According to the results of a freedom of information request recently published by the Law Society Gazette, small and medium-sized enterprises (SMEs) are using England and Wales’s specialised Intellectual Property Enterprise Court (IPEC) in increasing numbers. 2016 saw 339 cases brought before it, up from 202 in 2015.
In 2010 the old Patents County Court and its procedure was reformed and the court was subsequently renamed the Intellectual Property Enterprise Court in 2013. This was created to provide a cheaper and more streamlined forum for the enforcement of intellectual property (IP) rights as an alternative to traditional High Court proceedings.
IPEC is based in the Rolls Building off Fetter Lane along with the Chancery Division of the High Court which still remains a forum in which to enforce IP rights.
The procedural differences introduced by IPEC to reduce costs and streamline enforcement procedures for the benefit of SMEs and to differentiate itself from the Chancery Division of the High Court include:
- the removal of the obligation to provide standard disclosure
- the limiting of witness evidence and cross examination (if any) to specific relevant issues determined early on in the proceedings by the judge at a case management conference (CMC)
- the introduction of a policy that trials should last no longer than two days
Apart from reducing the costs incurred directly by parties through this streamlined procedure which results in a faster determination of cases, the level of costs recoverable by a successful party in IPEC proceedings is capped at £50,000. The level of damages recoverable by a successful claimant is limited to £500,000.
For the last seven years IPEC has therefore been handling disputes which would ordinarily have required a trial lasting a week or even longer and dealing with them at trial in a day or two. The cases are typically ready for trial within six months of the CMC although at present, and due to the success of IPEC, it can take longer to obtain an IPEC trial listing.
The IPEC Small Claims Track
Following the success of the initial introduction of IPEC, a small claims track was introduced in 2012 for claims concerning copyright, trade marks, passing off and unregistered designs valued at under £10,000.
This forum has proven especially popular for small infringement claims which IP rights holders previously considered uneconomical to bring proceedings for. This is particularly because orders for final remedies, such as damages or an account of profits (up to £10,000), delivery up or destruction of infringing items and, most important of all for the majority of IP rights holders, final injunctions, may still be obtained from the court within this track.
It is likely that most of the increase in number of case brought before IPEC have been before the Small Claims Track but its existence is still relatively unknown among SMEs and other IP rights holders. The Small Claims Track of IPEC means that persistent smaller scale infringements of IP rights are no longer necessarily unwieldy and expensive to deal with.
The advent of IPEC, its Small Claims Track and other shorter and flexible trial schemes means that access to justice for IP rights holders in England and Wales is now one of the most dynamic and broad in the world. They should therefore be encouraged to seek advice on all of the procedural options available to them for their enforcement strategies.
DMH Stallard can advise and assist further on the range of intellectual property enforcement options available for clients.