Intellectual Property Enterprise Court Under the Clock

My attention was grabbed by a couple of paragraphs in recent judgements

I would add only that it is clear that the argument we have heard on this appeal has been far more extensive than that addressed to the Judge, who was faced at trial with a large number of other points, all of which had to be dealt with under the stringent time constraints of what was then the Patents County Court. 

This comes from paragraph 41 of Lord Justices Floyd's judgement on the appeal in  AP Racing v Alcon in which they reversed a Patents County Court decision by HHJ Birss QC (as he then was) on the delicate subject of added subject matter in a patent.

Our New Judge in the Intellectual Property Enterprise Court, HHJ Hacon can be found saying on the 3 February

Generally in this court, leaving some of the issues to be heard at a later date is not likely to be sanctioned. However, exceptions are possible and in the present case by the time the trial came before me there was a serious risk that it would overrun if all issues, including the contingent ones, were heard then and there. I therefore approved the approach agreed by the parties.

This comes from paragraph 14 in Elsworth Ethanol v Ensus and a lot of other parties who didn't take part

The Intellectual Property Enterprise Court has trials that are limited to 2 days and frequently shorter intervals. This is supposed to keep the costs down but it's interesting that the court fees seem to be the same. Having watched Mr Justice Birss presiding over a trial in the Patents Court recently, I was particularly struck by how generous he was in allowing the advocates the time they wanted to present their arguments.

Generally the costs factor is decisive in the decision to choose IPEC. I don't mean the costs the client will pay, but the risk of having to pay the other sides charged at some uncontrollable rate. Even so it is still necessary to consider whether the time factor could work an injustice. Always good to deploy only your best argument but with invalidity actions, for example, there may be too many ways to go. Is a point shortly made always the best? Most patent agents know you need more time to write a short letter than a long rambling one.  If things have to be concise maybe your advocate needs to be better in the IPEC than in the High Court.  Nevertheless if living by the clock is the price we pay for justice, then so be it.

Reaching the Cap in the Intellectual Property Enterprise Court

A splendid Cap

For claims started after 1 October 2013 it is going to be a little easier to reach the £50 k and £25k caps on Practice Direction 45 have just got a bit richer and are in rounder numbers. You can find them in the Practice Direction Making Document
costs for trials and enquiries as to damages respectively. This is because the Tables which set out the maximum costs of each stage as set out in CPR
and below.  





Table A

Stage of a claim                        Maximum amount of costs
Particulars of claim                                                    £7,000
Defence and counterclaim                                         £7,000
Reply and defence to counterclaim                           £7,000
Reply to defence to counterclaim                              £3,500
Attendance at a case management conference           £3,000
Making or responding to an application                     £3,000
Providing or inspecting disclosure
or product/process description                                £6,000
Performing or inspecting experiments                       £3,000
Preparing witness statements                                   £6,000
Preparing experts' report                                         £8,000
Preparing for and attending trial and judgment         £16,000
Preparing for determination on the papers               £5,500

Table B
Stage of a claim                                                          Maximum amount of costs
Points of claim                                                              £3,000
Points of defence                                                          £3,000
Attendance at a case management conference                £3,000
Making or responding to an application                         £3,000
Providing or inspecting disclosure                                 £3,000
Preparing witness statements                                        £6,000
Preparing experts' report                                             £6,000
Preparing for and attending trial and judgment              £8,000
Preparing for determination on the papers                    £3,000

Script for introducing a Witness in an English Civil Court

That may seem an odd title for a blog post. It is there because it illustrates an item of information an unversed advocate may be ignorant of. If you Google it, you will not find the answer but you will find litigants in person fruitlessly making similar enquiries on those useless forum sites that Google will insist on on indexing. Since you may be reading this for the script I had better provide it for a civil proceeding before proceeding to my rant on advocacy education

The Witness is called to the stand and the court associate will ask him if he wishes to affirm or swear. If a special holy book may be required for any of your witnesses best to mention this to the associate in advance.
Advocate: Your name is [Joe Smith - these bits in square brackets should match the information you put in that Witness' statement that is in the trial bundle]
Witness: Yes
Advocate:Your address is [ 1 High Street, Midtown]
Witness: Yes
Advocate:Your Job is [Bricklayer]

its not like this in an English court. For info

Witness: Yes
Advocate: You have made a statement in this case on [date] which appears at page [25] of the bundle. Can I ask you to turn to that now. pause Is that your statement?
Witness: Yes
Advocate: Please turn to page [27] is that your signature?
Witness: Yes
Advocate: Are there any corrections or alterations you want to make to that statement
Witness:  No  (If there are make sure you have given the other side details in advance)
Advocate: I submit [Mr Smith] for cross-examination.  sit down

The real reason why Patent Agents do not exercise their rights of audience in the soon to become The Intellectual Property Enterprise Court (it is the Patents County Court until 1 October 2013 when  the Civil Procedure (Amendment No. 7) Rules 2013) and provide access to justice at a proportionate cost is that they are inhibited by ignorance and lack of confidence.

So we have education and training. This is expensive so you want to be certain of its value.

