more response than my request for such an account with the Foreign & Commonwealth Office. Fee accounts are available for a variety of types of organisations not just solicitors but as a patent or trademark agent you can say you are legal firm. If I ever see the terms and conditions I will let you know whether my application succeeds.

As a solo practitioner I nearly fell down at the requirement for a secondary contact. I've given them my next of kin. I'm not sure what he will do when he is contacted by her Majesty's Courts and Tribunal service.

The fee account service is a direct debiting system from your business account. Therefore, you can make sure there are sufficient assets to cover any ginormous fees. Even so, I had some doubts about what credit limit I should ask for. It's not very often I'm going to be issuing two claim forms a week, but even so, if you ask for a very large credit limit and have a fat finger moment you could make a serious dent/hole given with the level of fees that are now expected by the court service. It really is time that IPEC persuaded The Ministry of Justice that issuing a claim in IPEC should be subject to a reasonably circumscribed fee and that an appropriate proportion of any damages awarded should be paid back to the court. That way the court wouldn't suffer but the level of fees would not be a barrier to access of justice.

If you are a CE-File user please let us know your thoughts

Enterprise Court

His Honour Judge Hacon

Yesterday (7 October 2015) AIPPI organised a lecture given by the first and so far only Enterprise Judge, Judge Hacon  and I needed to write up a few notes, so here they are In case they are of use too. There were lots of other issues raised and stories related (including an in-depth history of the extremely enterprising litigation career of the now bankrupt patentee and fencing inventor, Mr Perry) but these were the points I wanted to recall.

Court Fees

 Since March court fees for money claims have gone up at a rate which is particularly punitive to IPEC clients and it is good to know that the judge is concerned about this and would welcome feedback. However, since, in the preceding 6 months to the end of September 2015 there have been 326 cases of which 220 are in the multitrack, it does not appear that the fee increase has had a devastating effect, though it would be interesting to know what values had been put on the new claim submitted after March.

The judge pointed out the extreme undesirability of saying that your damages were unquantifiable as this results in an automatic £10,000 fee. However, he saw no problem in quoting a relatively low value and then adjusting it when the actual value was more apparent. The increased fee would be payable at the time of adjustment and clearly making multiple adjustments was deprecated but the timing of the adjustment might well be problematic too. If a defendant has relied upon the value claimed, a late stage adjustment might be a shock. On the other hand if the defendant has deliberately suppressed the extent of his activities, he might not qualify for great deal of sympathy from the court.
The proposal to make no initial money claim was also mooted and it is in that context you might be leading the defendant up the garden path most, If you then seek an enquiry only after safely succeeding on liability.

Interim injunctions 

The judge was keen to stress that these are available in his court and that since he has both deputies and nominated High Court judges, a judge will always be found. The judge envisages that these will not be ex parte injunctions and that the parties will try themselves to agree an evidence timetable and speak to his clerk to fix a date for the substantive hearing.

Leeds

Would northern litigants please note that the judge is willing and indeed eager to sit in Leeds or other cities which have judge's lodgings with butlers and wine lists. Apparently the litigants whose case was to be heard in Leeds recently decided to settle their differences and the Judge's excursion to northern climes was cancelled.

Publication of small claims case summaries 

We have previously discussed on this blog the desirability of publishing more information about what goes on in the small claims track. Apparently a format for publishing case summaries possibly on the UK IPO website has been agreed but none has as yet emerged. Now that memory has been jogged, perhaps we will see progress.

Pro Bono

The judge encouraged us all to volunteer for the pro bono scheme which he indicated would require both case officers and lawyers willing to commit some pro bono hours. The idea was that the case officer would not provide legal advice but be someone who would be on the client's side and be responsible for finding advisers and possibly encouraging transfer to paid arrangements when appropriate. CIPA/ITMA members have already been encouraged to sign up but clearly the judge feels that law firms with allocations of agreed pro bono hours should be utilised too.

Enforcement

Failing to pay your IPEC costs order is considered  a serious omission by the judge and he is prepared to  grant applications for such a debtor to appear before him to discuss such a default. In one case, the debtor failed to appear and a bench warrant was issued. He was subsequently arrested by the police and brought to the court and the parties were able to agree a compromise and imprisonment proved to be unnecessary.

Money Money Money : Court Fees to be Enhanced Again

Are you still reeling from the rise in English civil court fees to £10,000 in March for unquantified damages claims. Flushed with election success, the fees are to be ENHANCED again. For full details you can see the consultation on the Justice site here

"Bundesarchiv B 145 Bild-F080597-0002, Bundesverfassungsgericht, Richterin Karin Graßhof" by Bundesarchiv, B 145 Bild-F080597-0002 / Reineke, Engelbert / CC-BY-SA. Licensed under CC BY-SA 3.0 de via Wikimedia Commons.

