These are the questions that I am often asked by solicitors – particularly those who do not specialize in intellectual property – about proceedings in the Patents County Court
What is the Patents County Court?
Officially the Patents County Court is part of the Central London County Court. It was designated as a Patents County Court by art 2 of the Patents County Court (Designation and Jurisdiction) Order 1994. That Order was made pursuant to s.287 (1) of the Copyright, Designs and Patents Act 1988. S.287 (1) enables the Lord Chancellor to designate any county court as a patents county court and to confer on it jurisdiction to hear and determine proceedings relating to patents and designs. At present, the Central London County Court is the only county court to be so designated. Although it is part of the Central London County Court hearings take place not in Park Crescent but at the Rolls Building in Fetter Lane.
What is the Jurisdiction of the Patents County Court?
As the Central London County Court is also a chancery county court, the Patents County Court can hear and determine almost any type of intellectual property claim and its geographical jurisdiction is nationwide. However, there are there important restrictions to be born in mind:
(1) Damages or the moneys sought on an account of profits may not exceed £500,000;
(2) The trial on liability and any subsequent account or inquiry must be completed within 2 days; and
(3) The recoverable costs are limited to £50,000 for the trial and £25,000 for the inquiry or account of profits.
Because the Patents County Court now hears cases that go far beyond patents and designs, the Government has indicated that it intends to change the name of the court to the Intellectual Property County Court as soon as a suitable legislative vehicle becomes available (see page 20 of the Government’s Response to .the Call for Evidence on Introducing a Small Claims Track into the Patents County Court.
What are the Alternatives to the Patents County Court?
A claim other than one relating to patents, registered or registered Community designs, semiconductor topography rights or plant varieties may be brought in the Chancery Division of the High Court of Justice in London, the Birmingham. Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle or Preston District Registries or the county courts attached to those District Registries. The only other court in which a claim relating to patents, registered or registered Community designs, semiconductor topography rights or plant varieties can be brought is the Patents Court.
What are the Advantages of the Patents County Court?
The principal advantages are speed, cost-effectiveness and the specialist judge. It is therefore ideal for most intellectual property cases. The only claims that cannot be brought before that court are those for more than £500,000. Claims that need more than 2 days for trial, those that are likely to cost significantly more than £50,000 to prepare and those that originate outside London and are very small are not suitable for the Patents County Court.
Are there any Special Rules for the Patents County Court?
Yes. These are set out in Section V of Part 63 of the Civil Procedure Rules and Section V of the Part 63 Practice Direction. You should also consult the Patents County Court Guide.
Tell me about these Special Rules
They enable the court to manage cases tightly so as to minimize costs and delay.
(1) Statements of Case Wherever possible the court will determine cases solely on the parties’ statements of case and oral submissions (see paragraph 31.1 of PD Part 63). For that reason, CPR 63.20 requires a statement of case to set out concisely all the facts and arguments upon which the party serving it relies. CPR 63.21 requires the statement of truth of a statement of case to be verified by someone with knowledge of the facts. If no one person has knowledge of all the facts, the statement of truth must be signed by all those who between them have such knowledge. Save in exceptional circumstances, no other material will be admitted without the permission of the court (see CPR 63.23 (2)).
(2) Evidence The opportunity for the parties to seek permission to adduce such additional material is the first case management conference. The claimant has a duty under paragraph 5.3 of PD Part 63 to apply for a case management conference within 14 days of the date when all defendants who intend to file and serve a defence have done so. If the claimant fails to apply for a case management conference within that time any other party may do so (see paragraph 2.5 of the Patents County Court Guide). At the case management conference, which is always taken by the trial and not a district judge, the court will identify the issues and decide how they are to be resolved (see CPR 63.23 (1)). If the parties agree, the judge may determine the claim on paper (CPR 63.23 (3)). Otherwise, the judge will decide in relation to each issue whether to order specific disclosure, witness statements, experts’ reports, cross-examination or other evidence and written submissions or skeleton arguments (paragraphs 29.1 and 29.2 of PD Part 63). In deciding whether to order additional material the court has to be satisfied that the benefit of the further material in terms of its value in resolving those issues is likely to justify the cost of producing and dealing with it.
(3) Trial Once the issues of the case have been identified and directions given for their resolution the other important direction to be given at the case management conference is the date for trial. The dates for any disclosure and inspection of documents, exchange of witness statements, preparation of bundles and exchange of skeleton arguments will be fixed by reference to the trial date.
(4) Applications These are resolved on paper unless the court considers it necessary to hold a hearing (see CPR 63.25 (3)). If a hearing is necessary the court will try to conduct it by telephone or video conference (paragraph 30.1 of PD Part 63). Respondents to applications must file their evidence in reply within 5 days of an application notice (CPR 63.25 (2)). Applications to stay or transfer a case to the High Court must be made before or at the case management conference (see CPR 63.25 (4)). As claims proceed quickly in the Patents County Court there is rarely any need for interim injunctive relief. Unless a party has behaved unreasonably, the costs of an application will be reserved to the conclusion of the trial when they will be subject to summary assessment.
What about Small Claims?
In its Response to .the Call for Evidence on Introducing a Small Claims Track into the Patents County Court the Government outlined its plans for introducing a small claims track into the Patents County Court. In Sullivan v Bristol Film Studios Ltd [2012] EWCA Civ 570 (3 May 2012), Lord Justice Lewison said that it was already possible to bring a small IP claim in the Patents County Court or indeed the Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle or Preston County Courts. Such actions are allocated initially to the multi-track but can be re-allocated to the small claims track under CPR 26.10. In Sullivan Lord Justice Lewison thought that Bristol County Court was the best venue for that claim (see my article “Small IP Claims” on our chambers website of 8 May 2012 and my case note on Sullivan of 7 May 2012 in our IP/IT Update blog).
Where can I get Further Information?
You could read my article “New Patents County Court Rules” in my IP/IT Update blog of 31 Oct 2010. You could also call me on 0800 862 0055 (+44 161 850 0080 if calling from abroad) or fill in my contact form.
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