Last month I attended a short lecture on advocacy given by an English barrister from which I learned that in his opinion at the Nuremberg trials, Sir David Maxwell Fyfe QC was more successful in cross-examining Herman Goring than Justice Robert H Jackson. This was because he asked something called closed questions. This lecture did not leave me any more able or confident in my excursions in advocacy. However this month I attended a course run by a trainer (also a qualified lawyer but principally now a teacher so he was not even indirectly looking for my instructions) and learned what the first speaker meant. This is because the second course was run interactively and we had ample opportunity to practice and be critiqued on our performances. We received the necessary signposts to the material that we needed to learn in the CPR. While the first speaker mentioned case theory, the second taught me to use one. The necessity of preparation came across much more effectively than if we simply listened to a speaker telling us that preparation is necessary. We came away understanding how the preparation each of us had invested gave different results. We also saw that some lucky people have more inherent credibility than others, but the rest of us learned how to catch up fast.

The first lecture was recorded so now I can re-listen to it and get about 200% more out of it.

The downside is that the second course cost me the Filemot training budget for this year and next as well as three days. Nevertheless if you get an opportunity to attend a course with Peter Lyons of CPD Training, try it.  Why? Because its excellent value. As well as the training there is an assessment day which ensures you consolidate the work you did on those days. Indeed when you consider the requirement for an eminent assessor and SRA and IPreg endorsement, the cost is proportionate to the overriding objective of education in justice.

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.

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.

Mediation Services

The IPO mediation room ?

The IPO is currently making a call for evidence to try and work out why it is not getting any mediation business. Is it because nobody suggests it, or no lawyers want it, or we are all just ignorant that the IPO has a service to offer.  It would be good to know so can we send our input.

From my viewpoint, I have aspired to use mediation far more often than I have ever achieved it. My best results have been with the mediation element of the Nominet Dispute Resolution Service. They have a simple approach and it costs nothing and it uses the pleadings you have already prepared. Best of all it takes place over the phone and is initiated by Nominet not the parties. It would be neat if the IPO were able to have a staff member read the Patents County Court Pleadings and offer a similar approach, though would it be before or after the CMC - ideas?

Other recent reasons why I have not got disputes into formal mediation include:

• the parties are physically too far apart so coming together for a meeting is impossible
• the other side tells me to stop calling and suggesting that settlement might be something we can discuss
• its too hard to decide who will appoint the mediator and who will pay the cost
• the £££ charge of the best mediators are disproportionate to the value in dispute
• you mean we need a suite of three rooms in central London!
• the decision makers are not prepared to come and spend the time on it - they employ lawyers they don't want to do it themselves
• the idea of preparing a bundle and argument for the mediator is too much extra expense
• the client thinks he is going to win
• getting a debate going on the blogs and on twitter about the rights and wrongs of the case is so much more fun
• a mediator cannot invalidate the patent/trademark/registered design

A mediator has to be a certain type of person, who is learned and fair without coming across as judgmental. The IPO has a role that involves making decisions and it may well be that this makes them come across as more on the side of the gamekeeper. However they are not-for-profit, whereas most mediators are working for profit, so its as good a starting point as any. Maybe all they need is a few more Google Ads.

Shall We CAP Damages in PCC Litigation?

The IPO is conducting a short consultation on the implementation of the limit proposed in the Jackson Review on the financial remedies available in the Patents County Court. Originally the Intellectual Property Court Users Group proposed that this should be £250k but upped that to £500k before their final report in July 2009. This indicates a certain arbitrariness about the figure and the IPO would like some justification.

To put a Cap on the Damages Consultation?

Paul Cole has circulated members of the Patent Agent Litigator's Group encouraging us to argue against the cap. We do not need one. He points out that the IPO has no cap in its patent infringement jurisdiction under section 61(3) of the Patents Act 1977. However that jurisdiction is pretty moribund as both parties need to agree on going to the IPO.  The IPO does not deal in trademark infringement at all.

The new Patents County Court Judge has had his say  in an early case, Alk-Abello v Meridian which he kicked out of his court to the High Court.  He opined:

• Why does value matter? The answer in my judgment is to emphasise what the Patents County Court was set up to achieve. The decisive factor is that the court was set up to ensure that small and medium sized enterprises, and private individuals, were not deterred from innovation by the potential cost of litigation to safeguard their rights. With the new procedures in place I intend to devote my energies to making them work in order to achieve that objective. However this is not the case in which to do it. 

In this case an injunction was in issue. Indeed in my experience of David and Goliath litigation, the Injunction is ALL that matters. Surely the PCC is not just for SMEs battling it out amongst themselves. To me its most important role is in the David and Goliath matters. David cannot usually ask for an interlocutory injunction for fear of a cross-undertaking in damages. If this limit affects that cross-undertaking £500k is still enough to have David cowering. However the PCC can offer speed and simplicity to a final injunction if appropriate with a manageable costs cap.

The IPO have offered an Impact assessment based on "cost savings for business through re-positioning cases previously heard in the High Court into the cheaper County Court (achieved by limiting the value of claims heard in the lower court)". This is not a consequence of the Cap on Damages it is a consequence of the already introduced Cap on Costs, which is BRILLIANT.  Do we need to go this extra step which could come back to haunt us. The Judge has already clarified the cases he wants. Why waste time with a Cap that could be wrong. Forget it. The damages are what the damages are shown to be.

We cannot expect the IPO to go reading blogs so we have to respond to the consultation. Comments would be greatly appreciated.