What does the Intellectual Property Enterprise Court mean for Litigants in the North West?

Liverpool Civil and Family Court

On 1 Oct 2013 The Crime and Courts Act 2013 (Commencement No. 3) Order 2013 and  The Civil Procedure (Amendment No.7) Rules 2013 came into force. Art 3 of the commencement order implemented s.17 (5) and paragraph 30 (3) of Schedule 9 of the Crime and Courts Act 2013.  Those provisions repealed s.287 to s.289 and s.291 of the Copyright Designs and Patents Act 1988 and thereby abolished the Patents County Court.  Art 26 (b) (i) of the amendment rules established a new Intellectual Property Enterprise Court ("IPEC") as a specialist list within the Chancery Division.

Rules and Practice

IPEC exercises the same jurisdiction as was exercised by the Patents County Court. Most of the provisions of CPR Parts 45 and 63 that applied to the Patents County Court now apply to IPEC mutatis mutandis. Although part of the High Court IPEC has a small claims track as well as a multitrack. No new practice directions or court guides have been issued for IPEC. It may therefore be assumed that the old Part 63 Practice Direction and the Patents County Court and Small Claims Track guides continue to apply for the time being.

Liverpool, Manchester and Preston

The abolition of the Patents County Court and the establishment  of IPEC do not affect the jurisdiction of the rest of the Vice-Chancellor of the County Palatine of Lancaster and his deputies or of the Liverpool, Manchester and Preston County Courts under CPR 63.13 to hear intellectual property claims falling within paragraph 16.1 of the Part 63 Practice Direction.  When I wrote "Intellectual Property Litigation in Manchester and Liverpool" 11 July 2011 I thought that that jurisdiction would wither on the vine because I could think of very few circumstances why a litigant from the North West would wish to start his or her proceedings in Liverpool, Manchester or Preston.  I wrote:

"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."

After the small claims track of the Patents County Court had been established I wrote in "Civil Justice Centre or the Rolls Building" 15 Oct 2012 I wrote:

"This new small claims track, which is in the Rolls Building in London, can probably handle many if not most of the intellectual property claims that have previously been brought in the chancery district registries and chancery county courts. Any case other than one relating to patents, registered and registered Community designs, semiconductor topographies and plant breeders' rights can be brought in the small claims track provided that the damages sought do not exceed £5,000. Since the remedy that most intellectual property owners want is an injunction against future infringement rather than damages or an account of profits for past infringement that is not a problem. Most intellectual property disputes are settled early either on undertakings given in correspondence or after the claimant is granted or refused an interim injunction. It is very rare for a successful claimant to insist on an account or an inquiry and very few settlements require the defendant to pay the claimant substantial damages."

There have been two developments since then that have caused me to modify my view.  The first is the introduction of costs management into all courts on 1 April 2013 and the abolition of the right to recover success fees and insurance premiums from the other side by virtue of Part 2 of the Legal Aid, Sentencing and Punishment of Offenders Act 2012. The second is s.17 (1) of the Crime and Courts Act 2013 which will establish a single County Court for the whole of England and Wales which can sit anywhere in those countries and will have nationwide jurisdiction over all intellectual property cases other than patents. registered and registered Community designs, semiconductor topographies and plant varieties which are reserved to the Patents Court and IPEC by CPR 63.2 (2).  It is also worth noting that the Court of Appeal reasserted the jurisdiction of the chancery county courts o hear small intellectual property claims in Sullivan v Bristol Film Studios Ltd [2012] EWCA civ 570 on 3 May 2012, a few months before the Patents County Court's small claims track was established (see my article "Enforcing Small IP Claims: Sullivan v Bristol Film Studios" 7 May 2012 NIPC Law).   For these and other reasons I wrote "Maybe we need to think again about the Chancery District Registries and County Courts" 5 May 2013 4-5 IP.

Which Cases would be suitable for Liverpool, Manchester or Preston?

If a claimant and his or her solicitors are in the North and he or she requires urgent interim injunctive relief I would consider issuing proceedings in Liverpool, Manchester or Preston. I would also consider issuing proceedings there for other IP claims if all the parties and their witnesses were in the North. Finally, I would consider the County Court sitting in those cities for claims similar to Sullivan's.

Other Procedures

Litigants and their professional advisers should never forget the alternatives to litigation.   For instance, domain name disputes can be determined more expeditiously and cost-effectively under ICANN's Uniform Domain Name Dispute Resolution Policy or Nominet's Dispute Resolution Service. Advisory opinions on validity and infringement of patents from IPO examiners can be obtained for £200 (see "Patent Office Advisory Opinions available from Monday" 1 Oct 2005 NIPC Law) and this service will soon be extended to design disputes by the Intellectual Property Bill (see "The Intellectual Property Bill" 28 May 2013). The IPO's hearing officers can determine claims for revocation of patents, revocation and invalidity of trade marks and many other intellectual property cases for a fraction of the costs of litigation in IPEC. The IPO also offers a very reasonably priced mediation service.

Further Information

If you require further information I shall present a webinar on IPEC's small claims track to the Institute of Trade Mark Attorneys between 12:00 and 13:00 on 12 Nov 2013.  You can also call me on 0161 850 0080 during normal office hours or message me through my contact form.  You can also tweet, write on my wall or send me a message through G+Linkedin or Xing.


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