The Intellectual Property Enterprise Court - A Streamlined and Less Expensive Procedure

Summary

The Intellectual Property Enterprise Court (IPEC) came into existence on 1 October 2013, and replaces the former Patents County Court (PCC) as an alternative venue to the High Court in the UK for intellectual property litigation, patent, design, trade mark, copyright and trade secret cases. The IPEC will continue to carry out the same functions as the PCC, hearing less complex cases than the High Court. The PCC proved attractive, in particular for small and medium sized enterprises (SMEs), as a fast and cost effective IP litigation forum and the IPEC is proving similarly successful. There is a cap on the monetary value of claims before the IPEC of £500,000.

J A Kemp may represent clients at the IPEC without the involvement of external solicitors. Our Litigation and Dispute Resolution Group is headed by a barrister and includes qualified solicitors, patent attorneys and trade mark attorneys.

Recovery of Costs for the Successful Party Limited to £50,000

Generally in UK Court proceedings, the winning party will obtain an order for the losing party to pay costs and so will be able to recover a significant proportion of his legal costs. The uncertainty of the amount of the potential cost liability has in the past been a disincentive for an SME to bring proceedings against a larger defendant who might be able to spend freely on his defence. However, the rules at the IPEC now limit the recoverable costs from the losing party to a maximum of £50,000, in almost all cases, thus providing a level of certainty as to the potential costs exposure for a party bringing a claim.

Tight Procedural Timetable and Fewer Evidential Steps

The procedure at the IPEC has similarities to the procedure at the Board of Appeal at the EPO. It is necessary for parties to set out their case fully but concisely early on in writing.

The Particulars of Claim, filed by the Claimant, and Defence, filed by the Defendant, each verified by Statement of Truth, define the scope of the proceedings.  There is no automatic standard disclosure of documents and no right to adduce evidence without permission. If a party wants disclosure of documents, witnesses of fact or expert evidence it needs to justify it on a cost-benefit test to the Judge in the proceedings at a case management conference. Many cases may be able to proceed without any or with only limited oral evidence. It currently takes around 12-15 months from commencement to trial.

If both parties agree, the decision may be made on the basis of the parties’ written cases. Any trial will be limited to one or two days and will involve no or strictly limited cross examination.

Conclusion

The IPEC offers a streamlined, cost-effective procedure for the less complex and heavy IP cases. It is an attractive forum for SMEs to enforce their intellectual property rights. 

9 March 2015

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