The fees for the Unified Patent Court have also been consulted on here . Responses on that consultation are due to be sent to the secretariat by 31 July you are running out of time if you want to comment. Details of how to comment are here . Since the UPC Has to cover the costs of setting up an entirely new pan-European court, it wasn't surprising to find that they wanted to set pretty high fees. We are expecting a quality and responsive service. We are expecting to be able to see documents and to be able to monitor cases online in a 21st-century way unlike our national court systems. All this is expensive. It may be so expensive that modest businesses with modest disputes cannot even begin to think about using it. This is something of a shame as the Intellectual Property Enterprise Court in the United Kingdom has shown that there are modest patent disputes that need access to justice. Many more are I understand litigated in Germany. Since it will clearly take some time for big Pharma to get comfortable with the UPC, it seemed to me that it would have been quite smart for them to take on some of these more modest cases to get the system moving efficiently. I'm suggesting that €11,000 is too much for a modest business on day 1 to start their claim - perhaps not a great deal too much.
However a €20,000 fee for a counterclaim for revocation is really unfair. It means any modestly sized defendant is denied what is usually their best defence. I went away from that consultation reconciled to the fact that I wouldn't be seeing any UPC work at all in my lifetime.

Now we come to the enhanced fees that are likely to be applicable in the Intellectual Property Enterprise Court.  On this occasion, the proposal is to lift the maximum fee from £10,000-£20,000. If there are any Russian oligarchs left wishing to litigate in London, then it's all well and good that they should pay. What I would like to see is a proper fee established for unquantified damages claims. Most intellectual property actions cannot be valued readily on day one. We need to recognise that in the fee structure and provide for an initial fee and a damages dependent court fee that is paid at the end of the day.

It would also be nice if the appropriate "other remedies" fee applicable in IPEC could be definitively set. At present whether you are charged the High Court rate or the County Court rate is purely at the whim of the counter attendant. The proposal is that those fees rise to £528 and £308 respectively. In my opinion that is actually a tad too low in IP cases where no other financial remedy is sought (but not too low if you are also paying £20,000 for unquantified damages). Given that in a typical trademark case the costs of pursuing damages are likely to be disproportionately greater than the damages ordered in cases which have been started early, not making a money claim is pragmatic and at present that is something of a bargain.


Application fees are also set to rise. The proposal is that £50 becomes 100 for uncontested applications and £155 becomes £255 if contested. The consultation document says that they do not anticipate that the increases will have any significant impact on demand. This is, of course, looking at civil proceedings across the board. In intellectual property cases, it might be a good idea to decrease the demand for general applications.

Hopefully the CIPA Litigation Committee and the Law Society IP committee  will be looking at preparing a response to draw attention to the IPEC issues.

Sally Cooper inquires into Damages at IPEC with Hogarth Help

Some weeks have passed since Hogarth Chambers travelled to Manchester (on 26th January 2015) to engage with an appreciative audience on “Current Trends in IP”. So this is a sadly-belated reference to work of Charlotte Scott on “The IPEC – one year on”.

Hogarth Chambers marketing image

A point made by Charlotte was that, of 14 cases reported in the IPEC since July 2014, 7 were damages inquiries or accounts of profits. Further, Charlotte noted SDL Hair Limited v Next Row Limited (and others) [2014] EWHC 2084 (IPEC) as useful on “general principles”. Mr Justice Hacon does indeed, begin “The Law” in the case [paragraph 31] with the firm statement: “I derive the following [nine] principles from authorities in relation to an inquiry as to damages”.

 I pause here to reflect that, but for Charlotte, I would probably have missed the case completely as it concerns damages in the context of “groundless threats of patent infringement”. Being a Trade Mark Attorney (and no longer an Associate of CIPA) I don’t find the time I once did for reading material that has “patent” in its title. I pause to reflect also that it’s good to have the [nine] principles to hand – both for the client who asks “What will I get if I win ?”  and for the client who doesn’t ask but who ought to be advised on the issue anyway. (The Duck quacks just in case you were interested they got £40,500 plus interest )

 To whet the appetite, the first five principles (with references to cases omitted) are:
(1) A successful claimant is entitled, by way of compensation, to that sum of money which will put him in the same position he would have been in if he had not sustained the wrong
(2) The claimant has the burden of proving the loss
(3) The defendant being a wrongdoer, damages should be liberally assessed but the object is to compensate the claimant, not punish the defendant
(4) The claimant is entitled to recover loss that was (i) foreseeable, and (ii) caused by the wrong, and (iii) not excluded from recovery by public or social policy
(5) In relation to causation, it is not enough for the claimant to show that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss. It is not necessary for the tort to be the sole or dominant cause of the loss. I end with the thought that it’s good to see “common sense” having a part to play !

Charlotte also referenced the  NGRS v Staham case which delivered £5200 and is blogged on our big sister here.
The Duck thinks you might also like to check out Harman and Burge which applies the same SDL law to another fact scenario and came to £39,701 plus interest. 

It is sad to reflect that IPEC claimants with damages claims of this order will now be required to pay more in claims fees as a result of the court fee rise that came into effect today 9 March 2015. Valuing your claim realistically is more imporatn than ever if you dont want to pay a £10,000 claim fee for an unquantified amount of damages. Litigator duck quietly sails away into the sunset