The Patents County Court

On October 1, the Patents County Court – which deals with claims relating to intellectual property – saw some fundamental changes, representing a radical departure from traditional English civil litigation procedure in order to improve access to justice. The changes are designed to provide an affordable forum for intellectual property litigation for small and medium sized enterprises.

Following the report of the Committee chaired by Sir Derek Oulton in 1987, the Patents County Court (PCC) was set up in 1990. The PCC was intended to provide a less costly and less complex alternative to the High Court, Patents Court, which was intended to deals with larger and more complex claims.

Based initially in Wood Green in north London, the PCC moved to Park Crescent in west end of London in the mid 1990s.

For its first ten years the PCC operated with its own procedural rules, intended to reduce the cost and complexity. However for various reasons the court was not a success and by 1999 there were very few cases in its list.

In 2001 the PCC was boosted with the appointment of a new full-time judge (HH Judge Fysh QC) and in 2002 the court moved to Field House near Chancery Lane.

Under HH Judge Fysh, the PCC established itself as a useful forum for Intellectual Property litigation; however, the abolition of the County Court Rules and their replacement by the Civil Procedure Rules meant that there was then no difference in procedure or costs between the Patents County Court and the High Court, Patents Court.

This meant that intellectual property litigation could be both complex and expensive, even for smaller claims and regardless of the forum in which the case proceeded – discouraging small- and medium-sized enterprises from bringing cases at all.

In April 2009, the Intellectual Property Court Users’ Committee (IPCUC) discussed the long standing concerns about the high cost of intellectual property litigation in the United Kingdom, particularly for small- and medium sized-enterprises.

In June of 2009, the IPCUC published a consultation paper setting out proposals for reform of the PCC.

Feedback was sought from a broad spectrum of court users, including professional and trade representative bodies, lawyers, patent and trade mark attorneys and academics.

The respondents were almost universally supportive of the proposals, and these were published – with a few alterations – in July 2009.

The final proposals were:

• The PCC should be re-named the “Intellectual Property County Court”
• The procedures of the PCC should be reformed, so that parties set out their respective cases fully at the outset. The judge could then decide whether to order or permit further evidence, written argument or specific disclosure. Any other hearings would be dealt with by telephone. The trial would be limited to one to two days.
• A scale should be set for the recovery of costs, with total recoverable costs capped at £50,000 in contested actions for patent infringement and validity, and at £25,000 in all other cases.
• There should be a limit of £500,000 on the financial remedies available in the PCC.

The Working Group also made a number of detailed recommendations, including that the Guide should contain guidelines to assist in determining transfer applications as between the PCC and the Patents Court.

The suggestions were praised by Lord Justice Jackson in the final report of his Review of Civil Litigation Costs, published in January 2010.

Lord Justice Jackson wrote: “I believe that if the proposed package of reforms is adopted, this will promote access to justice at proportionate cost for SMEs and other parties involved in lower value IP disputes.”

He also recommended that the PCC judge should always be a senior circuit judge, appointed for a five-year term.

In 2010 the relevant changes to the rules and practice directions were made although the name change was not implemented at the same time since it would require primary legislation to do it. Also the limit on financial remedies has not been implemented as yet.

The new procedures came into force on October 1, 2010. They include provisions that:

• the parties set out their respective cases fully but concisely at the outset.
• no further evidence, written argument or specific disclosure will be permitted without the permission of the judge. This will be a matter considered at the case management conference.
• any other applications will if possible be dealt with on paper or by telephone.
• the trial will be limited to one or at most two days.
• recoverable costs are capped. The total recoverable is capped at £50,000 for the final determination of liability and at £25,000 for enquiries as to damages or accounts of profits.
• The rules on transfer have been modified to take into account the new procedures.

With the retirement of HH Judge Fysh QC in the summer of 2010, a new PCC judge, HH Judge Birss QC, was sworn in on October 5, 2010.

The PCC is now up and running with the new procedures. A meeting of the PCC Users Committee has been convened and work has begun on a Guide.

The court is presently located at St Dunstan’s House, Fetter Lane following the fire in Field House last year but it is expected to move to the Rolls Building in 2011 along with the Chancery Division of the High Court (including the Patents Court), the Commercial Court and the Technology and Construction Court.