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Patent litigation reform in the UK

Written by Tim Mount on 14 February 2010

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The Intellectual Property Court Users Committee published proposals in 2009 to reduce the cost of a patent or trade mark court case from its current levels of between 500,000 and 1m pounds to a maximum of 50,000.

The UK would then become among the lowest-cost jurisdictions in Europe, rather than the most expensive.

This year in January 2010, the Jackson Report on English civil litigation costs recommended reform. In relation to IP litigation, and patent litigation in particular, Lord Justice Jackson made the following recommendations:

(i) The UK Patents Court is already a court which has active case management, as set out in CPR Part 63, the Practice Direction and the Patents Court Guide. Despite these strengths, there are calls for more robust case management. Consideration should be given to whether the Patents Court Guide should be more robust on: the requisite adequacy of statements of case; not allowing parties to get away with non admissions; where an allegation is denied, requiring that a short explanation be given as to the basis of the denial; requiring that the parties should set out their case on common knowledge at an earlier stage than exchange of expert evidence; and issues being narrowed at an earlier stage with active involvement of the future trial judge.

(ii) The proposals in the IPCUC Working Group's final report for reforming the Patents County Court should be implemented. These are:

(a) The PCC should be re-named the Intellectual Property County Court, in order to make clear the breadth of the work of that court.

(b) The procedures of the PCC should be reformed, so that parties set out their respective cases fully at the outset. The initial pleadings would contain the evidence and the arguments relied upon. After completion of pleadings there would be a main case management conference, at which the judge (applying a cost-benefit test) would decide whether to order or permit further evidence, further written argument or specific disclosure. Any other hearings would be dealt with by telephone. The trial would be limited to one to two days.

(c) The recovery of costs should be governed by scale fees. Total recoverable costs would be capped at 50,000 pounds in contested actions for patent infringement and validity, and at 25,000 pounds in all other cases.

(d) There should be a limit of 250,000 pounds on the financial remedies available in the PCC.

(iii) After reformation of the PCC, the Patents Court Guide should be amended to give clear guidance on the requirements for statements of case, illustrated by model pleadings annexed to the Guide.

(iv) There should be a small claims track in the PCC for IP claims with a monetary value of less than 5,000 pounds and a fast track for IP claims with a monetary value of between 5,000 and 25,000 pounds.

(v) One or more district judges, deputy district judges or recorders with specialist patent experience should be available to sit in the PCC, in order to deal with small claims and fast track cases.

(vi) There should be consultation with court users, practitioners and judges, in order to ascertain whether there is support either for (a) an IP pre-action protocol or (b) the Guide to give guidance regarding pre-action conduct.

These are the proposals, and it will be interesting to see which are implemented.

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