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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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New Opportunities for Low - cost IP Litigation in the UK

The UK courts are an internationally respected forum for patent litigation, but high costs have caused small and medium enterprises to turn away. Recent reforms to the Patents County Court (PCC) aim to redress this situation, presenting new opportunities for low cost patent litigation.


The UK courts are an internationally respected forum for patent litigation, but high costs have caused small and medium enterprises to turn away. Recent reforms to the Patents County Court (PCC) aim to redress this situation, presenting new opportunities for low cost patent litigation.

The PCC was established in 1990. Running alongside the Patents Court, it was intended that the PCC would provide an inexpensive forum for simple patent litigation, while the Patents Court would deal with complex, high value cases. Unfortunately, this admirable goal was not achieved. The complexity of its procedures meant that the cost of litigating in the PCC was comparable to that in the Patents Court and, ultimately, cases were rarely brought before the PCC.

The procedures of the PCC were reformed in October 2010, with the aim of revitalising the PCC as a low cost forum for IP litigation.

The key to reducing the cost of litigation in the PCC is the introduction of new, streamlined procedures. The new procedures are inspired by the European Patent Office's opposition procedures, and require parties to set out all the facts and arguments of their case at the outset. Further material may only be introduced into the proceedings at a later stage if the Court is satisfied that the benefit of that material will justify the cost of producing and dealing with it. It is hoped that this will prevent the proliferation of experiments, witness statements and expert reports that often drive up the cost of patent litigation. The Court will endeavour to ensure that the trial lasts no more than two days, which may also help to reduce costs.

Another procedural reform aims to reduce the uncertainty surrounding parties' liabilities for costs in PCC litigation. Unlike some other jurisdictions, the UK courts operate under the principle that the losing party is liable to pay the winning party's costs. According to a recent survey, the cost of litigation in the Patents Court ranges from about £200,000 to over £1,500,000. Under the new PCC procedures, a successful party may only recover up to £50,000 (US$80,000; €60,000) in costs from the losing party, ending much of the uncertainty over liability for costs. This does not prevent a party from spending more than £50,000 if they wish, but merely limits their exposure to the other party's costs.

There is no limit on the amount that the winning party may recover at the time of going to press, but there are plans to limit claims for damages or an account of profits to £500,000. Injunctions will be available.

An important aspect of the PCC is that proceedings are presided over by a specialist judge. The newly appointed judge of the PCC is His Honour Judge Birss QC, a former barrister with extensive experience in all areas of intellectual property. HHJ Birss's judgements to date suggest that he is keen to ensure that the PCC achieves its aim of providing a low cost forum for IP litigation. 

Comment

We welcome these reforms to the PCC, which should give small and medium enterprises new opportunities to enforce their intellectual property rights in the UK.  

We have heard reports of small enterprises deciding not to file UK patent applications for fear of being unable to afford to enforce the resulting patent against a larger and more affluent competitor. We believe this is a poor reason not to engage in the patent system, and we are optimistic that cheaper access to justice from these reforms will encourage more applicants to take the first step.

Despite being named the ‘Patents County Court', the PCC has jurisdiction to hear most types of intellectual property disputes (including those relating to patents, trade marks, registered and unregistered designs, copyright and passing off) for the whole of England and Wales. 

All of Jenkins' patent attorneys have the right to represent litigants in the PCC. We would be pleased to advise clients who wish to explore the new possibilities for resolving disputes in the PCC.

"There is no reason whatsoever why litigants foreign or domestic should be put off from having their intellectual property rights determined in the Patents County Court." His Honour Judge Birss QC in ALK-Abello Ltd v Meridian Medical Technologies."