The Choice of ForumIn the United Kingdom there are three separate jurisdictions - England and Wales, Scotland and Northern Ireland. The majority of intellectual property cases are heard in the courts of England and Wales and so those are discussed here. For the jurisdiction of England and Wales, most intellectual property cases are heard in London by either the High Court or the IP Enterprise Court.

For patent and registered design cases that is mandatory but other intellectual property cases, including trade mark and copyright disputes, may also be brought in designated county courts in England and Wales

The Patents CourtThe Patents Court is part of the High Court and is the appropriate forum for more valuable or more complex disputes. In the High Court, cases must be conducted by a solicitor or patent/trade mark attorney litigator who instructs a barrister to appear in court at the trial. (Normally the barrister would be involved much earlier and work with the solicitor/attorney throughout the case.)

The IP Enterprise Court (IPEC)This court (previously called the Patents County Court) was set up to reduce the costs of intellectual property litigation. Cases may be conducted by any patent/trade mark attorney or solicitor. The same person may also appear at the trial, though it is much more usual for a barrister to be instructed.

Intellectual Property Litigation in the United Kingdom

Reducing CostsIPEC was intended for cases where there are no complex legal or factual points, and where the parties are not large corporations with large sums of money at stake. However, particularly since its procedures were reformed some years ago, it has become a popular forum for even relatively complex disputes.

It differs from the High Court in several important respects, which are related to its intended role. The most notable is a cap of £500,000 on damages that may be awarded and £50,000 on costs that may be reclaimed from the losing party (plus a further £25,000 if the amount of damages has to be decided by the court).

It also follows a somewhat different procedure. The parties’ statements of case are much more detailed than those in the High Court and usually contain claim charts setting out the parties’ cases on infringement and validity, as well as a certain amount of evidence. The evidence that may be relied upon is controlled by the court and the trial normally takes no more than two days.

In addition, both IPEC and the High Court offer a “streamlined procedure” for cases that are suitable for hearing on the basis of only written evidence and without experiments or disclosure (see below). Cross-examination at trial is then limited to certain topics. Either party may propose to the court that this procedure be used.

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Copyright 2017. The information in this document is necessarily of a general nature and is given by way of guidance only. Specific legal advice should be sought on any particular matter. Dehns accepts no responsibility whatsoever for any action taken or not taken on the basis of the information contained herein. Last updated May 2017.

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ProceduresIn both the High Court and IPEC, there is a requirement for parties to provide details of their case in writing in a statement of case (sometimes called a “pleading”). As noted above, rather more detail is provided in IPEC pleadings than in the High Court.

After the statements of case have been provided by the parties, there will be established a timetable to trial. This will involve setting dates for the exchange of witness statements to be used as evidence, conducting experiments and so forth. As noted above, in IPEC, the judge tends to take a more active case-management role because of the need to conduct the trial in a short time and in order to keep costs proportionate to the issues.

Shortly before the trial, the parties will provide written “skeleton” arguments to the court. At the trial there will be examination and cross-examination of witnesses, legal submissions and arguments. The judge will normally reserve judgement and then provide a written, detailed judgement going through the facts, the law, and the submissions made.

If the judge finds in favour of the claimant, an injunction will be normally be granted to prevent the infringing acts. The level of compensation is dealt with subsequently, in a separate inquiry, though often the parties agree the sum involved to avoid the risk and additional expense of a further hearing. A successful claimant must choose between damages for the losses it has suffered, or receiving the profit that the defendant has made from the infringements.

Appeals are possible to the Court of Appeal and to the Supreme Court.

DisclosureIn the United Kingdom, the disclosure of documents, previously referred to as “discovery”, is commonplace in intellectual property litigation. In the High Court, subject to certain limitations, parties are obliged to disclose all documents relevant to the case, including those which

could be adverse to their own case. One of the limitations is that, where patent validity is in issue, the patentee only has to disclose documents within a specified time window. If there is a streamlined procedure, disclosure may be dispensed with or limited to specific points. Likewise, in IPEC, disclosure is not automatic and must be ordered by the court in relation to specific matters.

Patent LitigationIn patent cases, the procedure is markedly different to that in some other jurisdictions such as Germany where infringement and validity are determined by separate courts. In the United Kingdom, infringement and validity are decided in the same proceedings. A defendant will use invalidity as a defence to the claim of infringement, and will counterclaim for the patent to be invalidated. The judge will issue a single decision as to whether the patent is valid or not and whether it has been infringed. If the patent is invalid, the judge will order that it be revoked.

Litigation at DehnsAt Dehns all of our partners and associates are qualified to conduct litigation in IPEC and there are three Patent Attorneys who have certificates to conduct intellectual property litigation in the High Court – Partners Christopher Davies and Robert Jackson and Consultant Mike Butler.

In addition to conducting litigation directly in IPEC and the High Court, we have considerable experience of working with solicitors on more complex cases.

Further InformationFor further information contact Robert Jackson or visit: www.dehns.com or call us on: +44 (0)20 7632 7200

Robert JacksonPartner

T: +44 (0)20 7632 7200 E: rjackson@dehns.com

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