Williams Powell

British and European Patent and Trade Mark Attorneys

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Williams Powell

11 Staple Inn
United Kingdom

T: +44 207 242 7005

F: +44 207 242 7115

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Brewdog in Doghouse
In a recent UK opposition decision.  Brewdog have been denied trade mark registration for BREWD...
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Recent News

UK Ratifies Unified Patent Court (UPC) Agreement
The United Kingdom's Intellectual Property Minister Sam Gyimah announced on World IP day, 26 April 2018, the ratification by the UK of the Unified Patent Court (UPC) Agreement. The UPC agreement also ...
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UK ready for the Unified Patent Court
On 8 February 2018, the final legislation needed for the UK to be ready for the Unified Patent Court was passed.  The Queen and her Privy Councillors signed off the Order which is available here ...
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Brexit to have no effect on UKs dealings with the EPO
Brexit will have no consequence on the UK in connection with the European Patent Office (EPO), either for applicants or for Patent Attorneys in the UK, as confirmed by the EPO. In its notice dated 25...
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Delays to Opening of Unified Patent Court?
It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks li...
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The Patents County Court (“PCC”) was established in 1990 to provide small to medium-sized enterprises (“SMEs”) with an alternative, lower cost forum to the Patents Court, a branch of the Chancery Division of the High Court. Unfortunately the PCC was not particularly successful in its early years. In 1999 the introduction of Civil Procedure Rules resulted in the PCC and the Patents Court being virtually indistinguishable in terms of cost and complexity of procedure, discouraging SMEs from bringing cases at all.

Changes to the procedural rules and practice directions for the administration of claims in the PCC came into force on 1 October 2010. According to Lord Justice Jackson, the changes aim to “promote access to justice at a proportionate cost for SMEs and other parties involved in lower value IP disputes”.   

In order to achieve this aim the new rules set out provisions that streamline proceedings by reducing the amount of information considered and minimising the amount of time spent in court. Further provisions cap recoverable costs for each stage of the proceedings, and cap overall costs at £50,000 for liability and £25,000 for an enquiry as to damages. These caps provide the claimant with more certainty and consequently make litigation a more financially viable option for SMEs. 

In terms of procedural changes, an extended timetable for exchange of statements of case is prescribed. However, the statements of case must now set out concisely all the facts and arguments upon which the parties will rely and there is little scope to amend the statements or add further arguments later in proceedings. In this way, all relevant information should be brought to light at the outset of proceedings, allowing the important issues to be identified by the judge at the first case management conference (“CMC”).   

Where possible, and where the parties consent, the court will determine the case solely on the parties’ statements of case and oral submissions at the first CMC. A hearing will be conducted only where necessary, and only conducted in person if this is considered to be more cost effective than a telephone or video conference, or otherwise necessary in the interests of justice. Where a hearing is held, cross-examination will be strictly controlled and the court will endeavour to ensure that the trial lasts no more than two days.

Another measure introduced to reduce cost and time spent is the abolition of standard disclosure. In fact any disclosure or evidence, such as expert reports and witness statements, ordered by the judge at the CMC will be limited only to specific and identified issues where the court is satisfied that the benefit of the further material appears likely to justify the cost of producing and dealing with it.

Further rule changes stipulate conditions for transfer of cases from the PCC to the High Court, ensuring that transfer does not occur where a party can only afford to bring or defend the claim in the PCC, or where the value of the claim is such that it is appropriate to be determined in the PCC.

The new PCC is clearly not suited to high value, complex patent infringement and validity cases. For these cases, where full access to all the relevant facts and witnesses is required, the traditional system of the Patents Court is more appropriate.   However, by radically changing the way litigation is carried out in the PCC, the new rules should enable and indeed encourage SMEs to enforce their intellectual property rights against competitors. Reducing the cost and complexity of straightforward IP litigation should inevitably make IP rights an even more valuable commercial asset for innovative SMEs of the future. 

It is possible that further changes will be made regarding litigation in the PCC. Proposals include limiting the damages or profits recoverable in any claim in the PCC to £500,000, changing the name of the court, and expanding the special jurisdiction of the court to cover all forms of IP.

Update: October 2013 - the Patents County Court has been renamed to the Intellectual Property Enterprise Court.  Procedures and cost caps remain essentially the same, although it has now been placed on an equal footing to the High Court.