The Intellectual Property Enterprise Court - What is it?
Monday, 30th December 2013
In October 2013, the Patents County Court ("PCC") was rebranded as the Intellectual Property Enterprise Court ("IPEC"). The IPEC is now a specialist listing within the Chancery Division of the High Court and is no longer a part of the County Court system.
The PCC was very successful, as a cost effective forum for low value and/or straightforward intellectual property disputes, particularly for small and medium sized enterprises looking to enforce their intellectual property rights. These qualities will not change under the new regime.
Why has the Court been renamed?
The PCC''s jurisdiction extended well beyond just patent litigation. Renaming the Court as the IPEC re-emphasises the Court''s broad jurisdiction for hearing intellectual property disputes of all kinds, including:
- infringement of patents, trade marks (both UK national and Community trade marks), designs (both registered and unregistered and both UK and Community designs), copyright and other intellectual property rights;
- passing off disputes;
- revocation and invalidity of patents, registered designs and registered trade marks;
- amendment of patents;
- declarations of non-infringement of intellectual property rights;
- determination of entitlement to a patent, design or certain other intellectual property rights;
- employee''s compensation claims in respect of a patented invention; and/or
- unjustified threats of proceedings for infringement of patents, designs or trade marks.
Why use the IPEC?
IPEC judges are engaged in pro-active and stringent case management, in order to progress and conclude a claim efficiently. For example, applications to the Court may be made at short notice and are often conducted via telephone or video conference.
The use of evidence (and thus the amount of work to be done before trial) is limited and subject to the Court''s control. For example, disclosure, witness statements, expert evidence and/or cross examination of witnesses is only permitted with the Court''s permission.
|Relatively inexpensive||The costs of bringing a claim in the IPEC are (on average) estimated at about one fifth of an average intellectual property claim in the High Court.|
|Reduced exposure to risk||
There is an overall cap of £50,000 on the amount of legal costs that the losing party can be ordered to pay to the winner in respect of the issue of liability, and a further £25,000 cap on the amount of legal costs that a the losing party can be ordered to pay to the winner in respect of the issue of account of profits. In practice, the amount of legal costs awarded rarely exceeds £40,000.
The maximum amount of damages and/or account of profits that can be claimed is limited to £500,000 (although, the parties may agree to waive this limitation).
The IPEC''s case management powers also reduce a party''s ability to adopt tactics intended to run up the other party''s legal costs
|The trial process is streamlined to avoid lengthy trials and trials last for 2 days or less (further reducing costs).|
What is IPEC not suitable for?
The following factors are indications that a claim may be more suitable for the High Court, rather than the IPEC:
- Where the claim is complex and is likely to involve detailed evidence, including experts'' reports and substantive cross examination of witnesses and experts;
- Where, due to the nature and complexity of the action, legal costs are likely to exceed £50,000;
- Where the value of the action (i.e. the likely damages and/or account of profits) will exceed £500,000.
If, once a claim has been issued, it is evident that an IPEC claim should be heard in the High Court (or vice versa), then either party may apply for the claim to be transferred to the other Court.
IPEC Small Claims Track
The IPEC small claims track reduces the risks associated with litigation still further. The procedure is even more informal (similar to small claims proceedings in the County Court). Claims on the IPEC small claims track tend to deal with low value copyright, trade mark, design right and passing off cases. Its jurisdiction is limited to claims worth up to £10,000 and legal costs are not recoverable (other than Court fees incurred, which can be recovered by the winner).
The IPEC provides an important route for SMEs and individuals to enforce their intellectual property rights, when they might otherwise be deterred by the cost, risk and stress of litigation before the High Court. Larger businesses may also use the IPEC to enforce their intellectual property rights, where the value of the claim does not justify the expense of High Court proceedings.