Sources of Information
Intellectual property litigation is governed by Part 63 of the Civil Procedure Rules supplemented by the Part 63 Practice Direction and the Chancery, Patents and Patents County Court and Patents County Court Guides. It should be noted that the Patents and Patents County Court Guide and the Patents County Court Guide are two quite distinct documents.
S.61 and paragraph 1 (i) of Schedule 1 of the Senior Courts Act 1981 assign patents, trade marks, registered designs, copyright and design right work to the Chancery Division. S.62 (1) of that Act confirmed the jurisdiction of the Patents Court to hear patents and designs cases.
S.287 (1) of the Copyright, Designs and Patents Act 1988 conferred jurisdiction on the Lord Chancellor to designate any county court as a "patents county court" and to confer jurisdiction on it to hear patents and designs cases and ancillary proceedings. Only two county courts have ever been designated as patents county courts and there has never been more than one patents county courts at any time. The only patents county court at present is the Central London County Court.
Allocation of Work
CPR 63.2 (2) requires any claim under the Patents Act 1977 and Registered Designs Act 1949 and any case relating to registered Community designs, semiconductor topographies and plant varieties to be brought in the Patents Court or Patents County Court. CPR 63.13 requires all other intellectual property claims to be started in the Chancery Division, the patents county court or a county court attached to a chancery district registry which are known as "chancery county courts". For paragraph 16.1 of PD Part 63 lists the cases that should be brought in the Chancery Division, Patents County Court or chancery county courts and paragraph 16.2 lists the chancery district registries. It will be noted that in North West England there are chancery district registries and hence chancery county courts at Manchester, Liverpool and Preston though Preston does not have jurisdiction in relation to trade marks or Community trade marks.
Cases that must be brought in London either in the Patents Court or the Patents County Court are those relating to:
- registered designs
- registered Community designs
- semiconductor topographies, and
- plant varieties.
All other intellectual property claims that may be brought either in London (the Royal Courts of Justice or the Patents County Court) or in Manchester, Liverpool or Preston.
Patents and Patents County Court Judges sitting outside London
The rule that all patents, registered designs, registered Community designs, semiconductor topography and plant variety claims must be brought in London is mitigated greatly by paragraph 5 of the Patents Court Guide and paragraph 1.5 of the Patents County Court Guide which state that the Patents Court judges will sit outside London for the purposes of saving time and costs if the parties so desire.
Choice of Venue
On 1 Oct 2010 new rules were adopted that make it very much cheaper and easier for small and medium enterprises ("SME") and individuals to bring any type of intellectual property claim in the Patents County Court. I discussed those rule changes in detail in my article "New Patents County Court Rules" on 31 Oct 2010. Since most intellectual property claims in North West England could be brought before the Patents County Court, practitioners in North West England should think long and hard as to whether it really is in their clients' best interests to issue proceedings out of Manchester, Liverpool or Preston rather than the Patents County Court. The only circumstances where I would still recommend issuing out of the Manchester, Liverpool or Preston District Registries are where the claim is likely to exceed £500,000 or where I need really urgent interim and probably "without notice" injunctive relief. I can think of no advantage of issuing intellectual property proceedings out of the Manchester, Liverpool or Preston county courts.
Proceeding outside London
If you do choose to issue out of Manchester, Liverpool or Preston District Registries or County Courts you should consult Chapter 12 of the Chancery Guide: "Chancery Business Outside London" and the contact details in paragraph 6 of Schedule 1 to that Guide. In most other respects, Chancery practice in the North West follows London. The presiding judge, still known as the County Palatine of Lancaster, is Mr. Justice David Richards and his deputies are Judge Hodge and Judge Pelling. The judges of the Mercantile and Technology and Construction Courts sitting in the North will also hear chancery cases. I have appeared before all those judges at one time or another and can say that they are all good. However, unlike Judge Birss QC of the Patents County Court, they practised in different areas of law while at the Bar. One other important difference is that interim applications can only be brought one day a week which is generally a Friday in Manchester.
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