Patent County Court holds first case management conference

United Kingdom
In Westwood v Knight ([2010] EWPCC 16, November 19 2010), in the first case management conference (CMC) to take place in the Patents County Court since new measures were introduced on October 1 2010, the court has clarified procedures aimed at streamlining IP disputes. The case concerned claims of passing off, as well as trademark and copyright infringement, made by fashion designer Dame Vivienne Westwood OBE against Anthony Knight. The case did not decide on these issues but instead clarified how the new reforms affect IP proceedings at the Patents County Court.

The aim of the reforms is to streamline proceedings at the Patents County Court. Previously, the approach of both the High Court and the Patents County Court in IP disputes was to undertake a full review of all pertinent documents, adduce expert and experimental evidence and permit cross examination. This thorough approach often gave rise to high costs, representing a barrier to justice for individuals and smaller businesses. Following the reforms, proceedings at the Patents County Court will, in most cases, be decided solely on paper, with limited access to expert, experimental and witness evidence. A cap on the costs that can be recovered has also been introduced: as a general rule, there are caps of £50,000 in relation to liability and of £25,000 for an enquiry as to damages or account of profits (Civil Procedure Rules (CPR) 45.41 - 45.43).

One of the new CPR provisions, CPR 63.20(1), requires that, in the Patents County Court, the statements of case should set out concisely all facts and arguments upon which the serving party relies. Because, in this case, the particulars of claim and defence were initially pleaded in the High Court, there was a question as to whether this requirement had been met. Judge Birss indicated that, to require the parties to go back to re-plead would be a waste of time and money and thus contrary to the spirit of the new rules.

The statement of truth in the particulars of claim was signed by Westwood's solicitors, as is conventional in the High Court. Under the new provision of CPR 63.21, statements of case at the Patents County Court should be verified by a statement of truth signed by a person with knowledge of the facts. This modification is important as it allows statements of case to stand as evidence, thus improving trial time. To facilitate the quick progress of the case, Westwood sought permission to amend her particulars of claim accordingly and permission was granted.

As both parties had incurred costs in the High Court before the case transferred to the Patents County Court, there was uncertainty as to whether all the costs would be covered by the cap. However, neither party made submissions on costs and, as a result, Judge Birss referred the decision until trial. Judge Birss pointed out that one of the purposes of the cost cap was to reduce uncertainty and suggested that, in future cases, any uncertainty should be considered before the CMC.

CPR 63.23(1) stipulates that, at the CMC, the court will identify the issues and decide whether to make an order in accordance with Paragraph 29.1 of Practice Direction 63 - that is, any of the following:
  • specific disclosure;
  • a product or process description;
  • experiments;
  • witness statements;
  • experts' reports;
  • cross examination; and
  • written submissions/skeleton arguments.
However, under Paragraph 29.2 of Practice Direction 63, the court will make such an order only in relation to specific and identifiable issues and if satisfied that the benefit justifies the costs. Furthermore, CPR 63.23(2) dictates that, save in exceptional circumstances, the parties will not be allowed to submit any further material in addition to that ordered at the CMC.

Judge Birss identified these new provisions as a radical departure from previous civil procedure, noting that parties would no longer be able to call evidence on any topic they choose. He went on to say that merely because some evidence is relevant will not necessarily justify permission being given to adduce it.

This CMC judgment demonstrates that the Patents County Court is committed to applying the new provisions in a manner consistent with the overarching principle that IP proceedings should be cheaper and quicker to resolve. It demonstrates the active part that the judge plays in case management and how the court will control what materials will be permitted in support of either side's case. 

The new rules are the first phase in the reform of the Patents County Court; the next phase is aimed at introducing a limit on Patents County Court claims. In October 2010 the Intellectual Property Office initiated a consultation on setting the limit at £500,000, with the intention that this will become law in 2011. 

Inbali Iserles and Andy Levett, Ashurst LLP, London

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