In which court should you bring an Intellectual Property claim?
During the mid-2000s the UK courts introduced numerous changes in an effort to make the litigation process smoother and more efficient. Part of these changes included the creation of a separate, specific platform for intellectual property claims.
Traditionally intellectual property (IP) cases were heard in the Chancery Division of the High Court. These cases tended to be high value with complex issues and IP litigation was therefore considered difficult and expensive in the UK. On 1 October 2013, the originally founded Patents County Court (PCC), was reformed into the Intellectual Property Enterprise Court (IPEC) which now acts as a specialist division of the Business and Property Courts. IPEC is a forum dedicated specifically to dealing with more straightforward intellectual property cases and from the outset of a claim, is designed to be easily accessible and result in swift resolutions. They consider a wide range of intellectual property disputes including:
- registered designs
- patents
- registered trade marks
- copyrights
- other intellectual property rights
Today, both the High Court and IPEC hear intellectual property cases, however there are key differences between them which can impact the nature of the proceedings and are important for a claimant to understand when deciding which court to issue in. The Intellectual Property Enterprise Court guide provides guidance about which forum may be better suited with regards to some of the factors discussed below.
As IPEC is a designated intellectual property court, these judges are likely to be experts in this area of law and offer a specialist understanding of the issues in dispute. Contrastingly, IP cases in the High Court can be heard by specialist IP judges or masters, however as the court deals with a range of disputes, this is not guaranteed. The length of a trial in IPEC will generally not be longer than two days, three at the most. The court requires parties to take this into consideration if they wish for the case to be brought in IPEC and ensure that proceedings are conducted accordingly. In the High Court, there is no set time frame for how long a trial could last and numerous factors will influence this, such as the complexity of the case, the number of experts or witnesses and the nature of the evidence being given.
Another significant difference between the two courts is the cap on damages that exists in the Intellectual Property Enterprise Court. IPEC has a cap of £500,000 on the quantity of damages that can be sought, unlike the High Court where there is no such limit. This makes IPEC a less attractive option for high value cases where the damages likely exceed this limit. Within IPEC there are two avenues in which a claim can be brought, the small claims track and the multi-track. The small claims track is for cases with a value of £10,000 or less and the multi-track for claims above £10,000 and below £500,000.
Additionally, in IPEC there is also a cap on the amount of costs recoverable by the parties, as detailed in Part 46.21 Civil Procedure Rules:
46.21
(1) Subject to rule 46.22, the court will not order a party to pay total costs of more than—
(a)£60,000 on the final determination of a claim in relation to liability; and
(b)£30,000 on an inquiry as to damages or account of profits.
Given that the uncertainty with regards to costs in UK civil litigation is often a barrier which discourages parties from issuing proceedings, these rules mean that parties are aware from the outset of what their recovery of costs could be and the maximum amount of costs they could have to pay the successful party.
In theory, the Intellectual Property Enterprise Court is a strategic and less expensive choice for parties looking to issue proceedings. The court offers a more streamlined and efficient process for IP litigation with judges who are specialists in this area of law. However, whilst this may seem an obvious choice, parties should carefully consider the complexity and nature of the claim in light of the factors mentioned above when deciding which forum to choose.
If you are considering intellectual property litigation and require advice from one of our solicitors, please contact our commercial litigation and media team or call 020 7632 4300 who would be pleased to have a no-obligation call to determine how we may be able to assist.