Most of our clients are small businesses which prefer to keep out of trouble if they possibly can. We help them by
- assisting with their intellectual asset audits;
- ensuring that cost-effective but adequate intellectual property protection is in place;
- designing systems for safeguarding confidential information;
- advising them about IP insurance, watch services and collecting societies; and
- writing arbitration or alternative dispute resolution clauses into their licence, joint venture and other agreements.
However, there are times when trouble cannot be avoided. If a client is threatened by a third party we evaluate the legal basis of the claim, assess risk and suggest possible options. Often our clients instruct us to settle a letter of response in accordance with Section III and Annex A of the Practice-Direction Protocols and the Code of Practice for pre-action conduct in intellectual property disputes. If these result in negotiation, mediation or a reference to an expert we represent our clients in such proceedings. Occasionally, we have to suggest a very robust response such as a threats action. If that is necessary we settle the letter of claim and any subsequent claim form indorsement, particulars of claim, application notice and witness statement.
If our client hears from its watch service or the market that someone has applied for a patent, trade mark or design that affects our client’s rights we advise it of its remedies in the Intellectual Property Office or other tribunal. If it learns that someone has infringed our client’s rights we assess its claim and any possible counterclaim and advise it of its remedies. If our client has taken our IP insurance we advise its insurer of the prospects of success. If our client wants to enforce its rights and can afford to do so we will consider the enforcement mechanisms. These include advisory opinions on infringement and validity from an examiner under s.74A of the Patents Act 1977 for patent disputes and complaints under ICANN’s Uniform Domain Name Dispute Resolution Policy and Nominet’s Dispute Resolution Service for domain name disputes. If a corresponding patent has been infringed abroad we consider whether it may be better to sue overseas. If our client decides that it wants to and can afford to sue here we will settle a letter of claim in accordance with the Practice Direction and Code of Practice.
Every so often a client needs to apply for an injunction until trial because a damages award will not be an adequate remedy. We settle the claim form, particulars of claim, application notice, draft minute of order and witness statements. If the client needs particularly urgent relief and cannot risk warning the other side of its intentions we can put the machinery in place for a search order or freezing injunction. We even have a panel of supervising solicitors to enforce the order. We have draft affidavits and draft minutes of order in support of the application ready to print out. We can obtain the order within hours of being consulted
Naturally we settle statements of case for proceedings in the Patents Court, Patents County Court, Chancery Division and the IPO. We help identify experts and the issues upon which we require their help. We review their reports and advise them with the format. We prepare skeleton arguments and opening and closing statements. Finally, we assist with the preparation of the bundle to ensure that the hearing is resolved as quickly and efficiently as possible.
If a case goes to appeal we advise on the merits of the appeal and draft any notices or respondents’ notices. If a point of law has to be referred to the Court of Justice of the European Communities for a preliminary reference under art 267 of the Treaty on the Functioning of European Union we will help draft the question to be put to the Court. We also settle statements and written submissions to OHIM or the EPO.