10 Frequently Asked Questions about IP Disputes in England

1. How long will it take to resolve the dispute before an English Court?

Much depends upon the particular intellectual property right or rights that you are asserting and the number of Defendants that you are suing.

In general terms, you are usually looking at a period of 12-18 months between when the legal proceedings are commenced and the hearing of the trial before the Court. However, sometimes a dispute will be resolved in a shorter or longer time period. Often this depends on the complexity of the matter.

If, following the trial, there is an appeal against the trial judge's decision then the appeal will usually be heard within 12 months of the original trial date.

2. Can I do something in the interim, before we get to trial?

In some IP disputes it is crucial to get interim protection from the Court before the full trial, which might be in 12-18 months time.

For example, it is possible to apply to the Court to get an interim injunction to prevent the Defendant from continuing his acts of infringement up until the trial.

It is also possible to obtain orders preserving relevant documents and items that are relevant to the dispute.

In some cases it might be appropriate to apply to the Court to freeze the assets of the Defendant, to stop him hiding or dissipating his assets before the trial.

In certain circumstances it may also be possible for a Defendant to obtain a Court order for security for his legal costs against the Claimant.

3. How much will it cost to resolve the dispute and will the other side have to reimburse my legal costs if I win at trial?

Lawyers generally charge on an hourly rate basis for the work they have to do in relation to an IP dispute. The more work they have to do, the more their costs increase.

Accurately predicting at the outset the likely cost of an IP dispute is very difficult, as there are so many unpredictable factors, in particular the approach of the other side to the dispute.

If a dispute goes all the way to trial then, depending on the complexity of the dispute and the number of parties involved, your own legal costs could easily reach £100,000 plus VAT and disbursements (e.g. Court fees).

In very time consuming IP litigation your own legal costs could be greater still and could run into several hundreds of thousands of pounds.

In straightforward, simple IP cases it is sometimes possible to bring a matter to trial and not incur legal costs of more than about £50-75,000 plus VAT and disbursements.

If you win at trial then it is possible for the Court to order the losing party to reimburse to you your own legal costs and disbursements. Generally speaking, such orders of this nature usually only ever result in you being reimbursed somewhere in the region of 65-85% of your own legal costs and disbursements. There are always irrecoverable costs that you have to bear, not withstanding your success at trial. Of course, if you lose then the tables are turned and you will have to bear both your own legal costs and the other side's costs.

4. If I go to Court and I win at trial, what will the Court do?

If you win at trial the Court is likely to grant an injunction preventing the Defendant from continuing the acts against which you have made complaint.

The Court may also order that all infringing items must be delivered up to you or destroyed.

The Court may also award you damages for the losses you have suffered as a result of the Defendant's activities. Alternatively, it may be possible for you to acquire the profits that the Defendant has enjoyed as a consequence of his infringing activities.

As explained above, the Court will also probably award you a significant proportion of your own legal costs (usually in the region of 65-85% of your costs) plus interest on these costs and the damages awarded.

5. What options do I have to resolve the dispute other than via legal proceedings before a Court?

There are various options available to you to resolve an IP dispute, other than via legal proceedings. These options are also available to you even after you have commenced legal proceedings. It is important to remember that the majority of cases do settle before they reach trial.

Typical options available include trying to resolve the dispute by way of 'without prejudice' correspondence passing between the parties legal advisors and/or attending 'without prejudice' settlement meetings; making formal Part 36 Offers to Settle (which put the other party at risk as to costs if they continue with the proceedings and fail at trial to beat the offer made in the Part 36 Offer); and attending at a confidential mediation (where both parties meet with a mediator to see whether a resolution can be found).

6. What does the term 'without prejudice' mean?

Often when the parties legal advisors are trying resolve a dispute they will make offers to settle on a 'without prejudice' or 'without prejudice save as to costs' basis. What this means is that the Court does not see the terms of the offer made until after the trial, when it comes to decide the question whose legal costs should be paid by whom.

7. How do I prove my case before an English Court?

A party to IP litigation typically proves its case by relying upon relevant documents, witness statements of fact from relevant witnesses of fact, conducting experiments (for example, in patent disputes) and expert evidence (where issues of a technical nature are in dispute and the Court needs to be assisted in the resolution of these disputes by way of expert assistance).

At trial, witnesses of fact are usually cross-examined by the other side, thus enabling them to have an opportunity to challenge and discredit their evidence. The same principle applies in relation to expert evidence.

8. Which judge will hear my case?

In this country it is not possible to choose which judge will hear your case.

Suffice to say, if the case involves a patent or registered design it will be heard by one of the nominated and expert patent judges.

If the matter involves any other form of IP right then it will be heard by a judge sitting in the Chancery Division of the High Court in London, unless the proceedings are commenced elsewhere in the country.

Virtually all legal proceedings in this country that involve IP rights are heard before judges based in London, because parties to IP disputes want to benefit from their specialist knowledge and track record/expertise.

9. What is 'disclosure'?

In this country we do not have trial by ambush. Each party to an IP dispute has to tell the other side what relevant documents they have, whether they help or not, that relate to the points in dispute.

Each party must also allow the other side the opportunity to inspect those documents, unless they are privileged documents. The fact that the documents contain confidential information does not necessarily mean that they are privileged from inspection by the other side.

10. What happens if I want to pull out of the legal proceedings after I have commenced them?

Once you have decided to commence or defend Court proceedings you cannot simply withdraw or stop them. If you do so without agreeing a settlement with the other side then you will almost certainly have to pay the other side's legal costs and, if you are a Defendant, you will also most certainly have judgment entered against you.

Therefore, it is important to ensure that, before commencing or defending legal proceedings, you are prepared if necessary to see the matter all the way to trial.