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Business Briefing Intellectual Property Disputes in the UK Intellectual Property Dispute Resolution in England Costs Capping in the Patents County Court

“…assuming a rights owner has a good claim for infringement, the maximum risk to the business will be £50,000 …”

The Patents County Court is more than just a court for patent disputes. The name of the court doesn’t tell the whole story. Its role has evolved from the time of its creation in the early 1990s to embrace dispute resolution for all intellectual property causes of action. For small and medium-sized businesses, it can be the first choice to resolve intellectual property disputes of all types. But concern has developed in respect to the escalating costs involved, even in the Patents County Court. The publication of the Jackson Report has helped to create a much more cost-conscious environment within English and Welsh Courts. Further reforms have recently been implemented to make the Patents County Court a more attractive forum for small and medium-sized businesses to seek resolution of relevant disputes. Affordability In England and Wales, litigants are confronted with the risk of adverse costs orders in the event that they are not successful in court, either as the respective claimant or defendant. Accordingly, one of the key commercial decisions for claimant companies whose intellectual property rights have been infringed is whether the prospect of recovering the loss caused by infringement of valuable intellectual property rights is affordable or even worth the risk of an adverse costs order in the event of a failure to succeed at trial. Recent amendments to the Civil Procedure Rules (CPR) go some distance to rebalancing the commercial priorities and risks of pursing cases in the Patents County Court. In particular, since October 2010, litigants in the Court are guaranteed – subject to limited exceptions that the maximum recoverable costs are capped at £50,000. The Patents County Court has given a jurisdictional limit for claims of £500,000. At first glance, this is an attractive proposition: assuming a rights owner has a good claim for infringement, the maximum risk to the business will be £50,000 in the legal costs in the event of defeat. This is not to say that an unsuccessful litigant would be ordered pay £50,000 in adverse costs orders. The assessed recoverable costs, including the irrecoverable costs, have a fixed maximum of £50,000. The exceptions to the capping rules are where (1) a party behaves unreasonably: in such cases, the costs incurred as a result of the unreasonable conduct of the opposing party may be recovered in addition to the fixed limits; and (2) the proceedings relate to an infringement or revocation of patent or registered design and the validity of the rights has previously been certified by a court.

47 Fleet Street | London | EC4Y 1BJ T: +44 (0)20 7353 2732 | F: +44 (0)20 7353 2732

Scale of Costs The maximum costs recoverable at the main stages of the proceedings are: Stage


Particulars of claim


Defence and counterclaim


Making or responding to an application


Inspecting disclosure or product/process description


Performing or inspecting experiments


Preparing witness statements


Preparing experts’ report


Preparing for and attending trial and judgment

“[The] costs recovery rules now assist businesses to make commercial, balanced decisions on risk in intellectual property disputes”


Abridged Procedure An abridged procedure also applies in proceedings conducted by the court in that: 1. after the parties plead their cases, no further evidence, written argument or specific disclosure will be permitted without the permission of the court. This will be a matter considered at the case management conference. 2. other applications will if possible be dealt with on paper or by telephone. 3. the trial will be limited to one or at most two days. These are significant changes. As Standard Disclosure is no longer a pre-trial step (CPR 63.24), the parties are not obliged to produce any material that is adverse to their cases. A separate maximum of £25,000 also applies to assessments of damages. These costs recovery rules now assist businesses to make commercial, balanced decisions on risk in intellectual property disputes, without the risk of exorbitant costs orders which might otherwise be ordered in the Chancery Division of the High Court. The amendments are likely to revitalise the amount of business passing through the Patent County Court. Proceedings should be conducted more cost-effectively and with a greater degree of exercise of the Court’s case-management powers to control the expert evidence used in the proceedings. Recently, His Honour Judge Birss QC was appointed to the Patents County Court. He has brought a new enthusiasm to exploiting the strengths of the Patents County Court for small and medium-sized businesses. The Patents County Court has now been shaped into an attractive forum for businesses when pursuing intellectual property infringement claims. The relaxation of pre-trial procedures is as significant as the fixed maximums for recovery of costs. T: +44 (0)20 7353 2732 | F: +44 (0)20 7353 2732

Getting Started Our lawyers have acted for businesses trading in the UK and Europe in respect to patent disputes. Our solicitors act and advise on challenging and enforcing intellectual property rights to prevent and stop infringement of intellectual property rights before it gets out of hand. Give us a call to speak to one of our solicitors. For further information call – +44 20 7353 2732. Need more information on intellectual property rights? Go to:

Gillhams Solicitors LLP


Second Floor 47 Fleet Street London EC4Y 1BJ T: +44 (0)20 7353 2732 F: +44 (0)20 7353 2733 T About Gillhams Solicitors LLP Gillhams Solicitors, based in London, is an intellectual property law firm providing legal advice to business. We enable businesses worldwide to maximise the capital value of intellectual property rights and by delivering excellence in legal services. Copyright © 2011 Gillhams Solicitors LLP


Patents County Court Litigation and Dispute Resolution  

The Patents County Court in England is a specialised court for the resolution of intellectual property disputes.

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