The Intellectual Property Enterprise Court Explained

On 1 October 2013, the Patents County Court (PCC) saw its name changed to the Intellectual Property Enterprise Court (IPEC). The change reflects the fact that the Court’s jurisdiction covers much more than just patent issues, dealing with trade mark, design, and copyright matters as well. In this article Keystone’s IP expert James O’ Flinn provides a comprehensive guide to the IPEC and its advantages.

Despite the UK having been deemed officially out of recession since 2012, individuals and businesses alike are still having to maintain a keen eye on costs. This equally applies when a party is faced with a dispute that needs to be resolved as quickly and cost-effectively as possible.

The press continues to debate access to justice and, in recent times, we have seen the implementation of most of the recommendations made by Sir Rupert Jackson’s Review of Civil Litigation Costs on 1 April 2013.

The ability to resolve intellectual property (IP) disputes in court justly and at proportionate cost has also seen changes in recent years. On 1 October 2010, substantial changes were introduced to the rules and procedure in the Patents County Court ("PCC"), as it was then known. Prior to that, the procedure followed for IP disputes in both the High Court and the PCC adopted the same adversarial system, with the usual meticulous analysis of the documentation and cross-examination of witnesses.

The Intellectual Property Enterprise Court (IPEC), as it is now called following a name change in 2013, comes under the umbrella of the Chancery Division of the High Court and aims to provide a cheaper and less tortuous equivalent to IP litigation in the High Court. This is particularly (but by no means exclusively) welcome for small and medium-sized enterprises. Judges in the IPEC are known as “enterprise judges” and the court has its own court guide.

Government reforms to IPEC procedures, together with the imposition of a limit on the value of claims it will deal with (£500,000 unless the parties agree otherwise), aim to provide a cost-effective forum in which SMEs or larger institutions with smaller matters can resolve IP disputes.

Proceedings may be brought in the IPEC (for claims not exceeding the aforementioned limit) over issues involving:

• infringement of trade marks
• designs
• copyright
• patents
• other IP rights
• the revocation or invalidity of registered designs, trade marks and patents
• unjustified threats of proceedings for infringement of designs, trade marks or patents
• declarations of non-infringement; determination of entitlement to a design, patent, or any other IP
• the amendment of patents.

The IPEC trial procedure guarantees that the trial lasts no more than two days. Many cases in the IPEC are heard in a single day and this is achieved through pro-active case management by the judge.

Some of the recognised advantages of the IPEC include the existence of a full-time specialist judge, which aids consistency of approach, while the IPEC procedure lends itself to a swifter resolution of the dispute. A maximum cap on recoverable costs by the successful party (the IPEC will not order a party to pay total costs of more than £50,000 on the final determination of a claim in relation to liability, and £25,000 on an inquiry as to damages or account of profits) provides comfort to the parties as to the extent of any costs liability, and active case management assists to nullify any frustrating tactics adopted by either party.

The remedies available to the claimant in the IPEC (subject to the £500,000 cap) include preliminary and final injunctions, damages, accounts of profits, delivery-up and disclosure.

The IPEC is ably designed to hear claims of a comparatively modest value, and/or cases that are confined to somewhat uncomplicated contentious matters. Some points worth contemplating when assessing whether the IPEC is the appropriate forum to pursue a dispute include:

• the value of the claim(s)
• the estimated costs of the action against the IPEC’s cap on recoverable costs
• the size and complexity of the claim(s)
• cross-examination of witnesses (which will be strictly controlled)
• whether the dispute is one which involves complicated and considerable evidence (as this is unlikely to be appropriate for the IPEC)

Parties can take comfort in the fact that, once having commenced an action, a party in either the IPEC or the High Court believes that the other court is a more appropriate forum, they can apply for the dispute to be transferred.

IP disputes by their very nature are usually complicated, lengthy and therefore expensive. In the right circumstances the IPEC can provide an opportunity to resolve IP disputes commercially at proportionate time and cost.