In my case note “Enforcing Small IP Claims: Sullivan v Bristol Film Studios“ 7 May 2012 I discussed an appeal where a claim for infringement of copyright, moral rights and rights in performances was thrown out not because it lacked merit but because the cost of pursuing it would have been disproportionate to any damages that could possibly have been awarded. In that particular case the claimant had conceded that his case should not proceed to trial if it was worth only £50 or thereabouts. However, Lord Justice Lewison made clear that
“The mere fact that a claim is small should not automatically result in the court refusing to hear it at all. If I am entitled to recover a debt of £50 I should, in principle, have access to justice to enable me to recover it if my debtor does not pay. It would be an affront to justice if my claim were simply struck out.”
In his Lordship’s view this was a claim that could and should have been allocated to the small claims track of the Bristol County Court. Intellectual property claims are governed by Part 63 of the Civil Procedure Rules and CPR 63.1 (3) allocates intellectual property claims to the multitrack but there is nothing in that Part of elsewhere in the CPR to prevent the reallocation of the claim to the small claims track under CPR 26.10.
On 15 Nov 2011 the government announced that it would introduce a new small claims jurisdiction for the Patents County Court. Earlier this year it carried out a consultation on the implementation of that commitment. I wrote about the consultation in “The New Small IP Claims Jurisdiction” on 5 March 2012. The government has now given its response to the consultation. In the executive summary the government said:
“With the overarching aim therefore to ensure that from the outset the IP small claims track in the PCC works effectively, providing for a quick, cheap and easy means for resolving lowest value IP disputes, the Government:
- intends that the small claims track for IP claims should work largely the same as the general small claims track (any deviations from that approach are outlined below);
- will assist the Judiciary in providing appropriate guidance for users to help them to understand the scope of the track which will help to ensure that it will function effectively from inception;
- proposes that the initial scope of the track should encompass the rights falling within the ordinary jurisdiction of the PCC, i.e. under Practice Direction 63 paragraph 16.1 with the further addition of plant breeders’ rights;
- will set an initial limit on damages available on the IP small claims track at the current general limit of £5,000, with this rising to £10,000 in line with the proposed general increase in 2013;
- intends that, as interim injunctions are available under the more appropriate ‘streamlined procedure’ of the PCC and at commensurate cost, they will NOT be available on the IP small claims track in the initial stages;
- will continually monitor the working of the track in the PCC and will formally review this in 2014.”
It seems that claims will be handled by deputy district judges with relevant IP experience. Allocation will be decided by Judge Birss QC. Most claims will be disposed of on paper and any hearings that may be needed will take place in the Rolls Building.
There will continue to be alternatives to litigation. Domain name disputes will be handled under ICANN’s UDRP, Nominet’s DRS or some other dispute resolution service. The Intellectual Property Office will continue to offer advisory opinions on whether a patent is valid or whether it has been infringed. Arbitration and mediation will still be available by a number of dispute resolution service providers such as the WIPO and NIPC Arbitration and NIPC Mediation. I discussed one of these alternatives in my presentation on enforcement.
If anyone wants to discuss this topic with me they should call me on 0800 862 0055.